DETAILED ACTION
Claims 1-6 are rejected in Office Action mailed on 07/14/2025.
Applicant filed a response, amended claims 1-2, canceled claims 4-5 on 09/01/2025.
Claims 1-3 and 6-13 are pending, and claims 7-13 are withdrawn.
Claims 1-3 and 6 are rejected.
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 .
Claim Rejections - 35 USC § 103
6. 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Rhodes et al (US 20180154346 A1)(Rhodes) in view of Hays et al (US 8603400 B2)(Hays).
Regarding claims 1-2, Rhodes teaches that after deposition of Pt onto Ni(OH)2 the material shows the presence of nanosheets with micron-sized lateral dimensions and thickness of approximately 10 nm (Rhodes paragraph [0097]).
Rhodes additionally teaches that in some embodiments the method may include heating a non-catalytic metal within a specified temperature range in the presence of a catalytic metal (the Pt and Ni(OH)2 of above). The non catalytic metal may include niobium. (Rhodes paragraph [0070]).
Rhodes also teaches a material having a Turing structure morphology containing Turing spots (Rhodes Figure 4D and 4J), as well as Turing stripes (Rhodes Figure 2B, 2C, 2D, and 4G). The occurrence of these structures in Turing morphology is due to the orientation attachment being constrained during material formation, so the presence of these structures establishes constrained orientation attachment.
Rhodes demonstrates a structure enclosed by {111} and {200} atomic planes with noticeable grain boundaries coming to a point forming a five-fold point (Rhodes figure 4J).
However, Rhodes does not explicitly disclose (a) wherein the Pt is in a range between 10 and 75% atomic percent, Ni is in a range between 20 and 60% atomic percent, and Nb is in a range between 5 and 30% atomic percent; or (b) a lattice strain of the quasi-two-dimensional metal nanosheet is in a range between 2.5 and 4.3%, as presently claimed.
With respect to the differences (a) and (b), Hays teaches forming a platinum based nanostructured alloy for use as an electrocatalyst for hydrogen and oxygen evolution and other purposes.
Hays further teaches forming a Pt--B-A alloy and that A may include at least one of Zirconium (Zr), Titanium (Ti), Hafnium (Hf), and Niobium (Nb), and B includes at least one of Cobalt (Co), Nickel (Ni), and Iron (Fe) and that B includes at least one of Cobalt (Co), Nickel (Ni), and Iron (Fe) (Hays column 11 lines 30-42).
Hays further teaches an embodiment of the Pt--B-A format in that Pt represents 66%, B represents 24% and A represents 10% of the composition. The provided example is Pt66Co24Zr10 (Hays column 11 lines 52-53). The subscripts are representing Atomic %. Hays teaches that the B compound can alternatively be nickel and that the A compound can be Niobium. This would result in a composition of 66% platinum, 24% nickel, and 10% niobium which lies within the claimed ranges.
As Hays expressly teaches, the presence of these compounds endows enhanced corrosion resistance to Pt-based alloys while maintaining a high catalytic activity (Hays column 14 lines 10-13).
Hays is analogous art as it is drawn to the formation of platinum based electrocatalysts to aid in hydrogen and oxygen evolution or for use in fuel cells.
In light of the motivation to use platinum, nickel, and niobium in the claimed ratios of Hays, it would have been obvious to one of ordinary skill in the art to modify the composition of Rhodes in order to achieve enhanced corrosion resistance and high catalytic activity in Rhodes, and thereby arrive at the claimed invention.
Rhodes further teaches that the EDS-spot analysis (Rhodes Fig 4E-F) demonstrated that the presence of Pt is now concentrated within the nanoparticles and resulted in an increase of Pt lattice spacing of 2.25 Å compared with 2.17 Å for the as-prepared material (Rhodes paragraph [0104] and Fig 4D).
Given that Rhodes in view of Hays teaches a catalyst with an identical or essentially identical composition (i.e., Turing stripes caused by constrained orientation attachment, presence of five-fold twins, and similar material composition) of an identical or essentially identically structure (i.e., lattice size between 2.25 Å and 2.12 Å ) with those of the present invention (also Turing stripes caused by constrained orientation attachment, presence of five-fold twin, construction of primarily platinum, nickel and niobium, and lattice spacing of 2.10 Å and 2.38 Å), therefore, it is clear that the catalyst of Rhodes in view of Hays would necessarily meet the claimed limitation of a lattice strain between 2.5 and 4.3%.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.
Regarding claim 3, Rhodes further teaches that after thermal treatment, significant structural modifications were observed in the XRD patterns. The thermally treated samples showed the three main XRD peaks corresponding to Pt-fcc (face-centered cubic), and diffraction peaks consistent with a metallic Ni-fcc phase (Rhodes paragraph [0102]).
Regarding claim 6, as applied to claim 1, Rhodes further teaches the Turing stripes composed of crystals rotated in different geometries (Rhodes Fig 2B, 4J, 4Q).
