DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on May 19, 2025. Claims 1-11 are pending in the application.
Status of Objections and Rejections
All rejections from the previous office action are maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 7, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masa (J. Masa, Amorphous Cobalt Boride (Co2B) as a Highly Efficient Nonprecious Catalyst for Electrochemical Water Splitting: Oxygen and Hydrogen Evolution, Advanced Energy Materials, 2016(6), 1502313, pp. 1-10; Supplemental Information attached) in view of Oh (J-H Oh, Synthesis of Cobalt Boride Nano Material in Triple DC Thermal Plasma Jet System, 2nd Asia-Pacific Conference on Plasma Physics, 12-17, 11.2018, Kanazawa, Japan).
Regarding claims 1-2, Masa teaches a method of producing a water electrolysis catalyst ([Abstract]: electrocatalyst for OER in alkaline electrolytes and simultaneously active for catalyzing HER) electrode (p. 2, col. 1, para. 1: both the anode and cathode of a water splitting device) containing cobalt boride nanoparticles (title; Fig. 1(b)) comprising:
preparing cobalt boride nanoparticles (p. 2, col. 1, para. 2: to prepare Co2B; Fig. 1(b)); and
producing an electrode containing the prepared cobalt boride (p. 2, col. 1, para. 1).
Masa does not explicitly disclose the cobalt boride nanoparticles are prepared using thermal plasma (claim 1) or wherein the cobalt boride nanoparticles are prepared by thermal plasma in a triple torch-type plasma device (claim 2).
However, Oh teaches synthesis of cobalt boride nanoparticles by triple Direct Current (DC) thermal plasma jet system (p. 1, col. 1, para. 2). The triple thermal plasma jets generated from the three torches are encountered at the center axis of the reaction (Fig. 1; p. 1, col. 1, para. 2). The cobalt-based nanoparticles are catalysts for hydrogen storage and fuel cell applications (p. 1, col. 1, para.1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa by substituting the preparation method by the chemical reduction of CoCl2 using NaBH4 (Masa, [Abstract]) with the preparation method of thermal plasma using a tripe torch-type plasma device as taught by Oh because both methods are suitable for preparing Cobalt Boride catalyst for water electrolysis and the substitution of one known element for another would yield nothing more than predictable results. MPEP 2141(III)(B). Further, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 3, Masa and Oh discloses all limitations of claim 1. Masa does not disclose wherein the cobalt boride nanoparticles have a size of 1 to 20 nm.
However, Oh teaches cobalt boride nanoparticles were synthesized at tens of nanometer (p. 1, col. 1, para. 4), which overlaps the recited range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa by adjusting the cobalt boride nanoparticles within the claimed range as suggested by Oh. 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). MPEP 2144.05(I). 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). MPEP 2144.05(I).
Regarding claim 4, Masa teaches wherein the producing the electrode comprises:
preparing a catalyst ink containing the cobalt boride nanoparticles (Masa Supplemental, p. 5, para. 2: catalyst inks were prepared); and
coating the electrode with the catalyst ink (Masa Supplemental, p. 6, para. 2: a glassy carbon electrode was modified by drop coating the catalysts inks).
Regarding claim 7, Masa and Oh discloses all limitations of claim 1. Masa further discloses a specific volume of ink was pipetted onto the pre-cleaned glassy carbon electrode to form a catalyst film with a loading equivalent to 210 µg cm-2 (Masa Supplemental, p. 5, para. 2). The water electrolysis was performed using carbon cloth electrodes modified with Co2B with a loading of approximately 5.0 mg per cm2) as the catalysts for both the anode and the cathode (p. 6, last para.)
Although Masa does not disclose wherein an amount of the cobalt boride nanoparticles contained in the electrode is 1 to 1.5 mg per a surface area (cm2) of the electrode, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa and Oh by adjusting the loading amount of the cobalt boride nanoparticles on the electrode within the claimed range because it can be optimized through routine experimentation. MPEP 2144.05 (II)(B). Furthermore, the claimed range lies between the two exemplary loading amounts as taught by Masa. 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). MPEP 2144.05(I). 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). MPEP 2144.05(I).
Regarding claim 10, Masa in view of Oh teaches a water electrolysis catalyst electrode ([Abstract]) produced using the method according to claim 1 (as described in claim 1).
Regarding claim 11, Masa in view of Oh teaches wherein the water electrolysis catalyst generates hydrogen and oxygen at an anode and a cathode, respectively ([Abstract]: efficient electrocatalyst for the OER and simultaneously active for HER).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masa in view of Oh, and further in view of Handa (US 2019/0242843) and Hossain (US 2017/0354955), supported by Wikipedia (on Nafion) as an evidence.
Regarding claim 5, Masa and Oh discloses all limitations of claim 4. Masa further teaches wherein the preparing the catalyst ink comprises mixing cobalt boride nanoparticles (Masa Supplemental, p. 5, para. 2: catalyst power), ethanol (Masa Supplemental, p. 5, para. 2: ethanol), deionized water(Masa Supplemental, p. 5, para. 2: Milli Q water), and an additive (Masa Supplemental, p. 5, para. 2: Nafion) and then ultrasonicating the resulting mixture (Masa Supplemental, p. 5,para. 2: followed by ultrasonication for 20 min), and
the coating the electrode with the catalyst ink comprises applying the ultrasonicated catalyst ink to the electrode, followed by drying (Masa Supplemental, p. 5, para. 2: the resulting films were left to dry in air under ambient conditions for at least 20 min).
