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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
`
`17/355,263
`
`06/23/2021
`
`KOSUKE NUNOO
`
`083710-3436
`
`5556
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CONLEY,OLK
`
`1752
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/19/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-30 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 2-13,16 and 20-21 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1,14-15,17-19 and 22-30is/are rejected.
`S)
`) © 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)() The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 6/23/21 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230515
`
`Application No.
`Applicant(s)
`17/355,263
`NUNOOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`HELEN Ol CONLEY
`1752
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 6/23/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election of Group IV, modified embodiment of |, claims 1, 14, 15, 17-
`
`19, 22-30 to Fig. 36 and Fig. 37 in the reply filed on 4/13/23 is acknowledged. Because
`
`applicant did not distinctly and specifically point out the supposederrorsin the
`
`restriction requirement, the election has been treated as an election without traverse
`
`(MPEP § 818.01(a)).
`
`Priority
`
`3.
`
`Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C.
`
`119 (a)-(d).
`
`Information Disclosure Statement
`
`4.
`
`The information disclosure statement (IDS) submitted on 6/23/21, 5/4/22 are
`
`being considered by the examiner.
`
`Drawings
`
`5.
`
`The Drawings submitted on 6/23/21 has been considered.
`
`Claim Rejections - 35 USC § 112
`
`6.
`
`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 out and distinctlyclaiming the subject matter which the inventor ora 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.
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 3
`
`7.
`
`Claim 25 is 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 applications subject
`
`to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, the
`
`limitation “at least one selected from the group consisting of the fuel electrodesidefiller
`
`and the air electrode sidefiller is a porous material,” is unclear. It is unclear what exactly
`
`the limitation is referring to that would limit “at least one is selected from the groups
`
`consisting of the fuel electrode sidefiller and the air electrode sidefiller is a porous
`
`material.” Appropriate corrections or further clarification is required.
`
`8.
`
`Claim 26 is 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 applications subject
`
`to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, the
`
`limitation “at least one selected from the group consisting of the fuel electrode structural
`
`support and the air electrode side structural support includes ceramic member
`
`containing the electrolyte material,” is unclear. It is unclear what exactly the limitation is
`
`referring to that would limit “at least one is selected from the groups consisting of the
`
`fuel electrode sidefiller and the air electrode sidefiller is a porous material.” Appropriate
`
`corrections or further clarification is required.****
`
`9.
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 4
`
`Claims Analysis
`
`6.
`
`It is noted that claims 14-30 comprises product-by-process claim limitation such
`
`as “are laminated in this order.” “Even though product-by-process claims are limited by
`
`and defined by the process, determination of patentability is based on the productitself.
`
`The patentability of a product does not depend on its method of production.
`
`If the
`
`productin the product-by-process claim is the same as or obvious from a productof the
`
`prior art, the claim is unpatentable even though the prior product was made by a
`
`different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
`
`1985). Since the membraneelectrode assembly is the same asto that of the
`
`Applicant's, Applicant's process is not given patentable weight in this claim.
`
`Claim Rejections - 35 USC § 102
`
`6.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
`
`not be considered a new groundof rejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`7.
`
`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 —
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 5
`
`(a)(1) the claimed invention waspatented, 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.
`
`(a)(2) the claimed invention was described in a patentissued under section 151, orinan
`application for patent published or deemed published undersection 122 (b), in which the
`patentor application, as the case maybe, names anotherinventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`8.
`
`Claim(s) 1, 27, 28, 30 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by
`
`Yasui (JP2013201061).
`
`Regarding claim 1 and 30, The Yasui reference discloses a solid oxide fuel cell
`
`comprising membrane electrode assembly comprising a solid electrolyte membrane
`
`(14) containing an electrolyte material and an electrode in contact with a reactant gas,
`
`wherein the electrode includes a structural support including a ceramic member(12),
`
`and a pore extending from a boundary surface in contact with the reactant gas toward
`
`the solid electrolyte membrane in the structural support andfilled withafiller having at
`
`least one selected from the group consisting of hydrogen oxidation activity, oxygen
`
`reduction activity, proton reduction activity, steam decomposition activity, and oxide ion
`
`oxidation activity (anode materials, NiO andyttria stabilized zirconia and Scandia
`
`stabilized zirconia).
`
`Regarding claims 27 and 28, The Yasui reference discloses the pore has a cavity
`
`that has no tortuosity.
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 6
`
`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
`
`not be considered a new groundof rejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`10.—The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`Apatent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`invention is not identicallydisclosed as set forth in section 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.
`
`11.
`
`Claim(s) 14, 15, 17-19, 22-24, 26,
`
`is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Yasui (JP2013201061) in view of Inagaki (JP 2007035435).
