DETAILED ACTION
Status of Claims
Claims 1-7 and 9-22 are pending.
Claims 8 is cancelled.
Claims 11-20 are withdrawn from consideration.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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 August 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-7, 9-10 and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 6 and 21, the phrase “share a continuous base-metal composition at their interface” and “without any intervening layer of differing based metal composition the metal mesh substrate and the metal oxide with the plurality of catalytic nanoparticles” contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not appear to support the description as claimed in regards to the substrate, metal oxide and nanoparticles. The specification does not indicate share…composition and differing…composition.
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 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.
Regarding claim 9, the phrase “metal from the set of graphite” is indefinite because graphite is not a metal.
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) 1, 3, 5 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20130074275) in view of Lu et al. (US 2017/0029959).
Regarding claims 1 and 21, Shin discloses a metal oxide producing system [0009] (= a metal-oxide electrocatalyst producing system) comprising:
A tank (not labeled) housing an electrolyte (9) (Figure 5) comprising graphene, graphite, inorganic or metal-based nanoparticles [0009] (= a tank housing an electrolyte bath, wherein the electrolyte bath comprises a plurality of catalytically active metal ions);
A plasma electrolyte oxidation intrinsically includes a power supply [0003]-[0004] (= a power supply operatively connected to the electrolyte bath, the power supply comprising a positive connection and negative connection; cited paragraphs including “[]”);
A magnesium metal material (1) [0009] (= a metal substrate configured to grow a metal oxide into its surface);
An electrode charged as the positive terminal [0022] (= an anode connected to the positive connection and the 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); and
Grid (11) charged as the negative electrode [0024] (= a cathode connected to the negative connection and partially submerged in the electrolyte bath, wherein the anode and cathode complete a voltage circuit);
Roll-to-roll anode support (= rollers, Figure 1; e.g. top anode rollers) (= a rotatable substrate holder connected to the anode);
The rollers supporting the magnesium metal substrate submerged in the electrolyte (e.g. bottom anode rolls) (= a metal-oxide electrocatalyst holder positioned in relation to the rotatable substrate holder to place the metal substrate within the electrolyte bath proximate a surface of the electrolyte bath and the substrate holder configured to supply the substrate and the anode voltage to the substrate, wherein the metal substrate has a residence time within and proximate the surface of the electrolyte bath; the claimed residence time may be any amount of time controlled by the rotating rolls);
A dense oxide film is formed encapsulating the metal using plasma electrolyte oxidation [0024] (= wherein the electrolyte bath produces the metal oxide layer that grows into a surface of the metal substrate, wherein the metal oxide is adhered to the metal substrate; and the catalytically active metal ions are encapsulated within the metal oxide, wherein the metal-oxide electrocatalyst holder receives the metal-oxide electrocatalyst from the electrolyte bath in cooperation with the rotatable substrate holder and wherein the system produces the metal-oxide electrocatalyst). Regarding the claimed “micro-arcs generate molten metal”, the phrasing is directed towards the process occurring during the metal oxide formation and does not further structurally limit the claimed system. Moreover, Shin discloses performing the same electrolyte oxidation process [0009].
Shin differs from the instant claim in that Shin does not explicitly disclose a mixer.
Lu discloses an electrolytic micro arc oxidation system (title) comprising a bath tank [0030] comprising an electrolyte with sodium or potassium [0035] and mechanically stirring during micro-arc oxidation intrinsically includes a mixer to stir to produce a suspension [0040]. Lu discloses 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]. Lu discloses a metallic first layer (352 = metal substrate) [0021] and 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]).
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 with a mixer because Lu teaches in a similar method mechanically stirring the electrolyte to form a suspension during oxidation. It would have been obvious to modify Shin with a mixer for producing the same or similar electrolyte with a uniform particle suspension.
As to claim 21, the claimed “wherein the metal mesh substrate and the metal oxide share a continuous…with the plurality of metal ions” is directed towards the material produced by the claimed system and not further structurally limiting to the claimed system. Moreover, Shin discloses a metal based substrate (Mg, Mg-Al, Mg-Zn, Mg-Al, Zn) [0011] and the metallic nanoparticles including Cu, Ag, Au, Mg, Fe as the nanoparticles [0012]. Shin further depicts the nanoparticles and metal oxide film being continuous without any intervening material (Figure 5).
