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 11/24/2025.
Status of Rejections
The objections to the drawings and claims are withdrawn in view of applicant’s amendments.
The rejection(s) of claim(s) 3-4 is/are obviated by applicant’s cancellation.
The rejection of claim(s) 10 under 35 USC 112(b) is/are withdrawn in view of applicant’s amendment.
The previous rejection of claim 17 is withdrawn in view of applicant’s amendments.
New grounds of rejection for claim 17 are necessitated by applicant’s amendments.
All other previous rejections are maintained and modified only in response to the amendments to the claims.
Claims 5-6, 8-10, 13 and 16-19 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 112(a)
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.
Claims 18-19 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 18 describes the catalyst layer having a pore volume from 345 mL/g to 390 mL/g, and claim 19, depending from claim 18 describes the catalyst layer having a porosity of 7% to 9%. This appears to be based solely on Fig. 6 of the instant specification which shows a pore volumes for different ionomer contents with the units of (x102 mL/g) and the corresponding porosities. The very large pore volume ranges claimed and described do not appear to make logical sense, especially considering such a low porosity of 7-9%. As independent claim 10 describes a layer thickness of 4.2-6.0 µm and catalyst loading of 0.5-1.5 mg/cm2, the volume of catalyst in the layer could be approximated at on the order of 0.5 cm3/g (mL/g), which would not equate to such a low porosity if the pore volume is then 345-390 mL/g. Further, Folgado et al. (“Single Cell Study of Water Transport in PEMFCs with Electrosprayed Catalyst Layers”, -Fuel Cells, 2018) describes electrosprayed catalyst layers (see e.g. Folgado Abstract) with a pore volume of 12 cm3/gcarbon, which would be even less per gram total catalyst layer, having a porosity of greater than 90% (see e.g. Folgado Page 3, Col. 1, bottom paragraph, lines 4-9), lending further credence to the abnormality of such a large pore volume being present for such a small porosity. It is suggested that the proper units of the pore volume in Figure 6 be confirmed, as they may perhaps be intended to be something like (x10-2 mL/g), or further evidence be provided for the probability of such a large pore volume being present in such a low porosity catalyst layer.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "a catalyst loading amount of 0.3-1.3 mg/cm2" in line 2. The limitation of “a catalyst loading amount of 0.5-1.5 mg/cm2” is previously introduced in line 9 of claim 10. As the lower part of the range of dependent claim 6, 0.3-0.5, falls outside of the range introduced in independent claim 10, it is unclear what range of values is required by the claim.
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).
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.
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 and Jung, 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 filed 11/24/2025 have been fully considered but they are not all persuasive.
On pages 6-7, Applicant argues that the use of the claimed catalyst loading and coating thickness would result in a loading considerably greater than the 0.05 mg Pt/cm2 loading desired by Jung. This is not considered persuasive. Though Jung provides 0.05 mg Pt/cm2 as an exemplary loading (see e.g. Jung Paragraph 0113), it does not teach it as a required limiting disclosure. Jung does however teach the catalyst layer having a thickness of 0.2 to 6.0 µm (see e.g. Jung Paragraphs 0091-0092), which could encompass the exemplified loading as well as increased loadings as they are not necessarily taught away from by Jung. As stated in the rejection above, Umeda teaches 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) as well as the exemplary value of Jung.
Applicant’s arguments, see page 7, filed 11/24/2025, with respect to the rejection(s) of amended claim(s) 17 under 35 USC 103 over Umeda in view of Iio, Jung and Lewis, particularly regarding the catalyst layer including both carbon-supported platinum and ruthenium oxide, 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 Moon.
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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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795