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 Arguments
Applicant's arguments filed September 24, 2025, have been fully considered but they are not persuasive.
Applicant contends that the claimed compositions exhibit significant improvements in preventing cell voltage reversal during H2 fuel starvation (p. 7). However, Tables 12 and 13 of the instant specification demonstrate a significant decrease in performance when adding Ge to the PtSe catalyst of Liu (124% improvement for PtSe vs 96.2% for the same catalyst with added Ge).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ugartemendia teaches a clear motivation to add Ge (increased CO poisoning resistance), and Xie teaches a clear motivation to use the catalyst in the anode (the ability to invert the stack). It is irrelevant that the references have different motivations than the instant application.
The rejections are maintained.
Claim Rejections - 35 USC § 103
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-AIA ) 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.
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 ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 7, 13, and 26-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (“High-throughput screening of binary catalysts for oxygen electroreduction”, Applied Surface Science 252(7), pp. 2580-2587, January 2006) in view of Xie (US 2007/0104982 A1) and Ugartemendia et al. (“Doping Platinum with Germanium: An Effective Way to Mitigate the CO Poisoning”, ChemPhysChem 22(15), pp. 1603-1610, May 2021).
Regarding claim 7, Liu teaches catalysts for a PEMFC comprising Pt and Se or Pt and Bi (Liu 3.2 High-throughput screening of Pt based binary catalysts).
Liu does not teach the claimed Pt:Bi or Pt:Se ratios. Liu teaches that the binary catalysts show higher activity than pure platinum at ratios of approximately 8:1 to 1:1 (Liu Fig. 3 and Table 1), which overlaps the ranges of the instant claim. 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).
Liu does not teach that the catalysts are used in the anode layer of a fuel cell. Xie teaches that using the same catalyst in the anode and cathode of a fuel cell allows for inversion of the electrode stack or interchanging the fuel and oxidizer flows (Xie [0033]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the catalyst of Liu in both electrode layers to allow for inversion of the electrode stack or interchanging the fuel and oxidizer flows.
Liu does not teach that the catalysts also comprise Ge. Ugartemendia teaches that adding Ge to Pt-based PEMFC catalysts increases stability and resistance to CO poisoning (Ugartemendia Conclusions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Ge to the catalyst of Liu to increase stability and resistance to CO poisoning.
Ugartemendia teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Regarding claim 26, the most active PtSe catalyst of Liu has a Pt:Se ratio of 2:1 (Liu Table 1), which is identical to that of the instant claim. Modified Liu teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Regarding claim 27, the most active PtBi catalyst of Liu has a Pt:Bi ratio of 2:1 (Liu Table 1), which is identical to that of the instant claim. Modified Liu teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Regarding claim 13, Liu teaches catalysts for a PEMFC comprising Pt and Se or Pt and Bi (Liu 3.2 High-throughput screening of Pt based binary catalysts). Such a fuel cell necessarily includes an anode, a cathode, and a separating membrane (see Xie Abstract).
Liu does not teach the claimed Pt:Bi or Pt:Se ratios. Liu teaches that the binary catalysts show higher activity than pure platinum at ratios of approximately 8:1 to 1:1 (Liu Fig. 3 and Table 1), which overlaps the ranges of the instant claim. 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).
Liu does not teach that the catalysts are used in the anode layer of a fuel cell. Xie teaches that using the same catalyst in the anode and cathode of a fuel cell allows for inversion of the electrode stack or interchanging the fuel and oxidizer flows (Xie [0033]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the catalyst of Liu in both electrode layers to allow for inversion of the electrode stack or interchanging the fuel and oxidizer flows.
Liu does not teach that the catalysts also comprise Ge. Ugartemendia teaches that adding Ge to Pt-based PEMFC catalysts increases stability and resistance to CO poisoning (Ugartemendia Conclusions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Ge to the catalyst of Liu to increase stability and resistance to CO poisoning.
