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 .
Election/Restrictions
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5 August 2024.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
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 1-9 and 16-17 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The application as originally filed does not describe either leaving Ni foam in the solution in the absence of a precipitant or a temperature of 10 to 40 C in such a way as to reasonably convey to one skilled in the art that the inventor or joint inventor had possession of the claimed invention.
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.
Claim(s) 1, 3, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (CN 109701540) in view of Kenney et al. (WO 2019/160701).
Regarding Claims 1 and 3, Deng et al. (CN’540) teach a method for ambient-temperature synthesis of a catalyst for water electrolysis, the method comprising: dissolving an amount of an Fe2+ source (ferrous sulfate (FeSO4-7H2O), ferrous nitrate, ferrous) and in deionized water at ambient temperature (20-40 C) to form a solution; placing nickel (Ni) foam into the solution, whereby the Ni foam defines a substrate or a Ni source for growth of the catalyst; leaving the Ni foam in the solution at ambient temperature for 0.5 hour to provide a treated foam, during which time duration, the catalyst is grown on the substrate; then injecting ammonium bicarbonate, stirring the mixture at room temperature for 24 hours; and removing the treated foam from the solution after the time duration, wherein the treated foam comprises the catalyst grown thereon [0043,0031-0032]. CN’540 teaches that the time for mixing nickel foam can be between 1-120 min. [0030] and that the time for coprecipitation reaction on the nickel foam can be between 2-60 hours [0031]. CN’540 fails to teach that the Ni foam does not remain in solution for longer than four hours. However, it provides evidence that time is a result-effective variable, known in the prior art to affect sufficient precipitation and formation of FeOOH in a reaction [0020,0022,0024]; time is generally considered an optimizable variable in performing a reaction to achieve a desired amount of product and/ or to reach equilibrium. It would have been obvious to perform the step within the recited range of time through routine optimization. Moreover, Kenney fails to teach “in the absence of a precipitant.” However, Kenney (WO’701) is analogous art for growing NiFe catalyst on a nickel foam substrate and teaches placing an Ni foam in a solution of Ni(NO3)2 and Fe(NO-3)3 at 10 degrees C for about 45 minutes [0093,0129]; no precipitant is mentioned. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of CN’540 by leaving Ni foam in a without a precipitant for a time between 0.5 and four hours (ex. 0.75 hours) with a reasonable expectation of forming a catalyst thereon.
CN’540 teaches 3mmol FeSO4-7H2O and 20 mL of deionized water [0043]. 20 mL x .1 = 2, and 2 moles > 3 mmol. CN’540 fails to teach the claimed relationship between moles and volume of water. CN’540 provides evidence that the concentration of FeSO4 is a result-effective variable, known to affect the growth reaction [0015,0027]. Also, concentration of a reactant is optimizable for known reactions using general principles of chemical kinetics to drive a reaction. It would have been obvious to modify the process of the combination of references with the recited concentration through routine optimization. Additionally, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 9, CN’540 teaches using the treated foam comprising the catalyst directly as an oxygen evolution reaction (OER) electrode [0016].
Claim(s) 4-7, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (CN 109701540) in view of Kenney et al. (WO 2019/160701) as applied to Claim 1 above, and further in view of Zhao et al. (WO 2020/034007).
Regarding Claims 4-7,16, and 17, US’540 teaches that the catalyst is a nickel/iron (NiFe) layered double hydroxide (NiFe LDH) catalyst [0028,0084] from FeSO4•7H2O as the source of iron (II) [0032]. CN’540 also teaches that the solution can include other salts of divalent cations, including ferrous nitrate, Fe(NO3)2 [0028], and that Ni(NO3)2 is a reactant in analogous reactions for producing nanoparticles, including NiFe [0005]. CN’540 fails to teach that a salt of a nickel divalent cation (i.e. nickel (II)) is dissolved along with FeSO4•7H2O. Zhao et al. (WO’007) is analogous art for producing layered double hydroxides using an analogous process, including placing a metal foam (e.g. a nickel foam) into a solution comprising a mix of cobalt, iron, and nickel salts (i.e. salts of the “iron triad” – transition metals all known for their similar ferromagnetic properties and often studied together), including iron nitrate, cobalt nitrate, and nickel nitrate [0096]. WO’007 specifically teaches Co(NO3)2 •6H2O, which is a divalent salt of cobalt (i.e. cobalt (II)) and a Fe(NO3)3, which is a trivalent salt of iron (i.e. iron (II)), and does not specify whether nickel nitrate is nickel (II) or nickel (III) [0082]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of CN’540 by adding either or both of Co(NO3)2 •6H2O or/and Ni(NO3)2•6H2O to a solution of CN’540 containing FeSO4•7H2O to produce layered double hydroxide catalyst (LDH) (CoFe or NiFe or combination) on nickel foam for an oxygen evolution reaction (OER), because a) one of ordinary skill in the art would have recognized that cobalt, iron, and nickel would generally have similar properties and undergo similar reactions, b) WO’007 suggests that a process, analogous to that of CN’540, can include placing a nickel foam into a solution which is a mix of Fe, Ni, and Co salts, whether with oxidation number 2 or 3, with a reasonable expectation of producing an electrode comprising an LDH catalyst on nickel foam, and c) CN’540 provides evidence to suggest that nickel nitrate with oxidation number +2 -- Ni(NO3)2•6H2O -- is a salt which produces analogous materials.
