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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/535,615
`
`11/25/2021
`
`TAKAYUKI NAKAUE
`
`083710-3570
`
`1049
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`CONTRERAS, CIEL P
`
`1794
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/05/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-9 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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://www.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) The drawing(s) filed on 11/25/21 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).
`
`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)L) None ofthe:
`b)L) Some**
`a)Y) 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. |
`3.2.) 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 11/25/21.
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240730
`
`Application No.
`Applicant(s)
`17/535,615
`NAKAUE etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`CIEL P Contreras
`1794
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 11/25/21.
`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) 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)(2) 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: 17/535,615
`Art Unit: 1794
`
`Page 2
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`DETAILED ACTION
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`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.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`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 distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`3.
`
`Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph, as
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`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-AlA 35 U.S.C. 112, the applicant), regards
`
`as the invention.
`
`4.
`
`As to claim 1, the claim recites the limitation "the other of the main surfaces". Thereis
`
`insufficient antecedent basis for this limitation in the claim.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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-AlA 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 ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`

`

`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 3
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`6.
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`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, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`7.
`
`Claims 1-5, 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No.
`
`6,605,381 to Rosenmayer (Rosenmayer).
`
`8.
`
`As to claim 1, Rosenmayer teaches a membrane electrode assembly comprising a PEM
`
`electrolyte membrane (6), an anode catalyst layer (equivalent to (5) on opposite non-shownside ofcell)
`
`in contact with one main surface of the membrane (6) and a cathode catalyst layer (5) in contact with
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`another main surface of the membrane (6), an anode gas diffusion layer (equivalent to (3/4) on opposite
`
`non-shownside ofcell) in contact with the anode catalyst layer and a cathode gas diffusion layer (3/4)in
`
`contact with the cathode catalyst layer (Column 3, Lines 41-57; Column 5,Lines 8-12; Figure).
`
`Rosenmayer discloses a specific cell for use as a fuel cell; however, the cell structure, provided with a
`
`hydrogen ion transferring polymer electrolyte membrane, would be capable of performing the claimed
`
`functional language of “the membrane electrode assembly used in a compression apparatus that
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`generates compressed hydrogen by applying voltage between the anode catalyst layer and the cathode
`
`catalyst layer to move protons, taken out of an anode fluid supplied to the anode catalyst layer, to the
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`cathode catalyst layer via the electrolyte membrane” (MPEP 2114).
`
`9.
`
`Rosenmayer further teaches that the cathode gas diffusion layer comprises a plurality of layers
`
`formed of porous carbon sheets wherein the porosity of the carbon sheets are altered such thatafirst
`
`surface layer farthest from the cathode catalyst layer has the lowest porosity and that the porosity
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`increases throughout the layers such that the carbon sheet at the catalyst layer comprises the highest
`
`

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`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 4
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`porosity, thus a layer inward from the first surface layer has a higher porosity than the first surface layer
`
`(Column 3, Lines 41-67).
`
`10.
`
`As to claim 2, Rosenmayer teaches the apparatus of claim 1. Rosenmayer further teaches that
`
`the layers are altered to be less porous by providing the porous carbon sheet layer with carbon particles
`
`and a resin (such as PTFE) (Example 3; Claim 11).
`
`11.
`
`As to claim 3, Rosenmayer teaches the apparatus of claim 1. Rosenmayer further teaches that
`
`the layers are altered to be less porous by providing the porous carbon sheet layer with carbon particles
`
`and a resin (such as PTFE) (Example 3; Claim 11). Thus, the first surface layer provided with the highest
`
`content of the carbon particles and the layers inward from the first surface layer provided with
`
`successively lower contents of carbon particles, in order to achieve the desired porosity gradient. The
`
`first surface layer thus having a lower electrical resistance, as a result of the conductivity of the carbon
`
`particles and the higher content of the carbon particles, than the electrical resistance of the layers
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`inward of the first surface layer.
`
`12.
`
`As to claim 4, Rosenmayer teaches the apparatus of claim 1. Rosenmayer further teaches that
`
`the layers are altered to be less porous by providing the porous carbon sheet layer with carbon particles
`
`and a resin (such as PTFE) (Example 3; Claim 11). Thus, the first surface layer provided with the highest
`
`content of the carbon particles and the layers inward from the first surface layer provided with
`
`successively lower contents of carbon particles, in order to achieve the desired porosity gradient. The
`
`first surface layer thus having a higher volume density, in terms of carbon particle and resin density,
`
`than the volume density of the layers inward of the first surface layer.
`
`13.
`
`As to claim 5, Rosenmayer teaches the apparatus of claim 2. Rosenmayer further teachesthat
`
`the layers are altered to be less porous by providing the porous carbon sheet layer with carbon particles
`
`and a resin (such as PTFE) (Example 3; Claim 11). Thus, the first surface layer provided with the highest
`
`content of the carbon particles and the layers inward from the first surface layer provided with
`
`

