DETAILED ACTION
Response to Amendment
1. In response to the amendment received on December 22, 2025:
claims 1-4, 6-11, 13 and 14 are presently pending
claims 11, 13 and 14 are withdrawn
the objection to claim 9 is withdrawn in light of the amendments to the claims
the rejections of claims 9 and 10 under 35 USC 112(b) are withdrawn in light of the amendments to the claims
the prior art grounds of rejection of claims 1-4, 6-8 and 10 are maintained for at least the reasons set forth herein
no prior art grounds of rejection is applied to claim 9
Claim Rejections - 35 USC § 103
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, 2, 6-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 10,975,482 to Li (hereinafter referred to as “LI”) in view of US Pub. No. 2009/0081129 to Neff et al., (hereinafter referred to as “NEFF”).
Regarding claim 1, LI teaches a method for surface treatment of a metal substrate selected from nickel or nickel alloy, suitable for use as electrode support in electrochemical processes (see generally LI at Abstract and col. 1 lines 7-8 & col. 1 line 59-col. 2 line 8 teaching a method for making a water electrolysis electrode in which the electrode, i.e. anode, is made of nickel and acts as the base for a catalytic material layer that is capable of use in electrochemical processes as claimed; see also LI at col. 2 lines 9-20 teaching the treatment process steps), comprising the following steps:
immersing said metal substrate in an electrolyte selected from hydrochloric acid, nitric acid, boric acid or sulfuric acid at a weight concentration of between 10-40% (see LI at col. 2 lines 21-29 teaching step (1) as including the cleaning of the nickel substrate by washing, followed by an acid soak in HCl, and finally a water rinse wherein the HCl is at a concentration up to 6 mol/L which is equivalent to approximately 20 wt%);
applying an anodic current density to said metal substrate between 0.1 and 30 A/dm2 for a time between 0.5 and 120 minutes (see LI at col. 2 lines 41-55 teaching an anodic electrolytic treatment step including the application of a pulsed current polarization of 10 seconds followed by a 10 second interval for a total time of between 2 to 12 hours at a current density of 10 to 50 mA/cm2, i.e. 1 to 5 A/dm2).
It is noted that LI fails to explicitly teach step (a)’s immersing not just the metal substrate but also at least one counter electrode in the acid. However, for at least either of the following reasons, this difference is found to have been obvious to one of ordinary skill in the art.
First, while LI explicitly teaches the treatment of a single nickel electrode (see teachings of LI cited above with respect to step (b)), it would have been obvious to one of ordinary skill in the art to have also cleaned multiple nickel electrodes simultaneously in order to prepare multiple substrates to more quickly form more of the treated electrodes. See MPEP 2144.04(VI)((B). Moreover, having multiple nickel electrodes in the acid treatment bath, would read on step (a)’s limitations requiring an immersing of the metal substrate, i.e. the first nickel electrode, and at least one counter electrode, i.e. the second nickel electrode, which is capable of use as claimed.
Therefore, it would have been obvious to have cleaned multiple nickel anodes in the cleaning step taught by LI so as to include both a metal substrate and a second metal substrate capable of use as a counter electrode in the HCl acid bath as claimed.
Second, while LI teaches the use of both a nickel anode and a nickel plate cathode for the electrochemical treatment (see LI at col. 2 lines 47-49), LI fails to teach the cleaning of the nickel plate cathode. However, NEFF teaches an electrolytic process in which an anode and cathode are both cleaned via a similar cleaning protocol prior to the operation of the electrolysis (see NEFF at ⁋186 teaching a nickel sheet cathode and an aluminum plate anode each being cleaned with detergent and undergoing an HCl treatment before being washed with distilled water).
As such, one of ordinary skill in the art would have recognized that the nickel plate cathode would also benefit, just as the nickel anode substrate electrode would, from the same cleaning regime. Moreover, one of ordinary skill in the art would have been motivated to have done so in order to provide a clean cathode and anode for the electrolysis and to allow for increased current efficiency through the processing step. As such, it would have been obvious to have cleaned both the nickel anode and cathode in the same cleaning process as taught by NEFF before undergoing the formation process for forming the iron-containing nickel oxide nanosheet array by the method of LI.
Regarding claim 2, LI as modified, or as modified by NEFF, teaches the method wherein the metal substrate is a mesh or a punched or expanded sheet (see LI at col. 1 line 67 teaching the use of a nickel mesh substrate as the anode).
Regarding claim 6, LI as modified, or as modified by NEFF, teaches the method wherein the applied anodic current density is between 5 and 10 A/dm2 (see LI at col. 2 lines 41-55 teaching an anodic electrolytic treatment step at a current density of 10 to 50 mA/cm2, i.e. 1 to 5 A/dm2). See MPEP 2144.05(I).
Regarding claim 7, LI as modified, or as modified by NEFF, teaches the method wherein the application time of the anodic current density is between 2 and 10 minutes (see LI at col. 2 lines 48-53 teaching a treatment time being 50% of 2 to 12 hours, i.e. 1 to 6 hours of treatment time in which after the first 10 minutes, i.e. 5 minutes of application time, could be said to read on the limitation as set forth).
Regarding claim 8, LI as modified, or as modified by NEFF, teaches the method wherein the weight concentration of the electrolyte is between 15-30 wt% (see LI at col. 2 lines 21-29 teaching step (1) as including acid treatment in HCl at a concentration up to 6 mol/L which is equivalent to approximately 20 wt%).
