DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
02/10/2026.
Status of Rejections
The previous rejections are maintained and updated in response to the Applicant’s amendments. No new art is cited.
Claims 1-7 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardee (US 2004/0031692 A1) in view of Jehng et al (“Chapter 21 - Niobium Oxalate: New Precursor for Preparation of Supported Niobium Oxide Catalysts”, ACS Symposium Series, 1999, Vol. 437, pages 232-242).
Claim 1: Hardee discloses an electrode suitable for the electroplating or electrodeposition of a metal from an electrolyte solution in an electrolytic cell (see e.g. abstract of Hardee) comprising
a conductive substrate (see e.g. [0014] of Hardee),
at least one topcoating layer of a first composition (see e.g. [0038] of Hardee) and
at least one electrochemically active coating layer of a second composition different from the first one (see e.g. [0032] of Hardee),
the electrochemically active coating layer positioned between the conductive substrate and the topcoating layer (see e.g. [0038] of Hardee),
the first composition containing 90-100% valve metals or oxides thereof (it can optionally be doped with 0.1-10% dopant, see e.g. [0038]-[0039] of Hardee), wherein the first composition comprises a valve metal oxide (see e.g. claim 7 of Hardee).
With regard to the limitation claiming “wherein the topcoating layer forms a compact niobium-oxide-based barrier layer limiting penetration of electrolyte additives to the electrochemical active coating”, the instant specification states “The topcoating likely hinders the larger additive molecules in the electrolyte from reaching the electrochemically active coating and oxidizing thereon, while still ensuring adequate access of other components of the electrolyte to the underlying electrochemically active coating” (see page 6, lines 22-26) and “The concentration of Nb in the Nb precursor solution may be chosen between 20-50 g/L. This range has been observed to ensure a particularly compact topcoating layer structure” (see page 12, lines 16-19). Hardee teaches “the operative feature of the porous topcoat is to inhibit the access of certain species in the electrolyte to the electrocatalytic surface, thus preventing their oxidation” (see e.g. [0045]) and precursor concentrations for the topcoating up to 50 g/L (see e.g. [0051]). Therefore, to a person having ordinary skill in the art before the effective filing date of the instant invention would understand that the topcoating of Hardee reads on the above limitation. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the topcoating would have the properties listed in the above limitations because the two coatings are substantially similar.
Hardee explicitly discloses that niobium is a suitable valve metal oxide (see e.g. claim 7 of Hardee). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select niobium from the list of Hardee to because KSR rationale E states that it is obvious to choose ‘from a finite number of identified, predictable solutions, with a reasonable expectation of success’ and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
The limitation claiming “said topcoating layer is obtained by (i) applying a precursor solution consisting essentially of an aqueous solution of niobium oxalate in acetic acid and optionally at least one doping agent selected from the group consisting of antimony, indium, molybdenum, tungsten, bismuth, tantalum and oxides over the conductive substrate coated with the at least one electrochemically active coating layer;(ii) drying the precursor solution at a temperature of 50-100°C for 5-20 minutes; and (iii) thermally decomposing the dried precursor solution at a temperature of 350- 600°C for 5-20 minutes” is a product-by-process limitation.
MPEP § 2113 states ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of 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) (citations omitted)’. In the arguments filed on 06/19/2025, the Applicant provided arguments and evidence that these processing steps are structurally limiting due to the precursor solution having niobium oxalate.
Hardee teaches applying a precursor solution containing acid (see e.g. [0038]) and an optional dopant, such as vanadium (see e.g. [0023]), over the conductive substrate coated with the at least one electrochemically active coating layer; drying the precursor solution at a temperature of 100-110°C for 3 minutes (see e.g. [0056] of Hardee), and thermally decomposing the dried precursor solution at a temperature of 300-600°C for 3-10 minutes (see e.g. [0043] of Hardee), which overlap with the claimed process conditions. MPEP § 2144.05 states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
However, Hardee does not teach that the precursor solution is an oxalate wherein said precursor solution is free of metal alkoxides. Hardee instead uses an alkoxide (see e.g. [0038]). Jehng teaches a method of preparing niobium oxide for catalyst systems via niobium oxalate precursors (see e.g. abstract). Regarding the formation of niobium oxide, Jehng states the following (see e.g. page 233, paragraph starting with “Niobium ethoxide”):
Niobium ethoxide [Nb(OC2H5)5] has traditionally been used as a precursor for the preparation of supported niobium oxide catalysts. This non-aqueous preparation method requires a controlled environment and special procedures to avoid the decomposition of the niobium ethoxide in the presence of moisture. It is well-known that transition metal ions form a stable solution chelate with oxalate groups.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Hardee by using an oxalate precursor instead of the alkoxide as taught in Jehng because the oxalate does not have the same drawbacks that the alkoxides have. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 2: Hardee in view of Jehng discloses that the first composition contains substantially 100% niobium or oxides (doping is optional, see e.g. [0038]-[0039] of Hardee).