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`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 5
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`successively lower contents of carbon particles, in order to achieve the desired porosity gradient. The
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`first surface layer thus having a higher carbon particle volume density than the layers inward ofthe first
`
`surfacelayer.
`
`14.
`
`As to claim 7, Rosenmayer teaches the apparatus of claim 1. Rosenmayer further teaches an
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`embodiment wherein the layer inward (4) to the first surface layer (3) comprises untreated carbon fiber
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`paper (Example 2), the carbon fiber paper comprising a pore volume of 50% or more (Example 1).
`
`15.
`
`As to claim 9, as discussed above Rosenmayer teaches the membrane electrode assembly of
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`claim 1. Rosenmayer further teaches that this MEAis included in an apparatus that further includes a
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`cathode separator (1) provided on the first surface layer of the cathode gas diffusion layer (outermost
`
`side of layer (3)) (Column 3, Lines 41-57; Figure).
`
`Claim Rejections - 35 USC § 103
`
`16.
`
`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-AlA 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 ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`17.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are 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 in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`18.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
`
`

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`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 6
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`1. Determining the scope and contentsofthe 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.
`
`19.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly ownedas of 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 effectivefiling dates of each claim that
`
`was not commonly ownedas of 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.
`
`20.
`
`Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenmayer as
`
`applied to claims 1 and 7 aboveand as further discussed below.
`
`21.
`
`As to claim 6, Rosenmayer teaches the apparatus of claim 1. Rosenmayer fails to specifically
`
`teach thefinal porosity of the first surface member and thus fails to teach that the porosity is higher
`
`than or equal to 20%. However, Rosenmayer specifically teaches that the porosity of the first surface
`
`layer, and all layers, are critical to ensure equal gas access conditions and humidify conditions which can
`
`be adjusted to achieve optimum conditions (Column 3, Lines 7-32). Therefore, it would have been
`
`obvious to one of ordinaryskill in the art to optimize the porosity of the first layer depending on the
`
`desired optimal operating conditions of the PEM underuse, thus rendering obvious values higher than
`
`or equal to 20% (MPEP 2144.05).
`
`

`

`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 7
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`22.
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`As to claim 8, Rosenmayer teaches the apparatus of claim 7. Rosenmayer fails to specifically
`
`teach the final porosity of the first surface member and thus fails to teach that the porosity is less than
`
`20%. However, Rosenmayer specifically teaches that the porosity of the first surface layer, and all
`
`layers, are critical to ensure equal gas access conditions and humidify conditions which can be adjusted
`
`to achieve optimum conditions (Column 3, Lines 7-32). Therefore, it would have been obvious to one of
`
`ordinary skill in the art to optimize the porosity of the first layer depending on the desired optimal
`
`operating conditions of the PEM under use, thus rendering obvious values less than 20% (MPEP
`
`2144.05).
`
`Conclusion
`
`23.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can
`
`normally be reached M-F 9 AM to 4 PM.
`
`Examiner interviewsare 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://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`James Lin can be reached on 571-272-8902. The fax phone number for the organization wherethis
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
`
`

`

`Application/Control Number: 17/535,615
`Art Unit: 1794
`
`Page 8
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/CIEL P Contreras/
`Primary Examiner, Art Unit 1794
`
`