DETAILED ACTION
Status of the Claims
Applicant’s amendment filed 2 March 2026 is acknowledged. Claims 1, 2, and 8 have been amended, claims 10, 14, and 15 have been canceled, new claims 21-24 have been introduced, claims 9, 11-13, 16-20 remain withdrawn, and claims 1-9, 11-13, and 16-24 remain pending.
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.
Claim(s) 1, 4, 6, 7, and 21-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 111293303 A, hereinafter “Wang”; using attached English machine translation).
Regarding claim 1, Wang teaches a nanocomposite electrode comprising:
a porous copper substrate (coper foam or mesh, see [0009]); and
platinum nanoparticles on the porous copper substrate (see [0009]).
Regarding the limitation “deposited by electrodeposition”, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Regarding claim 4, Wang teaches wherein the porous copper substrate is a copper foam (coper foam, see [0009]).
Regarding claim 6, Wang teaches wherein the platinum nanoparticles extend from pore surfaces of the porous substrate (see [0013]).
Regarding claim 7, Wang teaches wherein the platinum nanoparticles are bound to the porous substrate (see [0013]).
Regarding claims 21-24, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Claim(s) 1, 6, 7, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Co et al. (US 2014/0147756; hereinafter “Co”).
Regarding claim 1, Co teaches a nanocomposite electrode comprising:
a porous copper substrate (porous copper support, see [0009] and [0028]); and
platinum nanoparticles on the porous copper substrate (see [0028]).
Regarding the limitation “deposited by electrodeposition”, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Regarding claim 6, Wang teaches wherein the platinum nanoparticles extend from pore surfaces of the porous substrate (see [0028]).
Regarding claim 7, Wang teaches wherein the platinum nanoparticles are bound to the porous substrate (see [0028]).
Regarding claim 21, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Claim Rejections - 35 USC § 103
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.
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) 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 111293303 A; using attached English machine translation).
Regarding claim 3, Wang is silent to wherein the platinum nanoparticles comprise 0.1 wt% to 1 wt% of the nanocomposite electrode. However, Wang teaches that as platinum remains the most active catalyst in a neutral environment, but due to low reserves and high prices, the large-scale use of platinum catalyst is somewhat limited. Reducing the platinum loading in the catalyst can effectively reduce electrode costs, but a reduced platinum loading can result in poor conductivity and catalytic activity (see [0006]). Therefore, as Wang teaches that the amount of platinum is a result effective variable, it is not inventive to discover the optimum or workable ranges of the amount of platinum nanoparticles by routine experimentation. See MPEP §2144.05(II).
Regarding claim 8, Wang is silent to wherein a volume of the nanocomposite electrode is at least 0.1 cm3. However, the particular volume of the electrode will be limited by the resultant application and structural confinements of the end battery. Since it’s always desirable to maximize the energy of the battery, there must be an optimum volume for a structurally sound battery while simultaneously maximizing energy of the battery, and so it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP §2144.05(II).
Claim(s) 2 and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Co (US 2014/01447756).
Regarding claim 2, Co teaches wherein an average size of the platinum nanoparticles is in a range of 130 nm to 330 nm (10-500 nm, see [0028]-[0031]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05.
Regarding claim 22, Co teaches wherein an average size of the platinum nanoparticles is in a range of 130 nm to 170 nm (10-500 nm, see [0028]-[0031]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05.
Regarding the limitation “wherein for an electrodeposition time of 60 seconds”, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Regarding claim 23, Co teaches wherein an average size of the platinum nanoparticles is in a range of 140 nm to 220 nm (10-500 nm, see [0028]-[0031]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05.
Regarding the limitation “wherein for an electrodeposition time of 120 seconds”, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Regarding claim 24, Co teaches wherein an average size of the platinum nanoparticles is in a range of 230 nm to 330 nm (10-500 nm, see [0028]-[0031]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05.
Regarding the limitation “wherein for an electrodeposition time of 180 seconds”, the Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 4 above, and further in view of Sacco et al. (WO 98/21767 A2; hereinafter “Sacco”).
Regarding claim 5, Wang is silent to wherein a porosity of the copper foam is in a range of 5 to 200 pores per inch (ppi).
Sacco teaches a copper foam support member typically has a pore size providing a range of pores per inch from about 70 ppi to about 110 ppi, or more. Sacco teaches that this helps provide for enhanced mechanical flexibility for the foam (see abstract and 8:17-27).
In view of Sacco’s teachings, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the electrode of Wang to include wherein a porosity of the copper foam is from about 70 ppi to about 110 ppi, as taught by Sacco, because this helps provide for enhanced mechanical flexibility for the foam. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05.
Response to Arguments
Applicant's arguments filed 2 March 2026 have been fully considered but they are not persuasive.
On pages 6-7 of the remarks, Applicant argues that the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. Applicant argues that “the electrodeposition method allows a stable modification by the direct growth of nanostructures strongly attached on the copper substrate” which is structurally distinct from the chemical deposition of Wang. Furthermore, Applicant argues that the average size and amount of platinum nanoparticles increase with the electrodeposition time”, which is not anticipated by Wang.
The Examiner finds these arguments unpersuasive. While the Examiner agrees that the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, Applicant fails to present any distinct structural characteristics of the final product not addressed by the prior art. Applicant’s argument that “the electrodeposition method allows a stable modification by the direct growth of nanostructures strongly attached on the copper substrate” is structurally met by Wang as the nanoparticles of platinum are directly on the copper porous substrate (see rejections for claims 1, 6, and 7 above). Applicant’s secondary argument that “the average size and amount of platinum nanoparticles increase with the electrodeposition time” is found unpersuasive as well because this is not a structural characteristic. The Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP §2113. All the structural characteristics of claim 1 are met by the rejections in view of Wang and Co above (see respective rejections of claim 1 above).
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 STEVEN HA whose telephone number is (571)270-5934. The examiner can normally be reached M-F 8:00-5:00 EST.
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/S.S.H/Examiner, Art Unit 1735 30 May 2026
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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