Prosecution Insights
Last updated: April 19, 2026
Application No. 18/030,786

OXYGEN EVOLUTION CATALYST, PRODUCTION AND USE THEREOF, MEMBRANE ELECTRODE ASSEMBLY, AND FUEL CELL OR ELECTROLYSIS CELL

Non-Final OA §102§103§112
Filed
Apr 07, 2023
Examiner
KERNS, KEVIN P
Art Unit
1735
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Technische Universität München
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
99%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
1157 granted / 1467 resolved
+13.9% vs TC avg
Strong +21% interview lift
Without
With
+21.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
54 currently pending
Career history
1521
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
46.9%
+6.9% vs TC avg
§102
27.1%
-12.9% vs TC avg
§112
21.6%
-18.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1467 resolved cases

Office Action

§102 §103 §112
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. Election/Restrictions Applicant s ' election with traverse of Group I (claims 13-15) in the reply filed on December 31, 2025 is acknowledged. The traversal is on the ground(s) that at least the additional claims 22 and 23 ( Group IV ) should be included in search and examination of the elected claims due to the claims not being subject to restriction under the unity of invention standard at the PCT level and that these groups of inventions would share a common inventive concept, contrary to the reasons set forth by the examiner in the restriction requirement mailed November 3, 2025 . This is not found persuasive because not only would there be a significant burden for search and examination for a process of producing the oxygen evolution reaction catalyst, but also s inc e K umta et al. (US 2017/0233879) , as set forth in the prior art rejection below, include the special technical feature of a solid solution with at least one valve metal oxide (oxides of titanium, niobium, tungsten, tantalum , or mixtures thereof ) and at least one noble metal oxide (oxides of iridium and/or ruthenium), of which this special technical feature is common to all four groups of claims . However, upon applicants’ introduction of a subsequent amendment to independent claim 13 that would potentially result in overcoming all rejections of record, the non-elected claims in one or more of Groups II, III, and/or IV would be considered for rejoinder. The requirement is still deemed proper and is therefore made FINAL. Drawings Figure 1 (for Route A and Route B, but not Route C) should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Specification The disclosure is objected to because of the following informalities: In paragraph [0007], last line, replace “toa” with “to a” after “catalyst”. In paragraph [0009], 7 th line, replace “toa” with “to a” after “catalyst”. In paragraph [0011], 7 th line, replace “toa” with “to a” after “catalyst”. Appropriate correction is required. Claim Objections Claim 13 is objected to because of the following informalities: in the 4 th line of claim 13, add “,” after “tungsten”. Appropriate correction is required. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 13 recites the limitation "the valve metal oxide" in the 3 rd line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the valve metal oxide" with "the at least one valve metal oxide" to obtain proper antecedent basis with "at least one valve metal oxide" bridging the 1 st and 2 nd lines of claim 13. Since claims 14 and 15 depend from claim 13, these claims are rejected under 35 USC 112(b) for the same reason. Claim 13 recites the limitation "the noble metal oxide" in the 5 th line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the noble metal oxide" with "the at least one noble metal oxide" to obtain proper antecedent basis with "at least one noble metal oxide" in the 2 nd line of claim 13. Since claims 14 and 15 depend from claim 13, these claims are rejected under 35 USC 112(b) for the same reason. Claim 13 recites the limitation "the BET specific surface area" in the 7 th line. There is insufficient antecedent basis for this limitation in the claim. Since claims 14 and 15 depend from claim 13, these claims are rejected under 35 USC 112(b) for the same reason. With r egard to independent claim 13 ( in the last three lines) , the limitation “exhibits a weight loss of less than 2% by weight upon exposure of the oxygen evolution catalyst to a 3.3 vol% hydrogen stream in argon at a temperature of 80°C for 12 hours” is indefinite, since it is unclear as to what properties the oxygen evolution catalyst would exhibit based on the claimed components (valve metal oxide and noble metal oxide) when subject ed to test (s) that would distinguish features of applicants’ claim 13 from th e prior art. Correction and clarification are required. Since claims 14 and 15 depend from claim 13, these claims are rejected under 35 USC 112(b) for the same reason. Claim Rejections - 35 USC § 102/103 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. 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. 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. 