UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/070,285
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`07/15/2018
`
`Naoki YOSHIKAWA
`
`MIYOP0141WOUS
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`1049
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`HAN KWANG S
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`ART UNIT
`1727
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/07/2019
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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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`Off/09 A0170” Summary
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`Application No.
`16/070,285
`Examiner
`Kwang S Han
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`Applicant(s)
`YOSHIKAWA et al.
`Art Unit
`AIA Status
`1727
`Yes
`
`- 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 15 July 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`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*
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`5)
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`Claim(s) fl 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) fl 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 aflowabte. 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.
`
`11). The drawing(s) filed on 15 July 2018 is/are: a). accepted or b)[:] 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).
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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). All
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`b)D Some**
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`C)D 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)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Datew.
`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 20190129
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`2.
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Priority
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`Specification
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`3.
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`The disclosure is objected to because of the following informalities: The title is
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`suggested to be more descriptive such as “MICROBIAL FUEL CELL WITH CONDUCTIVE
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`LAYER”
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`Appropriate correction is required.
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`Double Parenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timevvise extension of the “right to exclude” granted by a patent and to prevent
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`possible harassment by multiple assignees. A nonstatutory double patenting rejection is
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`appropriate where the conflicting claims are not identical, but at least one examined application
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`claim is not patentably distinct from the reference claim(s) because th e examined application
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`claim is either anticipated by, or would have been obvious over, the reference claim(s). See,
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`e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d
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`1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
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`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d
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`438, 164 USPQ 619 (CCPA 1970); In re Thoringfon, 418 F.2d 528, 163 USPQ 644 (CCPA
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`1969).
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 3
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1 .321(d) may be
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`used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`examined application, or claims an invention made as a result of activities undertaken within the
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`scope of ajoint research agreement. See MPEP § 717.02 for applications subject to
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`examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
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`See MPEP §§ 706.02(l)(1) - 706.02(l)(3) forapplications not subject to examination underthe
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`first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance
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`with 37 CFR 1 .321 (b).
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`The USPTO Internet website contains terminal disclaimer forms which may be used.
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`Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the
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`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AlA/25, or PTO/AlA/26)
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`should be used. A web-based eTerminal Disclaimer may be filled out completely online using
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`web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and
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`approved immediately upon submission. For more information about eTerminal Disclaimers,
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`refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`4.
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`Claim 1
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`is provisionally rejected on the ground of nonstatutory double patenting as being
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`unpatentable overclaims 1 and 13 of copending Application No. 15/560990 in view of Suzuki et
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`al. (WO 2015/122125 using US 2016/0351 937 for translation and citation).
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`The co-pending application in claims 1 and 13 disclose a microbial fuel cell provided with
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`a water-repellent layer, an electric conductor layer, and a filter layer (porous body layer) on a
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`surface of the electric conductor layer opposite to the surface of the water repellent layer.
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`Suzuki teaches microbial fuel cells include a negative electrode [001 8, 0035],
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`electrolysis solution immersing the porous body and negative electrode [0032] and the water
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`repellent layer exposed to a gas phase [0031].
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`It would have been obvious to one of ordinary
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 4
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`skill in the art when the invention was effectively filed to include a negative electrode,
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`electrolysis solution, and the water-repellent layerexposed to a gas in the claims of the co-
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`pending application because Suzuki recognizes these elements provide for a functioning
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`microbial fuel cell.
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`This is a provisional nonstatutory double patenting rejection.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall concludewith one or more claims particularly
`pointing out and distinctlyclaiming the subject matterwhich the inventoror a joint inventor
`regards as the invention.
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specifications hall conclude with one or more claims particularlypointing outand distinctly
`claiming the subject matterwhich the applicant regards as his invention.
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`5.
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`Claims 1-4 are rejected under35 U.S.C. 1 12(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or ajoint inventor, or for pre-AIA the applicant regards as the
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`invention.
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`Independent claim 1 recites “water-repellent layerthat is laminated on a surface of the
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`electric conductor layer..... the porous body layer, or a surface of the porous body layer.
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`It is
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`unclear and indefinite as to whether the water-repellent layer is limited to being laminated on a
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`surface of the electric conductor layer only or alternatively to the surface of the porous body
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`layer. For the purpose of examination it will be assumed to be in the alternative as supported by
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`applicants Figures 4 and 5 of the instant application. All claims dependent are also rejected for
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`the same.
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 5
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1 ) the claimed inventionwas patented, described in a printed publication, or in public use,
`on sale orotherwise available to the public before the effective filing date of the claimed
`invention.
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`(a)(2) the claimed inventionwas described in a patent issued undersection 1 51 , or in an
`application for patent published ordeemed published undersection 122(b), in which the
`patentor application, as the case maybe, names another inventor and was effectivelyfiled
`before the effective filing date of the claimed invention.
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`6.
