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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 July 2026 has been entered.
Response to Amendment
Claims 1-2, 11-12, 15-18, and 20 have been amended, claims 21-35 remain withdrawn. Claims 1-35 are pending with claims 1-20 being considered in the present Office action.
The claim objections are withdrawn in view of the amendments. However, upon further consideration a new ground of objection is provided.
Response to Arguments
Applicant’s arguments that the prior art (Cui, Lee, Ikoma) does not teach or suggest the method by which the surface features are formed (i.e., by stamping or pressing) are not persuasive. Applicant has amended the claims to recite, in part, “…at least one of the plurality of porous layers includes surface features stamped or pressed onto one of the opposing surfaces…”. Applicant attempts to differentiate the claimed product by the process in which it was made, i.e., “surface features stamped or pressed onto one of the opposing surfaces”. Applicant is reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (see In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP 2113. In this case, the claims are limited by the positively recited structures of the product, not the method of production, and since the prior art suggests the positively recited structural features, the claim is unpatentable even though the product was made by a different process.
Applicant’s argument that Cui’s suggestion of porosity, a bulk feature, is not a suggestion of surface features is not persuasive. Cui shows a three dimensional porous layer in Fig. 1b; this porous layer includes a foam skeleton ([0044]) whose porosity starts from the surface inward, resulting in a patterned surface, thereby reading on the claimed surface features.
Applicant’s argument that Lee do not suggest surface features is not persuasive because Lee was not relied upon for this particular feature; rather, Lee was relied upon to make obvious the stacking of multiple porous layers of Cui (i.e., from the standpoint of increase reaction area, hence maximizing discharge capacity).
Applicant’s argument that Ikoma do not suggest surface features is not persuasive because Ikoma was not relied upon for this particular feature; rather, Ikoma was relied upon to make obvious the coating of a wet-proofing material on the catalyst layers (i.e., for the purpose of suppressing an increase in battery internal pressure, thereby improving battery characteristics).
In view of the foregoing, the claims are still rejected under the same art and grounds provided the amendments, which amount to product by process recitations, do not further structurally limit the claims.
Claim Objections
Claims 1-19 are objected to because of the following informalities: Claim 1 recites “wherein at least one of the at least one of the plurality of porous layers…”, which is redundant. Examiner suggests “wherein at least one of the plurality of porous layers”. Claims 2-19 depend from claim 1, thus are also objected to for the same reasons. Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-12, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cui et al. (US 2019/0051907), and Lee et al. (KR 2012/0070729), hereinafter Cui and Lee, both of record.
Claim interpretation, Applicant attempts to differentiate the claimed product by the process in which it was made, i.e., “surface features stamped or pressed onto one of the opposing surfaces”. Applicant is reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (see In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP 2113. In this case, the claims are limited by the positively recited structures of the product, not the method of production; since the prior art suggests the positively recited structural features (as detailed in the rejections below), the claims are unpatentable even though the product was made by a different process.
Regarding Claims 1, 3-10, and 20, Cui suggests a battery (title), comprising: a pressure vessel (i.e., steel can, Figs. 1, 14, 22, [0060]); and an electrode stack positioned in the pressure vessel (see Fig. 24), the electrode stack holding electrolyte (i.e., 108), wherein the electrode stack includes alternately stacked cathode electrodes and anode electrodes separated by a separators ([0050]); an electrode (i.e., anode, second electrode 104, [0031-0032]) for a metal-hydrogen battery (see e.g., title, abstract), comprising a porous layer (see Fig. 1b), the porous layer including a porous substrate (i.e., 110, e.g., metal (e.g., Ni, Cu, Al, etc.) foam, metal alloy (e.g., Ni-Mo, Ni-Cu, Ni-Co etc.,) foam, metal mesh, carbon fiber paper, carbon cloth/felt/mat, graphite foam, etc., [0032]) and a catalyst layer (i.e., 112, e.g., bi-functional catalyst that contributes to the HER and HOR, [0011, 0032]) covering the porous substrate, the catalyst layer including a transition metal (e.g., e.g., Ni, Ni-Mo, NiMoCo, Ni-W, Ni-W-Co, Ni-C, Pt, Pd, Au, Ag, Rh, etc., [0032, 0042]). Cui shows the porous layer includes opposing surfaces (i.e., one surface facing the separator and another surface facing away from the separator), and surface features on one of the opposing surfaces (i.e., 3D surface, see Fig. 1).
