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 .
Election/Restrictions
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/14/2024.
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, 3, 6-7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over ‘532 (JP 6315532) in view of Marchand (US 20130008829) and Green (US 2005/0250863). A machine translation of ‘532 has been provided as an English equivalent and is used in the citations below.
Regarding Claims 1, 3, 7 and 19, ‘532 teaches a process for the preparation of preparing a catalytic material of an electrode for electrochemical reduction reactions (Description, 1st para.), said material comprising an active phase based on at least one metal from group VIb and an electroconductive support (Mo, electrode substrate, Claims), which process is carried out according to at least the following stages: a) a stage of bringing said support into contact with at least one solution containing at least one precursor of at least one metal from group VIb (Example 1, 2nd para.); b) a stage of bringing the support into contact with an organic additive (organic solvent, Example 1); c) a drying stage on conclusion of stage a), without a subsequent calcination stage (Example 1, 2nd para., “taken out”); d) a stage of sulfurization of the a material obtained on conclusion of stage c) at a temperature of between 100°C and 600°C (Example 1, 3rd para., 400C). ‘532 teaches a graphene sheet support (pg. 4, 2nd para.). ‘532 teaches the organic additive is N,N-dimethylformamide, dimethylacetamide, ethyl ketone, ethyl acetate, glycol, methanol, ethanol, isopropanol, acetone, methyl ethyl ketone (pg. 15 last para.-pg. 16 1st para.).
‘532 teaches inorganic precursors based on Mo (CoMoO4, Example 1); ‘532 does not explicitly teach the claimed precursor; however, Marchand teaches a method of preparing a catalyst wherein the molybdenum precursor is phosphomolybdic acid, silicomolybdic acid, phosphotungstic acid, or silicotungstic acid. Marchand teaches these precursors are well known to the person skilled in the art ([0056]). It would have been prima facie obvious to one of ordinary skill in the art to modify the precursor of ‘532 to be a precursor, as taught in Marchand, because they are known precursors in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of ‘532 with precursors as in Marchand.
‘532 does not explicitly teach the temperature of the drying; however, ‘532 also does not teach heating or cooling during the drying. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to perform the drying of ‘532 at room temperature, as is suggested by the reference, because ‘532 does not teach heating or cooling during the process and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of ‘532 with drying at room temperature.
The combined references do not explicitly teach the polar organic solvent being citric acid; however, Green teaches a similar method wherein citric acid is a suitable polar organic compound which functions as a solvent ([0043]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the organic solvent of the combined references to be a solvent, as taught in Marchand, because citric acid is a known solvent in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of the combined references with a solvent as in Green.
Regarding Claim 6, ‘532 teaches a maturation stage is carried out after contacting but before drying (2 hours at 30C, Example 1).
Claim(s) 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over ‘532 (JP 6315532) in view of Marchand (US 20130008829) and Green (US 2005/0250863) as applied to claims 1, 3, 6-7 and 19 above, and further in view of Porta (Porta, Anderson phases as precursors of nickel-molybdenum-tungsten oxide, J. Mater. Chem, 1997, 7(2), pg. 311-313).
Regarding Claims 4 and 8, ‘532 teaches a precursor of the catalytic material comprises Co and Mo and the sulfurization temperature in stage d) is 400°C (Example 1). Marchand teaches Anderson type heteropolycompound precursors ([0056]). Marchand teaches mixtures of precursors; however, Marchand does not teach a precursor having a metal mixture as claimed. Porta teaches Anderson type heteropolycompound precursors having the claimed composition (abstract). It would have been prima facie obvious to one of ordinary skill in the art to modify the precursor of the combined references to be a precursor, as taught in Porta, because they are known precursors in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of the combined references with precursors as in Porta.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over ‘532 (JP 6315532) in view of Marchand (US 20130008829) and Green (US 2005/0250863) as applied to claims 1, 3, 6-7 and 19 above, and further in view of ‘036 (FR2472036). A machine translation of ‘036 has been provided as an English equivalent and is used in the citations below.
Regarding Claim 5, ‘532 teaches in “stage a)” embodiments wherein the base material is directly immersed in the precursor solution of the first step (pg. 4, 3rd para.). ‘532 also teaches embodiments wherein the precursor solution is provided with the claimed components (pg. 3, para. 11-12), in excessive concentrations (pg. 3, para. 18). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the solution of ‘532 to include the claimed components, as suggested by the reference, because ‘532 suggests they are suitable components and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of ‘532 with a solution including any of the taught components.
‘532 does not explicitly teach an additional stage; however, repeating coating processes for deposition thickness control is known in the art (‘036, pg. 4). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of ‘532 to include repeated coating, as suggested in ‘036, in order to provide the benefit of deposition thickness control.
Response to Arguments
Applicant’s arguments, see amendments, filed 11/13/2025, with respect to the previous Section 112 and prior art rejections have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as discussed above.
Applicant's other arguments filed 11/13/2025 have been fully considered but they are not persuasive.
Applicant argues JP6315532 fails to disclose the use of isopolyanions or heteropolyanions as required by the corresponding formula in claim 1. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the rejection above, JP ‘532 is not cited as teaching the polyoxometalates.
Applicant argues Marchand mentions the potential use of catalysts where the molybdenum precursor might be phosphomolybdic acid (H3PMoi2040) or silicomolybdic acid (H4SiMoi2040); however, there is no guidance to choose these particular options. In response to Applicant’s argument, US ‘829 acknowledges that the polyoxometalates and oxides are known equivalent precursors in the art. This teaching provides motivation to one of ordinary skill in the art to substitute these known precursors in the method of JP ‘532. Furthermore, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” MPEP 2123 II.
Applicant argues Marchand pertains to an entirely different field than the one relevant to this application. In response to applicant's argument that US ‘829 is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, US ‘829 is pertinent to preparing a catalyst using a molybdenum precursor in a solution with subsequent drying and sulfurization, which is the particular problem with which the inventor was concerned.
Applicant argues the use of isopolyanions or heteropolyanions as precursors of metals from group VIb, combined with citric acid, achieves a significant and unexpected advantage. In response to applicant’s argument, Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). MPEP 716.02(d). In response to applicant’s argument, Examples 1 and 2 of the original disclosure are not commensurate in scope with the claimed invention and do not demonstrate criticality of the combination of the claimed precursors with citric acid. The present claims are open to a number of different support materials and metal precursors, various methods of contact, various methods of drying, and various methods of sulfurization.
Applicant argues FR '036 and Porta do not overcome the deficiencies; however, this is not convincing as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TABATHA L PENNY/ Primary Examiner, Art Unit 1712