Masa uses ethanol and the time for ultrasonicating is 20 min (Masa Supplemental, p. 5, para. 2), and fails to teach using propanol or ultrasonicating for 50 to 70 minutes.
However, Handa teaches 2-propanol (IPA) can be used as a solvent subject to ultrasonic vibration for dispersion (¶56). Hossain teaches an ultrasonication for 1-60 minutes would achieve a homogeneous mixture (¶81), which overlaps the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa and Oh by substituting ethanol with propanol as taught by Handa and adjusting sonication time within the claimed range as suggested by Hossain. Here, since both ethanol and propanol are suitable solvent for ultrasonic, the substitution would yield nothing more than predictable results to establish prima facie obviousness. MPEP 2141(III)(B). Further, 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). MPEP 2144.05(I). 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). MPEP 2144.05(I).
Regarding claim 6, Masa teaches wherein the additive is tetrafluoroethylene-perfluoro-3,6-dioxa-4-methyl-7-octenesulfonic acid copolymer (Masa Supplemental, p. 5, para. 2: Nafion; as evidenced by Wikipedia, Nafion has a name of tetrafluoroethylene-perfluoro-3,6-dioxa-4-methyl-7-octenesulfonic acid copolymer, as shown on p. 2).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masa in view of Oh, and further in view of Kim (M. Kim, Synthesis of Metal Boride Nanoparticles Using Triple Thermal Plasma Jet System, Journal of Nanoscience and Nanotechnology, 2019(19), pp. 6264-70; publication date: October 1, 2019, see last page of the attached document).
Regarding claim 8, Masa and Oh discloses all limitations of claim 1. Oh further discloses wherein the preparing the cobalt boride nanoparticles comprises:
injecting a plasma-forming gas into a triple torch-type plasma jet device to generate a plasma jet (Fig. 1: argon and nitrogen are mixed plasma forming gas, which are injected into the triple torch-type plasma jet device);
injecting a cobalt/boron mixture into the plasma jet using a carrier gas (Fig. 1; p. 1, col. 1, para. 2: injection of raw material into the high temperature region of thermal plasma jet; Fig. 1: indicating the three carrier gases injected into the triple torch-type plasma jet device), followed by vaporization (p. 1, col. 1, para. 2: improved vaporization).
Masa and Oh do not disclose cooling the vaporized cobalt/boron mixture to recover the cobalt boride nanoparticles.
However, Kim teaches metal boride nanoparticles, e.g., titanium, nickel, and tungsten, were synthesized in the triple thermal plasma jet system (Fig. 1; [Abstract]). The individual thermal plasma jet was generated by Ar and N2 mixed gases, and three kinds of starting material were respectively injected with argon carrier gas (Fig. 1; Table 1; p. 6257, col. 2, para. 2) before the synthesized nanoparticles were collected in separated position of reaction (Fig. 1, p. 6258, col. 1, para. 1). For example, after vaporization, the titanium and boron vapors are co-condensed to the titanium boride nanoparticles (p. 6266, col. 2, para. 2). Thus, Kim teaches cooling the vaporized mixture to recover the nanoparticles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa and Oh by incorporating a cooling step for recovering the desired nanoparticles from the high temperature plasma jet device as taught by Kim. Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 9, Masa, Oh, and Kim disclose all limitations of claim 8. Masa and Kim do not disclose wherein the cobalt and the boron in the cobalt/boron mixture are mixed in a molar ratio of 1:0.5 to 1:4.
However, Oh teaches the cobalt and boron were mixed at 1 to 3 molar ratio to provide the sufficient boron vapor (p. 1, col. 1, para. 3), which overlaps the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Masa, Oh, and Kim by adjusting the molar ratio of cobalt and boron within the claimed range because it is a suitable molar ratio to provide sufficient boron vapor. 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). MPEP 2144.05(I). 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). MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues different synthesis mechanisms inherently produce material with different structural and morphological characteristics, which directly impact catalytic performance (Response, p. 5, para. 2). Specifically, Applicant argues that the substitution of Masa’s chemical reduction method with Oh’s thermal plasma synthesis would not yield a catalyst having the same or even comparable catalytic performance (p. 5, para. 2). This argument is unpersuasive because the prior art, Oh, is relied on to teach the thermal plasma synthesis method which would yield the predictable result of preparing cobalt boride nanoparticles as claimed. Examiner notes that the claims does not recite any structure or morphology of the cobalt boride nanoparticles. Here, Applicant does not provide any evidence in the prior art that the thermal plasma synthesis method would result in cobalt boride nanoparticles with less catalytic performance. Even if it does, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. MPEP 2123. A known or obvious material does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.
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 extension fee 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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/C. SUN/Primary Examiner, Art Unit 1795
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