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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8 January 2026 has been entered.
Claim Objections
Claim 21 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 8, 9, 10, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication No. 2005/0183962 to Oakes (Oakes) in view of US Patent Application Publication No. 2015/0236355 to Yang et al. (Yang).
As to claim 1, Oakes teaches a system for hydrogen and oxygen generation via water electrolysis, the system comprising an anode and a cathode each comprising a platinum catalyst, in contact with an acidic electrolyte comprising sulfuric acid, H2SO4, (Abstract; Paragraphs 0042 and 0053; Claim 26). Thus, a composition, at an anode and/or cathode surface comprising a metal and an electrolyte material. However, Oakes fails to teach that the metal is an alloy of the claimed formula, instead teaching, as discussed above, platinum alone.
However, Yang discusses platinum catalysts for use in electrolytic reactors and teaches that the electrocatalyst activity for both the hydrogen evolution reaction and the oxygen evolution reaction can be improved via the provision of a bimetallic or trimetallic alloy, the bimetallic alloy comprising, for example, platinum (a group 10 metal) and nickel (a group 10 metal), in the form of a nanoframe with an average particle size of about 50 nm (Paragraphs 0004, 0005, 0049-0051 and 0086).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the platinum catalyst of both the anode and the cathode of Oakes, with the alloy catalyst of Yang, the bimetallic Pt-Ni embodiment comprising the formula of the claim, in order to improve the catalytic activity of the catalyst as taught by Yang. Thus a metal component of the formula of the claims disposed in sulfuric acid, a material comprising hydrogen ions and sulfate ions, thus a material comprising all of an acid electrolyte material (sulfuric acid as a whole), an ion of an acid electrolyte material (both hydrogen ions and sulfate ions are ions of an acid electrolyte) and an ion of an anion surfactant (sulfate ions are ions of many anionic surfactants such as SDS), thus a composition at the surface of the electrodes that meets the claim limitations.
As to claim 3, the combination of Oakes and Yang teaches the apparatus of claim 1. Yang further teaches that the metal alloy catalyst is provided as a nanoframe (Paragraphs 0086). Yang fails to specifically teach that the nanoframe is determined via HAADF-STEM; however, the means by which it is confirmed that the structure of the composition is a nanoframe is not patentably significant in a composition claim. Furthermore, Yang teaches that other parameters are determined by HAADF-STEM (Paragraph 0063).
As to claims, 8 and 9, the combination of Oakes and Yang teaches the apparatus of claim 1. As discussed above, Oakes teaches that the electrolyte comprises sulfuric acid, H2SO4, an acid with a pKa of about 3 or less, as evidenced, at least, by applicant’s own disclosure.
As to claim 10, the combination of Oakes and Yang teaches the apparatus of claim 1. As discussed above, the combination teaches the alternative embodiment of “an ion thereof”, sulfate is an ion of SDS, SDS meeting the formula of the claims.
As to claim 21, the combination of Oakes and Yang teaches the apparatus of claim 1. Yang fails to further teach that the average particle size is from 75 to 325 nm. However, Yang teaches that the average particles size is can be, for example, about 20 nm under certain reactions conditions (Paragraph 0084) or about 50 nm under different reaction conditions (Paragraph 0086). Therefore, it would have been obvious to one of ordinary skill in the art at the time to filing that the specific size of the nanoparticles is variable and that the synthesis could be scaled up to provide even larger nanoparticles that would be effective for use as catalysts.
Claims 5, 6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Oakes and Yang as applied to claims 1 and 21 above, and further in view of US Patent Application Publication No. 2018/0281060 to Yang et al. (Yang ‘060).
As to claims 5, 6 and 22, the combination of Oakes and Yang teaches the apparatus of claims 1, 11 and 21. As discussed above, Yang teaches that the first group 8-11 metal comprises nickel and the group 10-11 metal comprises platinum. Yang further teaches that the metal can comprise a trimetallic, thus positive numbers for e, f and g of the claim (Paragraph 0049). However, Yang is silent as to the specific trimetallic. However, Yang ‘060 also discusses bimetallic and trimetallic catalyst materials and teaches that an appropriate third metal for a trimetallic comprising nickel and platinum is palladium (Paragraph 0046). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the third metal of the trimetallic of Yang as palladium with the reasonable expectation of effectively forming the catalyst as taught by Yang ‘060.
Claims 7 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Oakes in view Yang and further in view of Yang ‘060.
