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 .
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.
Claim(s) 1, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho US 2009/0192032.
Regarding claim 1, Cho teaches a tungsten oxide catalyst that may include other transition metals such as iron and nickel (Paragraphs [0013] and [0014]). Example 25 (Table 1) shows that the mixed metal oxide may be NixFe1-xWO4, where x is 0.3. Under the broadest reasonable interpretation of the claims the catalyst may be considered an electrode.
Regarding claims 10-12, Cho teaches a tungsten oxide catalyst that may include other transition metals such as iron and nickel (Paragraphs [0013] and [0014]). Example 25 (Table 1) shows that the mixed metal oxide may be NixFe1-xWO4, where x is 0.3.
Cho does not express that the crystallite size. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of Shao is substantially similar in composition.
Claim Rejections - 35 USC § 103
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(s) 1, and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shao “Structurally distorted wolframite-type CoxFe1-xWO4 solid solution for enhanced oxygen evolution reaction”.
Regarding claim 1, Shao teach a CoxFe1-xWO4 compound (0<x<1) (Page 718, Col. 1) that may be loaded on an electrode (Page 720, Col. 2) and used for water splitting to form oxygen and/or hydrogen (Introduction). The value for x overlaps the range for x recited in instant claim 1. 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).
Shao suggests that Mn, Fe, Co, Ni, or Zn are suitable metals that may be used for the purpose of the article, but the article focused on the combination of cobalt and iron as the transition metals (Page 718, Col. 1) because it exhibited the best oxygen evolution reaction activity (Page 718, Col. 1).
Shao does not expressly state that a combination nickel and iron with tungsten in an example within the article. However, it would have been obvious to person having ordinary skill in the art to substitute the cobalt in the CoxFe1-xWO4 compound (0<x<1) with nickel. The rationale for the substitution would have been a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I), Exemplary rationale (B). Shao lists a small number of transition metals that suitable for the purpose of the article Mn, Fe, Co, Ni, or Zn (Page 718, Col. 1) and suggests that different combinations of the metals had been evaluated with predictability to arrive at the selected CoxFe1-xWO4 (Page 718, Col. 1).
Regarding claims 9-13, Shao does not express that the crystallite size. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of Shao is substantially similar in composition and utility.
The value for x (Page 720, Col. 2) overlaps the range for x recited in each of instant claims 9-13. 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).
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach or suggest the newly amended features of claims 1 and 9-13. In response, these features have been addressed in the updated rejections recited above.
Applicant argues that the composition is of claim 1 is non-obvious because of the unexpected results applicant achieved over other types of catalyst, such as a ruthenium catalyst. In response, the argument of unexpected results is not persuasive because the showing of unexpected results by applicant simply shows that the nickel-iron-tungsten oxide catalyst performs better than other catalysts composed of different elements. These results might show that the nickel-iron-tungsten oxide catalyst is superior from other elements, but the prior art already uses a nickel-iron-tungsten oxide catalyst (See rejections above). The relevant issue is whether the claimed x value provides unexpected results over the broader range of x values described in the prior art. Applicant has not made this showing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dopp US 2011/0114496 teaches a process of water splitting (Paragraph [0013]), where an electrode is loaded with a catalyst that may include nickel, iron, manganese, cobalt, tin, silver, tungsten, or combinations thereof, such as CoWO4 (Paragraph [0188]).
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 JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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