DETAILED ACTION
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 Amendment
The amendment filed on 3 November 2025 fails to place the application in condition for allowance.
Claims 1, 5-6, 8-14, 18-19, and 21-31 are currently pending
Claims 23 and 26-31 are currently under examination.
Claims 1, 5-6, 8-14, 18-19, 21-22, 24, and 25 are currently withdrawn.
Status of Rejections
The rejection of claims 23, 26, and 27 under 35 U.S.C. 112(a) and 35 U.S.C. 112(b)over are herein withdrawn due to Applicant’s Amendment filed 3 November 2025
The rejection of claim 23 under 35 U.S.C. 102(a)(1) over Narayan is herein maintained.
All other rejections are herein withdrawn due to Applicant’s amendment filed 3 November 2025.
New rejections are provided herein necessitated by Applicant’s amendment filed 3 November 2025.
Claim Rejections - 35 USC § 102
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 –
Claims 23, 28, and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Narayan et al (WO 2018/009930 A2).
As to claims 23, Narayan discloses An electrode comprising an electrocatalytically active material consisting essentially of optionally doped metal oxides or a mixture thereof with one or more of metal sulphides, metal sulphites, metal sulphates, metal phosphates, metal phosphites and metal phosphides ([0059] modification 2 via formation of an NSI electrode via inclusion of iron sulfide – designated as NSI-FeS-200 where NSI designates “a novel electrode based on an iron substrate coated with magnetite and nickel hydroxide or spinel nickel ferrite that is prepared through a facile synthetic route. Such electrodes will be referred to as NSI electrodes” include metal oxides - [0007], [0013], [0042] inclusion of ferrite and magnetite” ) with an overpotential of 195 mV (as required by instant claims 26 and 27 “Further improvement in OER activity (195 mV overpotential to achieve 10 mA cm.sup."2 current density) was observed in the electrodes prepared by modification 2” [0065]) where the substrate is an iron substrate this deemed to be a carrier suitable for an electrode
As to the instant limitations “…obtained by a method for preparing the electrode suitable for electrocatalysis…said method comprising: (a) providing a carrier suitable for an electrode, said earner comprising an electron conductive material; (b) providing a precursor mixture comprising at least (i) a source of a nitrate salt of a metal M and (ii) a fuel component suitable for the solution-combustion synthesis; (c) transferring to the electron conductive material of the carrier of said (a) the precursor mixture of said (b) to produce an electrode precursor; and (d) heating the electrode precursor obtained in said (c) at a temperature sufficiently high to cause the transferred precursor mixture to self-ignite, wherein the carrier of said (a) is such that the electron conductive material is stable at the temperature of said (d); the molar ratio of fuel component to nitrate anion in the precursor mixture of said (b) is such that it allows essentially for the formation of the electrocatalytically active material during the combustion of said (d); and wherein when the electrocatalytically active material of the electrode comprises one or more of metal sulphides, metal sulphites and metal sulphates, the precursor mixture of said (b) furthercomprises a sulphur source and/or the fuel component of the precursor mixture comprises a sulphur atom in its molecular formula;when the electrocatalytically active material of the electrode comprises one or more of metal phosphates, metal phosphites and metal phosphides, the precursor mixture of said (b) further comprises a phosphorus source.” The limitation is deemed to be a recited process to form a product which is structurally defined by a substrate with a metal oxide layer thereon which does not further differentiate the claimed product from the prior art. See MPEP 2111.02 with respect to the limitation “obtained by a method” occurring in the preamble of the claim and MPEP 2113 I and II.
As to claim 28, Narayan discloses wherein the substrate can be a steel foam (claim 14/15, [0043]).
As to claims 30, the recitations are drawn towards the fuels used to produce the catalyst structure in accordance with the product-by-process method. Since the prior art structure posses the overpotential in line with those claimed and disclosed (See citation above), the recitation of using the specific fuel in the production method is deemed to not further limit the structure of the claimed product.
Claims 23 and 26-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al (US 2021/0220803 A1).
