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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
06/10/2026.
Status of Rejections
All previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claims 1-14 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-10, 12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US 20190078220 A1) in view of Peng et al (US 20200291536 A1) and Funakawa (US 20260015745 A1).
Claim 1: Kato discloses an electrode for use in an alkaline electrolysis process (see e.g. abstract), the electrode comprising:
a metal substrate (see e.g. [0059]);
a catalytic layer disposed on the metal substrate, the catalytic layer comprising at nickel with nickel oxide (the catalyst layer is considered to be portion of the Ni subjected to an oxidation process, see e.g. [0062]: “…to form a Ni oxide layer on the substrate surface”);
an active composition disposed on the catalytic layer (see e.g. [0062] and [0072]), the active composition comprising one or more metal compounds selected from the group consisting of a cobalt compound, an iridium compound, and a lithium compound (see e.g. [0063]-[0065]).
With regard to the limitation claiming that the active composition is formed within the catalytic layer, Kato teaches that the catalytic layer is formed from a porous material (see e.g. [0060] and [0062]) and the active composition is applied using a liquid coating process (see e.g. [0036]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the active composition would formed within the catalytic layer during the coating process as the liquid goes into the pores.
Kato does not explicitly teach that the catalyst layer has a porosity less than about 1 m2/g measured by BET. Kato teaches that substrate has a porosity of 10-95%. Since the “catalyst layer” is formed by subjecting the substrate to an oxidation process, the catalyst layer would be expected to have a substantially similar porosity (see e.g. [0060] and [0062]). Peng teaches an electrode for the electrolysis of water (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The electrode of Peng comprises nickel and nickel oxide (see e.g. [0047] and [0053]) wherein the nickel oxide layer has a porosity that ranges from 0.01-100 m2/g measured by BET (see e.g. [0051]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Kato by selecting a porosity between 0.01-100 m2/g as taught in Peng because Peng teaches that this range is suitable for nickel and nickel oxide catalyst layers used for water electrolysis and this range would fall within the porosity of 10-95% disclosed in Kato.
The limitation claiming “the catalyst layer is formed by thermal spraying nickel powder in ambient air” is a product-by-process limitation. MPEP § 2113 I states ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)’. A review of the instant specification shows that the resulting structure of thermal spraying nickel powder in ambient air is melted powder particles with some of said particles being oxidized (see [0031] and [0033]).
As shown above, Kato discloses a catalytic layer disposed on the metal substrate, the catalytic layer comprising at least nickel oxide (see e.g. [0062]). Funakawa teaches a method of forming a nickel and nickel oxide coating (see e.g. [0354]) on a nickel substrate (see e.g. [0296], making it analogous art (see MPEP § 2141.01(a) I). According to Funakawa, these layers can be formed using plasma spraying (see e.g. [0354]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Kato to use the method of forming the catalyst layer taught in Funakawa because Funakawa shows that plasma spraying is a known and used method of forming nickel oxide layers with nickel for electrodes and a person having ordinary skill in the art before the effective filing date would have a reasonable expectation of success using this method with predictable results.
Claim 2: [0037] of the instant invention states that “Porosity can be correlated with electrochemical properties. As is known, the double layer capacitance of an electrode is directly related to the total surface area of the electrode. With respect to the BET, the measurement of the double layer capacitance allows to more specifically gauge the “active porosity” of the electrode, i.e. the surface area that is actually accessible to the electrolyte for the electrochemical reaction. Therefore, in alternative or in addition to the the determined BET surface area in mg, the porosity of catalytic layer 24 may be characterized in terms of its double layer capacitance”. Kato in view of Peng and Funakawa rendered the porosity measured by BET obvious, as shown above for the rejection of claim 1, and therefore renders claim 2 obvious because the double layer capacitance is measuring the same property but in a different manner.
Claim 3: Kato in view of Peng and Funakawa teaches that the active composition comprises more than 30 mole percent of one of the cobalt compound and the iridium compound (see e.g. page 8, Table 1 of Kato). MPEP § 2144.05 I states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’.
Claim 4: Kato in view of Peng and Funakawa teaches that the active composition comprises more than 60 mole percent of one of the cobalt compound and the iridium compound (see e.g. page 8, Table 1 of Kato), and wherein the cobalt compound comprises nickel cobaltite (see e.g. page 8, Table 1 of Kato), and the iridium compound comprises iridium oxide. MPEP § 2144.05 I states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’.