Cui does not suggest the porous layer includes a plurality of porous layers. However, Lee suggests laminating a plurality of porous anode layers, each comprising a substrate and active material; the lamination of the porous anode layers increases the reaction area of the active material, thereby maximizing the discharge capacity, since the number of layers is selected for the desired discharge capacity, see e.g., pages 4-6. It would be obvious to one having ordinary skill in the art the anode of Cui includes a plurality of porous layers in order to increase the reaction area of the active material, with the expectation of maximizing discharge capacity as the number of layers increases, as suggested by Lee.
The modification of Cui with Lee suggests the porous layer of Cui includes a plurality of porous layers, i.e., porous layers of Cui are stacked in a plurality. Cui suggests each porous layer includes a catalyst (NiMoCo) layer, which catalyzes the HER and the HOR, on a surface of the porous substrate, and each porous layer including opposing surfaces (i.e., one surface facing the separator and another surface facing away from the separator) and surface features (by way of porosity at each surface of the opposing surfaces) on at least one of the opposing surfaces. Provided the catalyst coated porous layers of Cui are porous and include the surface features (by way of porosity at the surface), and the catalyst (NiMoCo) catalyzes the HER and the HOR, there is an expectation of hydrogen gas transport between adjacent catalyst coated porous layers.
Regarding Claim 2, the modification of Cui and with Lee suggests the porous layer of Cui includes a plurality of stack porous layers (see e.g., rejection of claim 1). Thus, the modification of Cui with Lee suggests a first surface (e.g., surface facing away from the separator) of the opposing surfaces of a first porous layer (e.g., porous layer immediately adjacent the separator) of the plurality of porous layers and a second surface (e.g., surface facing the separator) of the opposing surfaces of a second porous layer (e.g., porous layer stacked on the first porous layer further away from the separator) of the plurality of porous layers with the surface features placed adjacent to the first surface of the first porous layer have contours (see e.g., Fig. 1b of Cui and discussion at [0032]). Provided the catalyst coated porous layers of Cui are porous and include the surface features/contours (by way of porosity at the surface), and the catalyst (NiMoCo) catalyzes the HER and the HOR, there is an expectation of hydrogen gas transport channels between adjacent catalyst coated porous layers.
Regarding Claim 11, Cui does not suggest more than one porous layer. However, as detailed under the rejection of claim 1, Lee suggests a plurality of porous anode layers (i.e., three shown in Fig. 7) in order to increase the reaction area of the active material, with the expectation of maximizing discharge capacity. Thus, the modification of Cui with Lee suggests the porous layer includes a first porous layer, a second porous layer, and a third porous layer disposed between the first porous layer and the second layer. Regarding the layers having different contours, Cui suggests the conductive substrate of the porous layer may be foam, mesh, film, paper, etc., [0032]; substituting the mesh for foam, or film for foam, would be obvious because they are useful for the same purpose (conductive substrate) in the battery art, see MPEP 2144.06. Using mesh for the third porous layer and foam for the first and second porous layers would be obvious with the expectation the substrate offers conductivity to the active layer; similarly, using foam for the third porous layer and film for the first and second porous layers would be obvious with the expectation the substrate offers conductivity to the active layer. The use of a mesh for the third porous layer and foam for the first and second porous layers (or alternatively, using foam for the third porous layer and film for the first and second porous layers) suggests the third porous layer has a first surface contour different from a second surface contour of the first porous layer or the second porous layer.
Regarding Claim 12, Cui suggests the surface features (formed by way of foam, mesh, paper, etc., see [0032]) include one or more of corrugation, notches, rounded valleys, and grooves (see Fig. 1).
