UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`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
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`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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`08/06/2019
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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.
`16/070,285
`Examiner
`Kwang 8 Han
`
`Applicant(s)
`YOSHIKAWA et al.
`Art Unit
`AIA (FITF) 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 29 April 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*
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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 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:J Some**
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`c)C] 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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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date M.
`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 20190725
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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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`Detailed Action
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`2.
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`The Applicant’s amendment/request for reconsideration filed on April 29, 2019 was
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`received. Claim 1 was amended.
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`The text of those sections of Title 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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`3.
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`The objections to the disclosure is withdrawn in view of the amendment to the title.
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`Specification
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`Double Patenting
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`4.
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`The provisional claim rejection on the grounds of nonstatutory double patenting as being
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`unpatentable over claims 1 and 13 of copending application 15/560990 in view of Suzuki et al.
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`has been withdrawn in view of Applicant’s arguments.
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`Claim Rejections - 35 USC § 1 12
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`5.
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`The claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, on claims 1-4 are withdrawn, because independent claim 1 has been amended.
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`Claim Rejections - 35 USC § 102
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`6.
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`The claim rejections under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Suzuki
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`et al. on claims 1, 3, and 4 are withdrawn, because independent claim 1 has been amended.
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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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`Claim Rejections - 35 USC § 103
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`7.
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`The claim rejection under 35 U.S.C. 103 as unpatentable over Suzuki as applied to claim
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`1 and further in view of Yoshida et al. on claim 2 is withdrawn, because independent claim 1 has
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`been amended.
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`8.
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`Claims 1, 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki
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`et al. (WO 2015/122125 using US 2016/0351937 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 (electric conductive material
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`including carbon substance where at least one of the materials selected including carbon fiber
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`such as graphite felt, carbon wool, carbon woven material or stainless steel mesh) which is an
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`electrical conductive sheet having oxygen permeability [0061-0062]; a porous body layer
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`(supporting body with porous structure) that is laminated on the electric conductor layer [0063]
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`and supports a catalyst therein (carbon material doped with metal atoms) [0040, 0064]; and a
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`water-repellent layer (water repellent layer 41; see reproduced figure 1 below), the water-
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`repellent layer being laminated on a surface of the electric conductor layer, the surface of the
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`electric conductor layer being opposite of a surface of the electric conductor layer in contact with
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`the porous body layer, or the water-repellent layer being laminated on a surface of the porous
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`body layer, the surface being opposite of a surface of the porous body layer in contact with the
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`electric conductor layer (the supporting body with the electrical conductive material provided on
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`its surface allows for the supporting body layer to be limited to either be in a layer in contact with
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`or on the surface opposite to the water repellent layer) [0062, 0063];
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`a negative electrode that holds microorganisms [0018, 0035]; and
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`an electrolysis solution [0032],
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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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`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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`wherein the porous body layer (supporting body with porous structure that is non-
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`conductive or electrically conductive) is a sheet having a plurality of pores (e.g. carbon paper,
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`carbon fiber, ceramics, plastics, etc.) [0063], and
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`wherein the catalyst is oxygen reduction catalyst which is a carbon-based material
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`doped with metal atoms [0064] but does not explicitly teach the pores of the porous body layer
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`holds the particles of the catalyst in insides of the pores.
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`However, Suzuki recognizes the carbon material of the gas diffusion layer can include
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`more than one material selected from the group including carbon materials which serve as the
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`catalyst which includes a plurality of layers [0048] where the carbon material is provided on a
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`surface of the support layer (porous body) [0063].
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`It would have been obvious to one of
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`ordinary skill in the art when the invention was effectively filed that the options presented by
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`Suzuki would provide for the carbon material which is supported on the surface of the porous
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`body to include some degree of penetration into the pores sufficiently providing for some of the
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`carbon material to enter into the pores meeting the limitations of the claim. The courts have
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`held that claiming of a property or characteristic which is inherently present in the prior art does
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`not necessarily make the claim patentable.
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`In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
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`433 (CCPA 1977). See MPEP 2112 and 2112.01. When the Examiner has provided a sound
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`bases for believing that the products of the applicant and the prior art are the same, the burden
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`of proof is shifted to the applicant to prove that the product shown in the prior art does not
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`possess the characteristics of the claimed product.
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`In re Spada, 911 F.2d 705, 709, 15
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`USPQZd 1655, 1658 (Fed. Cir. 1990).
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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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`
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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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`9.
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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 view of 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 6
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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 um or more
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`and 100 um 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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`Response to Arguments
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`10.
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`Applicant's arguments have been fully considered but they are not persuasive.
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`Applicant’s principal arguments are:
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`(a) Suzuki fails to disclose or suggest that the electrical conductive material holds the catalyst
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`particles inside pores thereof.
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`In response to Applicant’s arguments, please consider the following comments:
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`(a) As discussed in the rejection above, while the prior art does not explicitly teach the porous
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`body of the electrical conductive material, these properties are considered inherent in the prior
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`art barring any differences shown by objective evidence between (the object) porous body
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`disclosed in the prior art and the applicant. As (the object) electrical conductive material
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`supported by a porous supporting body [0063] taught by the prior art and the applicant are
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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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`identical within the scope of claim 1, Suzuki teaches inherently that a porous body with pores
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`supporting a catalyst on its surface is similar to the description of the porous body of the instant
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`application [0029 of instant application]. The courts have held that claiming of a property or
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`characteristic which is inherently present in the prior art does not necessarily make the claim
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`patentable.
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`In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP
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`2112 and 2112.01. When the Examiner has provided a sound bases for believing that the
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`products of the applicant and the prior art are the same, the burden of proof is shifted to the
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`applicant to prove that the product shown in the prior art does not possess the characteristics of
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`the claimed product.
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`In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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`Conclusion
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`11.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant
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`is reminded of the extension of time 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
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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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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`Contact/Correspondence Information
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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)272-1552. The examiner
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`can normally be reached on Monday - Friday, 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 (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Barbara Gilliam can be reached on (571) 272-1330. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`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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`applications is available through Private PAIR only. For more information about the PAIR
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`Kwang Han
`Examiner
`
`Art Unit 1727
`
`/Kwang Han/
`Examiner, Art Unit 1727
`
`/BARBARA L GILLIAM/
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`Supervisory Patent Examiner, Art Unit 1727
`
`