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
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 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.
Claims 11-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0099061 A1 to Price et al. (Price).
As to claims 11, 12, 13, 14, 15, 16 and 18, Price teaches a catalyst coated membrane comprising a three layered proton exchange membrane, an anode catalyst comprising iridium oxide with a noble metal loading of, for example, 0.4 mg/cm2 applied to a first side of the membrane and a cathode catalyst comprising platinum on a carbon support applied to an opposite second side of the membrane. Price further teaches that each of the membrane layers can be formed of Nafion, and that any three layers of the membrane can comprise a reinforcing material formed of expanded PTFE with the thickness of each layer being independently, for example, 7 to 40 microns (Abstract; Paragraphs 0055-0060, 0068, 0069, 0070, 0082, 0086-0088, 0101 and 0106; Figure 1), thus teaching an embodiment wherein the central layer is not reinforced and the outer layers are reinforced and an embodiment substantially equivalent to Applicant’s own disclosure (Specification Example 1) and thus, as evidenced by Applicant’s disclosure, inherently possessing the property of “an areal expansion of the catalyst-coated membrane is less than 15% after being held for two hours in water heater to 100°C” (MPEP 2113).
As to claim 17, Price teaches the membrane of claim 11. Price further teaches that the iridium catalyst can be supported on antimony doped tin oxide (Paragraph 0101).
As to claim 19, Price teaches the membrane of claim 11. As discussed above, Price teaches that the membrane thickness is from 7 to 40 microns. Price further teaches that the proton exchange membrane comprises a recombination catalyst (Paragraphs 0055-0060).
As to claim 20, as discussed above, Price teaches the catalyst coated membrane of claim 11. Price further teaches that the membrane is utilized in a water electrolysis cell (Abstract).
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 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0071786 A1 to Jang et al. (Jang).
As to claim 21, Price teaches a catalyst coated membrane comprising a three layered proton exchange membrane, an anode catalyst comprising iridium oxide with a noble metal loading of, for example, 0.4 mg/cm2 applied to a first side of the membrane and a cathode catalyst comprising platinum on a carbon support applied to an opposite second side of the membrane. Price further teaches that each of the membrane layers can be formed of Nafion, and that any three layers of the membrane can comprise a reinforcing material formed of expanded PTFE with the thickness of each layer being independently, for example, 7 to 40 microns (Abstract; Paragraphs 0055-0060, 0068, 0069, 0070, 0082, 0086-0088, 0101 and 0106; Figure 1), thus teaching an embodiment wherein the central layer is not reinforced and the outer layers are reinforced and an embodiment substantially equivalent to Applicant’s own disclosure (Specification Example 1) and thus, as evidenced by Applicant’s disclosure, inherently possessing the property of “an areal expansion of the catalyst-coated membrane is less than 15% after being held for two hours in water heater to 100°C” (MPEP 2113).
However, as discussed above, Price teaches a loading of 0.4 mg/cm2 and thus fails to teach a lower level of 0.35 mg/cm2. However, Jang also discusses proton exchange membrane electrolyzers with iridium oxide catalyst and teaches that loading of the iridium oxide is an important consideration in view of cost and efficiency and teaches that loading can be decreased down to 0.075 to 0.2 mg/cm2 while maintaining efficiency by electrodeposition of the iridium oxide (Paragraphs 0027 and 0068-0070). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the iridium oxide loading down to 0.075 to 0.2 mg/cm2 in order to allow for reduced usage of the expensive iridium oxide catalyst while maintaining efficiency as taught by Jang.
Response to Arguments
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
Applicants argue that the Examiner’s inherency argument is invalid as the mere position that an ePTFE reinforcement in Price’s membrane does not guarantee less than a 20% areal expansion. However, the Examiner maintains that this is an oversimplification of the Examiner’s position. The Examiner maintains that Price teaches a three layer membrane structure, the same as in Applicant’s example 1, with a center unreinforced layer made of the same material of the same thickness as Applicant’s example 1, and two reinforced layers of the same polymer material, the same reinforcement material and same thickness as Applicant’s example 1, the layers being laminated by heat pressing at the same temperature and pressure as Applicant’s example 1. Thus, the Examiner maintains the inherency rejection. Applicants further argue that areal expansion cannot be determined from this alone and depends on specific chosen properties of the ePTFE; however, if this is true this raises concerns within Applicant’s disclosure, as the Applicant has not disclosed any specific regarding the necessary properties of the ePTFE such as the thickness, porosity or degree of expansion.
Applicants further argue that the lower loading of iridium oxide is not taught by Proce; however, as discussed above the new limitation has been rejected in view of Jang.
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