Claim 3: Hardee in view of Jehng discloses that the first composition contains at least one doping agent selected from the group consisting of antimony & indium (see e.g. [0033] of Hardee) and molybdenum, tungsten, bismuth, tantalum & oxides thereof in an amount of 0.01-10% by weight (see e.g. [0039] of Hardee).
Claim 4: Hardee in view of Jehng does not explicitly teach that the total amount of niobium in the topcoating layer is between 2-18 g/m2. However, Hardee teaches that method applying the topcoating is the same as that for electrochemically layer (see e.g. [0042] of Hardee). Hardee teaches that the electrochemically layer is applied to a loading not greater than 50 g/m2 (see e.g. [0036] of Hardee) and the topcoating is applied until a desired loading is reached (see e.g. [0044] of Hardee). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Hardee in view of Jehng so that the total amount of niobium is adjusted during the coating process between 0 and 50 g/m2 to get the desired loading.
Claim 5: Hardee in view of Jehng discloses that the second composition consists of 75% iridium and 25% tantalum, expressed in weight percentage (see e.g. [0050] of Hardee).
Claim 6: Hardee in view of Jehng discloses at least one underlayer (see e.g. [0024] of Hardee) containing a third composition different from the second composition (see e.g. [0024] of Hardee), said underlayer being positioned between the conductive substrate and the electrochemically active coating layer (see e.g. [0024] of Hardee).
MPEP § 2143.03 states ‘Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation’.
Claim 7: Hardee in view of Jehng discloses that the conductive substrate is made of a valve metal selected from the group consisting of titanium, tantalum, zirconium, niobium, tungsten, aluminum, their alloys and intermetallic mixtures (see e.g. [0014] of Hardee).
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
On page(s) 7-10, the Applicant argues that Hardee does not read on the limitation claiming “wherein the topcoating layer forms a compact niobium-oxide-based barrier layer limiting penetration of electrolyte additives to the electrochemical active coating” because the use of an alkoxide precursor, like that disclosed in Hardee, yields a “highly porous [structure] with poor barrier performance” whereas the oxalate precursor does not. The Applicant also states that “Hardee does not recognize porosity is a problem in its topcoating layer”. This is not considered persuasive. The instant specification states “The topcoating likely hinders the larger additive molecules in the electrolyte from reaching the electrochemically active coating and oxidizing thereon, while still ensuring adequate access of other components of the electrolyte to the underlying electrochemically active coating” (see page 6, lines 22-26). Hardee discloses “the operative feature of the porous topcoat is to inhibit the access of certain species in the electrolyte to the electrocatalytic surface, thus preventing their oxidation” (see e.g. [0045]). Thus, the topcoating of Hardee and in the instant invention provide the same functionality, regardless of the precursor.
On page(s) 8-10, the Applicant argues that one of ordinary skill in the art would not be motivated to combine Hardee with Jehng because Jehng teaches that “niobium oxalate systems are chemically delicate, require precise solution control, and readily form precipitates and surface species – exactly the opposite of the predictable, routine substitution asserted by the Examiner”. This is not considered persuasive. MPEP § 2143.02 II states “Obviousness does not require absolute predictability, but at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976)”. Even though the oxalate might require solution control, the disclosure of Jehng provides sufficient guidance on what effects the precipitation and how to control it (see e.g. page 235), which is well within the skill of one of ordinary skill in the art. Additionally, this solution control is weighed against the drawbacks that come with alkoxides, which also requires “a controlled environment and special procedures to avoid the decomposition of the niobium ethoxide in the presence of moisture” (see e.g. page 233, paragraph starting with “Niobium ethoxide”).
On page 8, Jehng’s teaching “discourages the use alkoxides”. The Examiner agrees with this assertion as this was the motivation used to replace the alkoxide precurors taught in Hardee with the oxalate in Jehng.
On page(s) 8-10, the Applicant argues that the combination of Hardee with Jehng is only a hindsight reconstruction. This is not considered persuasive. KSR rationale G states that “Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention” is a suitable rationale for obviousness. As stated in the Office Action, Jehng explains issues with using alkoxide precursors and provides oxelate precursors as an alternative without the drawbacks of alkoxides.
On page(s) 10, the Applicant argues that “Additionally, the presently claimed electrode exhibits a quantified barrier effect improvement of at least 51%, and up to or exceeding 100%, per g/m² of Nb loading, as measured by cyclic voltammetry using the Fe(II)/Fe(III) redox probe”. This is not considered persuasive. These arguments are drawn to unclaimed subject matter. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 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://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan 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.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795