DETAILED ACTION
Status of Claims
Claims 1-7 and 9-22 are pending.
Claims 11-20 are withdrawn from consideration.
Claim 8 is cancelled.
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 .
Status of Objections and Rejections
The previous rejections under 35 U.S.C. 102 as being anticipated by Lu et al. for claims 1 and 3 stand.
All other grounds of rejection are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by amendment.
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 and 3 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), 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 catalytically active metal ions; sodium and potassium are catalytically active metal ions according to Applicant’s specification page 6 lines 5-8);
Mechanically stirring during micro-arc oxidation intrinsically includes a mixer to stir [0040] (= a mixer to stir the electrolyte bath in the tank housing);
A source for supplying the voltage is intrinsically present in the micro-arc system of Lu; having a positive voltage and negative voltage and intrinsically produces micro-arcs [0036] (= a power supply operatively connected to the electrolyte bath, and configured to generate micro-arcs in the electrolyte bath, the power supply comprising a positive connection and a negative connection);
A metal substrate configured to grow a metal oxide into its surface is not further limiting to the claimed system since it is directed towards the material worked upon (MPEP § 2115); moreover, Lu discloses a metallic first layer (352 = metal substrate) [0021];
A plasma electrolytic oxidation system (equivalent to micro-arc system) for oxidizing a surface of a substrate (350, metal substrate, comprising first metallic layer (352) [0021]-[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 wherein the anode and the cathode complete a voltage circuit).
The claimed “wherein the metal oxide is adhered to the metal substrate” and “generate molten metal that when quenched encapsulates the catalytically active metal ions” is directed towards the manner of operating the claimed system and does not differentiate the system claim from the prior art. Apparatus claims cover what a device is and not what a device does. A recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed system from the system of the prior art (MPEP § 2114 II). Moreover, Lu discloses forming a metal oxide surface layer from using the first metallic layer as a substrate and therefore the metal oxide (i.e. second layer) is adhered to the first layer (= Lu’s second layer, 354 [0037]). Lu discloses particles and additives which are embedded in the oxide layer and/or underlying layers, the embedded particles also including catalytically active metal [0013], [0040], [0050] (= encapsulates).
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]. The claimed “to grow the metal oxide into the surface of the metal substrate” is directed towards the manner of operating the claimed system and the resulting product which do not structurally limit the claimed system.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959) in view of Li et al. (CN 207567366).
Regarding claim 2, Lu is silent in regards to a chiller for filtering and supplying cooled electrolytes to the electrolyte bath.
In the same or similar field of micro-arc oxidation (title), Li discloses the device comprising a cooling water tank (130) (= chiller) and a filtering system (140, 141, 141a) (Figures 1-2) [0034]. Li discloses the cooling water tank for exchanging heat with the electrolyte to cool the electrolyte during processing [0026], [0046]. Li additionally discloses second circulation pump and cooling water for providing chilled electrolyte to the electrolytic cell [0060]-[0061].
Before the effective filing date of the claimed invention, it would have been obvious to modify the device of Lu with a chiller for filtering and supplying cooled electrolyte to the electrolyte bath because it is well known in the art to cool an electrolyte of a micro-arc oxidation device and filter and circulate the electrolyte to provide replenished, chilled electrolyte with fewer impurities.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959) in view of Shatrov (WO 03083181).
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. The claimed “the production of the metal oxide electrocatalyst, may produce a reaction gas, which the supplied gas from the gas tank is configured to dilute” with the phrase “may produce a reaction gas” are directed towards optional claim language and functional claim language which does not further structure limit the claimed system.
Lu fails to disclose a gas tank to supply a gas into the electrolyte bath.
Shatrov discloses a plasma electrolytic oxidation comprising air or oxygen bubbling into the electrolyte. Shatrov discloses that these machines create directed flows of liquid, which level out the concentration and temperature of the electrolyte at the macro level. Shatrov also discloses that the air bubbles provided are vibrating and create micro-scale flows in the electrolyte which significantly speeds up the process of agitating the electrolyte, preventing it from becoming depleted close to the surface being oxidized (page 5 3rd paragraph, page 6 4th-5th paragraphs).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising a gas tank because Shatrov discloses supplying air or oxygen to an electrolyte which levels out the concentration and temperature of the electrolyte at the macro level and which significantly speeds up the process of agitating the electrolyte, preventing it from becoming depleted close to the surface being oxidized. The claimed “which the supplied gas from the gas tank is configured to dilute” is directed towards functional claim language. Moreover, the device of Lu in view of Shatrov would perform this dilution based on the addition of air and/or oxygen which increases the saturation of air or oxygen in the electrolyte.
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 including a first stage and a second stage. The instant claim language does not further structurally limit the claimed system since the claim does not positively recite any structure to the system. The claimed “proton exchange membrane” is directed towards the material worked upon (e.g. fuel cell) which does not further limit the claimed system.
Claim(s) 6-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959), in view of Li et al. (CN 207567366), in view of Yang et al. (CN 103276388) and in view of AAP (DE 202009015934).
Regarding claim 6, Lu in view of Li disclose the system as described above including a chiller and filtering. 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]. Lu discloses embedding nanoparticles as described above. The claimed “the substrate comprising a metal mesh substrate” is directed towards the material worked upon and does not further structurally limit the claimed structure.
