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 Amendment
Acknowledgment is made to Applicant’s claim amendments received 29 June 2026. Claims 1-6, 8-30 and 32-39 are currently pending of which claims 16-27 are withdrawn.
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 1-4, 6, 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0071786 A1 to Jang et al. (Jang) in view of US 2022/0085390 A1 to Buechi et al. (Buechi).
As to claims 1, 6 and 11, Jang teaches an oxygen electrode for a solid electrolyte electrode assembly comprising a gas diffusion layer substrate, titanium paper, onto which an iridium oxide catalyst is electrodeposited at a loading of, for example, 0.075 to 0.2 mg/cm2, to form an ionomer free catalyst layer comprising a plurality of discrete nano-sized structure distributed on the substrate forming localized reaction active sites accessible to gas and liquid phase reactants (Abstract; Paragraphs 0074-0083; Figures 1C, 1D and 2). However, Jang fails to further teach that the substrate comprises a surface coating. However, Buechi also discusses gas diffusion layers (porous transport layers) made of titanium in solid electrolyte water electrolysis assemblies and teaches that the gas diffusion layer should be provided with a coating layer of an inert metal in order to form a protective layer (Paragraphs 0002, 0018, 0019 and 0034). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide a metal layer on to the substrate of Jang in order to form a protective layer as taught by Buechi.
As to claim 2, the combination of Jang and Buechi teaches the apparatus of claim 1. Jang further teaches that the anode side is provided with a bipolar plate, thus a substrate comprising a nonporous material layer (Paragraph 0115).
As to claims 3 and 4, the combination of Jang and Buechi teaches the apparatus of claim 1. Jang further teaches that the substate has a thickness of 60 to 500 microns (Paragraph 0064).
As to claim 15, Jang teaches a solid polymer electrolyte electrode assembly comprising, a solid polymer electrolyte membrane, an oxygen electrode for a solid electrolyte electrode assembly comprising a gas diffusion layer substrate, titanium paper, onto which an iridium oxide catalyst is electrodeposited at a loading of, for example, 0.001 to 1.05 mg/cm2, to form an ionomer free catalyst layer comprising a plurality of discrete nano-sized structure distributed on the substrate forming localized reaction active sites accessible to gas and liquid phase reactants (Abstract; Paragraphs 0074-0083; Figures 1C, 1D and 2). However, Jang fails to further teach that the substrate comprises a surface coating. However, Buechi also discusses gas diffusion layers (porous transport layers) made of titanium in solid electrolyte water electrolysis assemblies and teaches that the gas diffusion layer should be provided with a coating layer of an inert metal in order to form a protective layer (Paragraphs 0002, 0018, 0019 and 0034). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide a metal layer on to the substrate of Jang in order to form a protective layer as taught by Buechi.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang and Buechi as applied to claim 3 above, and further in view of US 2025/0084545 A1 to Sano et al. (Sano).
As to claim 5, the combination of Jang and Buechi teaches the apparatus of claim 3. Jang further teaches that titanium paper has a porosity of 60 to 70% (Paragraph 0063). However, Jang is silent as to the specific pore diameter. However, Sano also discusses titanium as a substrate for water electrolysis and teaches that an effective pore diameter for a porosity of 60% is 50 microns (Table 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the titanium substrate with a pore diameter of 50 microns to achieve the porosity of 60% as taught by Sano.
Claims 8, 9, 10, 38 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang and Buechi as applied to claims 1 and 15 above, and further in view of “Platinum Group Metal-based Nanosheets: Synthesis and Application towards Electrochemical Energy Storage and Conversion” to Sugimoto et al (Sugimoto).
As to claims 8 and 38, the combination of Jang and Buechi teaches the apparatus of claims 1 and 15. As discussed above, Jang teaches that the nanostructures are iridium oxide directly grown on the substrate via electrodeposition. However, Jang fails to specifically contemplate nanosheets. However, Sugimoto also discusses iridium oxide electrocatalyst and teaches that nanosheets of iridium oxide can be used as electrocatalyst to provide high surface area and high conductivity (Abstract; Section 1. General Overview of Conducting Nanosheets). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the iridium oxide in the form of nanosheets in order to provide the electrocatalyst as a high surface are and high conductivity electrocatalyst as taught by Sugimoto.
As to claims 9, 10 and 39, the combination of Jang and Buechi teaches the apparatus of claims 1 and 15. As discussed above, Jang teaches that the catalyst is electroplated on the substrate with a loading of for example, 0.001 to 1.05 mg/cm2. However, Jang teaches that the catalyst comprises iridium oxide and fails to contemplate platinum. However, Sugimoto also discusses electrocatalyst and teaches that an equivalent to iridium oxide is platinum nanosheets in order to provide a catalyst with high surface area and high conductivity (Abstract; Section 1. General Overview of Conducting Nanosheets). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the iridium oxide with platinum nanosheets in order to provide the electrocatalyst as a high surface are and high conductivity electrocatalyst as taught by Sugimoto.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang and Buechi as applied to claim 1 above, and further in view of US 2018/0195186 A1 to Zhang et al. (Zhang).
As to claims 12 and 13, the combination of Jang and Buechi teaches the apparatus of claim 1. As discussed above, Jang teaches an ionomer free iridium oxide catalyst but fails to teach a bimetallic catalyst. However, Zhang also discusses polymer electrolyte water electrolysis and teaches that in addition to iridium oxide a bimetallic of IrRuOx can be utilized (Ru:Ir of 1:1) (Paragraphs 0061). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize IrRuOx bimetallic for the catalyst in place of iridium oxide as a known equivalent with the expectation of effectively providing the catalyst as taught by Zhang (MPEP 2144.06 II).
