DETAILED ACTION
Claim(s) 1-10 was/were rejected in Office Action mailed on 11/05/2025.
Applicant filed a response, amended claim(s) 1-10, on 03/05/2026.
Claim(s) 1-17 and 19-32 are pending, and claim(s) 11-17 and 19-32 are withdrawn.
Claim(s) 1-8 and 10 are rejected.
Claim 9 is objected to.
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 § 102
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 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.
Claims 1, 4-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al., CN 108970617A (Zhou) (provided in IDS received on 11/03/2023).
The examiner has provided a machine translation of Zhou et al., CN 108970617A (Zhou). The citation of the prior art set forth below refers to the machine translation.
Regarding claim 1, Zhou discloses an oxygen reaction catalyst, comprising FeOOH and ferronickel layered double hydroxide (wherein the oxygen reaction catalyst reads on the electrocatalyst) (Zhou, Abstract).
Zhou further discloses the interlayer anions of the nickel-iron double layered hydroxide include fluoride ions (Zhou, page 2, 6th paragraph).
Regarding claims 4-5, as applied to claim 1, Zhou further discloses the morphology from scanning electron microscope of the electrocatalyst in Figure 4 (Zhou, page 14, Figure 4), also shown below, which shows that comprising a three- dimensional sponge-like network structure as determined by scanning electron microscopy (SEM) imaging.
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Zhou, Figure 4
Zhou further discloses the electrocatalyst TEM test result in Figure 5 (Zhou, page 15, Figure 5), also shown below, which shows that comprising vertically oriented and interpenetrating nanosheet arrays.
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Zhou, Figure 5
Although there is no disclosure that the test method is conformity with high-angle annular dark-field scanning transmission electron microscopy, given that Zhou discloses structure as the presently claimed and absent evidence criticality how the Zhou is measured, it is an examiner's position that structure disclosed by Zhou to meet the claim limitation.
Regarding claim 7, as applied to claim 1, Zhou further teaches the elemental Ni is 5%-20%, and the elemental Fe is 5%-10% (Zhou, page 1, claim 2). Therefore, the Fe/Ni molar ratio corresponds to 0.25 to 2 (i.e., 5/20=0.25; 10/5=2), which is within the claimed range.
Although there is no disclosure that the test method is conformity with microwave plasma-atom emission spectrometry (MP-AES), given that Zhou discloses molar ratio as the presently claimed and absent evidence criticality how the Zhou is measured, it is an examiner's position that molar ratio disclosed by Zhou to meet the claim limitation.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou.
Regarding claim 8, as applied to claim 7, Zhou teaches the elemental Ni is 5%-20%, and the elemental Fe is 5%-10% (Zhou, page 1, claim 2). Therefore, the Fe/Ni molar ratio corresponds to 0.25 to 2 (i.e., 5/20=0.25; 10/5=2), which is overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou as applied to claim 1 above, and further in view of Chen et al., Dynamic migration of surface fluorine anions on cobalt-based materials to achieve enhanced oxygen evolution catalysis, Angew. Chem. Int. Ed., 2018 (Chen’2018).
Regarding claims 2-3, as applied to claim 1, Zhou teaches the electrocatalyst with OER electro-catalysis performance. Zhou does not explicitly disclose having a single F 1s peak as exhibited by high-resolution fluoride (F) 1s X-ray photoelectron spectroscopy spectra or wherein the single F 1s peak is at a binding energy of 684.0 eV.
With respect to the difference, Chen’2018 teaches metal oxyhydroxide as catalyst with OER activity (Chen’2018, Abstract). Chen’2018 specifically teaches F 1s levels, exhibiting a single main peak at about 684.1 eV (Chen’2018, Figure 3c, page 15473, left column, bottom paragraph).
As Chen’2018 expressly teaches, most of the F anions are mainly existing on the surface of the metal oxyhydroxide nanosheets that are associated with dangling bonds (Chen’2018, paragraph spanning between pages 15472-15473); surface enrichment of F anions endows more hydrophilic surface character of electrode materials to accelerated the key process of oxygen related intermediate adsorption (Chen’2018, page 15474, right column, 2nd paragraph).