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`Claims 1,3, and 4 are rejected under35 U.S.C. 102(a)(1) as being anticipated by Suzuki
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`et al. (WO 2015/122125 using US 201 6/0351937 for translation and citation).
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`Regarding claim 1, Suzuki discloses a microbial fuel cell (Abstract) comprising: a
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`positive electrode (4) comprising: an electric conductor layer (wire providing conduction
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`between portions of the gas diffusion layer; conductive supporting body as current col lector)
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`[0050, 0062, 0063]; a porous body layer (porous electrical conductive material) that is laminated
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`on the electric conductor layer [0063] and supports a catalyst therein (gas diffusion layer 42)
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`[0040, 0063]; and a water-repellent layer (water repellent layer 41 ; see reproduced figure 1
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`below) that is laminated on a surface of the electric conductor layer, the surface being opposite
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`of a surface of the electric conductor layer in contact with the porous body layer, or a surface of
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`the porous body layer, the surface being opposite of a surface of the porous body layer in
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`contact with the electric conductor layer (the supporting body as a currentcollectorvvith the
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`electrical conductive material provided on its surface allows for the supporting body layer to be
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`limited to either be in a layer in contact with or on the surface opposite to the water repellent
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`layer) [0062, 0063];
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`a negative electrode that holds microorganisms [0018, 0035]; and
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`an electrolysis solution [0032],
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`Page 6
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`wherein the porous body layer and the negative electrode are immersed in the
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`electrolysis solution [0032], and at least a part of the water-repellent layer is exposed to a gas
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`phase [0031].
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`A.,..Qmung-AM5,1,.3"”.133}2/.‘
`M-ta-zgrmv
`
`vw
`
`‘WM»:1‘A.“3‘
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`Regarding claim 3, Suzuki discloses the microbial fuel cell according to claim 1 , further
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`comprising: an ion transfer layer (separating membrane 5) that is provided between the positive
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`electrode and the negative electrode and has proton permeability [0036, 0037].
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`Regarding claim 4, Suzuki discloses the microbial fuel cell according to claim 1 , wherein
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`the porous body layer is made of a nonwoven fabric [0061].
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 7
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`Claim Rejections - 35 USC § 103
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`This application currently names joint inventors. In considering patentability of the claims
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`the examiner presumes that the subject matter of the variou 3 claims was commonly owned as
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`of the effective filing date of the claimed invention(s) absent any evidence to the contrary.
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`Applicant is advised of the obligation under 37 CFR 1 .56 to point out the inventor and effective
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`filing dates of each claim that was not commonly owned as of the effective filing date of the later
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`invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any
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`potential 35 U.S.C. 102(a)(2) priorart against the later invention.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in s ection 102, if the differences between the
`claimed invention and the priorartare such that the claimed invention as awhole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentabilitys hall notbe
`negated by the manner in which the invention was made.
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`The factual inquiries set forth in Graham v. John Deere 00., 383 US. 1, 148 USPQ 459
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`(1966), thatare applied for establishing a background fordetermining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`7.
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`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki as applied to
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`claim 1 above, and further in viewof Yoshida et al. (US 2005/0214630).
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`The teachings of Suzuki as discussed above are herein incorporated.
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`

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`Application/Control Number: 16/070,285
`Art Unit: 1727
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`Page 8
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`Regarding claim 2, Suzuki is silent towards an arithmetic mean roughness Ra of the
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`surface of the electric conductor layer in contact with the porous body layer is 0.1 pm or more
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`and 100 pm or less.
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`Yoshida teaches surfaces of layer with the fuel cell such as the gas diffusion layer
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`(Abstract) whether facing a water repellent layer on not [0029] where the surface is modified to
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`allow for improvements to the anti-flooding characteristics [0033] including having a preferred
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`arithmetic mean surface roughness between 3 to 6 microns allows for sufficient gas permeability
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`to be maintained [0097-0101].
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`It would have been obvious to one of ordinary skill in the art
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`when the invention was effectively filed to vary the surface roughness of the surface of the
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`electric conductor layer of Suzuki because Yoshida recognizes that layers within the fuel cell
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`structure which face a water repellent layer can have their surface roughness varied including
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`from between 3 to 6 microns (Ra) in order to allow for the benefit of having anti -flooding
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`characteristics and sufficient gas permeability.
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`Con tact/Correspon den ce In formation
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`8.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Vito (EP 2770565) disclose a gas diffusion electrode (Abstract) for a biological fuel
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`cell [0083] which includes a porous layer, water repellent layer, and a current collector [0093].
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Kwang S Han whose telephone number is (571 )272-1 552. The examiner
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`can normally be reached on Monday - Thursday and alternating Fridays, 8am - 5pm.
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`Examiner interviews are available via telephone, in-person, and video conferencing
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`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AlR) at
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`http://www.uspto.gov/interviewpractice.
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`