As to claims 7, 24 and 25, Oakes teaches a system for hydrogen and oxygen generation via water electrolysis, the system comprising an anode and a cathode each comprising a platinum catalyst, in contact with an acidic electrolyte comprising sulfuric acid, H2SO4, (Abstract; Paragraphs 0042 and 0053; Claim 26). Thus, a composition, at an anode and/or cathode surface comprising a metal and an electrolyte material. However, Oakes fails to teach that the metal is an alloy of the claimed formula, instead teaching, as discussed above, platinum alone.
However, Yang discusses platinum catalysts for use in electrolytic reactors and teaches that the electrocatalyst activity for both the hydrogen evolution reaction and the oxygen evolution reaction can be improved via the provision of a bimetallic or trimetallic alloy, the bimetallic alloy comprising, for example, platinum (a group 10 metal) and nickel (a group 10 metal), in the form of a nanoframe with an average particle size of about 50 nm (Paragraphs 0004, 0005, 0049-0051 and 0086).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the platinum catalyst of both the anode and the cathode of Oakes, with the alloy catalyst of Yang, the bimetallic Pt-Ni embodiment comprising the formula of the claim, in order to improve the catalytic activity of the catalyst as taught by Yang. Thus a metal component of the formula of the claims disposed in sulfuric acid, a material comprising hydrogen ions and sulfate ions, thus a material comprising all of an acid electrolyte material (sulfuric acid as a whole), an ion of an acid electrolyte material (both hydrogen ions and sulfate ions are ions of an acid electrolyte) and an ion of an anion surfactant (sulfate ions are ions of many anionic surfactants such as SDS), thus a composition at the surface of the electrodes that meets the claim limitations.
As discussed above, Yang teaches that the first group 8-11 metal comprises nickel and the group 10-11 metal comprises platinum. Yang further teaches that the metal can comprise a trimetallic, thus positive numbers for e, f and g of the claim (Paragraph 0049). However, Yang is silent as to the specific trimetallic. However, Yang ‘060 also discusses bimetallic and trimetallic catalyst materials and teaches that an appropriate third metal for a trimetallic comprising nickel and platinum is palladium (Paragraph 0046). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the third metal of the trimetallic of Yang as palladium with the reasonable expectation of effectively forming the catalyst as taught by Yang ‘060.
As to claim 23, the combination of Oakes, Yang and Yang ‘060 teaches the apparatus of claim 1. Yang further teaches that the metal alloy catalyst is provided as a nanoframe (Paragraphs 0086). Yang fails to specifically teach that the nanoframe is determined via HAADF-STEM; however, the means by which it is confirmed that the structure of the composition is a nanoframe is not patentably significant in a composition claim. Furthermore, Yang teaches that other parameters are determined by HAADF-STEM (Paragraph 0063).
As to claims 26 and 27, the combination of Oakes and Yang teaches the apparatus of claim 1. As discussed above, Oakes teaches that the electrolyte comprises sulfuric acid, H2SO4, an acid with a pKa of about 3 or less, as evidenced, at least, by applicant’s own disclosure.
As to claim 28, the combination of Oakes and Yang teaches the apparatus of claim 1. As discussed above, the combination teaches the alternative embodiment of “an ion thereof”, sulfate is an ion of SDS, SDS meeting the formula of the claims.
As to claim 29, the combination of Oakes and Yang teaches the apparatus of claim 1. Yang fails to further teach that the average particle size is from 75 to 325 nm. However, Yang teaches that the average particles size is can be, for example, about 20 nm under certain reactions conditions (Paragraph 0084) or about 50 nm under different reaction conditions (Paragraph 0086). Therefore, it would have been obvious to one of ordinary skill in the art at the time to filing that the specific size of the nanoparticles is variable and that the synthesis could be scaled up to provide even larger nanoparticles that would be effective for use as catalysts.
Claims 1, 3, 8, 9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Oakes in view of Yang and further in view of the NPL “The prospects of developing a highly energy-efficient water electrolyser by eliminating or mitigating bubble effects” to Swiegers et al. (Swiegers).
As to claim 1, Oakes teaches a system for hydrogen and oxygen generation via water electrolysis, the system comprising an anode and a cathode each comprising a platinum catalyst, in contact with an acidic electrolyte comprising sulfuric acid, H2SO4, (Abstract; Paragraphs 0042 and 0053; Claim 26). Thus, a composition, at an anode and/or cathode surface comprising a metal and an electrolyte material. However, Oakes fails to teach that the metal is an alloy of the claimed formula, instead teaching, as discussed above, platinum alone.