Chen’2018 is analogous art as Chen’2018 is drawn to metal oxyhydroxide as catalyst with OER activity.
In light of the motivation of have surface enrichment of F anions on a metal oxyhydroxide as a catalyst with OER activity, as taught by Chen’2018, it therefore would have been obvious to a person of ordinary skill in the art to have the fluoride anions enriched on the surface of the iron nickel layered double hydroxide of Zhou, exhibiting a single main peak at about 684.1 eV, which reads upon the single F 1s peak is at a binding energy of 684.0 eV, in order to endow more hydrophilic surface character of electrode materials to accelerated the key process of oxygen related intermediate adsorption, and thereby arrive at the claimed inventions.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou as applied to claim 5 above, and further in view of Tong et al., Thickness-control of ultrathin two-dimensional cobalt hydroxide nanosheets with enhanced oxygen evolution reaction performance, Chemical Engineering Journal, 2017 (Tong).
Regarding claim 6, as applied to claim 5, Zhou does not explicitly disclose wherein each nanosheet has a thickness of about 2 to 3 nm as determined by high magnification transmission electron microscopy (TEM) imaging.
With respect to the difference, Tong teaches metal hydroxide nanosheets for oxygen evolution reaction catalyst (Tong, Abstract). Tong specifically teaches metal oxide nanosheets with different thickness such as 4.0 nm (Tong, page 227, right column, bottom paragraph).
As Tong expressly teaches, Due to a huge number of active sites, the ultrathin metal hydroxide nanosheets emerge high efficient electrocatalytic activity of OER with a lower
onset potential and a lower overpotential.; additionally, the ultrathin metal hydroxide nanosheets have a small Tafel slope and the OER stability is very excellent in alkaline media with a negligible decline of current density; the thinner the nanosheets are, the better performances (Tong, page 230, right column, 2nd paragraph).
Tong is analogous art as Tong is drawn to metal hydroxide nanosheets for oxygen evolution reaction.
In light of the motivation of using thinner nanosheets for oxygen evolution reaction catalyst, as taught by Tong, it therefore would have been obvious to a person of ordinary skill in the art to reduce the thickness of the nickel iron layered double hydroxide of Zhou, in order to achieve better performance.
Although there are no disclosures on the amounts of thickness of nanometer sheet as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of nanometer sheet thickness of Zhou, including over the amounts presently claimed, in order to achieve desired performance, and thereby arrive at the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou as applied to claim 1 above, and further in view of Tripkovic et al., From 3D to 2D Co and Ni oxyhydroxide catalysts: Elucidation of the active site and influence of doping on the oxygen evolution activity, ACS Catal., 2017 (Tripkovic).
Regarding claim 10, as applied to claim 1, Zhou does not explicitly disclose further comprising at least one metal in addition to Fe and Ni, the at least one metal comprising Ce, Cr, Cu, Co, Mo, Ru, Pd, Pt, Ir, Rh, Os, Ag, Au, Re, Ta, Ti, V, W, Mn, Zn, Sn, Sb, In, Ga, Bi, Pb, or Zr.
With respect to the difference, Tripkovic teaches the layered oxyhydroxides as oxygen evolution reaction catalyst can be tuned by doping (Tripkovic, Abstract). Tripkovic specifically teaches Rh-doped Ni oxyhydroxide (Tripkovic, page 8569, Conclusion).
As Tripkovic expressly teaches, Rh-doped Ni oxyhydroxide stands out as the catalyst with the highest activity.
Tripkovic is analogous art as Tripkovic is drawn to study of the layered oxyhydroxides as oxygen evolution reaction catalyst.
In light of the motivation of tuning activities of layered oxyhydroxides as oxygen evolution reaction catalyst by doping, as taught by Tripkovic, it therefore would have been obvious to a person of ordinary skill in the art to tune the activity of the iron nickel layered double hydroxide (i.e., oxyhydroxides) of Zhou, by doping, e.g., with Rh, in order to achieve higher activity, and thereby arrive at the claimed invention.
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.