Lu in view of Li fail to disclose a sampling port and a power supply varies the output of the frequency.
Yang discloses in the field of electrochemical conversion systems, sampling ports and sampling pumps for automatically replenishing the solution based on the concentration of components in the electrolyte through monitoring [0007]-[0008].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising a sampling port because Yang teaches in a similar field that an electrolyte may be automatically replenished with electrolyte components based on monitoring through a sampling port.
Lu in view of Li and Yang fail to disclose a power supply configured to vary the output of frequency.
In the same or similar field of plasma electrolytic oxidation, AAP discloses a power supply unit or generator for controlling the characteristics and/or quality of the converted surface based on the applied electric field [0003], [0016]. In particular, the amplitude, shape and/or frequency of the applied voltages are controlled [0003]. AAP discloses characteristics including porosity [0002]. AAP additionally discloses a process control unit [0029].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising a power supply configured to vary the output of frequency because AAP discloses that the characteristics of the conversion coating can be controlled by controlling the frequency and/or amplitude of the power supply.
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 9, Lu discloses the nanoparticles comprising graphite [0050].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959), in view of Li et al. (CN 207567366), in view of Yang et al. (CN 103276388), in view of AAP (DE 202009015934) and in view of Hansal et al. (EP 3875636).
Regarding claim 10, Lu, Li, Yang, AAP fail to disclose the inclusion of the additions (e.g. sodium or potassium compounds) as claimed.
Hansal discloses a plasma electrolytic oxidation [0001] the system comprising an electrolyte with potassium ions [0038], a tank intrinsically present to house the electrolyte that is immersed, a voltage present [0009], a power source is intrinsically present in a PEO system in order to apply voltage, an anode intrinsically present to apply voltage to metal substrate in a PEO system [0001], [0009], a cathode is intrinsically present in a PEO system, and forming a metal oxide surface layer [0001]. Hansal discloses KOH [0038].
Since Lu is silent in regards to the compound for supplying the potassium, one of ordinary skill in the art would necessarily look to the related art for potassium compounds and arrive at a reference such as Hansal. In a similar system of Lu in view of Li, Yang and AAP, Hansal discloses the inclusion of KOH.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2017/0029959) in view of Yoon et al. (KR 20150046935).
Regarding claims 21-22, Lu discloses the claimed invention as applied above. Lu fails to disclose a substrate holder configured to convey, a metal-oxide electrocatalyst holder for providing a residence time.
Yoon discloses a surface treatment device including plasma electrolytic oxidation comprising a winding rod (3) rotated by power by the motor (4) (as applied to claim 22) using power transmission means such as a conventional gear train sprocket and chain, pulley and belt [0020] (= any of which read on the claimed holder configured to convey). The plate body (1) (= substrate) is made of a conductive metal material and the surface treatment device is structured to continuously form an oxide film on the surface of the plate (1) [0011]. The electrolyte is sprayed through nozzles (6) from the electrolyte container (10) through nozzle mounting member (7) (= holder configured to receive the electrolyte). Yoon discloses that it is necessary to adjust the amount of electrolyte sprayed through the nozzles by considering the material of the plate body, composition of the electrolyte, moving speed of the plate body, voltage, etc. [0018]. Yoon discloses the system for providing a continuous form of an oxide film on the surface and maintaining a constant moving speed of the plate to improve the uniformity of the oxide film [0008]. The claimed resistance time may be any duration of time. Yoon discloses the system for controlling the motor at a desired speed.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising a substrate holder configured to convey, a metal-oxide electrocatalyst holder for providing a residence time because Yoon discloses a system for continuously moving a plate through an oxidation surface treatment system to provide a continuous, uniform surface treatment.
Response to Arguments
Applicant's arguments filed 26 January 2026 have been fully considered. The remarks on pages 12-14 directed towards the grounds of rejection under 35 U.S.C. 102 as being anticipated by Lu et al. in regards to claims 1 and 3 are not found persuasive. The argument states that Lu is using PEO not on a metal substrate, but on the first layer and therefore does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. The instant claims are directed towards a device or apparatus. The material worked upon does not further limit the claimed device. Moreover, the first layer of Lu may be considered the metal substrate since the treatment is being performed on the first metal layer of Lu. It is noted the remarks refer to “Lui” however the PGPub appears to indicate “Lu et al”.
The remarks on page 15 are directed towards the previous grounds of rejection under 35 U.S.C. 102 as anticipated by Hansal et al. The previous grounds of rejection have been withdrawn in view of Applicant’s amendment and therefore the remarks will not be specifically addressed at this time.
On page 15 the remarks are directed towards claim 5 which now states a proton exchange membrane (PEM) and states that the prior art does not disclose the claimed PEM. The Examiner respectfully disagrees with this analysis. The PEM is directed towards an object of the material worked upon. The PEM is not a structural element of the claimed device or apparatus. For example the instant specification indicates “components of a typical proton exchange member fuel cell” (1.3.2. Summary of PEM System). Figure 4 of the instant specification is directed towards a fuel cell single stack which is a separate and distinct product.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795
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