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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/30/2026 has been entered.
Status of Rejections
The rejection(s) of claim(s) 18-19 is/are obviated by applicant’s cancellation.
The rejection of claim(s) 6 under 35 USC 112(b) is/are withdrawn in view of applicant’s amendment.
All other previous rejections are withdrawn in view of applicant’s amendments.
New grounds of rejection are necessitated by applicant’s amendments.
Claims 5-6, 8-10, 13 and 16-17 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.
Claims 5-6, 8-10, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Umeda (JP 2006313706, citations based on translation) in view of Iio (JP 2007213865, citations based on translation), and further in view of Jung et al. (KR 20190019520 A, citations based on translation) and Haile et al. (U.S. 2010/0227120).
Regarding claim 10, Umeda teaches a method for manufacturing an electrode for water electrolysis (see e.g. Paragraphs 0011 and 0029), the method comprising:
preparing a substrate (see e.g. Paragraph 0013, line 1, gas diffusion electrode); and
applying a catalyst composition with an electrospray process to form a catalyst layer on the substrate to provide the electrode for water electrolysis (see e.g. Paragraph 0012, lines 1-3, and Paragraph 0013, line 1);
wherein the catalyst composition comprises carbon-supported platinum, a solvent, and an ionomer (see e.g. Paragraph 0016, lines 1-3, and Paragraph 0024, spray liquid comprising catalyst such as platinum on a carbon carrier, an aqueous liquid and a polymer with ionic conductivity), and the catalyst layer has a catalyst loading amount of 0.001 to 10 mg/cm2 (see e.g. Paragraph 0024, line 5), encompassing the claimed range of the present invention,
wherein the electrospray is carried out at a voltage of 5 to 30 kV, preferably 8 to 20 kV (see e.g. Paragraph 0018, line 2), encompassing or overlapping the claimed range of the present invention.
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.”.
Umeda does not teach the content of the ionomer being 5% to 20 wt% based on the total weight of the composition, only exemplifying an ionomer content of 3.2 wt%, based on a 6:4 weight ratio of the catalyst to the ionomer and 8% solid content concentration (see e.g. Paragraph 0037, lines 1-3).
Iio teaches an electrode catalyst layer formed by electrostatic spraying (see e.g. Paragraph 0001 and Paragraph 0019, line 1), wherein a catalyst ink to be sprayed comprises catalyst particles, an ion conductive resin and a solvent (see e.g. Paragraph 0014 and Paragraph 0015, line 1), and the solid content of the ink is preferably 1 to 50 wt% to ease atomization by the spray method (see e.g. Paragraph 0016, lines 1-2). In combination with the 6:4 catalyst:ionomer ratio of Umeda, the ionomer content would range from 0.4 to 20 wt%, overlapping the claimed range of the present invention (see MPEP § 2144.05 as cited above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst composition of Umeda to have a solid content concentration of 1 to 50 wt%, resulting in an ionomer content of 0.4 to 20 wt% in the solution, as taught by Iio as a solid content concentration range that eases atomization by an electrostatic spray method. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.05 II states “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." ”
Modified Umeda does not explicitly teach the thickness of the catalyst layer of the electrode being 4.2 micrometers to 6.0 micrometers, but does teach that electrode may be used in a fuel cell (see e.g. Umeda Paragraph 0011, lines 1-2).
Jung teaches a method of forming a fuel cell electrode (see e.g. Paragraph 0001) by spraying a solution comprising a polymer ionomer and a metal catalyst onto a support using an electrospray method (see e.g. Paragraph 0013), wherein the electrode is preferably formed with a thickness of 0.2 to 6 µm (see e.g. Paragraph 0091), overlapping the claimed range of the present invention (see MPEP § 2144.05 as cited above), to provide sufficient catalyst loading to function while preventing loss of effectiveness due to increased oxygen transfer resistance and deterioration in the electrode structure/shape caused by decreased hydrogen ion discharge rate (see e.g. Paragraph 0092).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrosprayed catalyst layer of modified Umeda to be formed with a thickness of 0.2 to 6 µm as taught by Jung to provide sufficient catalyst loading to function while preventing loss of effectiveness due to increased oxygen transfer resistance and deterioration in the electrode structure/shape caused by decreased hydrogen ion discharge rate when it is used as a fuel cell electrode.
Modified Umeda does not explicitly teach the catalyst layer having a porosity of 7% to 9%.
