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 .
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, 3-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (EP3492631) in view of Seok et al. (KR20110072917).
Regarding claims 1, 3, 5-6 and 9-10, Jung teaches that it is known to form electrodes for electrolysis (see Advantageous Effects section) wherein a coating is applied and dried and heat treated in the claimed temperature and time range (see Example 1 and Detailed Description of Embodiments) wherein the composition may comprise a ruthenium precursor, cerium precursor, platinum precursor (see Technical Solution section), and octadecyl amine (amine based C6 to C30 saturated or unsaturated amine). Jung fails to teach wherein the composition further comprises urea. However, Seok teaches that urea is a known substitute for octadecylamine as an amine compound in the formation of electrodes (see abstract, description of embodiments and claims sections). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the urea of Seok for the octadecylamine of Jung as a simple substitution of one known amine compound for another in the production of electrodes wherein the substitution and the results thereof would’ve been predictable and provided expected results based upon the teachings of Seok. The teachings of Jung in view of Seok are as shown above. Jung in view of Seok fails to teach the exact ratio of urea to octadecylamine claimed. However, given that Seok teaches that urea is a direct substitute for octadecylamine, substituting any amount thereof would’ve been within the scope of Jung in view of Seok. Therefore, in the absence of criticality of the specific substituted ratio of urea to octadecylamine of the current claims it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute any amount of urea for octadecylamine in the invention of Jung in view of Seok based on the teachings of Seok. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).
Regarding claim 4, the teachings of Jung in view of Seok are as shown above. Jung in view of Seok fails to teach the ratio of ruthenium precursor to amine compound claimed. However, Jung does teach that the final concentration of the coating composition which includes both of the components is critical in order to control the “performance and durability” of the electrode provided (see Detailed Description section) . Therefore, in the absence of criticality of the specific range of the ruthenium precursor to stabilizer of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to control the ratio ruthenium precursor to stabilizer in order to control the performance and durability of the product of Jun in view of Seok.
Regarding claim 7, Jung further teaches the use of isopropyl alcohol and 2-butoxy ethanol as a mixed solvent (see Detailed Description section).
Regarding claim 8, the teachings of Jung in view of Seok are as shown above. Jung further teaches repeating the heating and drying process multiple times. Jung in view of Seok fails to teach repeating the process until the concentration of ruthenium oxide claimed is present. However, Jung does teach that the process is performed until an “appropriate thickness” is obtained (see Detailed Description section) wherein at a given deposition concentration, an increases in thickness would create an increase in the amount of ruthenium oxide per square meter. Therefore, in the absence of criticality of the specific ruthenium oxide density of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the invention of Jung in view of Seok thereby modifying the ruthenium oxide density provided in order to control the thickness of the coating applied such that it would be deemed appropriate by Jung. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Response to Arguments
The applicant argues that Jung fails to explicitly state octadecylamine is used. The examiner cited the portion of Jung teaching the use of “amine based C6 to C30 saturated or unsaturated amines”. However, the examiner has provided the full citation below.
PNG
media_image1.png
78
900
media_image1.png
Greyscale
It is of particular importance that octylamine is a C8 saturated amine. Decylamine is identical to it except that it is the C10 saturated amine. Dodecylamine is identical to those except that it is the C12 saturated amine. Laurylamine is just another name for dodecylamine. Hexadecylamine is identical to all of those others except that it is the C16 saturated amine. The only difference in octadecylamine and all of the other above with the exception of oleylamine which is unsaturated, is that it is the C18 saturated amine. The citation of C6 to C30 in Jung must be given some weight. It is the position of the examiner that given that the examples of Jung with the exception of one are all identical the octadecylamine except for the carbon chain length, wherein Jung explicitly states that the compounds including are C6 to C30, one of ordinary skill in the art would reasonably envisage at least octadecylamine as one of the compounds implied by Jung. Further at least some teaching must be drawn from the “C6 to C30”. The applicant seemingly regards the statements as though they are too broad to be interpreted or useful. However, the examiner must consider both what is explicitly stated in the prior art and what is implied. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). In considering the collective paragraph shown, one of ordinary skill in the art would reasonably envisage octadecylamine as an implied composition, especially in view of the provided examples.
As relates to the applicants statements that “a C6 to C30 saturated or unsaturated aliphatic amine” would give innumerable choices for one skilled artisan to choose from could be a reasonable statement if taken in a vacuum, but Jung provides a plurality of examples, all of which are straight chain C6 to C30 carbon chains with a single amine on the end. Further among those examples 5 of the 6 examples are saturated. One reading the disclosure of Jung would at least consider the remaining C6 to C30 straight chain saturated amines of Jung to be applicable with 4 of 24 possibilities explicitly being provided by name. A single statement from the prior art cannot be taken in a vacuum. It must be considered with regards to what one of ordinary skill in the art would glean from the disclosure.
Further the applicant argues that Seouk seemingly is not from the same field of endeavor of Jung and therefore not properly combinable with Jung. The applicant supports this statement by stating that “Seouk is directed to a conductive material for secondary batteries, totally different from Jung that is directed to an electrode…”. However, it is noted that the title of the invention of Seok is “Carbon Conductive Material, Electrode Composition Including the Same, and Electrode and Secondary Battery Prepared from them”. Clearly the applicant is using a very selective and limited interpretation of what Seouk clearly and explicitly states is his invention. Clearly Seouk is drawn to electrodes and their manufacture.
Further the applicant generally argues that the technical feature of their invention lies in the “specific ratio” of urea to octadecylamine claimed. However, the MPEP clearly states that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). However, herein the applicant has provided no criticality associated with the broad range claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW J BOWMAN/Examiner, Art Unit 1717
/ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
Prosecution Insights