`
`Regarding claims 14, the Yasui reference discloses the claimed rejection above
`
`and further incorporated herein. The Yasui reference further discloses the invention is
`
`for a solid oxide fuel cell comprising the reactant gas is a hydrogen-containing gas and
`
`an oxidant gas. The electrode includes a fuel electrode in contact with the hydrogen-
`
`containing gas and an air electrode in contact with the oxidant gas. The air electrode,
`
`the solid electrolyte membrane, and the fuel electrode are in contact, respectively. The
`
`fuel electrode includes a fuel electrode side structural support as the structural support,
`
`and a fuel electrode side pore. The pore, extending from a fuel electrode side boundary
`
`surface in contact with the hydrogen-containing gas toward a solid electrolyte
`
`membrane side in the fuel electrode side structural support andfilled with a fuel
`
`electrodesidefiller with hydrogen oxidation activity and electrical conductivity. The
`
`Yasui reference discloses the cathode is a perskovite but is silent in disclosing the air
`
`electrode includes an air electrode side structural support as the structural support, and
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 7
`
`an air electrode side pore, as the pore, extending from an air electrode side boundary
`
`surface in contact with the oxidant gas toward the solid electrolyte membrane side in the
`
`air electrode side structural support andfilled with an air electrode sidefiller with oxygen
`
`reduction activity and electrical conductivity. The Inagaki reference discloses a solid
`
`oxide fuel cell comprising an anode of NiO/YSZ, a per perovskite oxide for both the
`
`electrode and cathode which is the same asthe teachings of the Yasui reference. The
`
`Inagaki reference also teaches the air electrode includes an air electrode side structural
`
`support as the structural Support, and an air electrode side pore, as the pore (6),
`
`extending from an air electrode side boundary surface in contact with the oxidant gas
`
`toward the solid electrolyte membrane side (3)
`
`in the air electrode side structural
`
`support andfilled with an air electrode sidefiller with oxygen reduction activity and
`
`electrical conductivity. The structure of the supported air electrode would support the
`
`mechanical strength of a solid electrolyte. Therefore,
`
`it would have been obvious before
`
`the effective filing date of the invention to incorporate air electrode including an air
`
`electrode side structural support as the structural support, and an air electrode side
`
`pore, as the pore (6), extending from an air electrode side boundary surface in contact
`
`with the oxidant gas toward the solid electrolyte membraneside (3)
`
`in the air electrode
`
`side structural support andfilled with an air electrode sidefiller with oxygen reduction
`
`activity and electrical conductivity disclosed by the Inagaki reference for the air
`
`electrode of the solid oxide fuel cell disclosed Yasui reference in order to strengthen the
`
`electrolyte and compromise structural integrity that may hinder electrochemical reaction.
`
`Regarding claim 15, the Yasui in view of Inagaki reference discloses the fuel
`
`electrode side pore includesafirst fuel electrode side opening on the fuel electrode side
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 8
`
`boundary surface into which the hydrogen-containing gas flows, and a second fuel
`
`electrode side opening opposite the first fuel electrode side opening at an end of the
`
`fuel electrode side pore on the solid electrolyte membrane side (Yasui: Fig. 1), and the
`
`air electrode side pore includesa first air electrode side opening on the air electrode
`
`side boundary surface into which the oxidant gas flows, and a second air electrode side
`
`opening opposite the first air electrode side opening at an end of the pore on the solid
`
`electrolyte membraneside (Inagaki; Fig. 2).
`
`Regarding claim 17, the Yasui and the Inagaki reference discloses a plane
`
`formed by a periphery of the second fuel electrode side opening includes a plane
`
`formed by a periphery of the second air electrode side opening when viewed from the
`
`top in alaminating direction of the membrane electrode assembly (Yasui: Fig. 1,
`
`Inagaki; Fig. 2 wherein all sides or plane periphery are the same when viewedin
`
`stacked direction).
`
`Regarding claim 18, the Yasui and the Inagaki reference discloses wherein a plane
`
`formed by a periphery of the second air electrode side opening includes a plane formed
`
`by a periphery of the second fuel electrode side opening when viewed from the top in a
`
`laminating direction of the membrane electrode assembly (Yasui: Fig. 1, Inagaki; Fig. 2
`
`wherein all sides or plane periphery are the same when viewed in stacked direction).