Haile teaches a method of forming a nanostructure material on a substrate by electrospray deposition that may be used as an electrode for an electrochemical device (see e.g. Paragraphs 0005-0007 and 0049), wherein the nanostructure material may be formed with a porosity of about 10% to about 90% (see e.g. Paragraph 0048), said range being very close to the claimed “7% to 9%”, especially considering the leeway encompassed by the “about 10%”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst layer of modified Umeda to be formed with a porosity of about 10% to about 90% as taught by Haile as a suitable porosity for a structure formed by electrospray deposition to be used as an electrode for an electrochemical device. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. MPEP § 2144.05 I states “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. ”.
Regarding claim 5, modified Umeda teaches the carbon-supported platinum catalyst comprising at least one metal of nickel, cobalt and chromium (see e.g. Umeda Paragraph 0024, lines 1-3, metals such as cobalt, nickel and chromium may be alloyed with the platinum catalyst).
Regarding claim 6, modified Umeda teaches the catalyst layer having a catalyst loading of 0.001 to 10 mg/cm2 (see e.g. Umeda Paragraph 0024, line 5), encompassing the claimed range of the present invention (see MPEP §2144.05 as cited above).
Regarding claim 8, modified Umeda teaches a membrane electrode assembly for water electrolysis, comprising the electrode for water electrolysis prepared according to claim 10 (see e.g. Umeda Paragraph 0029).
Regarding claim 9, modified Umeda teaches a water electrolysis device comprising the electrode prepared according to claim 10 (see e.g. Umeda Paragraph 0021, lines 1-2, and Paragraph 0029, lines 2-3).
Regarding claims 13 and 16, Umeda as modified by Iio teaches the content of the ionomer being 0.4 to 20 wt% (see e.g. Umeda Paragraph 0037, lines 1-3, 6:4 catalyst to ionomer weight ratio; see e.g. Iio Paragraph 0016, lines 1-2, 1-50 wt% solid content in catalyst ink spray composition), encompassing the claimed ranges of the present invention (see MPEP § 2144.05 as cited above).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Umeda, Iio, Jung and Haile, as applied to claim 10 above, and further in view of Moon et al. (U.S. 2018/0274112).
Regarding claim 17, modified Umeda teaches all the elements of the method of claim 10 as stated above. Modified Umeda does not explicitly teach the catalyst composition further comprising ruthenium oxide. Umeda does however teach the catalyst being any one that is conventionally used in the relevant technical field without particular limitation (see e.g. Umeda Paragraph 0024, line 1), as well as the electrode comprising the catalyst being an anode or cathode for water electrolysis (see e.g. Umeda Paragraph 0011, lines 1-2, Paragraph 0021, lines 1-2, and Paragraph 0029, lines 2-3).
Moon teaches a membrane electrode assembly (see e.g. Abstract) which comprises first and second electrochemical catalysts respectively for the oxidation and reduction reactions of water electrolysis (see e.g. Paragraphs 0052-0054), wherein the first and second electrochemical catalysts preferably include one or more metals such as platinum and ruthenium or oxides thereof in order to ensure excellent electrode reactivity and effectively perform a stable electrode reaction over a long time (see e.g. Paragraph 0060), and the catalysts may be provided with carbon particles as a carrier (see e.g. Paragraph 0062, lines 1-3)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode of modified Umeda to further comprise an oxide of a metal such as ruthenium in addition to the carbon-supported platinum as taught by Moon as known suitable catalyst materials that can be used in combination for electrodes for water electrolysis that ensure excellent electrode reactivity and effectively perform a stable electrode reaction over a long period of time. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Further, 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)”.
Response to Arguments
Applicant’s arguments, see pages 6-7, filed 04/30/2026, with respect to the rejection(s) of amended claim(s) 10 under 35 USC 103 over Umeda in view of Iio and Jung, particularly regarding the porosity of the catalyst layer, 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 in view of Umeda, Iio, Jung and Haile.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee et al. (U.S. 2019/0319258) discloses an electrode layer formed by electrospraying a slurry of an electrode active material, a polymer electrolyte, and a solvent, followed by a polymer electrolyte impregnation and optional pressing process that results in the finished electrode layer having a porosity of 0-30%, or more narrowly 5-10%.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
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.
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.
/MOFOLUWASO S JEBUTU/Examiner, Art Unit 1795
Prosecution Insights