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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/564,237
`
`09/09/2019
`
`KAORI TAKEUCHI
`
`083710-2771
`
`5944
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`GATEWOOD,DANIEL S
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/27/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/564,237
`TAKEUCH|etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL S GATEWOOD
`1729
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 7/19/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 6 and 8 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-5,7 and 9-11 is/are rejected.
`1 Claim(s)__ is/are objected to.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210721a
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 2
`
`MEMBRANE ELECTRODE ASSEMBLY AND FUEL CELL
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
`
`inventorto file provisions of the AJA.
`
`2.
`
`In response to communication filed on 7/19/2021:
`
`Response to Amendment
`
`a.
`
`Claims 1, 7, 10, and 11 have been amended; claims 6 and 8 have been cancelled.
`
`No new matter has been entered.
`
`b.
`
`Previous rejections under 35 USC 102(a)(1) have been withdrawn due to
`
`amendments.
`
`Response to Arguments
`
`3.
`
`Applicant’s arguments with respect to claim(s) 1-5, 7, and 9-11 have been considered but
`
`are moot based on grounds of new rejection necessitated by amendment.
`
`Claim Rejections - 35 USC § 103
`
`4,
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new groundofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 3
`
`5.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin which the invention was made.
`
`6.
`
`Thetext of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`7.
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`Claims 1, 4-6, and 9-11 are rejected under 35 U.S.C. 103as being unpatentable over
`
`Mizuhara et al. (WO 2017/013868 Al using US 2019/0006680 Al as an English language
`
`translation.) and further in view of Park et al. (Ceramics International, 39, (2013), 2581-2587).
`
`9.
`
`Regarding claims 1 and 4, Mizuharaet al. teach a membrane electrode assembly (Fig. 1,
`
`element 1) comprising:
`
`10.
`
`an electrode including a composite material containing a metal and a proton-conducting
`
`first electrolyte (Paragraph 0136 (a));
`
`11.
`
`an electrolyte layer including a proton-conducting secondelectrolyte (Paragraph 0136
`
`(c)), the electrode and the electrolyte layer being stacked (Fig. 1),
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 4
`
`12.
`
`wherein a volumeratio of the metal in the electrode is 57% or more (Example 1 discloses
`
`a 70:30 volume ratio of NiO:BaCeo.sYo0.202-s which, according to Applicant in paragraphs
`
`0133 and 0151 is 57% metallic Ni.).
`
`13.
`
`However, Mizuhara et al. do not teach wherein each of the proton-conducting first
`
`electrolyte and the proton-conducting second electrolyte is represented by any one compositional
`
`formula of BaaZr1-xMxO3, BaaCe1-.«MxO3, and BaaZr1-x-y¥CexMyO3 wherein M is at least one element
`
`selected from the group consisting of Sc, Lu, Yb, and Tm; 0<x<I; 0<y<l; 0.95 <a < 1.05.
`
`14.
`
`Park et al. teach the use of Yb-doped BaZrOs3for use in anode-supported protonic ceramic
`
`fuel cells (Abstract. Further, Experimental procedurediscloses the use of Ba(Zro.ssYbo.15)O3-
`
`3).
`
`15.
`
`Therefore, it would have been obvious to oneof ordinary skill in the art to modify Mizuhara
`
`with Park in order to improve gas permeability and electrical conductivity.
`
`16.
`
`Regarding claim 5, Mizuhara and Park et al. teach the membrane electrode assembly
`
`according to claim 1. Further, Mizuhara teaches wherein a porosity of the electrode is 20% or more
`
`and 50% or less (Claim 2).
`
`17.
`
`Regarding claim 9, Mizuhara and Park et al. teach the membrane electrode assembly
`
`according to claim 1. Further, Mizuhara teaches wherein the thickness of the electrode is larger
`
`than a thickness of the electrolyte layer (Paragraph 0137).
`
`18.
`
`Regarding claim 10, Mizuhara and Park et al. teach the membrane electrode assembly
`
`according to claim 1. Further, Mizuhara teaches further comprising a functional layer that is
`
`provided between the electrode and the electrolyte layer to come into contact with the electrolyte
`
`layer wherein the functional layer is selected from an electrode layer that can increasea triple
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 5
`
`19.
`
`phase boundary and/or an electrode layer with an enhanced porosity, relative than the
`
`electrode at an interface with the electrolyte layer (Paragraphs 0068-0073, fig. 1, element 6
`
`discloses an intermediate layer.).
`
`20.
`
`Regarding claim 11, Mizuhara and Park et al. teach a fuel cell comprising: a membrane
`
`electrode assembly (Mizuhara: Fig 1, element 1) according to claim 1;
`
`21.
`
`an air electrode to which an oxidantgas is supplied (Fig. 1, element 2 discloses a cathode
`
`and element 23 discloses an oxidant channel.);
`
`22.
`
`a fuel gas supply channel which supplies a hydrogen-containing gas as a fuel gas to the
`
`electrode (Fig. 1, element 3 discloses an anode and element 53 discloses a fuel channel.); and
`
`23.
`
`an oxidant gas supply channel which supplies the oxidant gasto the air electrode (Fig. 1,
`
`element 23 discloses an oxidant channel.), wherein:
`
`24.
`
`the electrolyte layer is in contact with the electrode on a first side and in contact with the
`
`air electrode on a second side opposite to the first side; and the electrode, the electrolyte layer, and
`
`the air electrode are stacked in this order (Fig. 1).
`
`25.
`
`Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lei etal.
`
`(J. Electrochem. Soc., 158, (2011), B797-B803) and further in view of Park et al. (Ceramics
`
`International, 39, (2013), 2581-2587).