Claim 5: Kato in view of Peng and Funakawa teaches that the active composition consists essentially of nickel cobaltite (“first catalyst layer”. see e.g. [0064] and [0034] of Kato).
Claim 6: Kato in view of Peng and Funakawa teaches that the active composition consists essentially of iridium oxide (“second catalyst layer”, see e.g. [0048] and [0034] of Kato).
Claim 7: Kato in view of Peng and Funakawa teaches that the active composition comprises from about 36 to about 62 mole percent of the cobalt compound, from about 0 to about 11 mole percent of the iridium compound and about 0 mole percent of one or more of the rhodium compound, the iron compound, the platinum compound, the lithium compound, the manganese compound (see e.g. page 8, Table 1 of Kato). MPEP § 2144.05 I states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’.
Claim 8: Kato in view of Peng and Funakawa teaches that the active composition comprises about 36 to about 62 mole percent of the cobalt compound, from about 0 to about 11 mole percent of the iridium compound and about 0 mole percent of one or more of the rhodium compound, the iron compound, the platinum compound, the lithium compound, and the nickel compound (see e.g. page 8, Table 1 of Kato). MPEP § 2144.05 I states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)… Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) ’.
Claim 9: Kato in view of Peng and Funakawa discloses that the cobalt compound comprises nickel cobaltite and the iridium compound comprises iridium oxide (see e.g. page 8, Table 1 of Kato).
Claim 10: Kato in view of Peng and Funakawa discloses that the active composition comprises nickel cobaltite and iridium oxide (see e.g. page 8, Table 1 of Kato).
Claim 12: Kato in view of Peng and Funakawa discloses that the metal substrate of the electrode comprises one or more metals selected from the group consisting of nickel, nickel alloys and iron alloys (see e.g. [0059] of Kato).
Claim 14: Kato in view of Peng and Funakawa discloses an alkaline water electrolysis unit (see e.g. Fig 3 of Kato) comprising the electrode of claim (see rejection of claim 1 above), wherein the electrode is an anode (see e.g. abstract of Kato), and wherein the alkaline water electrolysis unit further comprises:
a cathode (see e.g. [0093] of Kato); and
an electrolyte solution that is substantially free of chlorine (see e.g. [0096]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato in view of Peng and Funakawa as applied to claim 1 above, and in further view of Mathur et al (US 4670122 A).
Claim 11: Kato in view of Peng and Funakawa does not explicitly teach that the catalytic layer has a thickness in a range of from about 10 µm to about 50 µm. Mathur discloses an electrode for alkaline water electrolysis (see e.g. abstract and col 2, lines 45-51), making it analogous art (see MPEP § 2141.01(a) I). The electrode of Mathur comprises a nickel substrate (see e.g. col 4, lines 53-58) with an oxide coating (see e.g. col 4, lines 10-13) formed from process similar to that of Kato and having a thickness of 10-50 µm (see e.g. col 4, lines 18-24) to ensure suitable durability for the electrode. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Kato to use the thickness of the nickel oxide layer taught in Mathur.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato in view of Peng and Funakawa as applied to claim 1 above, and in further view of Motoshige et al (US 20180265995 A1).
Claim 13: Kato in view of Peng and Funakawa teaches that the metal substrate comprises nickel substrate (see e.g. [0059] of Kato); wherein the metal substrate has opposing first and second sides (see e.g. #1 on Fig 1a and 1b of Kato).
Kato in view of Peng does not explicit that the catalytic layer is a first catalytic layer the first catalytic layer being disposed on and adhered to the first side of the metal substrate; wherein the electrode further comprises a second catalytic layer disposed on and adhered to the second side of the metal substrate, the second catalytic layer having substantially the same composition as the first catalytic layer; and wherein the active composition is disposed both on and within the second catalytic layer. Motoshige teaches an anode for alkaline water electrolysis (see e.g. abstract and [0056]), making it analogous art (see MPEP § 2141.01(a) I). Motoshige teaches that the anode has an oxide layer and catalyst layer on all sides of the substrate (see e.g. [0032] and Fig 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Kato so that all sides of the substrate are covered in by the layers because Motoshige teaches this is a suitable configuration for anodes used in alkaline water electrolysis and a person having ordinary skill in the art would be able to make this modification with a reasonable expectation of success. By coating more than one side of the substrate, more active composition material can be utilized by the electrode.
Response to Arguments
Applicant’s arguments filed 06/10/2026 with respect to the rejection(s) of the claim(s) under 35 USC 103 over Kato in view of Peng have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 103 over Kato in view of Peng and Funakawa.
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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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