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
Applicant’s election without traverse of claims 1-4, and 6-10 in the reply filed on 11/11/2025 is acknowledged.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim lacks utility as a “use” claim without reciting positive process steps. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9-10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 9, it states “[a] tetraphase heterojunction nanomaterial --- and a triphase heterojunction nanomaterial … prepared by the method according to claim 1”, which is indefinite because the method of claim 1 produces either a tetraphase heterojunction nanomaterial or a triphase heterojunction nanomaterial depending on whether water or sodium molybdate is added, not both tetraphase and triphase. Therefore, it is unclear whether the product of claim comprises both a tetraphase heterojunction nanomaterial and a triphase heterojunction nanomaterial or just one of a tetraphase heterojunction nanomaterial or a triphase heterojunction nanomaterial.
Claim 10 is an indefinite “use” claim without reciting positive process steps See MPEP 2173.05(q).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, and 9-10 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Zhang “Core/shell -structured NiMoO4 @ MoSe2/NixSey nanorod on Ni foam as a bifunctional electrocatalyst for efficient overall water splitting”.
Regarding clam 1, Zhang teaches making a catalyst that may include multiple phases (Abstract, Introduction). The catalyst is made by preparing a NiMnO4 precursor (Experimental 2.2, Step 1) loaded on a nickel foam substrate. The process includes dissolving selenium powder in hydrazine hydrate, and adding sodium molybdate aqueous solution onto the NiMoO4 (Experimental 2.2, Step 2). The mixture is heated to 200 deg. C, then washed and inherently dried to obtain the product (Experimental 2.2, Step 2; Figure 1) that lacks the presence of water.
Regarding claims 2 and 9-10, Zhang does not expressly state that the product is a tetraphase or triphase heterojunction nanomaterial according to claims 2 or 9. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product is substantially similar because it is made by the same method of claim 1. The product may be used in a hydrogen evolution reaction under an alkaline condition (Introduction).
Regarding claim 3, the substrate may be a nickel foam (Experimental 2.2, Step 2).
Regarding claim 4, the process includes 3.75ml of hydrazine hydrate and 20ml of aqueous solution, which is within the ratio of hydrazine to water required in instant claim 4 (Experimental 2.2, Step 2).
Claim Rejections - 35 USC § 103
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang “Core/shell -structured NiMoO4 @ MoSe2/NixSey nanorod on Ni foam as a bifunctional electrocatalyst for efficient overall water splitting”.
Regarding claim 6, Zhang teaches that the reaction time of is 8 hours at 200 deg. C.
Zhang does not expressly state that the reaction time is between 2 and 6 hours. However, it would have been obvious to the person having ordinary skill in the art to perform the process for 2-6 hours because the results were predictable in that it was predictable that a reaction duration of 2-6 hours was near the disclosed 8 hours and a person having ordinary skill in the art would have predicted that a lower reaction time would result in a product that was partially reacted.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang “Core/shell -structured NiMoO4 @ MoSe2/NixSey nanorod on Ni foam as a bifunctional electrocatalyst for efficient overall water splitting” (Zhang I) as applied to claim 1 above, and further in view of “Hydrothermal synthesis of 3D hierarchical MoSe2/NiSe2 composite nanowires on carbon fiber paper and enhanced electrocatalytic activity for hydrogen evolution reaction” (Zhang II).
Regarding claims 7 and 8, Zhang I teaches washing with water and inherently requires the product be dried (Experimental 2.2).
Zhang I does not teach that the washing the product with water and absolute ethanol nor that the drying temperature is 40-60 deg. C and the drying time is 2-12h.
Zhang II is a similar process of making a catalyst that may include multiple phases (Abstract, Introduction). The catalyst is made by preparing a NiMnO4 precursor on a carbon fiber paper (CFP) support (Experimental 2.1.2). The process includes dissolving selenium powder in hydrazine hydrate, and adding sodium molybdate aqueous solution onto the NiMoO4 (Experimental 2.1.2, Step 2). The mixture is heated to 220 deg. C, then washed with water and ethanol and dried at 80 deg. C overnight, which is within the range of 2-12 hours to obtain the product (Experimental 2.1.2).
At the time of invention, it would have been obvious to the person having ordinary skill in the art to perform the process of Zhang I including the washing with water and ethanol and drying at 80 deg. C overnight, which is within the range of 2-12 hours, in view of Zhang II. The rationale for doing so would have been a combination of known techniques in the art that would have led to predictable results. (See MPEP 2143).
Zhang I and Zhang II do not expressly state that drying temperature is 40-60 deg. C. However, it would have been obvious to perform the drying at 40 to 60 deg. C instead of the 80 deg. C recited by Zhang II because the results were predictable by a person having ordinary skill in the art. The person having ordinary skill in the art would have understood that drying at 80 deg. C is close to 40 to 60 deg. C and that drying at the lower temperature would have a similar drying effect but would require more time to dry.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731