CTFR 17/251,785 CTFR 97308 Detailed Action This is a Final Office action based on application 17/251,785 filed on December 12, 2020. The application is a 371 of PCT/ EP2019/ 064572, with priority to DE10 2018 210 457.3 filed June 27, 2018. Claims 1-2, 4-5, 9-11, 14-21 are pending, claims 9-10 and 16 are withdrawn, and claims 1-2, 4-5, 11, 14-15, 17-21 have been fully considered. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of the Rejection The §112(b) and §103 rejections are withdrawn in response to amendments The §112(a) ground of rejection is maintained. Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-01 Claims 1-2, 4-5, 11, 14-15, 17-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, claim 1 recites that the electrode includes a catalyst layer, a porous gas diffusion layer adjacent the catalyst layer and comprising metallic particles, and further wherein at least some of the metallic particles in the gas diffusion layer protrude through and past the catalyst layer. Applicant asserts that support for the latter limitation is provided by the drawing in figure 4, which allegedly shows that a metallic particle 3 from the gas diffusion layer is protruding through and past catalyst layer 13 to contact electrolyte 17. However, catalyst layer 13 is not shown in figure 4. The layer in figure 4 which Applicant alleges is the catalyst layer 13, is explicitly labeled in the figure as boundary 9, 19, which the specification says represents the boundary between liquid electrolyte and gas phase CO 2 (see substitute specification para [0044] - [0048], corresponding to para [0045] - [0049] of pre-grant publication US 2021/0207276 A1). Per specification para [0046] (corresponding to para [0047] in the published application US 2021/0207276 A1) “FIG. 4 shows a 3-phase reaction in which a reaction of CO 2 occurs within the gas diffusion layer 9 of the gas diffusion electrode 1”. Meanwhile Figure 1, which does indicate a catalyst layer 13, does not show particles 3 of the gas diffusion layer protruding through and past the catalyst layer. Since the specification states that the triple phase contact between the metallic particle 3, gaseous CO 2 , and liquid phase electrolyte 17 in figure 4 is located within the gas diffusion laye, and that catalyst layer is not shown in figure 4 at all, figure 4 does not provide support for the claim to a structure in which a metallic particle from the gas diffusion layer protrudes through and past the catalyst layer to make contact with electrolyte on the opposing side of the catalyst layer. Nor is there apparent support for this claimed structural feature anywhere else in the originally filed disclosure. The subject matter of claim 1 is therefore rejected as containing new matter which lacks written description in the original disclosure. Claims 2, 4-5, 11, 14-15, and 17-21 inherit this ground of rejection because they depend from claim 1. Response to Arguments Applicant’s arguments, see Remarks filed 2 March 2026, have been fully considered and are persuasive in part. The 103 and 112(b) rejections are withdrawn, however the 112(a) rejection is maintained. With respect to the §103 rejection, Applicant amends claim 1 to merge the limitations of claim 24 into it. Applicant argues that, since no prior art rejection was made against claim 24, amended claim 1 is distinguished over the art. This argument is persuasive and the 103 rejection of claim 1 is withdrawn. With respect to the 112(b) rejection, Applicant amends claim 1 to recite that there is a surface between the gas diffusion layer and the catalyst layer. Recognizing that the 112(b) rejection was made on the basis that one cannot clearly tell where one layer ends and the other begins, Applicant argues that the 112(b) rejection is overcome by reciting that a surface demarcates the two layers. This argument is persuasive and the 112(b) rejection of claim 1 is withdrawn. With respect to the 112(a) rejection, Applicant argues that the rejection should be withdrawn because the original disclosure provides sufficient written description of the claimed subject matter. In particular, Applicant argues that the feature in question, “...wherein a portion of the metallic particles protrude through and past the catalyst layer so as to be directly exposed to electrolyte that is located directly adjacent the catalyst layer” ... is implicitly supported by the combination of Figures 1 and 4. Applicant argues that, since figure 4 represents a magnified view of a section of figure 1, and figure 1 draws catalyst layer 13 as being coextensive with gas/liquid phase boundary 19, the reader would understand that the boundary 19 which metallic particle 3 protrudes through in figure 4 is the same element as the catalyst layer 13 in figure 1. Applicant argues that the text of the specification should not limit the interpretation of the figure, because drawings may provide support for features that are not supported in text, and vice versa. Examiner respectfully disagrees. Applicant’s premise, that written support may be established using either text or drawings, and a feature need not be disclosed in both the text and the drawings to satisfy the written description requirement, is consistent with court precedent and USPTO guidelines (MPEP 2163.02; Lockwood v. Amer. Airlines, Inc. , 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)). However, the interpretation that Applicant is advancing in this instance (that the boundary 19 in figure 4 corresponds to the catalyst layer 13 from figure 1 despite not being labeled as such in figure 4, therefore figure 4 shows particle 3 is breaching through the catalyst layer), is not just absent from the specification, it is directly contradicted by the specification (para [0044], “The reaction ... takes place at the metallic particles 3 in this gas diffusion layer 9. This is in the present case a 3-phase reaction in which a conversion of CO 2 into CO occurs at the phase boundary 19 between the metallic particles 3 in the gas diffusion layer 9, the CO 2 and the electrolyte 17 (see also FIG 4)”; para [0046], “FIG 4 shows a 3-phase reaction in which a reaction of CO 2 occurs within the gas diffusion layer 9”). The feature in question is not explicitly shown in the originally filed disclosure, because there is no indication that the catalyst layer 13 is present in figure 4. Applicant’s reliance on implicit disclosure (i.e. that figure 1, which shows catalyst layer 13 overlapping with boundary 19, implies that catalyst layer 13 overlaps with boundary 19 in figure 4 as well), is misplaced because the feature that is allegedly implied in figure 4 is contradicted by the specification’s description of what figure 4 shows (para [0044]-[0046], “phase boundary 19 ... occurs within the gas diffusion layer 9”). Therefore Examiner maintains that neither the specification nor the figures convey with reasonable clarity that, as of the filing date sought, the inventor was in possession of that feature of the invention as now claimed. The 103 and 112(b) rejections are withdrawn. The 112(a) rejection is maintained. Conclusion 07-39 AIA THIS ACTION IS MADE FINAL . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew R Koltonow whose telephone number is (571)272-7713. The examiner can normally be reached Monday - Friday, 10:00 - 6:00 ET. 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://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached at (571) 272-8521. The fax phone number for the organization where this 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 about filing in DOCX format. For additional 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. /ANDREW KOLTONOW/Examiner, Art Unit 1795 /LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795 Application/Control Number: 17/251,785 Page 2 Art Unit: 1795 Application/Control Number: 17/251,785 Page 3 Art Unit: 1795 Application/Control Number: 17/251,785 Page 4 Art Unit: 1795 Application/Control Number: 17/251,785 Page 5 Art Unit: 1795 Application/Control Number: 17/251,785 Page 6 Art Unit: 1795 Application/Control Number: 17/251,785 Page 7 Art Unit: 1795
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