`
`Regarding claim 19, the Yasui in view of the Inagaki reference discloses the
`
`claimed invention above and further incorporated herein. The Yasui and the Inagaki
`
`references discloses that various shapes and arrangement of through holes can be
`
`used to support the cathode side and the air side electrode (Yasui and Inagaki; Figs. 3)
`
`but does not specifically disclose a periphery of the second fuel electrode side opening
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 9
`
`of the fuel electrode side pore and a periphery of the second air electrode side opening
`
`of the air electrode side pore are arranged so asto at least partly overlap when viewed
`
`from the top in a stacking direction of the membrane electrode assembly. However,
`
`it
`
`would have been obvious to one having ordinary skill in the art at the time the invention
`
`was made a periphery of the second fuel electrode side opening of the fuel electrode
`
`side pore and a periphery of the secondair electrode side opening of the air electrode
`
`side pore are arranged so asto at least partly overlap when viewed from the top in a
`
`stacking direction of the membrane electrode assembly, since it has been held that
`
`rearranging parts of an invention involved only routine skill in the art MPEP 2144.04 VI
`
`In the event that the combination does not teach the a periphery of the second
`
`fuel electrode side opening of the fuel electrode side pore and a periphery of the second
`
`air electrode side opening of the air electrode side pore are arranged so asto atleast
`
`partly overlap when viewed from the top in a stacking direction of the membrane
`
`electrode assembly with sufficient specificity, it would have been indeed adequate and
`
`obvious, absent a showing of unexpected results and criticality.
`
`Regarding claim 22, the Yasui and the Inagaki reference discloses the fuel
`
`electrode side filler contains Ni.
`
`Regarding claim 23, the Yasui and the Inagaki reference discloses wherein the
`
`fuel electrode sidefiller is a cermet (a ceramic).
`
`Regarding claim 24, the Yasui in view of the Inagaki reference disclosesthe air
`
`electrode sidefiller is a compound containing at least one element selected from the
`
`group consisting of Mn, Fe, Co, and Ni (LaMnQs).
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 10
`
`Regarding claim 26, the Yasui in view of the Inagaki reference discloses the MEA
`
`wherein at least one selected from the group consisting of the fuel electrode side
`
`structural support and the air electrode side structural support includes the ceramic
`
`membercontaining the electrolyte material.
`
`12.
`
`Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yasui (JP2013201061) in view of Inagaki (JP 2007035435) in further view of Yamashita
`
`et al. (EP 1453128)
`
`Regarding claim 25, the Yasui in view of the Inagaki reference disclose the
`
`claimed invention above and further incorporated herein. Yasui in view of the Inagaki
`
`reference further discloses that the fuel electrode is made of ceramic. The Yasui in
`
`view of the Inagaki reference is silent in disclosing that the MEA wherein the ceramic
`
`material is porous, however, the Yamashita reference discloses thatit is known that at
`
`least the fuel electrode side material is known to be porous ceramic materials (after
`
`“Fuel cell layer 11’). Therefore,
`
`it would have been obvious before the effective filing
`
`date of the invention to incorporate the porous ceramic material The substitution of
`
`known equivalent structures involves only ordinary skill in the art. /n re Fout 213 USPQ
`
`532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ
`
`618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a
`
`structure already known in the prior art that is altered by the mere substitution of one
`
`element for another knownin the field, the combination must do morethan yield a
`
`predictable result. KSR v. Teleflex
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 11
`
`13.
`
`Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yasui (JP2013201061) in view of Inagaki (JP 2007035435) in further view ofIrvin etal.
`
`(W003/036746)
`
`Regarding claim 29, the Yasui in view of the Inagaki reference discloses the
`
`claimed invention above and further incorporated here. The Yasui reference discloses
`
`the electrolyte for a solid oxide fuel cell is scandia stabilized zirconia or yttria zirconia,
`
`which is anion conductor butis silent in an electrolyte material with proton conductivity.
`
`However, the Irvine reference disclose the electrolyte for solid oxide fuel cell should be
`
`an ionically conducting oxide capable of transporting either oxygen ions or protons or
`
`both. Typically, material in addition to scandia stabilized zirconia or yttria zirconia are
`
`oxide proton conductors such as barium cerate, strontium zirconate and other
`
`perovskite. Therefore,
`
`it would have been obvious in the art before the effective filing
`
`date of the invention to substitute known equivalent components. The substitution of
`
`known equivalent structures involves only ordinary skill in the art. /n re Fout 213 USPQ
`
`532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ
`
`618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a
`
`structure already known in the prior art that is altered by the mere substitution of one
`
`element for another knownin the field, the combination must do morethan yield a
`
`predictable result. KSR v. Teleflex
`
`In the event that the combination does not teach the electrolyte comprising
`
`proton conductive materials with sufficient specificity, it would have been indeed
`
`adequate and obvious, absent a showing of unexpected results and criticality.
`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`Page 12
`
`Conclusion
`
`7.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HELEN Ol CONLEY whose telephone numberis
`
`(571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/AWwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Pamela Weiss can be reached on (571)270-7057. The fax phone number
`
`for the organization wherethis application or proceeding is assignedis 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: httos://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
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`
`https :/;www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
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`
`If you would like assistance from a USPTO CustomerService
`
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`
`

`

`Application/Control Number: 17/355,263
`Art Unit: 1752
`
`/Helen Oi K CONLEY/
`Primary Examiner, Art Unit 1752
`
`Page 13
`
`