Regarding claim 10, LI as modified, or as modified by NEFF, teaches a method for manufacturing an electrode for gas evolution in electrochemical processes wherein a metal substrate is treated with the method of claim 1 (see rejection of claim 1 above, which is incorporated herein), and applying a catalytic coating comprising one or more noble or alloy metals or their oxides and/or one or more metals belonging to the rare earth group or their oxides, to the treated metal substrate (see LI at col. 2 lines 48-53 teaching a treatment time being 50% of 2 hours at the low end so 1 hour of treatment time in which the first 30 minutes is equated with the claim 1 step (b) treatment and the last 30 minutes is the applying step of claim 10 in which the iron ion corrosion acts to form a combined nickel oxide and iron oxide catalytic layer as discussed in LI at col. 3 lines 3-7).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI, or LI as modified by NEFF, as applied to claim 1 above, and further in view of US Pub. No. 2021/0079539 to Jorissen et al., (hereinafter referred to as “JORISSEN”).
Regarding claims 3 and 4, LI as modified, or as modified by NEFF, fails to teach the method wherein the metal substrate has a thickness below 1.2 mm or equal to or less than 0.5 mm. Specifically, LI is silent as to the thickness of the nickel mesh substrate to be used. However, JORISSEN teaches a nickel mesh electrode to be used in water electrolysis (see JORISSEN at Abstract) and teaches the nickel mesh electrode having a thickness of 150 µm or 0.15 mm. Since LI is silent as to the thickness of the nickel mesh electrode, one of ordinary skill in the art would have considered any thickness and looked to use a thickness similar to other nickel mesh electrodes used in the electrochemical art. As such, one of ordinary skill in the art would have been motivated to have used a thickness of 0.15mm as taught by JORISSEN as the nickel mesh electrode in the method of LI as modified, or as modified by NEFF.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 12/22/25 have been fully considered but they are not persuasive.
As set forth above in the rejection of claim 1, the Examiner sets forth two different modifications of LI in order to teach the claimed method. The first modification relies upon the treatment of multiple substrates and the second upon a modification of the process of LI with NEFF to clean both the working nickel electrode and the nickel counter electrode.
Applicant argues against the examiner’s grounds of rejection based on LI in view of NEFF on the basis that NEFF teaches a preparatory cleaning step and not an anodic surface-roughening treatment conducted under controlled current density (see e.g. Remarks at page 8, lines 4-6, and also Remarks at page 8 lines 7-8). However, while the examiner acknowledges differences between the method of LI as modified by NEFF, the examiner nevertheless respectfully disagrees with applicant’s contention that the cited failures of NEFF would preclude the combination from reading on the claim as presently presented.
Specifically, it is noted that claim 1 as currently presented does not require an anodic surface roughening treatment conducted under controlled current density. Instead, what is claimed is a method for surface treatment of nickel or nickel alloy comprising a step of immersing the metal substrate and at least one counter electrode in an acid solution having a concentration as claimed, and a step of applying an anodic current density to the metal substrate having the current density value and treatment time as claimed. As such, the claimed method is considerably broader than the process as disclosed in the specification and as asserted in the remarks.
For example, it is noted that the claim does not require the application of the current while the metal substrate and counter electrode are immersed, does not require the application of the current between the metal substrate and the counter electrode, and isn’t limited to an electrochemical etching method. As such, applicant’s arguments to the contrary don’t appear to be commensurate in scope with the claim as presently presented.
It is also noted that while applicant generally asserts that NEFF does not cure the deficiencies of LI (see Remarks at page 8, line 4), that the modified method of LI in view of NEFF would result in both the nickel substrate, which will later undergo anodic polarization during electrochemical treatment, and the nickel plate, which will later be used as the counter electrode during the electrochemical treatment, both be cleaned during the initial cleaning step by immersion in the acid cleaning bath (see rejection of claim 1 above). As such, both the eventual anode, i.e. the nickel substrate, and the eventual counter electrode, i.e. the nickel plate, are immersed in an acid as claimed. Even though this is clearly a different process than that disclosed by applicant, it would still read on step (a) as currently presented.
As such, applicant’s arguments to the contrary are not found persuasive for at least these reasons.
Additionally, with respect to the first grounds of rejection under that basis that having multiple nickel substrates undergoing the cleaning could read on the claim as presently presented, it is noted that applicant contends that the claims use of the word counter electrode requires the function of the component in that manner (see Remarks at page 7, lines 8-11). However, the examiner respectfully disagrees. A counter electrode could take many forms but in its simplest form is just a wire or piece of metal capable of being electrically charged via a power supply so as to have a polarity opposite to that of the working electrode. While not applicant’s intent, the claim as presently presented doesn’t require a power supply to be connected to the metal substrate and counter electrode, or require the application of the current to be supplied between the counter electrode and the metal substrate in the acid electrolyte.
The examiner readily acknowledges that LI as modified under this grounds of rejection does not include a second substrate being used so as to allow for the electrochemical surface roughening of the first substrate (see Remarks at page 7 lines 14-16); however, as set forth the examiner is not of the opinion that this is required by the claim as presently presented. Furthermore, as to the use of impermissible hindsight, examination necessarily requires the application of the prior art to the claim language. Impermissible hindsight results when a combination or modification of the prior art occurs without reasoning or rationale to support the changes in the prior art and not from the application of a prior art references teachings to claim language. See MPEP § 2145(X)(A).
As to the argument that there is some problem with the asserted motivation for the modification by addressing a different technical problem to that disclosed by applicant (see Remarks at page 7, lines 18-23), the examiner is not limited to only modifying the prior art based on applicant’s disclosed problem that is addressed. The examiner can use any rationale expressly or impliedly contained in the prior art or that may be reasoned from knowledge generally available to one of ordinary skill in the art. Moreover, the MPEP specifically notes that rationale or reasoning different from applicant’s is permissible (see MPEP §2144(IV)).
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 Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794