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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 15, 2026 has been entered.
Summary
The Applicant’s arguments and claim amendments received April 15, 2026 have been entered into the file. Currently, claims 1, 7-8, 21-23, and 27-29 are amended; and claims 9-20 are cancelled; resulting in claims 1-8 and 21-32 pending for examination.
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 1-2, 4-7, 21-29, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over García de Arquer, et al. (US 2022/0396889 A1) in view of Kim, et al. (US 10,622,657 B1).
Regarding claims 1-2, 5, 7, 21-23, 25, 27-29, and 31-32, García teaches a catalyst system for gas-phase electrolysis of a reactant gas to form a product in an aqueous medium, wherein the catalyst system (cathode catalyst layer) includes a catalytical material (substrate) and one or more ion-conducting polymer layers provided on the catalytic material (¶ [0004], Ln. 1-7). The ion-conducting polymer comprises an ionomer or combination of different ionomers, and the ionomer includes a backbone that comprises hydrophobic groups and side chains that comprise hydrophilic groups (¶ [0030], Ln. 1-5). The ionomer comprises a perfluorinated sulfonic acid ionomer, providing the example of sulfonated tetrafluoroethylene based fluoropolymer-copolymer such as Nafion™ (hydrophobic backbone includes PTFE and hydrophilic sidechains include sulfonate side chains) (¶ [0030], Ln. 3-9). García further teaches the controlled assembly of perfluorinated sulfonic acid ionomers into distinct hydrophobic and hydrophilic layered domains (alternating layers of hydrophobic backbone and hydrophilic sidechains) (¶ [0224], Ln. 1-6). Additionally, García teaches that the ion-conducting polymer is spray-coated directly onto an outer surface of the catalytic material to form the one or more ion-conducting polymer layers (¶ [0031], Ln. 1-3). Specifically, the polymer is coated onto a hydrophilic metal catalyst (¶ [0227], Ln. 1-6). Based on this teaching, the hydrophilic side chain layer would be exposed to the hydrophilic metal catalyst and the hydrophobic backbone layer would be the outer layer. As evidence of a hydrophobic outer layer, García teaches that the static contact angle of the catalyst surface is 121-122° (¶ [0234], Ln. 1-8), indicating a highly hydrophobic surface (free from hydrophilic groups). Specifically, García teaches that the water contact angle demonstrates the hydrophobicity of the catalyst after ionomer modification (¶ [0234], Ln. 1-8). García does not expressly teach that the outermost hydrophobic layer is fixed such that the ionomer is prevented from reorientation under exposure to water or other operating conditions. García further does not expressly teach that the hydrophobic backbone is fixed in a permanent orientation by localized cross-linking which is not present throughout an interior of the ionomer.
Kim teaches the benefits of using crosslinked polymeric materials for use as membrane materials for fuel cells including enhanced mechanical properties and dimensional stability (Col. 35, Ln. 7-13). Specifically, Kim teaches that cross-linking has been shown to reduce water uptake in polymer electrolytes and improve proton conductivity (Col. 35, Ln. 23-27). Regarding water uptake, Kim teaches that mechanical properties can be dependent on hydration, and that Nafion™ (having a hydrophobic backbone and hydrophilic sidechains) has decreased yield strength with increased hydration (Col. 35, Ln. 42-47). Kim teaches that cross-linking is an approach to restrict water uptake that does not significantly change the chemical structure of a polymer electrolyte (Col. 35, Ln. 54-61), and additionally teaches that the degree of cross-linking can be controlled by reaction time (Col. 35, Ln. 15-19). Further, Kim teaches several methodologies of cross-linking including radiation crosslinking and using crosslinking intermediates (Col. 36, Ln. 1-10).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the polymer of García to include a cross-linked hydrophobic surface based on the teachings of Kim, as Kim teaches the benefits of cross-linking polymeric materials used in fuel cell membranes. One of ordinary skill in the art would be capable of applying an appropriate crosslinking methodology to the ionomer of García. Further, as Kim teaches that crosslinking has been shown to enhance dimensional stability and reduce water uptake, and García teaches both a hydrophobic surface and hydrophilic layered domains, one of ordinary skill in the art would find it obvious to apply the crosslinking to the hydrophobic surface of García, such that the dimensional stability of the hydrophobic surface is enhanced while maintaining the hydrophilic domains. One of ordinary skill in the art would be capable of applying the teachings of Kim regarding controlling the degree of cross-linking by reaction time to fix the hydrophobic surface in place using localized cross-linking. The modified, cross-linked hydrophobic layer of the polymer would prevent reorientation of the hydrophobic layer during operating conditions, affixing the outer hydrophobic backbone in place and creating a continual, permanent hydrophobic layer capable of repelling water and preventing hydrophilic sidechains from migrating to the outer layer.