CN’540 teaches 3mmol FeSO4-7H2O and 20 mL of deionized water [0043]. 20 mL x .1 = 2, and 2 moles > 3 mmol. CN’540 fails to teach the claimed relationship between moles and volume of water. WO’007 teaches an example of 6 mM nickel nitrate, 6 mM cobalt nitrate, 3 mM iron nitrate, and 6mM chromium nitrate [0096]. This is equivalent to 0.006 moles/ 1000 mL. 0.1*1000 mL is equal to 100 moles, and 100 moles/1000 mL =0.1 M or 100 mM > 6 mM. The combination of CN’540 in view of WO’007 fails to teach the recited relationship between moles and volume of water. However, CN’540 provides evidence that the concentration of FeSO4 is a result-effective variable, known to affect the growth reaction [0015,0027]. Also, concentration of a reactant is optimizable for known reactions using general principles of chemical kinetics to drive a reaction. It would have been obvious to modify the process of CN’540 in view of WO’007 with the recited concentration through routine optimization. Additionally, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Claim(s) 1, 2, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (CN 102220601).
Regarding Claim 1, Lu et al. (CN’601) teach a method for ambient-temperature synthesis of a catalyst for water electrolysis, the method comprising: dissolving an amount of an Fe2+ source (e.g. FeSO4) in water at ambient temperature to form a solution; placing nickel (Ni) foam into the solution, whereby the Ni foam defines a substrate or a Ni source for growth of the catalyst; leaving the Ni foam in the solution at ambient temperature for a time duration in a range of from 2-8 hours to provide a treated foam, during which time duration, the catalyst is grown on the substrate; and removing the treated foam from the solution after the time duration, wherein the treated foam comprises the catalyst grown thereon [0020]. Since no precipitant is taught, it is reasonable to expect to grow the catalyst without a precipitant. CN’601 teaches a temperature of 90-130 C [0013,0020,0031-0032]. CN’601 fails to teach a temperature of 10-40 C. Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. Moreover, temperature and concentration are both understood to affect the equilibrium of reactions. Therefore, it would have been obvious to modify the process of CN’601 by bringing the temperature of the solution to a temperature within the recited range through routine optimization.
CN’601 fails to teach deionized water. Deionized water is a conventional solvent for such reactions. It would have been obvious to a person of ordinary skill in the art at the time of invention to use deionized water as a conventional source of water for chemical reactions.
CN’601 fails to teach the precise range of time from 0.5 hour to 4 hour. However, 2-8 hours substantially and obviously overlaps with the claimed range. Additionally, CN’601 provides evidence that time is a result-effective variable affecting the formation of FeOOH in a reaction [0020,0022,0024]; time is generally considered an optimizable variable in performing a reaction to achieve a desired amount of product and/ or to reach equilibrium. It would have been obvious to perform the step within the recited range of time through routine optimization.
CN’601 teaches 10 mmol of FeSO4 [0020]-, but does not clearly teach a concentration. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 2, the catalyst is an iron-based oxyhydroxide catalyst (FeOOH) [0020].
Regarding Claim 9, CN’601 teaches using the treated foam comprising the catalyst directly as an oxygen evolution reaction electrode [0016,0020].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (CN 102220601) as applied to Claim 1 above, and further in view of Li et al. (US 2018/0080136).
Regarding Claim 3, CN’601 teaches ferrous sulfate (FeSO4) as a source of iron (II) [0013.0020]. CN’601 fails to teach ferrous sulfate heptahydrate (FeSO4•7H2O). Li et al. (US’136) is analogous art in the field of producing FeOOH catalyst layers from a solution of FeSO4, and suggests ferrous sulfate heptahydrate as a source of the ferrous sulfate (Abstract; [0042-0043]). US’136 also provides evidence that deionized water is conventional for such reactions [0042-0043]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of CN’601 with (FeSO4•7H2O) as the source of ferrous sulfate, because US’136 suggests analogous reactions to produce identical or obviously similar product (FeOOH) with a FeSO4•7H2O reactant.