Ugartemendia teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Regarding claim 28, the most active PtSe catalyst of Liu has a Pt:Se ratio of 2:1 (Liu Table 1), which is identical to that of the instant claim. Modified Liu teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Regarding claim 29, the most active PtBi catalyst of Liu has a Pt:Bi ratio of 2:1 (Liu Table 1), which is identical to that of the instant claim. Modified Liu teaches Pt:Ge ratios of 8:1 to 4:1 (Ugartemendia Abstract), which overlaps the range of the instant claim. 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).
Claim(s) 9, 10, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Xie and Ugartemendia as applied to claims 7 and 13 above, and further in view of Jimenez-Izal et al. (“Germanium as key dopant to boost the catalytic performance of small platinum clusters for alkane dehydrogenation”, Journal of Catalysis 374, pp. 93-100, June 2019) and Ramli et al. (“Platinum-Based Catalysts on Various Carbon Supports and Conducting Polymers for Direct Methanol Fuel Cell Applications: a Review”, Nanoscale Research Letters 13 410, December 2018).
Regarding claims 9 and 18, modified Liu teaches that the PtSe catalysts show higher activity than pure platinum at ratios of approximately 8:1 to 1:1 (Liu Fig. 3 and Table 1), which overlaps the ranges of the instant claim. 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).
Modified Liu does not teach the claimed Pt:Ge ratio. Jimenez-Izal (cited by Ugartemendia) teaches that adding a Ge dopant at ratios as high as 2:1 improves selectivity and reduces binding to carbon (Jimenez-Izal Abstract). In addition, Ramli teaches that alloying Pt with cheaper metals is a known means to reduce the cost of Pt-based catalysts (Ramli Problems and Limitations of Using Pt for DMFC Systems, 2nd paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use as much Ge as possible, including at Pt:Ge ratios of 2:1, since Jimenez-Izal teaches that it may be effective, in order to reduce the cost of the catalyst.
Regarding claim 10 and 19, modified Liu teaches that the PtBi catalysts show higher activity than pure platinum at ratios of approximately 8:1 to 1:1 (Liu Fig. 3 and Table 1), which overlaps the ranges of the instant claim. 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).
Modified Liu does not teach the claimed Pt:Ge ratio. Jimenez-Izal (cited by Ugartemendia) teaches that adding a Ge dopant at ratios as high as 2:1 improves selectivity and reduces binding to carbon (Jimenez-Izal Abstract). In addition, Ramli teaches that alloying Pt with cheaper metals is a known means to reduce the cost of Pt-based catalysts (Ramli Problems and Limitations of Using Pt for DMFC Systems, 2nd paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use as much Ge as possible, including at Pt:Ge ratios of 2:1, since Jimenez-Izal teaches that it may be effective, in order to reduce the cost of the catalyst.
Claim(s) 8, 11, 17, and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Xie and Ugartemendia as applied to claims 7 and 13 above, and further in view of Zhou et al. (“Advanced Reversal Tolerant Anode in Proton Exchange Membrane Fuel Cells: Study on the Attenuation Mechanism during Fuel Starvation”, Applied Materials and Interfaces 13(2), pp. 2455-2461, January 2021).
Regarding claims 8, 11, 17, and 21-25, modified Liu does not teach the use of IrO2, RuO2, or Ir-Ru-O. Zhou teaches that adding water electrolysis catalysts such as IrO2, RuO2, or IrO2/RuO2 to a fuel cell is a well-known method of making the electrode reversal tolerant (Zhou Introduction and Experimental Section). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to try any of the finite number of electrolysis catalysts listed by Zhou, including IrO2, RuO2, or IrO2/RuO2, in order to make the fuel cell of modified Liu reversal tolerant.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Xie and Ugartemendia as applied to claim 7 above, and further in view of Senoo et al. (US 2019/0229345 A1).
Regarding claim 12, modified Liu does not teach that the particles have an average size of 1-20 nm. Senoo teaches that Pt-based catalyst nanoparticles in a fuel cell are ideally 1-5 nm in size, which falls within the range of the instant claim, in order to maximize surface area without the particles washing away (Senoo [0104]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select a particle size of 1-5 nm for the particles of modified Liu in order to maximize surface area without the particles washing away.
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 JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at (571) 272-3433. 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.
/J.A.C/ Examiner, Art Unit 1722
/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722