Regarding claim 4, García in view of Kim teaches all of the limitations of claim 1 above and García further teaches that the ion-conducting polymer is spray-coated directly onto an outer surface of the catalytic material (substrate) (¶ [0031], Ln. 1-3), adhering the ionomer to the catalytic material (substrate) over the entire surface where the ionomer and catalytic material (substrate) share a common boundary (substrate-ionomer interface).
Regarding claims 6 and 26, García in view of Kim teaches all of the limitations of claims 1 and 21 above and García further teaches that the catalytic material (substrate) comprises a catalytic metal and/or carbon (¶ [0004], Ln. 5-6). García teaches that the catalyst layer (substrate) is usually hydrophilic (¶ [0217], Ln. 3-5). García in view of Kim does not expressly teach a substrate with a water contact angle of below about 85°.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the substrate of García in view of Kim to have a water contact angle of below about 85°. Any water contact angle less than 90° is considered hydrophilic. One of ordinary skill in the art would recognize that as the metal catalyst of García is hydrophilic, and adheres to the hydrophilic sidechains of the ion-conducting polymer, the water contact angle would preferably be below about 85°.
Regarding claim 24, García in view of Kim teaches all of the limitations of claim 21 above, teaching a predominately hydrophobic surface. García further teaches that the catalyst design facilitates efficient CO2 and CO gas-phase electrolysis with an ionomer layer that, with asymmetric hydrophobic and hydrophilic functionalities, assembles into a morphology with differentiated gas and ion long-range transport routes (porous network), conformally, over the metal surface (¶ [0221], Ln. 1-10). García further teaches that in this context, conformally means a similar thickness all over the catalyst (undulating film) (¶ [0221], Ln. 10-11).
Claims 3 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over García de Arquer, et al. (US 2022/0396889 A1) in view of Kim, et al. (US 10,622,657 B1) as applied to claims 1 and 27 above, and further in view of Heo, et al. (US 2023/0335756 A1).
Regarding claims 3 and 30, García in view of Kim teaches all of the limitations of claims 1 and 27 above, and García further teaches that the catalytic material (substrate) comprises a catalytic metal and/or carbon (¶ [0004], Ln. 5-6). García in view of Kim does not expressly teach that the substrate is a carbon substrate having a partially oxidized non-graphitic surface.
Heo teaches a membrane-electrode assembly including a pair of electrodes (¶ [0026], Ln. 1-5). The electrode includes a catalyst, an ionomer, and an additive (¶ [0028], Ln. 1-2). Heo teaches that the catalyst includes a support which may be selected from carbon black, carbon nanotubes, graphite, graphene, carbon fiber, carbon nanowire, and combinations thereof (¶ [0030], Ln. 1-5). Heo also teaches that the ionomer may be a perfluorinated sulfonic acid-based polymer such as Nafion™ (¶ [0032], Ln. 1-4). Heo teaches that since the surface of the carbon material is chemically stable, if a functional group such as a sulfonic acid, phosphoric acid group, or carboxyl group is directly substituted, the degree of substitution is not high. Thus, Heo teaches treating the surface of the carbon material with an aromatic hydrocarbon (partially oxidized) and then attaching the proton conductive functional group to the hydrocarbon (¶ [0036], Ln. 1-11). Heo teaches that surface-treating the carbon material allows the proton conductive functional group to be sufficiently bonded to the surface of the carbon material (¶ [0045], Ln. 1-5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the carbon substrate of García to include surface-treated carbon black (non-graphitic), based on the teachings of Heo. One of ordinary skill in the art would be motivated to surface-treat the carbon substrate of García in order to improve the bonding between the carbon substrate and the proton conductive functional groups.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over García de Arquer, et al. (US 2022/0396889 A1) in view of Kim, et al. (US 10,622,657 B1) as applied to claim 1 above, and further in view of Matos, et al. Nafion membranes annealed at high temperature and controlled humidity: structure, conductivity, and fuel cell performance, Electrochimica Acta, Vol. 196 (April 1, 2016), pp. 110-117.