As to claims 23 and 26-29 Li discloses an electrode (Abstract) comprising an electrocatalytically active material consisting essentially of doped metal oxides of a nickel foam with carbon doped nickel oxide (Abstract) with an overpotential of 27 mV (as required by instant claims 26 and 27 [0006] “having an overpotential of about 27 mV at j.sub.geo of 10 mA/cm.sup.2 and a small Tafel slope of about 36 mV/dec in 1M KOH solution”) where the substrate is an nickel foam (Abstract thus reading on instant claim 26, 27, 28, and 29)
As to the instant limitations “…obtained by a method for preparing the electrode suitable for electrocatalysis…said method comprising: (a) providing a carrier suitable for an electrode, said earner comprising an electron conductive material; (b) providing a precursor mixture comprising at least (i) a source of a nitrate salt of a metal M and (ii) a fuel component suitable for the solution-combustion synthesis; (c) transferring to the electron conductive material of the carrier of said (a) the precursor mixture of said (b) to produce an electrode precursor; and (d) heating the electrode precursor obtained in said (c) at a temperature sufficiently high to cause the transferred precursor mixture to self-ignite, wherein the carrier of said (a) is such that the electron conductive material is stable at the temperature of said (d); the molar ratio of fuel component to nitrate anion in the precursor mixture of said (b) is such that it allows essentially for the formation of the electrocatalytically active material during the combustion of said (d); and wherein when the electrocatalytically active material of the electrode comprises one or more of metal sulphides, metal sulphites and metal sulphates, the precursor mixture of said (b) furthercomprises a sulphur source and/or the fuel component of the precursor mixture comprises a sulphur atom in its molecular formula;when the electrocatalytically active material of the electrode comprises one or more of metal phosphates, metal phosphites and metal phosphides, the precursor mixture of said (b) further comprises a phosphorus source.” The limitation is deemed to be a recited process to form a product which is structurally defined by a substrate with a metal oxide layer thereon which does not further differentiate the claimed product from the prior art. See MPEP 2111.02 with respect to the limitation “obtained by a method” occurring in the preamble of the claim and MPEP 2113 I and II.
As to the further method steps outlined in claims 26 and 27, it is noted the methods provide an explicit option to require the formation of a nickel oxide on nickel form via the reactants which satisfy the specific current density and overpotential capabilities. Claim 26 does not require an alternative metal species beside nickel through the double recitation of nickel nitrate in step (b). Since the prior art of Li discloses an overpotential and current density which satisfy the instant claim limitations, the method of making such a product is deemed satisfied as a product by process limitation absent further structural distinction the process provides. It is further noted the instant specification allows for the inclusion of carbon into the catalysts to enhance the conductivity through, See [0135] from the as filed specification, thus not negating the transitional phrase “consisting essentially of”.
As to claims 30 and 31, the recitations are drawn towards the fuels used to produce the catalyst structure in accordance with the product-by-process method. Since the prior art structure possess the overpotential in line with those claimed and disclosed (See citation above), the recitation of using the specific fuel in the production method is deemed to not further limit the structure of the claimed product.
Response to Arguments
Applicant's arguments filed 3 November 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In the instant case, Applicant notes that the use of solution combustion synthesis conveys specific properties such as large surface area, small crystallite size, and reduced sintering on pg. 13 of the as filed response. These properties are not claimed nor provided any discernable values in light of the instant specification. Thus, while specific methods of solution combustion synthesis may provide the asserted properties, as evidenced by Applicant’s own example, different combustion synthesis methods would naturally convey different properties, even those provided in the prior art. No evidence is presented that the properties of Narayan provide a lower surface area and larger crystallite sizes as claimed. Even assuming arguendo that the prior art has a lower surface area, the instant claims do not preclude said surface areas or the like.
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). 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. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) Here, the structure implied is not so defined as Applicant asserts via the lack of disclosure of structural properties as a result of the process as claimed, nor evidence that the prior art is either not capable of achieving said properties through conventional or alternative methods.
As to Applicant’s argument that “claim 23 does not contemplate that the carrier of step (a) is iron” on pg. 13, this argument is not persuasive because claim 23 merely requires “a carrier suitable for an electrode, said carrier comprising an electron conductive material”, of which iron satisfies said limitation. It is unclear if Applicant’s arguments are disclaiming a portion of the scope afforded by the broadest reasonable interpretation of instant claim 23, even through the instant specification allows for the carrier of step a to be an iron mesh, foam, felt, or foil at [054].
Applicant’s comments towards non-obviousness are noted and drawn towards the specific lowering of the overpotential via the solution combustion synthesis production method. It is further noted the property is only recited in instant claims 26 and 27, now addressed via the Li reference which discloses a material electrode with the claimed overpotentials.
No further arguments are presented.
Response to Declaration
The Declaration under 37 CFR 1.132 filed 3 November 2025 is insufficient to overcome the rejection of claim 23 and 26-31 based upon the rejections as set forth in the last Office action because: Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP 2131.04.
Furthermore, the evidence presented is not commensurate in scope with the instant claims as required by MPEP 716.02(d). Applicant further provides a specific method of forming each comparable electrode in a very specific manner. It is unclear if such comparable processes have evidence via the declaration of being optimized such that an electrode with the same properties as claimed may be formed. In other words, the comparison is very narrow in scope of the electrodes prepared through a specific combustion synthesis method to a specific drop casting method.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795