DETAILED ACTION
Status of Claims
Claims 1-20 are pending.
Claims 11-20 are withdrawn from consideration.
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 with traverse of Group I (claims 1-11) in the reply filed on 8 September 2025 is acknowledged. The traversal is on the ground(s) that the groups are not independent and distinct, they share common technical features and the classifications are closely related. This is not found persuasive because there does exist a search burden since the producing system (group I) for example is not restricted in the search area of plasma electrolytic oxidation systems, thus the search would extend beyond any search that may be present examining the method claims (Group II) and the coated product (Group III) is in a completely different classification area not within the electrolytic area. Although some features may overlap (e.g. presence of cathode, anode) the Groups have differences that require separate examination strategies in separate subject matter areas.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities: the phrase “wherein producing the metal-oxide electrocatalyst” should be presented differently in the claims. For example, “and wherein the system produces the metal-oxide electrocatalyst”. Appropriate correction is required.
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.
Claim(s) 1, 3-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (US 2017/0029959).
Regarding claim 1, Lu discloses an electrolytic micro arc oxidation system (title) (= a metal-oxide electrocatalyst producing system for creating a metal substrate), the system comprising:
A bath tank [0030] comprising an electrolyte with sodium or potassium [0035] (= a tank housing an electrolyte bath, wherein the electrolyte bath comprises a plurality of metal ions);
A source for supplying the voltage is intrinsically present in the micro-arc system; having a positive voltage and negative voltage [0036] (= a power supply operatively connected to the electrolyte bath, the power supply comprising a positive connection and a negative connection);
A plasma electrolytic oxidation system (equivalent to micro-arc system) for oxidizing a surface of a substrate (350, metal substrate, [0022]); the positive voltage connected to the substrate being oxidized (= an anode connected to the positive connection and a metal substrate, wherein the anode supplies an anode voltage from the power supply to the metal substrate when the metal substrate is submerged in the electrolyte bath; it is noted that the material worked upon does not further limit the claimed system MPEP § 2115);
A negative voltage applied to an adjacent surface [0036] (= a cathode connected to the negative connection and partially submerged in the electrolyte bath). The claimed “wherein the electrolyte bath produces a functional material layer” does not further limit the claimed system. Moreover, Lu discloses forming a metal oxide surface layer (= Lu’s second layer, 354 [0037]).
Regarding claim 3, the instant claim does not further limit the structure of the claimed system. Moreover, Lu discloses wherein the system comprises a plasma electrolytic oxidation process [0036].
Regarding claim 4, Lu discloses a positive voltage and negative voltage supplied in the PEO system [0036]. A positive terminal and negative terminal being connected are intrinsic to a plasma electrolytic oxidation system.
Regarding claim 6, Lu discloses the system as described above. Lu discloses the electrolyte comprising nanoparticles [0040], [0050]. The claimed “high voltage” is relative and directed towards the manner of operating the claimed system and therefore does not further structurally limit the claimed system. Moreover, Lu discloses a voltage range including 200-400 V [0036].
Regarding claim 7, the material worked upon including any layers formed thereon does not further structurally limit the claimed system. Moreover, Lu discloses forming multiple layers including porous layers [0042].
Regarding claim 8, the material produced does not further structurally limit the claimed system. Moreover, Lu discloses the nanoparticles embedded in the second layer [0040].
Regarding claim 9, Lu discloses the nanoparticles comprising graphite [0050].
Claim(s) 1-2, 6 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansal et al. (EP 3875636).
Regarding claim 1, Hansal discloses a plasma electrolytic oxidation [0001] (= a metal-oxide electrocatalyst producing system for creating a metal substrate), the system comprising:
An electrolyte with potassium ions [0038]; a tank intrinsically present to house the electrolyte that is immersed (= a tank housing an electrolyte bath, wherein the electrolyte bath comprises a plurality of metal ions);
A voltage present [0009]; a power source is intrinsically present in a PEO system in order to apply voltage (= a power supply operatively connected to the electrolyte bath, the power supply comprising a positive connection and a negative connection);
an anode intrinsically present to apply voltage to metal substrate in a PEO system [0001], [0009] (= an anode connected to the positive connection and a metal substrate, wherein the anode supplies an anode voltage from the power supply to the metal substrate when the metal substrate is submerged in the electrolyte bath; it is noted that the material worked upon does not further limit the claimed system MPEP § 2115);
A cathode is intrinsically present in a PEO system (= a cathode connected to the negative connection and partially submerged in the electrolyte bath). The claimed “wherein the electrolyte bath produces a functional material layer” does not further limit the claimed system. Moreover, Hansal discloses forming a metal oxide surface layer [0001].
Regarding claim 2, Hansal discloses a system that operates at 2 to 95° therefore a chiller is intrinsically present to cool the electrolyte.
Regarding claim 6, Hansal discloses the claimed invention as applied above. The claimed “high voltage” is relative and directed towards the manner of operating the claimed system and therefore does not further structurally limit the claimed system. Moreover, Hansal discloses a high voltage [0002]. Hansal discloses the inclusion of nanoparticles [0001].
Regarding claim 10, Hansal discloses KOH [0038].
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (US 2017/0029959) and alternatively Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959).
Regarding claim 5, the instant claim language is directed towards a process. The instant claim language does not further structurally limit the claimed system since the claim does not positively recite any structure to the system. Moreover, a proton exchange member process is directed towards the intended use of the material produced by the claimed system. The material worked upon (e.g. material produced) does not further limit an apparatus claim. Further, Lu discloses the metal-oxide layer as claimed and therefore is capable of use in a proton exchange membrane process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/ Primary Examiner, Art Unit 1795
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