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 .
Status of Amendment
No claim amendment was filed with the reply filed 19 February 2026.
Claims 39-42 and 44-58 are currently pending.
Claims 39-42 and 44-54 are currently under examination.
Claims 55-58 are currently withdrawn.
Status of Rejections
The rejection of claims 39-42 and 44-54 under 35 U.S.C. 102 and 103 are herein maintained.
Response to Arguments
Applicant's arguments filed 19 February 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the thickness of Kim is applied to the ionomer rick layer 5 and not to layer 3, this argument is not persuasive because the ionomer rich layer is made of the same ionomer of layer 3 (see claim 2, [0076]). Therefore, the thickness of this layer possesses a thickness which overlaps the instantly claimed range. Since the entire layers 3 and 5 cover the catalysts particles, they are deemed homogenous over as such. It is noted that homogenous does not require the layer be conformal.
In response to Applicant’s argument that the coating of Kim does not satisfy a layer formed directly on the outer surface, this argument is not persuasive based on Fig. 2 which shows the layer directly on the catalysts.
In response to Applicant’s arguments towards claims 47-49, Applicant repeats arguments towards the thickness of the layer and thus the rejection maintained for the reasons outlined above.
In response to Applicant’s argument towards claims 50 and 51, this argument is not persuasive because layer 50 is not coated onto the catalyst layer but rather an explicit separate structure.
In response to Applicant’s argument towards claim 52 of a thickness of 1500nm, this argument is not persuasive as the range of this layer overlaps the claimed range and the higher value of the range is not relied upon for the rejection at hand.
In response to Applicant’s argument towards Tokuda with respect too the thickness relative the conductive support, this argument is not persuasive because the thickness relied upon by rejection is t3, which is the thickness of the ionomer layer surrounding the catalysts see Fig. 2 [0054].
In response to Applicant’s argument towards Albo that to incorporate the teachings of Tokuda would require a conductive support, this argument is not persuasive because the thickness relied upon is independent of the support. As a response to that it would be difficult to achieve said thicknesses on the catalyst particles of Albo, no evidence has been presented as such. An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references of Tokuda and Kuhl, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant argues that the one of ordinary skill in the art would not be motivated to combine to achieve a differentiated transport routes for reactant gases while preventing flooding. It is noted the claims are silent as to the particular feature of differentiated transport routes or flooding. Further, the prior art need not anticipate the motivation applicant had for the particular limitations, but rather provide motivation to combine the prior art structures to arrive at the claimed structures.
In response to Applicant’s argument towards claim 41 alleging the prior art does not discloses a porous metal layer, this argument is not persuasive because said feature is not claimed in instant claim 41.
In response to applicant's argument that the references fail to show certain features of the invention of instant claim 42, it is noted that the features upon which applicant relies (i.e., hydrophobic and hydrophilic groups ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In the instant case, said features are recited with in claim 39 and applicant ties these feature not provide a lack of motivation of restrict the ionomer to 7-50 nm. The rational for maintaining the rejection mirrors that above and thus maintained for said reasons.
In response to Applicant’s arguments towards claim 39 that Sato discloses the Nafion is applied as a binder within bulk mixture, this argument is not persuasive because Sato does not discloses anything about a binder or bulk mixture in [0040]. Rather, Sato explicitly states “…the thickness of an ionomer coating over the catalysts material…” [0040], thus explicitly disclosing this feature as a coating and not a bulk layer.
In response to Applicant’s argument towards claim 54 that Sato discloses an interpenetrating network and thus not a porous metal layer of catalyst, this argument is not persuasive because the structure provided via Sato is a porous metal ([0037]) in a metal layer with the catalyst particles 136 on a porous metal substrate 132.
In response to Applicant’s argument towards claim 47, that Sato disclose not disclose the homogenous layer at 7 to 50 nm, this argument is not persuasive because Sato was not relied upon for said limitation.
In response to Applicant’s argument that Sato uses the weight ratio for a different reason than Applicant, this argument is not persuasive because the reason for providing the weight ratio is not germane to the explicit teaching of Sato which discloses said ratio, as recognized by Applicant. In response to Applicant’s argument of a result effective variable, this has not been established in accordance with MPEP 716.02 to establish said ranges as unexpected.
No further arguments are presented.
Claim Rejections - 35 USC § 103
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.
Claim(s) 39, 40, and 44-52 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2021/0159510 A1).
