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 the Rejection
All rejections from the previous office action are withdrawn in view of the Applicant’s amendments. New grounds of rejection under 35 U.S.C. § 102, and under 35 U.S.C. § 103 are necessitated by the amendments as outlined below.
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.
Claim(s) 1-4 and 8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by JP ‘769 (JP S50-26769A, cited in IDS 1/17/2023; machine translation provided).
Regarding claim 1, JP ‘769 teaches an oxygen generation electrode comprising: a substrate formed with titanium (page 4 of translation, 2nd paragraph); and a catalyst layer (see Anodes 1-9 in Tables 1 and 2) disposed on the substrate and formed with a mixed metal oxide, wherein the catalyst layer satisfies the feature (1): comprising ruthenium, tin, and a trivalent or higher polyvalent metal element excluding a tetravalent metal element (see Anodes 3-5 and 9 in Tables 1 and 2; these anodes include tantalum as the polyvalent metal element). The coating does not include iridium as shown in Tables 1 and 2. The oxygen generation electrode is configured to generate oxygen as an anode (page 4, 1st paragraph) through electrolysis under an acidic condition (i.e., using acid solutions; page 4, last line of 1st paragraph).
Regarding claim 2, JP ‘769 teaches wherein the catalyst layer satisfies the condition (1), as described above in the rejection of claim 1, and a content of the polyvalent metal element in the catalyst layer is 8 mol % (based on the Ta content in Anode 4 in Table 1 of 20.5 wt% of Ta2O5) based on a total content of metal elements in the catalyst layer.
SnO2
Sb2Cl3
Sb2O5
RuO2
Ta2O5
Total
MW
150.71
349.87
323.52
133.07
441.9
Anode 3
16.4
0.4
1.8
61.9
19.9
Anode 4
34
0.8
8.7
41.8
20.5
Anode 5
47.2
1.1
5.1
27.6
20.1
wt
0.1088
0.0011
0.0056
0.4652
0.0450
0.6257
0.2256
0.0023
0.0269
0.3141
0.0464
0.6153
0.3132
0.0031
0.0158
0.2074
0.0455
0.5850
mol %
17%
0%
1%
74%
7%
37%
0%
4%
51%
8%
54%
1%
3%
35%
8%
Regarding claim 3, JP ‘769 teaches tantalum as the polyvalent metal element (see anodes 3-5 in Table 1).
Regarding claim 4, JP ‘769 teaches wherein the catalyst layer satisfies the condition (1), as described above in the rejection of claim 1, and a content of the ruthenium in the catalyst layer is 51 mol % (based on the Ru content in Anode 4 in Table 1 of 41.8 wt% of RuO2) based on a total content of metal elements in the catalyst layer.
Regarding claim 8, JP ‘769 teaches the electrode is configured to be used as an anode (page 4, 1st paragraph). Additionally, the limitation "configured to be used as an anode in an electrowinning process in which a nonferrous metal is used as a cathode" is further reciting the intended use of the electrode. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the prior art electrode is capable of performing the intended use, it meets the claim. The limitation directed to a nonferrous metal being used as a cathode is not given patentable weight since it is not positively recited as part of the electrode.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 5 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘769 (US 4272354) in view of Davidson et al. (US 4289591).
JP ‘769 teaches the electrode as applied to claim 1 above. JP ‘769 does not explicitly teach wherein the catalyst layer further comprises manganese.
Davidson et al. teaches a gas generation apparatus comprising an oxygen evolving anode comprising ruthenium oxide and manganese oxide catalyst. By adding the manganese oxide to the ruthenium oxide, the ruthenium oxide is stabilized and there is substantial improvement in cell voltage in an electrolysis cell when the ruthenium oxide-magnesium oxide catalyst material is used as an anode (column 3 lines 61-68).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated manganese, as taught by Davidson et al., in the catalyst layer of JP ‘769, because adding manganese to the catalyst layer would improve the cell voltage of electrolysis cell (column 3 lines 61-68 of Davidson et al.).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘769 (US 4272354) in view of Calderara et al. (US 20180127887).
JP ‘769 teaches the electrode as applied to claim 1 above. JP ‘769 does not explicitly teach an intermediate layer between the catalyst layer and the substrate (claim 6) or a barrier layer disposed on the catalyst layer (claim 7).
Calderara et al. teaches an anode for oxygen evolution in electrolytic processes (paragraph 5). Calderara et al. teaches coating a protective layer interposed between the substrate and the catalytic layer is “especially effective in preventing the corrosion of the substrate” (paragraph 7). In addition, Calderara et al. teaches coating a protective layer external to the catalytic layer is “especially effective in preventing the release of noble metal from the catalytic layer during the start-up phase or the early hours of operation of the electrode” (paragraph 7).
Addressing claim 6, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the intermediate layer of Calderara et al. in the anode of JP ‘769 because it would be effective in preventing the corrosion of the substrate (paragraph 7 of Calderara et al.).
Addressing claim 7, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the intermediate layer of Calderara et al. in the anode of JP ‘769 because it would be effective in preventing the release of noble metal from the catalytic layer during the start-up phase or the early hours of operation of the electrode (paragraph 7 of Calderara et al.).
Response to Arguments
Applicant's Remarks, filed October 14, 2025, with respect to the 35 U.S.C. § 35 U.S.C. § 103 rejections have been fully considered but are moot in view of the new grounds of rejection. JP ‘769 is now relied on to teach an oxygen generation electrode as applied to the rejection of at least claim 1 above.
On page 4 of the Remarks, the applicant argues that De Nora is directed to an electrode for halogen evolution and oxygen inhibition and thus does not teach the electrode configured to generate oxygen as an anode.
This argument is deemed to be unpersuasive. De Nora teaches all the structural limitations of the electrode and therefore would be capable of being configured to generate oxygen as an anode. Even though De Nora does not use the electrode in this manner, the electrode of De Nora is structurally capable of performing the recited process limitations of the instant claim. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997), MPEP 2114. Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Since De Nora teaches the same substrate and catalyst layer having the same metals as those of the instant of the instant claim and the electrode of De Nora would be structurally capable of being configured to generate oxygen as an anode.
In the interest of promoting compact prosecution – without conceding the correctness of the previous rejection – the rejection using De Nora is withdrawn. JP ‘769 is now relied on to teach the electrode of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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LUAN V. VAN
Supervisory Patent Examiner
Art Unit 1795
/LUAN V VAN/ Supervisory Patent Examiner, Art Unit 1795
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