Regarding claim 9, none of Zhou, Chen’2018, Tong or Tripkovic, discloses or suggests wherein the fluoride-containing nickel iron oxyhydroxide electrocatalyst has the formula FexNiyOOH wherein x ranges from about 0.75 to about 0.83, and y ranges from about 0.26 to about 0.38. On the contrary, Zhou only discloses FeOOH carried on ferronickel laminated double hydroxide (Zhou, claim 1), without requiring a specific formula.
Response to Arguments
Applicant primarily argues:
“Claim 1 requires "a fluoride-containing nickel iron oxyhydroxide electrocatalyst." Zhou's catalyst is not a fluoride-containing nickel iron oxyhydroxide electrocatalyst as required in claim 1. Zhou's catalyst is a nickel iron layered double hydroxide (LDH) structure coated with a layer of FeOOH evidenced by the XRD provided. Zhou's nickel iron layered double hydroxide fails to meet the "nickel iron oxyhydroxide" requirement of claim 1, and Zhou's iron oxyhydroxide fails to meet the nickel and fluoride requirements of claim 1. For these reasons, claim 1 is novel over Zhou.
Leonard's reference to "nickel-iron oxyhydroxides (Ni1.xFexOOH), specifically the layered double hydroxide (LDH) structure of Ni1.xFexOOH" is specifying one particular structure of Ni1.xFexOOH, not asserting the chemical equivalence of Ni1.xFexOOH and layered double hydroxide. Ni1.xFexOOH can have different structures, including Fe-doped y-NiOOH and Ni-doped p-FeOOH. y-NiOOH has a layered structure with similar arrangement of metals, oxygens, and intercalated water and ions to layered double hydroxides, although the Ni-O distance, layer spacing, metal oxidation state, and hydrogen content are different. p-FeOOH has a different arrangement of metals and oxygens than layered double hydroxides. Leonard apparently wanted to clarify that it was the forms of Ni1.xFexOOH with structural similarity to layered double hydroxides that were considered most promising. In addition to having a different of structure, Applicant's Ni1-xFexOOH has a different composition than nickel iron layered double hydroxide ([Ni1- xFex(OH)2]x+(An-)x/n-mH2O of Zhou), and therefore a different identity.”
Remarks, p. 10
The Examiner respectfully traverses as follows:
Upon further consideration on the remarks above, the rejection over Zhou in view of Leonard is withdrawn.
However, alternatively, the oxygen reaction catalyst of Zhou, i.e., the FeOOH nano-particle carried on ferronickel laminated double hydroxide, wherein FeOOH is explicitly expressed as an oxyhydroxide, could also read on nickel iron oxyhydroxide, as set forth on page 5 of Office Action mailed 11/05/2025.
Applicant further argues:
“Applicant's catalyst's XRD pattern is clearly different from that of Zhou's XRD in that it has diffraction peaks at 2θ=11.9, 26.9, and 35.3 ° instead of the nickel iron layered double hydroxide (LDH) structure. In addition, Applicant's XPS showed that the catalyst had Ni2+and Fe3+-O/OH bonds. The combination of Applicant's XRD and XPS data shows that Applicant's electrocatalyst is nickel iron oxyhydroxide, more specifically nickel doped iron oxyhydroxide, instead of nickel iron layered double hydroxide (LDH). It follows that Zhou's catalyst fails to meet the oxyhydroxide requirement of claim 1, and for this reason alone claim 1 is novel over Zhou regardless of whether fluoride is present in Zhou's catalyst. Furthermore, nickel iron oxyhydroxide differs compositionally from nickel iron LDH, containing only half the hydroxide content found in the LDH structure.”
Remarks, p. 10-11
The Examiner respectfully traverses as follows:
The present claim 1 only broadly recites “A fluoride-containing nickel iron oxyhydroxide”, and does not require specific XRD or XPS properties. The differences in XRD and/or XPS data between prior art and the present invention does not necessarily mean that the prior art could not meet the broadly recited claim limitation of “A fluoride-containing nickel iron oxyhydroxide”.
Applicant further argues:
“Reconsideration is respectfully requested of the rejection of claim 8 under 35 USC 103 as being unpatentable over Zhou. Zhou is discussed above. Zhou is alleged by the Office to disclose the molar ratio as claimed in claim 8. Claim 8 depends indirectly from claim 1 and is not obvious from Zhou for the same reasons as provided for claim 1, above, regarding missing one or more elements of the claim.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Zhou meets the presently claim 1 as set forth above in item 15.