Regarding Claim 15, Cui suggests an anode electrode comprising a porous layer (see rejection of claim 1); as set forth under the rejection of claim 1, it would be obvious to one having ordinary skill in the art the anode of Cui includes a plurality of porous layers in order to increase the reaction area of the active material, with the expectation of maximizing discharge capacity, as suggested by Lee. The modification of Cui and with Lee suggests stacking a plurality of porous layers, thereby suggesting a first porous layer (e.g., porous layer immediately adjacent the separator) having a first surface (e.g., surface facing away from the separator) of the opposing surfaces of the first porous layer and a second porous layer adjacent the first porous layer (e.g., porous layer on the first porous layer further away from the separator) having a second surface (surface facing the separator) on the second porous layer. Further, Cui suggests each porous layer includes surface features on the opposing surfaces of each porous layer (i.e., surface features on the first surface and surface features on the second surface, see e.g., Fig. 1b of Cui and discussion at [0032]). Provided the catalyst coated porous layers of Cui are porous and include the surface features (by way of porosity at the surface), and the catalyst (NiMoCo) catalyzes the HER and the HOR, there is an expectation of hydrogen gas transport channels between the first porous layer and the second porous layer.
Regarding Claim 16, Cui does not suggest the first surface is flat or smooth and the second surface includes uneven features. However, as set forth under the rejection of claim 15, Cui as modified by Lee suggests a plurality of porous layers each having a surface. Further, Cui suggests surfaces of the porous layers are in the form of a film, mesh, foam, etc., [0032], thereby suggesting the surface may be flat or smooth (e.g., film) or have uneven features (e.g., foam, mesh, etc.). The use of any of these structures is obvious from the standpoint of providing conductivity to the active material thereon (see rejection of claim 11 and [2144.06]). In view of the foregoing, Cui as modified by Lee suggests the first surface is flat or smooth (i.e., film) and the second surface includes uneven features (i.e., foam, mesh, etc.).
Regarding Claims 17-18, Cui suggests one or both of the first surface and the second surface includes surface features (e.g., foam), wherein the surface features of the first surface or the second surface include one or more of corrugation, notches, rounded hills, rounded valleys, and grooves (see e.g., Fig. 1b).
Regarding Claim 19, the obviousness of a third porous layer was detailed under the rejection of claim 11. That is, Cui does not suggest more than one porous layer. However, as detailed under the rejection of claim 2 Lee suggests a plurality of porous anode layers (i.e., three shown in Fig. 7) in order to increase the reaction area of the active material, with the expectation of maximizing discharge capacity (page 4). Thus, the modification of Cui with Lee suggests the at least one porous layer includes a first porous layer, a second porous layer, and a third porous layer (in that order (note the order of layers differs in claim 19 compared to that detailed in the rejection of claim 11)). In view of the foregoing, the modification of Cui with Lee suggests the first porous layer and the second porous layer each include surfaces (1st and 2nd, respectively) that face each other (the contours thereof were detailed in the rejection of claims 16-18, e.g., film, mesh, foam, etc.); further, the second porous layer has a third surface opposite the second surface that faces a fourth surface of the third porous layer. Provided Cui suggests each of the porous layers includes a surface with features (e.g., by way of film, mesh, foam, etc., see [0032]), the modification suggests the fourth surface of the third porous layer and the third surface of the second porous layer form second transport channels.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cui and Lee (see rejection of claim 1) in view of Ikoma (US 4994334), hereinafter Ikoma.
Regarding Claims 13-14, Cui does not suggest at least one of the catalyst layers of the first porous layer, the second porous layer, and the third porous layer is at least partially coated with a wet-proofing material. However, Ikoma suggests a porous anode in which the catalyst layer is coated with a wet proofing material comprising PTFE; sufficient hydrophobic property is given to the surface of the active material particles of the anode such that the active material is not in contact with the electrolyte, thereby suppressing an increase in battery internal gas pressure, resulting in excellent battery characteristics (see e.g., col. 4 lines 29-43, Example 1 negative electrodes A and B, compared to C in col. 5-6). It would be obvious to one having ordinary skill in the art at least one of the catalyst layers of the first porous layer, the second porous layer, or the third porous layer is at least partially coated with wet proofing material comprising PTFE, as suggested by Ikoma, to protect the active material from that electrolyte with the expectation of suppressing an increase in battery internal gas pressure such that excellent battery characteristics are obtained.
Conclusion
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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