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. Claims 13-15 are rejected under 35 U.S.C. 102 (a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kumta et al . (US 2017/0233879) , cited in the Information Disclosure Statement dated April 7, 2023 . Regarding independent claim 13 and claim 14, Kumta et al. disclose an oxygen evolution reaction catalyst (abstract; paragraphs [0007], [0027], [0135], [0139], and [0141]; claim 1; and Figure 4), in which the oxygen evolution reaction catalyst compris es the following component s : a valve metal oxide that includes oxides of tantalum , niobium, titanium, or tungsten ( see abstract; paragraph s [00 2 7] , [0135], and [0141] ; and claim 1) ; and a noble metal oxide that includes oxides of iridium and/or ruthenium ( see abstract; paragraph [0141]; and claim 1) . As to the claimed range of BET specific surface area, the solid solution of the valve metal oxide and the noble metal oxide would be greater than 10 m 2 /g (and also greater than 20 m 2 /g ) , since Kumta et al. include the same oxide s that applicants are claiming. Specifically, Kumta et al. disclose a solid solution that contains oxides of iridium (noble metal) and oxides of niobium (valve metal) , which would have a BET specific surface area within a range of 45 to 170 m 2 /g ( see paragraph [0141]). Although Kumta et al. do not explicitly disclose or suggest the limitatio n “upon exposure of the oxygen evolution catalyst to a 3.3% hydrogen stream in argon at a temperature of 80 ° C for 12 hours” , the solution of Kumta et al. would be capable of go ing through th is process in order to exhibit a weight loss of less than 2%. However, since the catalyst disclosed by Kumta et al. structurally reads upon the catalyst claimed by applicants per the discussion above , one of ordinary skill in the art would have recognized that the catalyst disclosed by Kumta et al. would exhibit a comparable weight loss, absent of evidence to the contrary. R egard ing claim 15, since the preamble recites “oxygen evolution reaction catalyst”, the limitations “is supported on a support material, and the support material is a carbon-based support material or a graphitized carbon” are not deemed to impart explicit patentable weight since these additional features would be separate from the “oxygen evolution reaction catalyst” without an “assembly” (or similar) being claimed . Moreover, the solid solution of independent claim 13 would be supported on a support material as an “assembly” , as paragraph [0141] of Kumta et al. recites “Specific surface area (SSA) of the supports and the catalysts were measured using the BET technique” . 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. 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. 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. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kumta et al . (US 2017/0233879) , and further in view of WO 01/15247 A2, of which a complete copy of this document was provided with the Information Disclosure Statement dated April 7, 2023 . Regarding claim 15, Kumta et al. disclose/suggest the oxygen evolution reaction catalyst of independent claim 13 above, including that the oxygen evolution reaction catalyst would be supported on a support material per the recitation “Specific surface area (SSA) of the supports and the catalysts were measured using the BET technique” (see the first two lines of paragraph [0141] of Kumta et al. ). Although Kumta et al. do not explicitly disclose that the claimed support material is a “carbon-based support material” or a “graphitized carbon” (which is recited in the above 35 USC 102/103 rejection as extending outside the scope of the claimed “oxygen evolution reaction catalyst” ) , one of ordinary skill in the art would have recognized that the support material would readily be selected to be a carbon-based support material, as taught by WO 01/15247 A2 (see pages 10, 23, and 24; and claims 24-27) , which recites the solid solution of a valve metal oxide ( TiO y ) and a noble metal oxide (RuO 2 ) as a catalyst (see page 10 of WO ‘247), in combination with a support material that discloses carbon (acetylene or furnace blacks) as preferred supports, since carbon-based support materials (such as acetylene or furnace blacks) are advantageous as high surface area carbons, and graphitic (graphitized) carbons would exhibit increased corrosion resistance (see WO ‘247; page 24, lines 5-11). Therefore, i t would have been obvious to one of ordinary skill in the art at the time the applicants’ invention was made to provide the oxygen evolution reaction catalyst on a support material, as disclosed/suggested by Kumta et al., in combination with the carbon-based support material or the graphitic (graphitized) carbon support material, as taught by WO ‘247, in order to obtain high surface area and increased corrosion resistance, respectively (WO ‘247; page 24, lines 5-11). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KEVIN P KERNS whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1178 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday 8am-430pm . If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Keith Walker can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)272-3458 . 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. /KEVIN P KERNS/ Primary Examiner, Art Unit 1735 March 18 , 2026
Read full office action

Prosecution Timeline

Apr 07, 2023
Application Filed
Mar 18, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
99%
With Interview (+21.1%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 1467 resolved cases by this examiner. Grant probability derived from career allow rate.

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