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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/03/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. However, certificated English translation of the foreign application is not filed. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
DETAILED ACTION
Claims 16-23 are pending and are under examination on merits.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group II (claims 5-10), without traverse, in the reply filed on 10/20/2025. Applicant canceled claims 1-15 and added new claims 16-23 in the reply filed on 02/05/2026. The new claims 16-23 under the scope of the elected Group II. The Restriction requirement is maintained as FINAL.
Pursuant to the election of species requirement, Applicant elected, without traverse, “the compound 8 in claim 4” as the species, in the reply filed on 10/20/2025, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Claims 16-23 read on the elected species. The elected species was determined to be free of art. Examiner extended searching on other compounds as discussed in the 102 rejections below. The provisional species election requirement is in effect.
Withdrawn Claim Rejections - 35 USC § 102
Rejection of claims 16-19 and 23 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by K. Hajime, et al, JP2005290259A (2005)(“Hajime”) with the evidence from L. A. Guildner, 66A. JOURNAL OF RESEARCH of the National Bureau of Standards-A. Physics and Chemistry, 341-348 (1962)(“Guildner”) is withdrawn in view of the claims have been amended by excluding of carbon dioxide from the claimed carbon materials .
Rejection of claims 16-18 and 20-22 under 35 U.S.C. 102 (a)(1) as being anticipated by the iron(III) phthalocyanine chloride (FePcCl)- XC72 taught by M. R. Tarasevich, et al. 52.15 Electrochimica acta 5108-5118 (2007)(“Tarasevich”) with an evidence from S. I. Yamazaki, et al, 616(1-2), Journal of Electroanalytical Chemistry, 64-70 (2008)(“Yamazaki”) is withdrawn because the iron(III) phthalocyanine chloride (FePcCl) does not meet the claims limitation of “in Formula (1), when the number of carbon atoms among D1 to D16 is 8 or more, at least one of the carbon atoms is bonded to an alkyl group, a cycloalkyl group, an alkenyl group, an alkynyl group, an aryl group, an alkylsulfonyl group, an alkoxy group or an alkylthio group” recited by the instant claim 16 as the number of carbon atoms in FePcCl is 16 and none of those 16 carbon atoms is bonded to the claimed group. Therefore, the rejection is withdrawn.
Withdrawn Claim Rejections - Double Patenting
Rejection of 16-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-10 and 12 of the US application 18/001,513 (Published as US20230223554A1) in the claim set submitted on 12/12/2022 is withdrawn in view of the Terminal Disclaimer filed and approved by the UPSTO on 06/03/2026 and 06005/2026 respectively.
Claim Objections
Claim 16 is objected to because of the following informalities: “( where” should be “where”.
Claim 19 is objected to because of the following informalities: the claim is not ended with a period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claims upon which they depend on respectively, or for failing to include all the limitations of the claims upon which they depend.
Claim 19 depends on claim 16. Claim 16 limits the claimed metal complex or adduct with a limitation of” “in Formula (1), when the number of carbon atoms among D1 to D16 is 8 or more, at least one of the carbon atoms is bonded to an alkyl group, a cycloalkyl group, an alkenyl group, an alkynyl group, an aryl group, an alkylsulfonyl group, an alkoxy group or an alkylthio group”. However, the claimed species such as compound (11)-(16) is a species of the Formula (1) in claim 1 and the number of carbon atoms among D1 to D16 is 8 or more, however, no D1 to D16 carbon atom in these compounds is substituted by the claimed group as claimed by claim 16, therefore, claim 19 cannot further limit claim 16.
New 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 –
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-18 and 20, 23 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by A. Morozan, et al. 49.14 Carbon 4839-4847 (2011)(“Morozan”).
Morozan teaches non-noble metal catalysts for O2 reduction, which were prepared by dispersing iron(II) phthalocyanine, cobalt(II) tetra-tert-butylphthalocyanine, cobalt(II) 2,3,7,8,12,13,17,18-octaethyl-porphine, and cobalt(II) 5,10,15,20-tetrakis(4-tert-butylphenyl)-porphyrine on carbon nanotubes (CNTs) used as high surface area support. Morozan at Abstract.
Per Experimental Section, Morozan teaches the catalysts are prepared as the following method:
A portion of CNT powder (MN4: CNTs = 2:1 w/w) was added into the catalyst solution, followed by ultrasonication (20 min) to form a homogeneous dispersion. Then, the THF solvent was evaporated under a nitrogen stream. A schematic representation of those hybrid catalysts systems is suggested in Fig. 1. Finally, the catalyst ink solutions were prepared by sonicating 3 mg of resultant hybrid catalyst powders, FePc/CNTs, Co(Bu)Pc/ CNTs, CoEtP/CNTs or Co(BuPh)P/CNTs, in 0.75 mL of ethanol and 75 µL of Nafion solution (0.5 wt.% in alcohol).
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Morozan at page 4841, left col. paragraph 1 and Fig. 1.
The Morozan catalysts Co(Bu)Pc/CNTs comprise:
(i). Co(Bu)Pc that maps the Formula (1) in claims 16-17 as M is cobalt atom, each of D1-D16 is carbon atom and one of the carbon atom is substituted by tert-Butyl group that is an alkyl group;
(ii). carbon nanotubes that is a conductive material.
Which meets each and every limitation of claims 16-17, thus claims 16-17 are anticipated.
Claim 18 is anticipated because limitation of the structure of the Formula (2) does not have any limitation of the structure of the Formula (1) given the Formula (1) and the Formula (2) are alternative; and claim 18 does not require the claimed catalyst must comprise the Formula (2).
Claim 20 is anticipated because Morozan teaches that the catalysts are prepared with a mass ratio between Co(Bu)Pc and carbon nanotubes (MN4: CNTs) is 2:1 and the content of Co(Bu)Pc is 67 mass% which anticipates the claimed 75 mass% or less.
Claim 23 is also anticipated because Morozan also teaches an ink solution comprising Co(Bu)Pc/CNTs and ethanol.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN111370712A teaches a method for preparing of a high-activity electrochemical oxygen reduction catalyst by loading a phthalocyanine material such as iron phthalocyanine on a conductive material. See CN111370712A at page 11 of 12, Example 1.
Allowable Subject Matter
Claims 21-22 are 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.
Claim 19 and claims 21-22 are free of the prior art. As mentioned in the 102 rejection above that Morozan teaches a catalyst meeting each and every limitation of claim 16. The Morozan catalyst differs from claim 19 in that the Co(Bu)Pc is not the claimed metal complex/adduct, Morozan catalyst differs from claims 20-21 in that Morozan does not teach the carbon nanotubes comprising carboxyl group. Claims 19, 21-22 are not obvious because neither Morozan nor Morozan in view a second art to motivate one ordinary skill in the art to modify the Morozan catalyst by replacing Co(Bu)Pc with the claimed metal complex/adduct in claim 19, or replace the Morozan carbon nanotubes with one comprising carboxyl group to arrive at the claimed catalyst. Motivation lacks because Morozan teaches that Co(Bu)Pc/CNTs is not a catalyst that has best catalytic activities among the catalysts compared.
Conclusion
Claims 16-20 and 23 are rejected, claims 16, 19 and 21-22 are objected to. No claims are allowed.
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/FRANK S. HOU/Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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