However, Yang discusses platinum catalysts for use in electrolytic reactors and teaches that the electrocatalyst activity for both the hydrogen evolution reaction and the oxygen evolution reaction can be improved via the provision of a bimetallic or trimetallic alloy, the bimetallic alloy comprising, for example, platinum (a group 10 metal) and nickel (a group 10 metal), in the form of a nanoframe with an average particle size of about 50 nm (Paragraphs 0004, 0005, 0049-0051 and 0086).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the platinum catalyst of both the anode and the cathode of Oakes, with the alloy catalyst of Yang, the bimetallic Pt-Ni embodiment comprising the formula of the claim, in order to improve the catalytic activity of the catalyst as taught by Yang. Thus a metal component of the formula of the claims.
However, the combination further fails to teach that the composition, at the anode and/or cathode surface, comprising the electrolyte material and the metal component further comprises an anionic surfactant.
However, Swiegers also discusses water electrolysis and teaches that the formation of the gaseous hydrogen and oxygen bubbles leads to inefficiency within the cell, and that the removal of these bubbles from the surfaces of the anode and cathode is of importance (Page 1282; Column 2). Swiegers teaches that in order to remove these bubbles at hydrogen generating electrodes a surfactant such as SDS should be added to the electrolyte (Page 1302; Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the electrolyte in contact with the hydrogen evolving cathode of Oakes with the addition of SDS in order to remove bubbles from the surfaces of the cathode and mitigate inefficiencies as taught by Swiegers. SDS is an amphiphile, as evidenced by, at least, applicants’ own disclosure as SDS as an appropriate amphiphile choice. Thus, a composition at the electrocatalyst surface comprising the metal, the electrolyte and the surfactant.
As to claim 3, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. Yang further teaches that the metal alloy catalyst is provided as a nanoframe (Paragraphs 0086). Yang fails to specifically teach that the nanoframe is determined via HAADF-STEM; however, the means by which it is confirmed that the structure of the composition is a nanoframe is not patentably significant in a composition claim. Furthermore, Yang teaches that other parameters are determined by HAADF-STEM (Paragraph 0063).
As to claims, 8 and 9, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. As discussed above, Oakes teaches that the electrolyte comprises sulfuric acid, H2SO4, an acid with a pKa of about 3 or less, as evidenced, at least, by applicant’s own disclosure.
As to claim 10, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. As discussed above, Swiegers teaches that the amphiphile is SDS, an anionic surfactant meeting the formula of the claims.
As to claim 21, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. Yang fails to further teach that the average particle size is from 75 to 325 nm. However, Yang teaches that the average particles size is can be, for example, about 20 nm under certain reactions conditions (Paragraph 0084) or about 50 nm under different reaction conditions (Paragraph 0086). Therefore, it would have been obvious to one of ordinary skill in the art at the time to filing that the specific size of the nanoparticles is variable and that the synthesis could be scaled up to provide even larger nanoparticles that would be effective for use as catalysts.
Claims 5, 6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Oakes, Yang and Swiegers as applied to claims 1, 11 and 21 above, and further Yang ‘060.
As to claims 5, 6 and 22, the combination of Oakes, Yang and Swiegers teaches the apparatus of claims 1, 11 and 21. As discussed above, Yang teaches that the first group 8-11 metal comprises nickel and the group 10-11 metal comprises platinum. Yang further teaches that the metal can comprise a trimetallic, thus positive numbers for e, f and g of the claim (Paragraph 0049). However, Yang is silent as to the specific trimetallic. However, Yang ‘060 also discusses bimetallic and trimetallic catalyst materials and teaches that an appropriate third metal for a trimetallic comprising nickel and platinum is palladium (Paragraph 0046). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the third metal of the trimetallic of Yang as palladium with the reasonable expectation of effectively forming the catalyst as taught by Yang ‘060.
Claims 7 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Oakes in view of Yang and further in view of Swiegers.
As to claims 7, 24 and 25, Oakes teaches a system for hydrogen and oxygen generation via water electrolysis, the system comprising an anode and a cathode each comprising a platinum catalyst, in contact with an acidic electrolyte comprising sulfuric acid, H2SO4, (Abstract; Paragraphs 0042 and 0053; Claim 26). Thus, a composition, at an anode and/or cathode surface comprising a metal and an electrolyte material. However, Oakes fails to teach that the metal is an alloy of the claimed formula, instead teaching, as discussed above, platinum alone.
