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 .
DETAILED ACTION
Claims 16-23 of K. Ito, et al, US 18/001,517 (12/22/2022) are pending and under examination on merits and are rejected.
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 subject to the double patenting rejection as indicated below. Examiner extended searching on other compounds as discussed in the 102 rejections below. The provision species election requirement is in effect.
Withdrawn Claim Rejections - 35 USC § 112(d)
Rejection of claims 9 under 35 U.S.C. 112(d) is withdrawn in view of the claim has been canceled.
Withdrawn Claim Rejections - 35 USC § 102
Rejection of claims 5-10 under 35 U.S.C. 102 (a)(1)(a)(2) as being anticipated by H. Yabu, et al, WO 2019/167407 A1 (published on 06/09/2019)(“Yabu-WO”) is withdrawn in view of the claims have been canceled.
Rejection of claims 5, 9-10 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 JOURNAL OF RESEARCH of the National Bureau of Standards-A. Physics and Chemistry, 341-348 (1962)(“Guildner”) is withdrawn in view of the claims have been canceled.
Withdrawn Claim Rejections - Double Patenting
Rejection of claims 5-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11-4 of US patent 11772084B2 (2023) is withdrawn in view of the claims have been canceled and Terminal Disclaimer filed on 02/05/2025.
Rejection of claims 5-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5-6 and 9-10 of US12334259B2 (2025) is withdrawn in view of the claims have been canceled and Terminal Disclaimer filed on 02/05/2025.
Provisional rejection of claims 5-10 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-7, 9-10 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 claims have been canceled.
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.
35 USC § 102 Rejection Over Hajime evidenced by Guildner
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”). Hajime is published in Japanese, a copy of machine translation is attached as the second part, resulting the full reference has 45 pages, the format of the citation is XX/45.
Hajime teaches that Phthalocyanine is widely used as an organic pigment. Hajim at 25/45, [0002].
Hajime teaches a method for dissolving a phthalocyanine-based compound, a subphthalocyanine-based compound, and analogs thereof, by using supercritical carbon dioxide or subcritical carbon dioxide as a solvent. Hajim at 25/45-26/45, [0007].
Hajime teaches that phthalocyanine-based compound having the following chemical formula
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Wherein M is a metal, X is N or CR 5 , Y is N or CR 6 , Z is N or CR 7 , and when X and Y are not N, Z is not N, and X is Y is CR 6 when N, Z is CR 7 when Y is N, and R 1 to R 7 are the same or different from each other, and H, alkyl group, alkenyl group, alkynyl group, haloalkyl group, alkoxyalkyl group. Hajim at 26/45, [0008].
Hajime teaches working examples, such as Example 4, Run-16, which is prepared in the same way as that for Example 1. Hajime at 36/45-37/45, [0028]-[0029] and Table 4.
Per Table 4, Hajime teaches that the Example 4, Run-16 composition comprises:
(i).phthalocyanine-based compound which has the chemical structure as indicated below, which has a same structure as that of compound (1) in claim 16 and claim 19;
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214
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(ii). pyridine as solvent.
Regarding the Example 1, Hajime teaches that:
[Example 1]
[0022]In a stainless steel autoclave with an observation window of a content 50ml, a compound of general formula [Chemical formula 13, Wherein each symbol in the formula is as shown in Table 1, or the target compound and the quasi-solvent were each sealed in a 5mg, and placed in a constant-temperature bath at 35 ° C. using an oil bath or a water bath, and the 5mg was allowed to reach a certain temperature, and then carbon dioxide was injected into the 20MPa by a high-pressure pump so that the internal pressure became equal to the atmospheric pressure. Thereafter, after stirring for 1 hour, the ultraviolet-visible absorption spectrum of the content liquid was measured, and the solubility of the target compound was determined according to the following evaluation criteria. The results are also shown in Table 1. A: Completely dissolved. ◯: Dissolved. Δ: Coloration was visually confirmed.
Hajime at 33/45, Example 1, emphasis added,.
Thus, the Hajime Example 4, Run-16 composition also comprise carbon dioxide, the evidence from Guildner indicates that carbon dioxide is a conductive material. Guildner at abstract. Regarding the claimed “carbon material”, the specification only has an open-side discussion on the claimed “carbon material” but not provide definition it. See Specification at page 20, [0046]-[0048]. Thus, under its broadest reasonable interpretation according to its plain meaning, “carbon material” is broadly and reasonably interpreted as any material comprising carbon. Thus, carbon dioxide is a carbon material.
Thus, the Hajime Example 4, Run-16 composition meets each and every limitation of claims 16-17 and 19; therefore, claims 16-17 and 19 are anticipated. The claim 16 preamble “catalyst” and the claim 19 preamble “ catalyst for oxygen reduction” are interpreted as intended use rather than claim limitation because it does not provide any structural limitation of the claimed composition.
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.
Claim 23 is anticipated because the Hajime Example 4, Run-16 composition is a liquid composition comprising pyridine which is a solvent, phthalocyanine-based compound and carbon dioxide.
Applicant’s Argument
Applicant argues on Hajime that on the ground that carbon dioxide is not the claimed conductive material. Remarks at page 11, last paragraph.
