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 .
Claims 1-20 are pending for this Office Action.
Election/Restrictions
Applicant’s election without traverse of claims 1-14 in the reply filed on 11/19/2025 is acknowledged. Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.
Claims 1-14 are under consideration for this Office Action.
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) 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).
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 nickel and 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.
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 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 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 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 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 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 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 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 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 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 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 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 as applied to claim 1 above, and in further view of Mathur et al (US 4670122 A).
Claim 11: Kato in view of Peng 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 as applied to claim 1 above, and in further view of Motoshige et al (US 20180265995 A1).
Claim 13: Kato in view of Peng 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.
Conclusion
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