`
`26.
`
`Regarding claims 1, 3, 4, and 7, Lei et al. teach a membrane electrode assembly (Abstract)
`
`comprising:
`
`27.
`
`an electrode including a composite material containing a metal and a proton-conducting
`
`first electrolyte (Experimental discloses a Ni/BZY composite.); an electrolyte layer including a
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 6
`
`proton-conducting second electrolyte (Experimental discloses a BCZY composite.),
`
`the
`
`electrode and the electrolyte layer being stacked (Experimental),
`
`28.
`
`wherein a volumeratio of the metal in the electrode is 57% or more or 69% or more and
`
`84% or less (Experimental discloses a 70:30 and 80:20 volume ratio of NiO:BaZrosYo0.202-3
`
`which, according to Applicant in paragraphs 0133 and 0151 is 57% and 69% metallic Ni,
`
`respectively.).
`
`29.
`
`However, Lei et al. do not teach wherein each of the proton-conducting first electrolyte
`
`and the proton-conducting secondelectrolyte is represented by any one compositional formula of
`
`BaaZri.»MxO3, BaaCe1-*«MxO3, and BaaZri-»yCexMyO3 wherein M is at least one element selected
`
`from the group consisting of Sc, Lu, Yb, and Tm; 0<x<l; 0<y<l; 0.95 <a < 1.05.
`
`30.
`
`Park et al. teach the use of Yb-doped BaZrOs3for use in anode-supported protonic ceramic
`
`fuel cells (Abstract. Further, Experimental procedurediscloses the use of Ba(Zro.ssYbo.15)O3-
`
`3).
`
`31.
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify Lei with
`
`Park in order to improve gas permeability and electrical conductivity.
`
`32.
`
`Claim 2 is rejected 35 U.S.C. 103 as obvious over Mizuharaet al. (WO 2017/013868 Al
`
`using US 2019/0006680 Al as an English languagetranslation.) or Lei et al. (J. Electrochem. Soc.,
`
`158, (2011), B797-B803) in further in view of Park et al. (Ceramics International, 39, (2013),
`
`2581-2587).
`
`33.
`
`Regarding claim 2, Mizuhara or Lei and Parket al. teach the membrane electrode assembly
`
`according to claim 1. However, they do not teach wherein when an amountof warpageis defined
`
`as AL/L in which ALis an in-plane difference in height in a thickness direction and L is a size in
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 7
`
`a longitudinal direction of a membraneelectrode assembly after sintering, the electrode deforms
`
`at a AL/L of 0.5% or more in a direction that decreases warpage.
`
`34.
`
`Mizuhara et al. teach a 70:30 volume ratio of NiO:BaCeo.sYo202- which, according to
`
`Applicant in paragraphs 0133 and 0151 is 57% metallic Ni. Further, according to Table 2 of the
`
`present application the Ni/BZYb ofthis volumeratio has a planar cell warpage ratio % of 0.51.
`
`35.
`
`Lei et al. teach a 70:30 and 80:20 volumeratio of NiO:BaZro.sYo.202-8 which, according to
`
`Applicant in paragraphs 0133 and 0151 is 57% and 69% metallic Ni, respectively..
`
`36.
`
`MPEP2112.01 Composition, Product, and Apparatus claims
`
`37.
`
`so.
`
`PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE
`
`RECITED IN THE REFERENCEIS SUBSTANTIALLY IDENTICAL TO THAT OF THE
`
`CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE
`
`INHERENT
`
`38. Where the claimed andprior art products are identical or substantially identical in structure
`
`or composition, or are produced byidentical or substantially identical processes, a prima facie case
`
`of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
`
`USPQ 430, 433 (CCPA 1977). "When the PTO shows a soundbasis for believing that the products
`
`of the applicant and the prior art are the same, the applicant has the burden of showing that they
`
`are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`39.
`
`II. COMPOSITION CLAIMS — IF THE COMPOSITIONIS PHYSICALLY THE
`
`SAME, IT MUST HAVE THE SAME PROPERTIES
`
`AO.
`
`"Products of identical chemical composition cannot have mutually exclusive properties."
`
`In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 8
`
`and its properties are inseparable. Therefore, if the prior art teaches the identical chemical
`
`structure, the properties applicant discloses and/or claims are necessarily present.
`
`Conclusion
`
`41.
`
`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicantis
`
`remindedof the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
`
`from the mailing date of this action.
`
`In the event a first reply is filed within TWO MONTHSof
`
`the mailing date of this final action and the advisory action is not mailed until after the end of the
`
`THREE-MONTHshortenedstatutory period, then the shortened statutory period will expire on
`
`the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
`
`calculated from the mailing date of the advisory action.
`
`In no event, however, will the statutory
`
`period for reply expire later than SIX MONTHSfrom the date of this final action.
`
`42.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to DANIEL S GATEWOODwhosetelephone numberis (571)270-7958. The
`
`examiner can normally be reached on M-F 9-5:30.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant
`
`is
`
`encouraged
`
`to
`
`use
`
`the
`
`USPTO
`
`Automated
`
`Interview
`
`Request
`
`(AIR)
`
`at
`
`http://www.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/564,237
`Art Unit: 1729
`
`Page 9
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Ula Ruddock can be reached on 571-272-1481. The fax phone numberfor the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`
`Daniel S. Gatewood, Ph.D.
`Primary Examiner
`Art Unit 1729
`
`/DANIEL S GATEWOOD, Ph. D/
`Primary Examiner, Art Unit 1729
`
`