Applicant further argues:
“Reconsideration is respectfully requested of the rejection of claims 2 and 3 under 35 USC 103 as being unpatentable over Zhou in view of Chen (Angew. Chem. Int. Ed., 2018, 57:15471-15475). The Office alleges that it would have been obvious to "have the fluoride anions enriched on the surface of the iron nickel layered double hydroxide of Zhou, exhibiting a single peak at about 684.1 eV...to endow more hydrophilic surface character of electrode materials to accelerate the key process of oxygen related intermediate adsorption." Applicant respectfully disagrees.
Claims 2 and 3 depend directly or indirectly from claim 1 and are not obvious from Zhou for the same reasons as provided for claim 1, above. Chen does not overcome the deficiencies of Zhou, as Chen does not disclose a fluoride-containing nickel iron oxyhydroxide electrocatalyst.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Firstly, Zhou meets the presently claim 1, including a fluoride-containing nickel iron oxyhydroxide electrocatalyst, as set forth above on page 3.
Secondly, it is noted that while Chen’2018 does not disclose all the features of the present claimed invention, Chen’2018 is used as teaching reference, namely (to have the fluoride anions enriched on the surface of the iron nickel layered double hydroxide of Zhou, exhibiting a single main peak at about 684.1 eV, in order to endow more hydrophilic surface character of electrode materials to accelerated the key process of oxygen related intermediate adsorption, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Regarding claims 2 and 3, there would have been no reason to expect Zhou's catalyst to have a single F is peak as exhibited by high-resolution fluoride (F) is X-ray photoelectron spectroscopy spectra, let alone at a binding energy of 684.0 eV, given that the Zhou catalyst is not the catalyst as claimed as discussed above.
Chen describes "the XPS spectra of F is in the F-CoOOH sample exhibits a main peak at about 684.1 eV." However, this is for the F-CoOOH of Chen, not the [Nii-xFex(OH)2]x+(An-)x/n-mH2O of Zhou. Ni and Fe have specific d-band centers. The high electronegativity of F anions would pull too much electron density away from the active metal sites, potentially poisoning the catalyst rather than enriching it. As a result, a person of ordinary skill in the art would not have has reason to add F to a Ni-Fe system.
Chen only had one metal Co in the catalyst, and the catalyst morphology was easier to control. Since F anions might cause the Ni-Fe surface to reconstruct into an inactive phase, adding F anions would be a "gamble" rather than an obvious step and the skilled person would not have had a reasonable expectation of success.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Zhou and Chen are both drawn to OER electrocatalyst, and Chen provides proper motivation to combine, namely in order to endow more hydrophilic surface character of electrode materials to accelerated the key process of oxygen related intermediate adsorption. See page 10 of Office Action mailed 11/05/2025. Therefore, it is the Examiner’s position that there would be a reasonable expectation of success by combining Zhou and Chen, absent evidence to the contrary.
Further, it is noted that it is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Applicant further argues:
“Reconsideration is respectfully requested of the rejection of claim 6 under 35 USC 103 as being unpatentable over Zhou in view of Tong (Chem. Eng. J., 2017). Zhou is admitted by the Office not to disclose the nanosheet thickness as claimed in claim 6. The Office relies on Tong to allegedly establish that nanosheet thickness was a known result effective variable that would have been obvious to optimize. Tong does not overcome the deficiencies of Zhou as discussed above for claim 1. Claim 6 depends indirectly from claim 1 and is not obvious from Zhou and Tong for the same reasons as provided for claim 1, above, regarding missing one or more elements of the claim.”
Remarks, p. 12
The Examiner respectfully traverses as follows:
Firstly, Zhou meets the presently claim 1, including a fluoride-containing nickel iron oxyhydroxide electrocatalyst, as set forth above on page 3.
Secondly, it is noted that while Tong does not disclose all the features of the present claimed invention, Tong is used as teaching reference, namely using thinner nanosheets for oxygen evolution reaction catalyst, in order to achieve desired performance, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights