DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Invention I in the reply filed on 17 December 2025 is acknowledged. As a result, Claims 1, 2, 3, 4, 5, 6, 7, 9, 10, 16, 17, 18, and 19 are currently pending and under examination.
Claim Rejections - 35 USC § 102
3. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. Claims 1, 2, 3, 5, 7, 9, 10, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al.
Song et al. (CN110120528A) is directed toward an electrode catalyst for a metal fuel cell (title).
Regarding Claim 1, Song et al. discloses an air electrode for an electrochemical device (title). The air electrode of Song et al. comprises: a first diffusion layer (“breathable membrane”); a current collecting layer (“current collector”) disposed on the first diffusion layer; a second diffusion layer (“breathable membrane”) disposed on the current collecting layer; and a catalyst layer (“catalytic membrane”) disposed on the second diffusion layer as indicated in ¶33. Song et al. further teaches the catalyst layer comprises an active catalytic component, which is silicon micropowder (¶8). The active catalyst of Song et al. electrochemically reduces oxygen as per ¶4-5.
Regarding Claim 2, Song et al. discloses the air electrode of Claim 1, wherein in the catalyst layer, the silicon powder has a mass percentage between 5% and 55%. In Claim 2 and ¶10 of Song et al., the silicon powder is in the amount ranging from 20 to 35 parts by weight (i.e.: wt.%) of the catalyst layer composition with specific examples of 20 parts by weight (Ex. 1) and 35 parts by weight (Ex. 2). It has been held that a prima facie case of anticipation exists when the prior art discloses an example that falls within the claimed range. See MPEP 2131.03 – ANTICIPATION OF RANGES.
Regarding Claim 3, Song et al. discloses the air electrode of Claim 1, where in the silicon power has a particle size between 1 micron and 100 microns as evidenced by Ex. 1 and Ex. 2 where the particle size is 2 microns. Song et al. discloses a broader range of 50 nm to 10 microns for the particle size of the silicon powder (¶11). It has been held that a prima facie case of anticipation exists when the prior art discloses an example that falls within the claimed range. See MPEP 2131.03 – ANTICIPATION OF RANGES.
Regarding Claim 5, Song et al. discloses the air electrode of Claim 1, wherein in the catalyst layer, the catalytic active component comprises alumina as evidenced by the inclusion of alumina in the catalyst layer in ¶12 and Claim 3 in Song et al.
Regarding Claim 7, Song et al. discloses the air electrode of Claim 1, wherein the catalyst layer further comprises a conductive agent (e.g.: carbon black, graphene, metal powder or conductive polymer in ¶13), activated carbon (¶12), and a binder (analogous to adhesive in Song et al. with examples of PTFE, polyethylene, PVDF, or polyvinyl alcohol in ¶14).
Regarding Claim 9, Song et al. discloses the air electrode of Claim 7, where the conductive agent comprises carbon black or graphene as per ¶13. Carbon black was also used as the conductive agent in Ex. 1 and Ex. 2 of Song et al.
Regarding Claim 10, Song et al. disclose the air electrode of Claim 7, wherein the binder comprises polytetrafluoroethylene emulsion (¶24).
Regarding Claim 17, Song et al. discloses the air electrode of Claim 1, wherein the catalyst layer is free from platinum, gold, palladium, ruthenium oxide, iridium, manganese oxide, cobalt oxide, and manganese-cobalt oxide composite as supported by ¶5 and ¶19 where it indicates the invention does not use precious metals (i.e.: Pt, Au, Pd, Ru, Ir) nor manganese oxides (MnO2 from the comparative example).
Regarding Claim 19, Song et al. discloses the air electrode of Claim 1, wherein the first diffusion layer and the second diffusion layer comprise carbon black, activated carbon, and PTFE as indicated by ¶33.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. Claims 4, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al.
Song et al. (CN110120528A) is directed toward an electrode catalyst for a metal fuel cell (title).
Regarding Claim 4, Song et al. discloses the air electrode of Claim 3, but does not disclose the D50 particle size of the silicon powder. The examples of Song et al. disclose that the range of the particle size has an upper end of 10 microns, which is approaching the limitation of the D50 particle size for the limitation of Claim 4 of the instant application. As such, one of ordinary skill in the art would have expected that a D50 of 10 microns and 21 microns are so close that either particle size would have yielded similar and predictable results.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (e.g.: Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). Additionally, the D50 of 21 microns in the limitation of Claim 4 is cited in specification of US Pub. No. 2024/0229261 A1 in ¶22, ¶131, ¶146 and ¶161 but no other D50 values are disclosed in the specification nor evaluated in the examples. Therefore, the criticality of the D50 of 21 microns has not been established (i.e.: unexpected results) and the prima facie case of obviousness is maintained. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 16, Song et al. discloses the air electrode as per Claim 1, wherein the catalyst is silicon powder, but is silent on the elemental Si content of the powder. In designing electrodes, one of ordinary skill in the art would use catalytically active components of the highest purity available since the presence of impurities will reduce make the actual catalyst loading. The higher purity materials are also advantageous because they provide less impurities which may result in deleterious side reactions and unwanted products during the electrocatalysis. The presence of side reactions is capable of reducing the lifetime of the air electrode. One drawback of higher purity materials is the increased cost associated higher quality chemicals. Therefore, one of ordinary skill in the art would be motivated prior to the effective filing date of the claimed invention to optimize the purity (i.e.: elemental silicon content of the silicon powder), including the levels of the claimed range (i.e.: 99%), as part of routine experimentation. See MPEP 2144.05(II) – ROUTINE OPTIMIZATION.
Regarding Claim 18, Song et al. discloses the air electrode of Claim 1, but is silent on the formation of hydrogen peroxide or hydrogen peroxide anion during the electrochemical reduction of oxygen. Song et al. discloses the electrode of Claim 1 and the instant application indicates that silicon powder (i.e.: the air electrode of Claim 1) avoids the formation of hydrogen peroxide and hydrogen peroxide ion in the electrochemical reduction catalyzed of oxygen (¶19 cited as US Pub. No. 2024/0229261 A1. Therefore, the air electrode with the catalytically active silicon power of Claim 1 disclosed by Song et al. would inherently not form hydrogen peroxide or hydrogen peroxide anion during the electrochemical reduction of oxygen, as evidenced by, at least, the Applicant’s own disclosure (¶19). See MPEP 2112-III.
8. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Song et al. as applied to Claim 5 above, and further in view of Alumina’06.
Song et al. (CN110120528A) is directed toward an electrode catalyst for a metal fuel cell (title). Alumina’06 ("Overview of Alumina," 09 October 2006. https://www.glennklockwood.com /materials-science/alumina.html).
Regarding Claim 6, Song et al. discloses the air electrode of Claim 5, but does not specify the phase of alumina. Alumina’06 discloses the two main phases of alumina are alpha-Al2O3 and gamma Al2O3 in the classification of alumina section. When comparing the alpha and gamma forms, the former has a very small surface area of 5 m2/g and the latter has a much larger surface 100 m2/g (classification of alumina section). Since the alumina used in Song et al. is part of the catalyst layer and functions as an adsorbent, higher surface area would be beneficial to gas and liquid adsorption/exchange required for O2 reduction. It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use gamma-Al2O3 in the air electrode of parking with the reasonable expectation of forming an air electrode with high surface area for gas/liquid or gas/gas exchange.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794