However, Yang discusses platinum catalysts for use in electrolytic reactors and teaches that the electrocatalyst activity for both the hydrogen evolution reaction and the oxygen evolution reaction can be improved via the provision of a bimetallic or trimetallic alloy, the bimetallic alloy comprising, for example, platinum (a group 10 metal) and nickel (a group 10 metal), in the form of a nanoframe with an average particle size of about 50 nm (Paragraphs 0004, 0005, 0049-0051 and 0086).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the platinum catalyst of both the anode and the cathode of Oakes, with the alloy catalyst of Yang, the bimetallic Pt-Ni embodiment comprising the formula of the claim, in order to improve the catalytic activity of the catalyst as taught by Yang. Thus a metal component of the formula of the claims.
However, the combination further fails to teach that the composition, at the anode and/or cathode surface, comprising the electrolyte material and the metal component further comprises an anionic surfactant.
However, Swiegers also discusses water electrolysis and teaches that the formation of the gaseous hydrogen and oxygen bubbles leads to inefficiency within the cell, and that the removal of these bubbles from the surfaces of the anode and cathode is of importance (Page 1282; Column 2). Swiegers teaches that in order to remove these bubbles at hydrogen generating electrodes a surfactant such as SDS should be added to the electrolyte (Page 1302; Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the electrolyte in contact with the hydrogen evolving cathode of Oakes with the addition of SDS in order to remove bubbles from the surfaces of the cathode and mitigate inefficiencies as taught by Swiegers. SDS is an amphiphile, as evidenced by, at least, applicants’ own disclosure as SDS as an appropriate amphiphile choice. Thus, a composition at the electrocatalyst surface comprising the metal, the electrolyte and the surfactant.
As to claim 23, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. Yang further teaches that the metal alloy catalyst is provided as a nanoframe (Paragraphs 0086). Yang fails to specifically teach that the nanoframe is determined via HAADF-STEM; however, the means by which it is confirmed that the structure of the composition is a nanoframe is not patentably significant in a composition claim. Furthermore, Yang teaches that other parameters are determined by HAADF-STEM (Paragraph 0063).
As to claims 26 and 27, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. As discussed above, Oakes teaches that the electrolyte comprises sulfuric acid, H2SO4, an acid with a pKa of about 3 or less, as evidenced, at least, by applicant’s own disclosure.
As to claim 28, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. As discussed above, Swiegers teaches that the amphiphile is SDS, an anionic surfactant meeting the formula of the claims.
As to claim 29, the combination of Oakes, Yang and Swiegers teaches the apparatus of claim 1. Yang fails to further teach that the average particle size is from 75 to 325 nm. However, Yang teaches that the average particles size is can be, for example, about 20 nm under certain reactions conditions (Paragraph 0084) or about 50 nm under different reaction conditions (Paragraph 0086). Therefore, it would have been obvious to one of ordinary skill in the art at the time to filing that the specific size of the nanoparticles is variable and that the synthesis could be scaled up to provide even larger nanoparticles that would be effective for use as catalysts.
Response to Arguments
Applicant's arguments filed 19 December 2025 have been fully considered but they are not persuasive.
Applicants argue that the interface of the electrode surface and the materials in the electrolyte cannot be properly considered a composition. While on the surface this argument can be seen reasonably persuasive, a review of the Applicant’s own disclosure appears to actively teach this as an embodiment of the invention (Specification at paragraphs 0151, 0152 and 0157), absent more thorough persuasive arguments as to why these disclosures are not related to the claims, the Examiner maintains that this interpretation of composition proper and maintains the claim rejections.
Applicants further argue that there is no motivation to modify the electrode of Oakes with the electrodes of Yang. The Examiner disagrees, as discussed above, Oakes discusses platinum for electrode for hydrogen and oxygen evolution reactions and Yang discusses platinum catalysts for use in electrolytic reactors and teaches that the electrocatalyst activity for both the hydrogen evolution reaction and the oxygen evolution reaction can be improved via the provision of a bimetallic or trimetallic alloy.
Applicants further argue that there is no motivation to modify the combination with the addition of a surfactant of Swiegers specifically discussing different electrode materials; however, the Examiner disagrees and maintain that bubble formation in the production of hydrogen gas in an aqueous environment would be an issue of concern for all electrode materials.
Furthermore, the Examiner has presented additional rejections with a broader interpretation of the claims (as discussed in the citation of pertinent prior art in the Office Action of 21 October 2025) merely for compact prosecution, this rejection not utilizing Swiegers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794