Regarding claim 3, the instant claim does not further limit the structure of the claimed system. Moreover, Shin [0009] and Lu [0036] disclose wherein the system comprises a plasma electrolytic oxidation process. 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.
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 product) which does not further limit the claimed system.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20130074275), in view of Lu et al. (US 2017/0029959) and in further view of Li et al. (CN 207567366).
Regarding claim 2, Shin in view of 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 Shin in view 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 Shin et al. (KR 20130074275), in view of Lu et al. (US 2017/0029959) and in further view of Shatrov (WO 03083181).
Regarding claim 4, Shin [0009] and Lu [0036] disclose a positive voltage and negative voltage supplied in the PEO system. 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.
Shin in view of 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 Shin in view of Lu and 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) 6-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20130074275), in view of Lu et al. (US 2017/0029959), in view of 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, Shin in view of Lu and Li disclose the system as described above including a chiller and filtering. Shin [0009] and Lu [0040], [0050] disclose the electrolyte comprising nanoparticles. 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] and Shin discloses high voltage [0009]. Shin and Lu disclose embedding nanoparticles as described above.
Shin and 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.
Shin and 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.
The claimed “the substrate comprises a metal mesh” is directed towards the material worked upon which does not further limit the claimed system (MPEP § 2115). The claimed “the metal-oxide functional layer is directed towards the material produced. The system of Shin, Li, Lu and AAP comprises the same structural components as claimed and therefore is capable of producing a metal-oxide functional layer. Moreover, Shin discloses forming a metal oxide layer comprising the nanoparticles and therefore discloses the claimed layer. The claimed “wherein the metal mesh substrate and the metal oxide share a continuous…with the plurality of catalytic nanoparticles” is directed towards the material produced by the claimed system and not further structurally limiting to the claimed system. Moreover, Shin discloses metal based substrate (Mg, Mg-Al, Mg-Zn, Mg-Al, Zn) [0011] and the metallic nanoparticles including Cu, Ag, Au, Mg, Fe as the nanoparticles [0012]. Shin further depicts the nanoparticles and metal oxide film being continuous without any intervening material (Figure 5).
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]. Shin discloses multiple layers and a porous topography (Figure 5).
Regarding claim 9, Shin discloses graphene and graphite [0012]. Lu discloses the nanoparticles comprising graphite [0050].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20130074275), in view of Lu et al. (US 2017/0029959), in view of in view of Li et al. (CN 207567366), in view of Yang et al. (CN 103276388), in view of AAP (DE 202009015934) and in further view of Hansal et al. (EP 3875636).
Regarding claim 10, Shin, 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] 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 Shin in view of Lu, Li, Yang and AAP, Hansal discloses the inclusion of KOH.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20130074275), in view of Lu et al. (US 2017/0029959) and in further view Yoon et al. (KR 20150046935).
Regarding claim 22, Shin is silent in regards to the operating the rolls therefore in order to produce the invention of Shin view of Lu one of ordinary skill in the art would look to the related art for workable means to rotating rolls and arrive at a reference such as Yoon.
Yoon discloses a surface treatment device including plasma electrolytic oxidation comprising a winding rod (3) rotated by power by the motor (4) using power transmission means such as a conventional gear train sprocket and chain, pulley and belt [0020]. 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]. 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 look to the related art for means to rotate and arrive at a reference such as Yoon which teaches that a motor is a conventional means to provide rotation.
Response to Arguments
Applicant's arguments filed 25 August 2026 have been fully considered. The remarks on pages 14-24 are directed towards the previous grounds of rejection which have been withdrawn in view of Applicant’s amendment and therefore will not be specifically addressed at this time. New grounds of rejection are necessitated by amendment.
Conclusion
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/Stefanie S Wittenberg/ Primary Examiner, Art Unit 1795
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