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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
`
`16/090,261
`
`09/30/2018
`
`Naoki YOSHIKAWA
`
`MIYOPO0144WOUS
`
`6791
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`DOUYETTE, KENNETHJ
`
`1725
`
`05/12/2020
`
`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):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-15 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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)C) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 9/30/2018 is/are:
`a)W) 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).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 9/30/18,7/3/19.
`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 20200403
`
`Application No.
`Applicant(s)
`16/090,261
`YOSHIKAWAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KENNETH J DOUYETTE
`1725
`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)C) Responsive to communication(s) filed on
`CJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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.
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing outand distinctlyclaiming the subject matter whichthe inventor or a jointinventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specifications hall conclude with one or more claims particulary pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`2.
`
`Claims 6 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
`
`applicant regards as the invention.
`
`3.
`
`Claims 6 and 12 each recite the limitation "the graphene layers"in line 3,
`
`respectively. There is insufficient antecedent basis for this limitation in the claim. For
`
`the purposesofthis office action, “the graphene layers” will be interpreted as “graphene
`
`layers”.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, orin public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 3
`
`5.
`
`Claims 1, 7-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Suzuki et al. (WO 2015/122125, citations from US 2016/0351937).
`
`Regarding claim 1, Suzuki et al. discloses in Figs 1-7, an electrode (ref 4)
`
`comprising: a first diffusion layer (ref 41) having water repellency and oxygen
`
`permeability ([0038]-[0039]); and a seconddiffusion (ref 42) layer that supports a
`
`catalyst ([0040]), the second diffusion layer (ref 42) being laminated (Figs 1-2, [0038])
`
`on thefirst diffusion layer (ref 41), wherein the second diffusion layer (ref 42) includes a
`
`carbon material having a sheet shape ([0064], Figs 1-2).
`
`Regarding claim 7, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses the catalyst is an oxygen reduction catalyst ([0038]-[0040],
`
`[0060], [0064], [0070)).
`
`Regarding claim 8, Suzuki et al. discloses in Figs 1-7, a fuel cell (ref 1) comprising:
`
`an anode (ref 3) that supports microorganisms ([0027]); and a cathode (ref 4) being the
`
`electrode (ref 4) according as set forth above.
`
`Regarding claim 9, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses thefirst diffusion layer (ref 41) constituting the cathode (ref 4)
`
`is disposed to contact a gas containing oxygen ([0031], [0039]), and the second
`
`diffusion layer (ref 42) is disposed to contacta liquid to be treated (Fig 1, [0032], [0033],
`
`in ref 2).
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 4
`
`Regarding claim 10, Suzuki et al. disclosesall of the claim limitations as set forth
`
`above and also discloses the liquid to be treated contains organic matter (Fig 1, [0032],
`
`[0033],
`
`in ref 2).
`
`Regarding claim 11, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses the anode (ref 3) includes an electrically conductive porous
`
`sheet ([0034]-[0035]).
`
`Regarding claim 13, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses an ion transfer layer (ref 5) that permeates hydrogen ions, the
`
`ion transfer layer being provided between ([0018], [0036], Figs 1-2) the anode(ref 3)
`
`and the cathode(ref 4).
`
`Regarding claim 14, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses the ion transfer layer (ref 5) includes at least one selected
`
`from the group consisting of a porous sheet, a woven fabric sheet and a nonwoven
`
`fabric sheet ([0036], [0037]).
`
`Regarding claim 15, Suzuki et al. discloses in Figs 1-7, a water treatment device
`
`(Abstract, [0002], [0018], ref 1) comprising: an anode (ref 3) that supports
`
`microorganisms purifying a liquid to be treated ([0034], [0035], [0032], [0033], Fig 1);
`
`and a cathode(ref 4) being the electrode (ref 4) as set forth above.
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 5
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth insection 102, if the differences between the
`claimed invention and the prior artare 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
`ordinaryskill inthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied 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 prior art.
`
`2. Ascertaining the differences between the prior art and the claims at 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.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`ownedasof the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 6
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`9.
`
`Claims 2, 6, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Suzuki et al. (WO 2015/122125, citations from US 2016/0351937) as applied to claim 1
`
`above, and further in view of Hayashi et al. (JP 2008/059917, see Machine Translation).
`
`Regarding claims 2 and 12, Suzuki et al. discloses all of the claim limitations as set
`
`forth above and also discloses the second diffusion (ref 42) includes graphite ([0061])
`
`but does not explicitly disclose graphene layers in the graphite are arrayed along a
`
`direction perpendicular to alamination direction of the first diffusion layer and the
`
`seconddiffusion layer, and the graphene layers in the graphite are arrayed along a
`
`direction perpendicular to a lamination direction of the anode and the cathode
`
`Hayashi et al. discloses in Figs 1-11, a fuel cell including a cathode having gas
`
`diffusion layer (ref 31) comprising graphite ([0081]-[0085]). The graphite has a surface
`
`orientation including having at least some particles/sheets perpendicular to lamination
`
`direction (Fig 10) of the gas diffusion layer with the cathode (Fig 10). This configuration
`
`allows controllability of fluid draining/permeating thereby enhancing overall electrode
`
`structural integrity and performance ([0081]-[0085)).
