DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. This is acknowledgement of the applicant’s arguments/remarks filed 20 January 2026. Claims 6, 7, 8, 9, 10, 11, and 13 are currently pending and under examination.
3. Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. The finality of the rejection was withdrawn because the applicant has filed an official translation of the Korean priority document of the instant application perfect the priority date, thus disqualifying Kim et al. (KR20200076275A) as prior art under 102(a)(2)
Claim Rejections - 35 USC § 103
4. 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.
5. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 6, 7, 8, 9, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bang-Yong et al. in view of Wei et al.
Bang-Yong et al. (KR 2019/0036711 A, published on 05 April 2019) is directed toward a brine electrolysis cathode (¶3-4). Wei et al. (CN 103924263 A, published on 16 July 2014) is directed toward the preparation of a hydrogen evolution electrode (title).
Regarding Claim 6, Bang-Yong et al. discloses a method of preparing an electrode for electrolysis (i.e.: a cathode for salt water electrolysis in ¶1). The method of Bang-Yong et al. includes coating a conductive substrate with various platinum compounds selected from Pt and Ru (¶13) and further comprises urea and a lanthanide compound (e.g.: cerium) (¶14-17). The deposited composition is then dried (¶19) followed by high temperature annealing (¶20) according to the method Bang-Yong et al. Bang-Yong et al. discloses an example where the precursor solution is a mixture ruthenium chloride, cerium nitrate hexahydrate, and urea dissolved in ethanol and 2-butoxyethanol and is applied to cleaned nickel mesh (i.e.: metal base of the instant application), dried at 70 degrees C for 10 minutes, and annealed at 500 degrees C for 10 minutes (¶38-40). Although Bang-Yong et al. discloses nickel as the substrate, Bang-Yong et al. does not disclose the use of a nickel precursor in the electrode coating solution.
Wei et al. is directed toward an electrode for hydrogen evolution (¶4) meaning it is analogous art to Bang-Yong et al. Both references disclose similar substrate treatment procedures. Wei et al. further discloses a method of preparing the electrode for hydrogen evolution in embodiment 1 in ¶30-36 which is described in the following steps: 1) cleaning nickel foam substrate; 2) preparing the electrode treatment solution comprising nickelous chloride, ruthenium trichloride and urea in ethylene glycol; 3) treating the nickel foam substrate in a reactor containing the nickel ruthenium precursor solution; 4) rinsing the treated foam with DI water; and 5) annealing at 400 degrees C for one hour in a furnace. The presence of the nickel (and ruthenium) coating on the nickel foam has numerous advantages including: a large specific surface area, fully exposed catalyst sites, and a robust (i.e.: crack-free and well-adhered) physical catalyst structure (¶11-13). The proposed benefits result in improved electrode stability and improved HER activity according to Wei et al.
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode coating solution used in the coating method of Bang-Yong et al. by adding a nickel precursor as taught by Wei et al. with the reasonable expectation for forming a hydrogen evolution catalyst/electrode that is both electrochemically/physically stable and has HER high activity (¶11-13 of Wei et al.).
Regarding Claim 7, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 6, wherein the coating composition further comprises a platinum group precursor as indicated in ¶13-14 where the platinum group precursor is Ru and/or Pt (Bang-Yong et al.) with an example of RuCl3 in ¶38-40 in Bang-Yong et al.
Regarding Claim 8, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 6, wherein the ruthenium precursor is ruthenium(III) chloride as per Ex. 1 of Bang-Yong et al. (¶38-40).
Regarding Claim 9, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 6, wherein the cerium precursor is cerium nitrate hexahydrate as per Ex. 1 of Bang-Yong et al. (¶38-40).
Regarding Claim 10, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 6, wherein the nickel precursor is nickel(II) chloride (i.e.: nickelous chloride) as per embodiment 1 in Wei et al. (¶30-36).
Regarding Claim 11, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 7, wherein the platinum group precursor is platinum (II) chloride or platinum(IV) chloride as supported by Bang-Yong et al. Bang-Yong et al. indicates in ¶13 that the platinum group compound is not particularly limited, but may be a platinum compound. In Ex. 1, Bang-Yong et al. discloses a platinum group chloride (i.e.: RuCl3) as the Pt group precursor (¶38-40). Taken together, Bang-Yong et al. would render the use of platinum chloride (either Pt2+ or Pt4+) as the platinum group compound as obvious.
7. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bang-Yong et al. in view of Wei et al. as applied to Claim 6 above, and further in view of Giordano et al.
