UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/319,623
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`12/16/2016
`
`Ryo KAMAI
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`NIIPP0184WOUS
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`1014
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
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`V0~ JIMMY
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`ART UNIT
`1723
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/19/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`15/319,623
`Examiner
`JIMMY K vo
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`Applicant(s)
`KAMAI et al.
`Art Unit
`1723
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 2/26/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1 and 3—7 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1 and 3—7 is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`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).
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`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:
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`a)D All
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`b)I:I Some**
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`c)CI None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190306a
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`

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`Application/Control Number: 15/319,623
`Art Unit: 1723
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`Page 2
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`DETAILED ACTION
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`Response to Amendment
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`In the amendment dated 2/26/2019, the following has occurred: Claims 1 and 3-4 have been
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`amended.
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`Claims 1 and 3-7 are pending. This communication is a Final Rejection in response tothe
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`"Amendment" and "Remarks" filed on 2/26/2019.
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`The text of those sections ofTitle 35, U.S. Code not included in this action can be found in a
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`prior Office action.
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`Claim Rejections - 35 USC § 102
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`Claims 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onishi et al., US
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`20130034793 (hereinafter, Onishi; cited on IDS filed 12/16/16).
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`As to Claim 1:
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`Onishi discloses a gasdiffusion electrode (Anode 2... cathode 2...”, [0057]) comprising:
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`a water-repellent layerincluding eitherone ofa woven fa bricand a non-woven fabric, and having water
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`repellency (see ”anode moisture-retaining layer 7... woven fiber, unwoven fiber, or any of
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`combinations ofthese examples...", [0108], Fig. 2; ”anode moisture-retaining layer 7 are desired to
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`have water repellency...”, [0113]);
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`a gas diffusion layer stacked on the water-repellent layer (see ”Anode 2... conductive porous
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`layers...”, [0059], ”An ode collector layer 5... anode conductive porous layer....", [0060], Fig. 2), wherein
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`the water-repellent layer has a bag-sha ped/rectangular structure (Fig. 2 — note the water repellency
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`layer 7 has a rectangular which is the same shaped as a bag-shaped structure); and
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`a catalyst layerdisposed opposite the water-repellent layer relative to the gas diffusion layer
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`(see ”The catalyst ofanode 2... supported on a conductor...”, [0058], ”generated in the catalyst layer
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`of anode 2...”, [0061], Fig. 2).
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`

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`Application/Control Number: 15/319,623
`Art Unit: 1723
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`As to Claim 3:
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`Page 3
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`Onishi discloses the water-repellent layeris a polyethylene non-woven fabric (see ”anode
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`moistu re-retaining layer 7... polyolefin-based resins such as polyethylene... woven fiber, unwoven
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`fiber, or any of combinationsofthese examples...", [0108], Fig. 2).
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`As to Claim 4:
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`Onishi discloses the catalyst layer is disposed on an outerside of the water-repellent layer (see
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`”The catalyst ofanode 2... su pported on a cond uctor...", [0058], ”generated in the catalyst layer of
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`anode 2...”, [0061], Fig. 2 — note the catalyst ofanode 2 is disposed outside ofthe water repellency
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`layer or the anode moisture-retaininglayer 7).
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`As to Claim 5:
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`Onishi discloses the water-repellent layer is in contact with the gas diffusion layer (see ”Anode
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`collector layer 5... anode conductive porous layer....", [0060], Fig. 2 — note the water-repellency layer 7
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`is in contact with anode collector layer 5).
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`As to Claim 6:
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`Onishi discloses an electrochemical device comprising the gas diffusion electrode according to
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`Claim 1 (see ”fuel battery... fuel battery cell... a membrane electrode assembly... an anode...",
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`Abstract).
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`As to Claim 7:
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`Onishi discloses a fuel cell comprising the gasdiffusion electrode according to Claim 1 (see ”fuel
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`battery... fuel battery cell... a membrane electrode assembly... an anode...”, Abstract).
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`

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`Application/Control Number: 15/319,623
`Art Unit: 1723
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`Page4
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`Response to Arguments
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`Applicant's arguments filed 2/26/2019 have been fully considered but they are not persuasive.
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`Applicant’s main contention is that Onishi does not disclose the bag-shaped structure that is at
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`least partially surrounds an internalvolume as argued on Page 3-4 ofthe remarks.
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`In response to
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`applica nt's argument that the references fail to show certain features of applica nt's invention, it is noted
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`that the features upon which applicant relies (i.e., ”bag structure is such that it at least partially
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`surrounds an internal volume”) are not recited in the rejected claim(s). Although the claims are
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`interpreted in light of the specification, limitations from the specification are not read into the claims.
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`See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, claims are to be
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`complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in
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`exceptional circumstances where there is no practicalway to definethe invention in words and where
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`it is more concise to incorporate by reference than duplicatinga drawing or table into the claim.
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`Incorporation by reference is a necessity doctrine, not for applica nt's convenience." Exparte Fressola,
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`27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
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`In this case, the applicant is
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`referencing instant Figure 1 as to distinguish the difference between the bag-sha ped structure of Onishi
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`and the claimed bag-sha ped structure instead of define the structure by words. As noted in page 3-4 of
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`the Remarks, the bag-sha ped structure can indeed be described by words such as a ”bag structure is
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`such that it at least partiallysurrounds an internal volume”.
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`For the reasons above, the applica nt's argument has been considered but they are not
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`persuasive.
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`

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`Application/Control Number: 15/319,623
`Art Unit: 1723
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`Page 5
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`Conclusion
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`Applica nt's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension oftime policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHSfrom
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHSof the mailing date
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`of this final action and the advisory action is not mailed until afterthe end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHSfrom the date ofthis final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to JIMMY K VO whose telephone number is (571)272-3242. The examiner can
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`normally be reached on Monday - Friday, 8 am to 6 pm EST.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule a n interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`Ifattemptsto reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Milton Cano can be reached on 5712721398. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information rega rdingthe status of an application may be obtained from the Patent Application
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`

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`Application/Control Number: 15/319,623
`Art Unit: 1723
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`Page 6
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`/J|MMYVO/
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`Primary Examiner, Art Unit 1723
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`