`
`Hayashi et al. and Suzuki et al. are analogous since both deal in the same field of
`
`endeavor, namely, GDL layers for fuel cells.
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`incorporate the orientation of the graphite/graphene sheets/layers of Hayashi etal. into
`
`the structure of Suzuki et al. to allow controllability of fluid draining/permeating thereby
`
`enhancing overall electrode structural integrity and performance
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 7
`
`10.
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suzukietal.
`
`(WO 2015/122125, citations from US 2016/0351937) as applied to claim 1 above.
`
`Regarding claim 6, Suzuki et al. discloses all of the claim limitations as set forth
`
`above and also discloses the second diffusion (ref 42) includes graphite ([0061]) and
`
`has catalyst therein ([0040], [0060], [0064], [0070], [0074]). Since the gas diffusion
`
`layer has graphite and is porous, it would have been obvious to one of ordinary skill in
`
`the art at the time offiling that the catalyst material would be distributed throughout the
`
`porous graphite structure due to the manufacturing method of the electrode comprising
`
`the gas diffusion layer ([0040], [0060], [0064], [0070], [0074]).
`
`Further,
`
`it would have been obvious to one of ordinary skill in the art at the time of
`
`filing that graphite forms a layered structure, comprising multiple stacked graphene
`
`layers.
`
`11.
`
`Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Suzuki et al. (WO 2015/122125, citations from US 2016/0351937) in view of Hayashi et
`
`al. (JP 2008/059917, see Machine Translation) as applied to claim 2 above, and further
`
`in view of Sharivker et al. (US 2003/0027021).
`
`Regarding claims 3 and 4, modified Suzuki et al. disclosesall of the claim limitations
`
`as set forth above but does not explicitly disclose the air permeance or density values of
`
`the second gas diffusion layer as set forth in the claims. As the electrode support and
`
`porousness are variables that can be modified, among others, by adjusting said
`
`density/permeability of said gas diffusion layer (see Sharivker et al., [0040]), with said
`
`electrode support and porousness both varying as the density/permeability is varied, the
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 8
`
`precise density/permeability would have been considered a result effective variable by
`
`one having ordinary skill in the art at the time the invention was filed. As such, without
`
`showing unexpected results, the claimed density/permeability cannot be considered
`
`critical. Accordingly, one of ordinary skill in the art at the time the invention wasfiled
`
`would have optimized, by routine experimentation,
`
`the density/permeability in the
`
`apparatus of Suzuki et al. as taught by Sharivker et al. to obtain the desired balance
`
`between the electrode support and porousness (/n re Boesch, 617 F.2d. 272, 205
`
`USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of
`
`the claim are disclosed in the prior art, discovering the optimum or workable ranges
`
`involves only routine skill in the art. (/n re Aller, 105 USPQ 223).
`
`12.
`
`Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Suzuki et al. (WO 2015/122125, citations from US 2016/0351937) in view of Hayashi et
`
`al. (JP 2008/059917, see Machine Translation) as applied to claim 2 above, and further
`
`in view of Kimkelaar et al. (US 2004/0001993).
`
`Regarding claims 3 and 5, modified Suzuki et al. discloses all of the claim limitations
`
`as set forth above but does not explicitly disclose the air permeance orresistivity values
`
`of the second gas diffusion layer as set forth in the claims. As the electrode
`
`performance and cost are variables that can be modified, among others, by adjusting
`
`said permeability and resistivity (See Kinkelaar et al., [0065], [0052]), with said electrode
`
`performance and cost both varying as the permeability and resistivity is varied, the
`
`precise permeability and resistivity would have been considered a result effective
`
`variable by one having ordinary skill in the art at the time the invention wasfiled. As
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 9
`
`such, without showing unexpected results, the claimed permeability and resistivity
`
`cannot be consideredcritical. Accordingly, one of ordinary skill in the art at the time the
`
`invention was filed would have optimized, by routine experimentation,
`
`the permeability
`
`and resistivity in the apparatus of Suzuki et al. as taught by Kinkelaar et al. to obtain the
`
`desired balance between the electrode performance and cost (/n re Boesch, 617 F.2d.
`
`272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general
`
`conditions of the claim are disclosedin the prior art, discovering the optimum or
`
`workable ranges involves only routine skill in the art. (/n re Aller, 105 USPQ 223).
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J DOUYETTE whosetelephone numberis
`
`(571)270-1212. The examiner can normally be reached on Monday - Friday 8A - 4P
`
`EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone number for
`
`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
`
`

`

`Application/Control Number: 16/090,26 1
`Art Unit: 1725
`
`Page 10
`
`published applications may be obtained from either Private PAIR or Public PAIR.
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`
`/KENNETH J DOUYETTE/
`Primary Examiner, Art Unit 1725
`
`