DETAILED ACTION
Claim(s) 15-17 was/were rejected in Office Action mailed on 02/06/2026.
Applicant filed a response, amended claim(s) 15, 17, canceled claim(s) 16 and added claim(s) 18-24 on 05/05/2026.
Claim(s) 15-24 are pending.
Claim(s) 15-20 and 22-24 are rejected.
Claim 21 is objected to.
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 § 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) 15, 17-20 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al., Fe azaphthalocyanine unimolecular layers (Fe AzULs) on carbon nanotubes for realizing highly active oxygen reduction reaction (ORR) catalytic electrodes, NPG Asia Materials, 2019 (Abe) in view of Kurozumi et al., EP 2177263 A1 (Kurozumi) (provided in IDS received on 07/24/2025).
Regarding claims 15, 17-20 and 23, Abe teaches a new class of catalysts that included molecular iron phthalocyanine derivatives, namely, iron azaphthalocyanine unimolecular layers adsorbed on oxidized multiwall carbon nanotubes (iron azaphthalocyanine reads upon a metal complex and oxidized multiwall carbon nanotubes read upon a conductive material) (Abe, Abstract);
and the catalyst was prepared into catalytic electrode which exhibited oxygen reduction reaction (the catalyst reads upon an oxygen reduction catalyst) (Abe, Abstract);
the catalytic electrodes are promising catalytic electrode materials for applications, such as polymer electrolyte fuel cells and metal-air batteries (Abe, Abstract).
Abe further teaches chemical structure of iron phthalocyanie and iron-tetra-2,3-phridinoporphyrazine in Fig. 1 (Abe, page 2, Fig. 1; also shown below), both of which would read upon formula (1)
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Abe, page 2, Fig. 1
Further regarding claim 15, Abe does not explicitly disclose selecting the catalyst by measuring an ionization potential value of the oxygen reduction catalyst and the catalyst having an ionization potential value of 5.8 eV or lower.
With respect to the difference, Kuromumi teaches catalyst layers having high oxygen reduction activity (Kuromumi, Abstract). Kuromumi specifically teaches the electrocatalyst preferably has an ionization potential in the range of 4.9 to 5.5 eV (Kuromumi, [0049]).
As Kuromumi expressly teaches, this ionization potential ensures that the electrocatalyst shows high oxygen reduction activity (Kuromumi, [0049]).
Kuromumi is analogous art as Kuromumi is drawn to catalyst layers having high oxygen reduction activity.
In light of the motivation of a catalyst with an ionization potential in the range of 4.9 to 5.5 eV, as taught by Kuromumi, it therefore would have been obvious to a person of ordinary skill in the art to measure the ionization potential of the catalyst that included molecular iron phthalocyanine derivatives, namely, iron azaphthalocyanine unimolecular layers adsorbed on oxidized multiwall carbon nanotubes, of Abe, to select catalysts that have an ionization potential in the range of 4.9 to 5.5 eV, in order to have high oxygen reduction activity, and thereby arrive at the claimed invention.
Regarding claim 22, as applied to claim 15, Abe in view of Kuromumi further teaches FeAzPc-4N-THF/oxMWCNT_50 wt% and FeAzPc-4NDMSO/oxMWCNT_20 wt%; FePc-THF/oxMWCNT_50 wt% (Abe, page 3, left column, 3rd paragraph); corresponding to 50 wt%, 50 wt% and 20 wt.% of metal complex.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Abe in view of Kuromumi as applied to claim 15 above, and further in view of Abbaspour et al., Electrocatalytic activity of iron and nickel phthalocyanines supported on multi-walled carbon nanotubes towards oxygen evolution reaction, Electrochimica Acta, 2013 (Abbaspour).
Regarding claim 24, as applied to claim 15, Abe in view of Kuromumi does not explicitly disclose wherein the conductive material contains a carboxyl group.
With respect to the difference, Abbaspour teaches iron phthalocyanines supported on multi-walled carbon nanotubes (Abbaspour, Title and Abstract). Abbaspour specifically teaches multi-walled carbon nanotubes with oxygen-containing moieties, such as carboxylic acid group (which contains a carboxyl group) (Abbaspour, page 93, left column, section 2.3.1).
As Abbaspour expressly teaches, the acid treatment on multi-walled carbon nanotubes removes the amorphous carbon and metal oxide impurities and produces multi-walled carbon nanotubes with oxygen-containing moieties, such as carboxylic acid group (which contains a carboxyl group) (Abe, page 93, section 2.3.1).
Abbaspour is analogous art as Abbaspour is drawn to iron phthalocyanines supported on multi-walled carbon nanotubes.
In light of the motivation of acid treatment on the on multi-walled carbon nanotubes, as taught by Abbaspour, it therefore would have been obvious to a person of ordinary skill in the art to conduct acid treatment on the multiwall carbon nanotube of Abe in view of Kuromumi, in order to remove the amorphous carbon and metal oxide impurities, and thereby arrive at multi-walled carbon nanotubes with oxygen-containing moieties, such as carboxylic acid group (which contains a carboxyl group), and thereby arrive at the claimed invention.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding 21, none of Abe, Kuromumi or Abbaspour teaches or suggests an oxygen reduction catalyst represented by the formulae of Compound (1) to Compound (6).
Response to Arguments
In response to the amended claims, the previous claim objections are withdrawn.
Applicant primarily argues:
“Upon review now of Kurozumi, although this reference discloses that the electrocatalyst has an ionization potential in the range of 4.9 to 5.5 eV, the metal compound used in the catalyst is totally different from the metal complex now required by claim 15. Notably, the invention disclosed in Kurozumi relates to a catalyst layer comprising an electrocatalyst comprising a metal compound obtained by hydrolyzing a metal salt or a metal complex. On the other hand, the oxygen reduction catalyst according to claim 15 comprises a metal complex itself. And because Abe also discloses that the catalyst comprises a metal complex, Applicant respectfully submits that one skilled in the art would not be led to combine the invention disclosed in Kurozumi with the invention disclosed in Abe. Further to that end, Applicant respectfully submits that Kurozumi actually teaches away from the use of a metal complex in a catalyst.
Additionally or alternatively, the metal complexes before hydrolyzing listed in Kurozumi are metal alkoxides, metal carboxylates, metal halides, and metal acetylacetonate complexes. Notably, the structure of the metal complex according to the presently claimed invention is not at all the same as, or similar to, the metal complexes disclosed in Kurozumi. Accordingly, Applicant respectfully submits that it would be difficult for a person skilled in the art to conceive of the claimed invention.”
Remarks, p. 9-10
The Examiner respectfully traverses as follows:
It is noted that while Kurozumi does not disclose all the features of the present claimed invention, Kurozumi is used as teaching reference, namely the electrocatalyst preferably has an ionization potential in the range of 4.9 to 5.5 eV (Kuromumi, [0049]), in order to ensure that the electrocatalyst shows high oxygen reduction activity (Kuromumi, [0049]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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