Regarding claim 8, García in view of Kim teaches all of the limitations of claim 1 above, including an ionomer with a hydrophobic outermost layer. García in view of Kim does not expressly teach that the ionomer is annealed to orient the hydrophobic backbone at the outermost layer.
Matos teaches the effects of annealing Nafion™ samples at high relative humidity in order to enhance polymer electrolyte fuel cell (PEFC) performance (pp. 111, Col. 1, Ln. 44-48). Matos teaches that Nafion™ may undergo morphology changes at low relative humidity and high temperature (pp. 111, Col. 1, Ln. 29-32). However, when Nafion™ is annealed at a high relative humidity, the structural properties of the sample are significantly less affected, obtaining a higher PEFC performance, and allowing the use of Nafion™ membranes at higher temperatures (pp. 117, Col. 1, Ln. 46-58).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the ionomer of García in view of Kim to be annealed at a high relative humidity as taught by Matos. One of ordinary skill in the art would be motivated to perform the annealing process of Matos to the ionomer of García in view of Kim in order to prevent structural changes to the ionomer, obtaining a higher PEFC performance. In annealing the ionomer and preventing structural changes, the hydrophobic backbone would be orientated at the outermost layer.
Response to Arguments
Response-Claim Rejections – 35 U.S.C. 102 and 103
In light of the amendments to claim 1 in the response filed April 15, 2026, the previous rejections of claims 1-2, 4-5, and 8 under 35 U.S.C. 102(a)(2) over García de Arquer, et al. (US 2022/0396889 A1) have been withdrawn. However, upon further consideration, the reference is applicable under 35 U.S.C. 103 and used in combination with Kim, et al. (US 10,622,657 B1) in the rejections above. Any arguments with respect to the reference that are still deemed valid will be addressed herein.
Applicant's arguments filed April 15, 2026 with respect to García in view of Kim have been fully considered but they are not persuasive. The Applicant argues that neither García nor Kim teach or suggest the claimed configuration including crosslinking confined to the outermost portion of the lamellar film and configured to fix the orientation of the hydrophobic backbone at the surface. The Applicant specifically argues that García teaches a self-assembly of the ionomer resulting in the distribution of hydrophobic backbone segments and hydrophilic sidechains and that Kim teaches crosslinking for a bulk membrane stabilization rather than a surface-oriented configuration.
With respect to the argument, see page 9 of the remarks, that neither García nor Kim teach or suggest the claimed configuration including crosslinking confined to the outermost portion of the lamellar film and configured to fix the orientation of the hydrophobic backbone at the surface, this argument is not persuasive. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
It is noted that García teaches the controlled assembly of perfluorinated sulfonic acid ionomers into distinct hydrophobic and hydrophilic layered domains (¶ [0224], Ln. 1-6), further teaching the hydrophobicity of the catalyst after ionomer modification (¶ [0234], Ln. 1-8). Additionally, Kim teaches the benefits of crosslinking polymeric materials for use as membrane materials for fuel cells, including enhanced mechanical properties and dimensional stability (Col. 35, Ln. 7-13), and specifically for the reduction of water uptake (Col. 35, Ln. 23-27). Thus, one of ordinary skill in the art would find it obvious to apply the teachings of Kim to the ionomer of García, such that the dimensional stability of the hydrophobic surface is enhanced while maintaining the hydrophilic domains.
With respect to the argument, see page 10 of the remarks, that Kim teaches crosslinking for a bulk membrane stabilization rather than a surface-oriented configuration, this argument is not persuasive. Kim teaches several methodologies of cross-linking including radiation crosslinking and using crosslinking intermediates (Col. 36, Ln. 1-10), further teaching that the degree of cross-linking can be controlled by reaction time (Col. 35, Ln. 15-19). Thus, one of ordinary skill in the art would be capable of applying the teachings of Kim regarding controlling the degree of cross-linking by reaction time to fix the hydrophobic surface in place using localized cross-linking, rather than a bulk modification.
Conclusion
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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