Response to Arguments
In response to the amended claims, the previous 35 U.S.C. 112(b) rejections are withdrawn.
Applicant primarily argues:
“The Applicant respectfully submits that the present invention is directed to an electrocatalyst with quasi-two-dimensional metal nanosheet having Turing structures. In particular, the crystallographic characterizations of the Pt-Ni-Nb Turing catalyst disclosed herein include the presence of nanotwins (see FIGS. 9 and 12) and lattice strain (see FIGS. 11 and 12).
Importantly, such a structure is not reported in Rhodes. The Ni-Pt catalyst disclosed by Rhodes instead exhibits an architecture described as "a network composed of interconnected solid domains and porosity" (see FIG. 4L of Rhodes). In other words, Rhodes teaches a porous network structure with holes. By contrast, the Pt-Ni-Nb catalyst of the present invention exhibits a Turing structure characterized by a nanosheet morphology with distinct Turing stripes and no holes (see FIGS. 2 and 6 of the originally filed specification). Evidence of this distinction is clearly seen in FIG. 6, where Pt, Ni, and Nb are distributed throughout the black regions, demonstrating that the Pt-Ni-Nb catalyst is a solid nanosheet with Turing stripes. In contrast, Rhodes' Ni-Pt catalyst shows no elemental distribution within the pores or spaces between ligaments (see FIGS. 4L, 4R, and 12L of Rhodes). These comparative data establish that the Turing structure of the present invention is fundamentally different from the porous network structure disclosed by Rhodes.”
Remarks, p. 5
The Examiner respectfully traverses as follows:
Firstly, Rhodes teaches that after deposition of Pt onto Ni(OH)2 the material shows the presence of nanosheets with micron-sized lateral dimensions and thickness of approximately 10 nm (emphasis added) (Rhodes paragraph [0097]), as set forth on page 4, of Office Action mailed 07/14/2025.
Secondly, the present claim does not exclude a material that comprises nanosheet and with interconnected pores.
Therefore, given that Rhodes in view of Hays meet the electrocatalyst as required in the present claims, Rhodes in view of Hays meet the present claims, absent evidence to the contrary.
Applicant further argues:
“Second, the crystallographic characterizations of the Pt-Ni-Nb Turing catalyst of the present invention-namely the nanotwins (FIGS. 9 and 12) and lattice strain (FIGS. 11 and 12)-are not disclosed or suggested in Rhodes. These features highlight a significant structural distinction and further confirm that the present catalyst possesses a novel and non-obvious morphology.”
Remarks, p. 5
The Examiner respectfully traverses as follows:
Rhodes demonstrates a structure enclosed by {111} and {200} atomic planes with noticeable grain boundaries coming to a point forming a five-fold point (Rhodes figure 4J), as set forth on page 5 of Office Action mailed 07/14/2015.
Furthermore, Rhodes teaches that the EDS-spot analysis (Rhodes Fig 4E-F) demonstrated that the presence of Pt is now concentrated within the nanoparticles and resulted in an increase of Pt lattice spacing of 2.25 Å compared with 2.17 Å for the as-prepared material (Rhodes paragraph [0104] and Fig 4D).
Given that Rhodes in view of Hays teaches a catalyst with an identical or essentially identical composition (i.e., Turing stripes caused by constrained orientation attachment, presence of five-fold twins, and similar material composition) of an identical or essentially identically structure (i.e., lattice size between 2.25 Å and 2.12 Å ) with those of the present invention (also Turing stripes caused by constrained orientation attachment, presence of five-fold twin, construction of primarily platinum, nickel and niobium, and lattice spacing of 2.10 Å and 2.38 Å), therefore, it is clear that the catalyst of Rhodes in view of Hays would necessarily meet the claimed limitation of a lattice strain between 2.5 and 4.3%, as set forth on pages 6-7 of Office Action mailed 07/14/2025, absent evidence to the contrary.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.
Applicant further argues:
“Third, the elemental composition of the electrocatalyst of the present invention is also distinct. The Pt-Ni-Nb Turing catalyst necessarily comprises platinum, nickel, and niobium, and the unique Turing structure described above cannot be achieved if even one of these three elements is absent. In contrast, Rhodes discloses only a binary Ni-Pt catalyst. Accordingly, the alloy system of the present invention is fundamentally different from that of Rhodes, both in terms of elemental composition and structural characterization. Therefore, Rhodes fails to disclose, teach or suggest the claimed invention in any way.”
Remarks, p. 5
The Examiner respectfully traverses as follows:
It is noted, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Specifically, Rhodes teaches that in some embodiments the method may include heating a non-catalytic metal within a specified temperature range in the presence of a catalytic metal (the Pt and Ni(OH)2 of above). The non catalytic metal may include niobium. (Rhodes paragraph [0070]), as set forth on page 4 of Office Action mailed 07/14/2025.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732