Claim(s) 4, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (CN 102220601) as applied to Claim 1 above, and further in view of Zhao et al. (WO 2020/034007).
Regarding Claims 4, 16, and 17, CN’601 teaches that the catalyst is an iron-based oxyhydroxide catalyst (FeOOH) [0020] and ferrous sulfate (FeSO4) as a source of iron (II) [0013.0020].. CN’601 fails to teach the claimed ranges of concentration and temperature. Concentrations and temperature of reactants are optimizable for known reactions using general principles of chemical kinetics to drive a reaction. It would have been obvious to modify the process of CN’601 with the recited range of concentration and temperature through routine optimization. Additionally, generally, differences in temperature and concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature or concentration is critical.
CN’601 fails to teach a divalent cation selected from nickel (Ni), cobalt (Co), and molybdenum (Mo) in the deionized water at ambient temperature to form the solution. WO’007 is analogous art for producing layered double hydroxides using an analogous process, including placing a metal foam (e.g. a nickel foam) into a solution comprising a mix of cobalt, iron, and nickel salts (i.e. salts of the “iron triad” – transition metals all known for their similar ferromagnetic properties and often studied together), including iron nitrate, cobalt nitrate, and nickel nitrate [0096]. WO’007 specifically teaches Co(NO3)2 •6H2O, which is a divalent salt of cobalt (i.e. cobalt (II)) and a Fe(NO3)3, which is a trivalent salt of iron (i.e. iron (II)), and does not specify whether nickel nitrate is nickel (II) or nickel (III) [0082]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of CN’601 by adding either or both of Co(NO3)2 •6H2O or/and Ni(NO3)2•6H2O to a solution of CN’601 containing FeSO4 to produce layered double hydroxide catalyst (LDH) (CoFe or NiFe or combination) on nickel foam for an oxygen evolution reaction (OER), because a) one of ordinary skill in the art would have recognized that cobalt, iron, and nickel generally have similar properties and undergo similar reactions and b) WO’007 suggests that a process, analogous to that of CN’601, can include placing a nickel foam into a solution which is a mix of Fe, Ni, and Co salts, whether with oxidation number 2 or 3, with a reasonable expectation of producing an electrode comprising an LDH catalyst on nickel foam.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (CN 102220601) in view of Zhao et al. (WO 2020/034007) as applied to Claim 4 above, and further in view of Li et al. (US 2018/0080136).
Regarding Claim 8, CN’601 teaches ferrous sulfate (FeSO4) as a source of iron (II) [0013.0020]. CN’601 fails to teach ferrous sulfate heptahydrate (FeSO4•7H2O). Li et al. (US’136) is analogous art in the field of producing FeOOH catalyst layers from a solution of FeSO4, and suggests ferrous sulfate heptahydrate as a source of the ferrous sulfate (Abstract; [0042-0043]). US’136 also provides evidence that deionized water is conventional for such reactions [0042-0043]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of CN’601 in view of WO’007 with (FeSO4•7H2O) as the source of ferrous sulfate, because US’136 suggests analogous reactions to produce identical or obviously similar product (FeOOH) with a FeSO4•7H2O reactant.
Response to Arguments
Applicant’s amendment to the claims, filed 2 February 2026 with respect to the rejection of Claims 1-9 and 16-17 under 35 USC 112(b) have been fully considered and are persuasive. The rejection of Claims 1-9 and 16-17 under 35 USC 112(b) have been withdrawn.
Applicant's arguments filed 2 February 2026, with respect to the rejections of Claims 1-9 and 16-17 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s representation that the amendment to the claims does not introduce new matter (Remarks, p. 7), the specification as originally filed does not describe the absence of a precipitant or a temperature range of 10 to 40 C.
In response to Applicant’s argument that CN’540 fails to teach that the Ni foam remains in the solution without precipitant (Remarks, p. 7), WO’701 is now cited to show that a precipitant is not necessary to grow a catalyst.
In response to Applicant’s argument that CN’601 fails to teach the recited temperature range (Remarks, p. 7), concentration and temperature are known to change a reaction rate (time to complete reaction or achieve equilibrium) and equilibrium. Therefore, it would have been obvious to modify the process of CN’601 by modifying the temperature of the solution in which Ni foam is placed through routine optimization with a reasonable expectation of growing catalyst.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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