Claims 1, 28, 29, 30 and 33 is rejected under 35 U.S.C. 103 as being unpatentable over Jang, in view of Buechi and further in view of Kim.
As to claims 1, 28, 30 and 33, Jang teaches a dual electrode assembly for solid polymer electrolyte device comprising, a solid polymer electrolyte membrane, a first gas diffusion substrate, titanium paper diffusion layer on a first side of the solid polymer electrolyte membrane, a second gas diffusion substrate, carbon paper, on a second opposing side of the solid polymer electrolyte membrane, an iridium oxide catalyst electrodeposited on the first substrate at a loading of, for example, 0.001 to 1.05 mg/cm2, to form an ionomer free catalyst layer comprising a plurality of discrete nano-sized structure distributed on the substrate forming localized reaction active sites accessible to gas and liquid phase reactants (Abstract; Paragraphs 0074-0083; Figures 1C, 1D and 2). However, Jang fails to further teach that at least one of the substrates comprises a surface coating. However, Buechi also discusses gas diffusion layers (porous transport layers) made of titanium in solid electrolyte water electrolysis assemblies and teaches that the gas diffusion layer should be provided with a coating layer of an inert metal in order to form a protective layer (Paragraphs 0002, 0018, 0019 and 0034). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide a metal layer on to, at least, the titanium substrate of Jang in order to form a protective layer as taught by Buechi.
However, Jang fails to further teach that the cathode side catalyst is also ionomer free, instead teaching a platinum ionomer mixture. However, Kim teaches that platinum electrocatalysts are expensive and teaches that molybdenum sulfides can be directly electrodeposited on carbon fiber as an alternative to noble metals in cathode of proton exchange membrane water electrolysis (Abstract; 1. Introduction). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the cathode side catalyst of Jang with molybdenum sulfides directly electrodeposited on carbon fiber in order to replace the expensive platinum catalyst as taught by Kim. Thus, forming an ionomer free catalyst layer comprising a plurality of discrete nanostructures directly gown on the substrate providing localized reaction active sites accessible to gas and liquid phase reactants. Kim further teaches that the loading of the molybdenum sulfides is, for example, around 0.04 to 0.28 mg/cm2 (Figure 5(e)).
As to claim 29, the combination of Jang, Buechi and Kim teaches the apparatus of claim 28. Jang further teaches that the second substate has a thickness of 60 to 500 microns (Paragraph 0064).
Claims 14 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang, Buechi and Kim as applied to claims 1 and 28 above, and further in view of “Roadmap and Direction toward High-Performance MoS2 Hydrogen Evolution Catalysts” to Cao (Cao).
As to claims 14 and 37, the combination of Jang, Buechi and Kim teaches the apparatus of claims 1 and 28. However, Kim is silent as to the specific form of molybdenum sulfide utilized. However, Cao also discusses molybdenum sulfides catalyst for hydrogen evolution and teaches that an effective form of the molybdenum sulfide in terms of superior performance and long term stability comprises a 1T-2H heterophase molybdenum disulfide (Page 11022, Column 2, Paragraph 4). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize comprises a 1T-2H heterophase molybdenum disulfide to ensure a molybdenum sulfide with superior performance and long term stability as taught by Cao.
Claims 32 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang, Buechi and Kim as applied to claim 28 above, and further in view of Sugimoto.
As to claim 32, the combination of Jang, Buechi and Kim teaches the apparatus of claim 28. As discussed above, Jang teaches that the nanostructures are iridium oxide directly grown on the substrate via electrodeposition. However, Jang fails to specifically contemplate nanosheets. However, Sugimoto also discusses iridium oxide electrocatalyst and teaches that nanosheets of iridium oxide can be used as electrocatalyst to provide high surface area and high conductivity (Abstract; Section 1. General Overview of Conducting Nanosheets). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the iridium oxide in the form of nanosheets in order to provide the electrocatalyst as a high surface are and high conductivity electrocatalyst as taught by Sugimoto.
As to claim 36, the combination of Jang, Buechi and Kim teaches the apparatus of claim 28. As discussed above, Jang teaches that the catalyst is electroplated on the substrate with a loading of for example, 0.001 to 1.05 mg/cm2. However, Jang teaches that the catalyst comprises iridium oxide and fails to contemplate platinum. However, Sugimoto also discusses electrocatalyst and teaches that an equivalent to iridium oxide is platinum nanosheets in order to provide a catalyst with high surface area and high conductivity (Abstract; Section 1. General Overview of Conducting Nanosheets). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the iridium oxide with platinum nanosheets in order to provide the electrocatalyst as a high surface are and high conductivity electrocatalyst as taught by Sugimoto.
Claims 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Jang, Buechi and Kim as applied to claim 28 above, and further in view of Zhang.
As to claims 34 and 35, the combination of Jang, Buechi and Kim teaches the apparatus of claim 28. As discussed above, Jang teaches an ionomer free iridium oxide catalyst but fails to teach a bimetallic catalyst. However, Zhang also discuses polymer electrolyte water electrolysis and teaches that in addition to iridium oxide a bimetallic of IrRuOx can be utilized (Ru:Ir of 1:1) (Paragraphs 0061). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize IrRuOx bimetallic for the catalyst in place of iridium oxide as a known equivalent with the expectation of effectively providing the catalyst as taught by Zhang (MPEP 2144.06 II).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