This argument has been fully considered but not persuasive. As mentioned in the rejection above that the specification does not provide definition for the claimed “carbon material”, under its broadest reasonable interpretation, “carbon material” is interpreted as any material comprising carbon. Carbon dioxide, which comprises carbon, therefore, is a carbon material as claimed.
35 USC § 102 Rejection Over Tarasevich Evidenced with Yamazaki
Claims 16-18 and 20-22 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated 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”).
Tarasevich teaches to synthesis carbon XC72 supported PdFe catalysts with different atomic palladium-to-iron ratios and study in oxygen reduction reaction in acid solution at 60ºC. Tarasevich at abstract.
Per Experimental Section, Tarasevich teaches the synthetic method as follows:
2.1. Methods of catalyst synthesis
Two methods of preparing the catalysts were used in this study:
(1) Thermochemical synthesis of binary catalysts included adsorption of solutions of iron and palladium simple salts on carbon support, evaporation of solvents at water bath and subsequent pyrolysis. As carbon support we used Vulcan XC72 preliminary heated in argon atmosphere at 600 °C in 1 h. The source of iron served salt FeCl3·6H2O (from “Sigma”), for the source of palladium was salt PdCl2 (from OAO “Khimzavod im.Voikova”). The solvent was twice distilled water. After removing solvent by heating at water bath, dry mass subjected to pyrolysis at temperatures 250, 600, 700 and 800 °C in 0.5–1 h. Before pyrolysis and after it, mass was thoroughly homogenized.
(2)Thermochemical method analogous to the first but disparate from it that iron N4-complexes were used as iron precursor. These were iron(II) phthalocyanine (FePc), iron(III) phthalocyanine chloride (FePcCl) and iron tetra(p-methoxyphenyl)porphyrin (FeTMPP), all the complexes are from Aldrich. Pyrolysis temperature was 850–900 °C, gaseous atmosphere was helium. All produced catalysts were thoroughly homogenized.
The amount of Fe-N4-complexes added into XC72 equaled 25wt.% in all the cases. Atomic ratio of Pd and Fe introduced into carbon black comprised 1:1,2:1,3:1,5:1,7:1and10:1
Tarasevich at page 5109, 2. Experimental, 2.1. Methods of catalyst synthesis, emphasis added.
Thus, teaches a catalyst comprising Vulcan XC72 that is a carbon black that is conductive (See Specification at page 20, line 7) and iron(III) phthalocyanine chloride (FePcCl) that has a chemical structure as indicated below (See attached CA abstract).
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Which is an adduct of the Formula (1) wherein each of D1-D16 is carbon.
Therefore, the Tarasevich Vulcan XC72-FePcCl catalyst meets each and every limitation of claims 16-17, 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.
Claim 20 is anticipated because Tarasevich teaches that the concentration of FePcCl is 25%. See Tarasevich at page 5114, table 2.
Claim 21 is anticipated because the evidence from Yamazaki indicates that Vulcan XC72 contains carboxyl group. Yamazaki at Abstract.
Claim 22 is anticipated because Yamazaki teaches that the number of carboxyl groups on Vulcan XC72 is 0.9 ×10-12-1.6 ×10-12 mol/cm2. Yamazaki at page 67, Table 1. Given the density of carboxyl groups on Vulcan XC72 is quite low, it is assumed that the content of the carboxyl group is 20 mass% or less with respect to 100 mass% of Vulcan XC72. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the prior art reference. MPEP 2112(V).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Claims 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.
The conflicting claim 1 claims:
An oxygen reduction catalyst containing a metal complex and a conductive material and having an ionization potential value of 5.80 eV or lower.
The conflicting claim 2 claims:
The oxygen reduction catalyst according to Claim 1, wherein the metal complex is represented by the following formula (1) or (2).
The conflicting claim 6 further claims the species of the metal complex in claim 2 including compound (8) which has the same chemical structure of the elected species.
The conflicting claim 7 further claims that:
The oxygen reduction catalyst according to any one of Claims 1 to 6, wherein the metal complex is contained in an amount of 75 mass% or less with respect to 100 mass% of a total amount of the metal complex and the conductive material.
The conflicting claims 8-10 further claims that:
[Claim 8] The oxygen reduction catalyst according to any one of Claims 1 to 7, wherein the conductive material is a carbon material.
[Claim 9] The oxygen reduction catalyst according to any one of Claims 1 to 8, wherein the conductive material contains a carboxyl group.
[Claim 10] The oxygen reduction catalyst according to Claim 9, wherein 20 mass% or less of the carboxyl group is contained in 100 mass% of the conductive material.
The conflicting claims 12 claims a liquid composition comprising: the oxygen reduction catalyst according to any one of Claims 1 to 11; and a solvent.
The combination of conflicting claims 1-2, 6-10 and 12 meets each and every limitation of the instant claims 16-23, therefore, the instant claims 16-23 are obvious.
Terminal Disclaimer
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Applicant’s Response
Applicant replied to the provisional rejection made over US application 18/001,513 as:
A response to the provisional double patenting rejection will be held in abeyance until or unless it becomes necessary to respond
Remarks at page 11, last paragraph.
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 FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692