As to claim 39, 44, and 45, Kim discloses a catalyst system for gas-phase electrolysis of a reactant gas to form a product in an aqueous medium ( the recitation is deemed an intended use of the catalyst system as claimed without imparting particular structure outside of the specific limitations below in accordance with MPEP 2111.02), the catalyst system (Fig. 2) comprising:
a catalytic material (layer #30 ) comprising a catalytic metal (catalyst #2), the catalytic material being a CO2 reduction reaction catalyst or a CO reduction reaction catalyst; and wherein the catalytic metal comprises Cu ([0048]); wherein the catalytic material is or is comprised in a layer deposited on a gas diffusion membrane (Fig. 3 layer 30 next to gas diffusion layer 40)
one ion-conducting polymer layer provided on the catalytic material comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups (#3 coating ionomer), and wherein the ion-conducting polymer layer has a thickness of 30 nm to 1500 nm as measured by transmission-electron microscopy ([0132] which overlaps the instantly claimed range and thus prima facie obvious in accordance with MPEP 2144.05 I );
wherein the ion-conducting polymer layer is homogeneous over the catalyst material (See Fig. 2) and wherein the ion-conducting polymer comprises an ionomer with a backbone that comprises the hydrophobic groups and side chains that comprise the hydrophilic groups, wherein the hydrophilic groups comprise sulfonic acid groups ([0061] “poly(perfluorosulfonic acid which further satisfies the instant claim limitations of claim 44 and 45).
As to claim 40, the recitation “wherein the ion-conducting polymer layer is an ion-conducting polymer layer provided on the catalytic material and comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups, wherein the ion-conducting polymer layer has a morphology with separate hydrophilic and hydrophobic domains that form differentiated gas and ion transport routes.” is met because of the chemical structure of the ion polymer as disclosed in the above citation. Furthermore, Kim discloses providing layer 30 onto layer 50 which is a polymer electrolyte membrane with the domains as claimed ([0108], [0114]).
As to claim 46, Kim further discloses where one or more coated layers formed on the ion conducting polymer directly onto an outer surface of the catalytic material (See Fig. 2).
As to claim 47, Kim further discloses wherein at least a part of the catalytic material is in the form of a plurality of particles and the on-conducting polymer layer is provided around the catalytic material particles, thereby providing a plurality of catalyst- polymer particles.(See Fig. 2).
As to claim 48, Kim further discloses wherein the catalyst system comprises a catalyst-ionomer bulk heterojunction (CIBH) and the CIBH is disposed on a gas- diffusion membrane. (via enclosed in binder 4 as seen in Fig. 2 and on gas diffusion layer 40 as seen in Fig. 3).
As to claim 49, Kim further discloses wherein a part of said catalytic material is in the form of a layer and wherein said catalyst system comprises a catalyst- ionomer bulk heterojunction (CIBH) disposed on the catalytic material layer. (via enclosed in ionomer 4/5 where the entire system is formed in a layer thus satisfying the instant limitation of “a part”).
As to claim 50, Kim further discloses wherein the catalyst system comprises at least two ion-conducting polymer layers and wherein at least one ion-conducting polymer layer is comprised in the catalyst-ionomer bulk heterojunction (CIBH) (See Fig. 3 layer 30) and wherein the CIBH is disposed on an ion-conducting polymer layer (Fig. 3 layer #50).
As to claim 51, Kim further discloses wherein a part of said catalytic material is in the form of a layer (#30), wherein the catalyst system comprises at least two ion-conducting polymer layers (#s 3 and 50) and wherein at least one conducting polymer layer is comprised in a catalyst-ionomer bulk heterojunction (CIBH) (layer 50) and wherein an ion-conducting polymer layer is disposed between the CIBH and the catalytic material layer (layer ionomer 4 within the layer 30).
As to claim 52, Kim further discloses wherein the catalyst system comprises a catalyst-ionomer bulk heterojunction (CIBH) (see citation with respect to claim 47) and wherein the ion-conducting polymer comprises a perfluorinated sulfonic acid ionomer. ([0061]).
Claims 39, 41, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Albo et al (Applied Catalysis B: Environmental 176–177 (2015) 709–717) in view of Tokuda (US 2010/0323265 A1) and Kuhl et al (US 2017/0321334 A1).
As to claims 39, 41, and 42, Albo discloses a catalyst system for gas-phase electrolysis of a reactant gas to form a product in an aqueous medium (Abstract), the catalyst system comprising:
a catalytic material (Cu2O and Cu2O/ZnO) comprising a catalytic metal (Cu2O and Cu2O/ZnO) or carbon (#32 which includes Zn as required by instant claim 42), the catalytic material being a CO2 reduction reaction catalyst or a CO reduction reaction catalyst; and wherein the catalytic metal comprises copper (Abstract – note this limitation is not required by virtue of the explicit “or” as to the specific type of catalytic material);
Albo discloses wherein the catalyst is dispersed with Nafion (Section 2.1) but fails to explicitly disclose one ion-conducting polymer layer provided on the catalytic material comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups, and wherein the ion-conducting polymer layer has a thickness of 2 nm to 50 nm as measured by transmission-electron microscopy; wherein the ion-conducting polymer layer is homogeneous over the catalyst material and wherein the ion-conducting polymer comprises an ionomer with a backbone that comprises the hydrophobic groups and side chains that comprise the hydrophilic groups, wherein the hydrophilic groups comprise sulfonic acid groups, or a specific gas diffusion layer.