Bang-Yong et al. (KR 2019/0036711 A) is directed toward a brine electrolysis cathode (¶3-4). Wei et al. (CN 103924263 A) is directed toward the preparation of a hydrogen evolution electrode (title). Giordano et al. (“Metal Nitride and Metal Carbide Nanoparticles by a Soft Urea Pathway,” Chem. Mater. 2009, 21, 5136-5144).
Regarding Claim 13, Bang-Yong et al. in view of Wei et al. discloses the method of Claim 6, wherein the ruthenium element of the ruthenium precursor in present in the coating layer. In ¶19, Bang-Yong et al. discloses that urea satisfies multiple roles during the pyrolysis process including a reducing gas atmosphere (e.g.: ammonia) meaning that ruthenium is present in the form of partially oxidized ruthenium (e.g.: RuO2-x). When these species are increased in the catalyst layer (i.e.: oxygen-vacant Ru oxide), the activation layer have enhanced catalytic activity (¶19).
Bang-Yong et al. in view of Wei et al. does not expressly describe the presence of nitrogen or the amine precursor present in the coating layer; however, urea is often used as a nitrogen source in metal (oxy)nitrides. Giordano et al. is directed toward the formation of metal nitrides from the corresponding metal chloride and urea (pg. 5137: experimental section). Giordano et al. explicitly discloses the formation of metal oxynitrides for transition metals (e.g.: niobium and titanium) according to pg. 5138 in the results and discussion section. Giordano et al. further discloses that the composition of the metal (oxy)nitride can be tailored based on the molar ratio of the metal precursor and urea (pg. 5137: experimental section). The range of potential molar ratio is determined experimentally based on solubilities of the metal precursor and urea as well as the bond strength between the metal center and urea (pg. 5137: experimental section). Moreover, Giordano indicates that this method is advantageous as it allows for recombination with top down processes, i.e., the application of microstructured reaction zones by numerous coating techniques (pg. 5144: conclusion). The flexibility of said method has the potential to significantly simply incorporation of transition metal (oxy)nitride into electrochemical systems such as electrodes for electrolysis with potential improvement in catalyst activity and stability.
Given that the ruthenium precursor taught in Bang-Yong et al. is ruthenium chloride and is decomposed in the presence of urea, the resultant annealed product is capable of a ruthenium oxynitride. A ruthenium oxynitride would meet the limitation of Claim 13 requiring the presence of the amine compound/nitrogen to be present in the coating layer before and after annealing.
The combination of Bang-Yong et al. and Wei et al. in view of Giordano et al. does not expressly disclose the ratio of the ruthenium element to the urea (or nitrogen) present in the catalyst layer; however, the ratio of Ru to urea (or nitrogen) in the coating layer is capable of being optimized based on the specific urea/metal precursor molar ratio (R) discloses by Giordano et al. (pg. 5137: experimental section). Given the R parameter of Giordano et al. to modify the molar ratio of the ruthenium element to the urea (or nitrogen) present in the coating as part of a normal optimization procedures (see MPEP 2144.05 II). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have discovered the optimum or workable ranges of the Ru to urea (or nitrogen) molar ratio present in the coating layer, including values within the claimed range, through routine experimentation. One would have been motivated to do so in order to have formed an electrode for HER with unique reactivity and stability based on the ability to form microstructured reaction zones (Giordano et al. in the conclusion section on pg. 5144.
Response to Arguments
8. The examiner withdraws the rejection of Claims 6, 7, 8, 9, 10, 11, and 13 under 35 USC § 112b based on the amendment to Claim 6 as indicated by the applicant on pg. 4 of their response filed 20 January 2026.
9. Based on the disqualification of Kim et al. as a primary reference as explained above, the rejection of Claims 6, 7, 8, 9, 10, 11, and 13 based on Kim et al. in view of Ovishinsky (US Patent No. 6,537,700) under 35 USC § 103 are withdrawn. However, new rejections of Claims 6, 7, 8, 9, 10, 11, and 13 as being obvious over Bang-Yong et al. in view of Wei et al. are presented above in detail.
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xie et al. (“One-pot construction of the carbon spheres embellished by layered double hydroxide with abundant hydroxyl groups for Pt-based catalyst support in methanol electrooxidation,” J. Power Sources 2019, 420, 73-81) is directed toward a catalyst for methanol electrooxidation (pg. 73: title).
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is 703-756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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, James Lin can be reached on 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
12. 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.
/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794