Tokuda discloses coating catalyst particles (#s 31/32) with an ionomer (#33) comprising one ion-conducting polymer layer provided on the catalytic material comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups ([0046] Nafion), and wherein the ion-conducting polymer layer has a thickness of 2 nm to 50 nm as measured by transmission-electron microscopy ([0054] 10-24 nm t3 thickness as shown in Fig. 2); wherein the ion-conducting polymer layer is homogeneous over the catalyst material and wherein the ion-conducting polymer comprises an ionomer with a backbone that comprises the hydrophobic groups and side chains that comprise the hydrophilic groups, wherein the hydrophilic groups comprise sulfonic acid groups ([0044]-[0046] sulfonated fluoro polymers).
Albo discloses using the catalysts in conjunction with a sulfonated membrane and Tokuda discloses using a coating layer over the catalysts when used with a sulfonated membrane
It would have been obvious to one of ordinary skill in the art to have used the ionomer coating as taught by Tokuda with the catalyst particles of Albo because it allows for the least resistance of the gas reaching the catalysts while allowing for the transport to the membrane layers ([0054]).
Kuhl discloses a membrane electrode assembly (#600) for the conversion of CO2 to methanol ([0006] and Table 2) which incorporates a gas diffusion layer (#626 and 646) against catalyst layers (#620/640).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a gas diffusion layer against the catalyst layer as taught by Kuhl with the membrane assembly of Albo, as modified by Tokuda, in order to facilitate flow of gas into and out of the membrane electrode assembly (Kuhl [0070]).
Claims 39, 47, 53, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al (US 2016/0177459 A1) in view of Tokuda (US 2010/0323265 A1).
As to claims 39 and 54, Sato discloses a catalyst system for gas-phase electrolysis of a reactant gas to form a product in an aqueous medium (Title “electrochemical reduction device”), the catalyst system comprising:
a catalytic material ([0036]) comprising a catalytic metal and carbon ([0037]), the catalytic material being a CO2 reduction reaction catalyst or a CO reduction reaction catalyst; and wherein the catalytic metal comprises copper (which may be selected to comprise copper [0036])); provided as a layer on a gas diffusion membrane (#s 140/142)
and wherein the catalytic material is provided as a porous metal layer and the one or more ion-conducting polymer layers are disposed thereon to form a catalyst-ionomer planar heterojunction (CIPH) (as required by instant claim 54 [0037] “electron conductive material…a porous metal…”)
Sato discloses wherein the catalyst is dispersed with Nafion ([0040]) which is preferably coated over the catalysts as an ionomer layer ([0041]) but fails to explicitly disclose one ion-conducting polymer layer provided on the catalytic material comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups, and wherein the ion-conducting polymer layer has a thickness of 2 nm to 50 nm as measured by transmission-electron microscopy; wherein the ion-conducting polymer layer is homogeneous over the catalyst material and wherein the ion-conducting polymer comprises an ionomer with a backbone that comprises the hydrophobic groups and side chains that comprise the hydrophilic groups, wherein the hydrophilic groups comprise sulfonic acid groups, or a specific gas diffusion layer.
Tokuda discloses coating catalyst particles (#s 31/32) with an ionomer (#33) comprising one ion-conducting polymer layer provided on the catalytic material comprising an ion-conducting polymer that includes hydrophilic and hydrophobic groups ([0046] Nafion), and wherein the ion-conducting polymer layer has a thickness of 2 nm to 50 nm as measured by transmission-electron microscopy ([0054] 10-24 nm t3 thickness as shown in Fig. 2); wherein the ion-conducting polymer layer is homogeneous over the catalyst material and wherein the ion-conducting polymer comprises an ionomer with a backbone that comprises the hydrophobic groups and side chains that comprise the hydrophilic groups, wherein the hydrophilic groups comprise sulfonic acid groups ([0044]-[0046] sulfonated fluoro polymers).
Albo discloses using the catalysts in conjunction with a sulfonated membrane and Tokuda discloses using a coating layer over the catalysts when used with a sulfonated membrane
It would have been obvious to one of ordinary skill in the art to have used the ionomer coating as taught by Tokuda with the catalyst particles of Sato because it allows for the least resistance of the gas reaching the catalysts while allowing for the transport to the membrane layers ([0054]).
As to claim 47, Sato further discloses wherein at least a part of the catalytic material is in the form of a plurality of particles and the on-conducting polymer layer is provided around the catalytic material particles, thereby providing a plurality of catalyst- polymer particles.(See Fig. 13 layer 122).
As to claim 53, Sato further discloses wherein the catalyst system comprises a catalyst-ionomer bulk heterojunction (CIBH) and wherein the CIBH has a weight ratio of catalyst material to ion-conducting polymer ranging from 0.1 to 10.0. (See relative amounts in Table 1 where the catalyst is 50% and thus Nafion/CB making up 50% at a .8:1 ratio thus providing approximately 22% mass Nafion resulting in a ratio of 0.5 of catalyst to ionomer polymer falling within said claimed range).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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