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 Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
1. The limitation “per one surface” should be “per surface.”
Claim Rejections - 35 U.S.C. § 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 of this title, 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 1-3 are rejected under 35 U.S.C. § 103 as being unpatentable over Song et al., Exfoliation of layered double hydroxides for enhanced oxygen evolution catalysis, Nature Communications (2014) [hereinafter Song] in view of Dai et al., U.S. Patent App. Pub. No. 2016/0017507 A1 [hereinafter Dai].
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references render this claim obvious.
I. Song
An oxidization electrode (electrode for oxygen evolution reaction; Song abstract, p. 5) for … water electrolysis (water splitting; Song abstract, p. 2), comprising:
a nickel metal (porous nickel foam; Song abstract, p. 5, fig. 1); and
a layered double hydroxide (LDH) with a monolayer structure containing nickel and iron and disposed on one surface of the nickel metal (NiFe LDH nanosheet deposited on nickel foam; id.),
wherein the layered double hydroxide is applied onto the one surface of the nickel metal by a spray drying method (since this is an apparatus claim this limitation is interpreted to be a product-by-process, since the spraying results in the NiFe LDH and Song teaches the NiFe LDH, Song teaches this product) … .
The preamble phrase “for anion exchange membrane” is a statement that recites purpose or intended use. See MPEP § 2111.02(II). Because the cited prior art teaches the structural limitations of the claim, the prior art is also structurally capable of performing the claimed functions. See id.
II. Loading – Dai
Song is silent on wherein a loading amount of the layered double hydroxide per one surface of the nickel metal is 2.0-4.0 mg/cm2.
However, Song teaches a loading of 1 mg/cm2. Song p. 5, left col.
Dai teaches that an NiFe LDH loading of 8 mg/cm2 is a suitable loading to catalyze the oxygen evolution reaction. Dai [0023], [0091]-[0092], fig. 5.
A person would recognize then that Song’s 1 mg/cm2 would form the low end of a range while Dai’s 8 mg/cm2 would form the high end of a range forming a range of 1-8 mg/cm2.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s electrode with a loading range of 1-8 mg/cm2 to yield the predictable result of having a suitable range to catalyze the oxygen evolution reaction with.
2. The oxidization electrode for anion exchange membrane water electrolysis according to claim 1, wherein a weight ratio of nickel/iron in the layered double hydroxide is 15/85 to 85/15 (weight ratio of Ni:Fe of 3:1). Song p. 7 right col.
3. The oxidization electrode for anion exchange membrane water electrolysis according to claim 1, wherein the layered double hydroxide is produced by a bottom-up method comprising reacting an alkaline aqueous solution and an aqueous metal solution containing a nickel source an an iron source in an aqueous formamide solution (since this is an apparatus claim this limitation is interpreted to be a product-by-process, since the claimed method results in the NiFe LDH and the prior art teaches the NiFe LDH, the prior art teaches this product).
Claims 4-5 are rejected under 35 U.S.C. § 103 as being unpatentable over Song in view of Dai as applied to claim 1 previously and further in view of Xu et al., W.O. Int’l Pub. No. 2020/127693 A1 [hereinafter Xu].
4-5. Song is silent on (claim 4) the oxidization electrode for anion exchange membrane water electrolysis according to claim 1, wherein: a thickness of the nickel metal is 150 to 350 µm and (claim 5) the oxidization electrode for anion exchange membrane water electrolysis according to claim 1, wherein: the nickel metal has a linear pore density of 50 to 200 PPI.
However, Xu teaches that a nickel foam of 0.3 mm thickness and 110 pores per inch is a suitable base for an electrode. Xu abstract, p. 11 ll. 11-27.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s thickness and linear pore density to be Xu’s 0.3 mm and 110 pores per inch to yield the predictable result of having suitable parameters for a nickel base for an electrode.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Song fails to teach the amended production method of spraying. Remarks p. 10.
The Examiner respectfully submits that these methods are product-by-processes with Song teaching the final product and thus does not need to teach the method.
The Examiner has considered Applicant’s argument that Song and Xu do not teach claim 3’s method which results in a “dense adhesion and smooth surface morphology” that Song and Xu cannot teach. Remarks p. 11.
The Examiner respectfully submits that “[t]he arguments of counsel cannot take the place of evidence in the record. … Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results … .” MPEP § 716.01(c)(II).
Since there is no evidence on record of this difference, the prima facie case that the prior art’s apparatus teaches the claimed apparatus still stands.
The Examiner has considered Applicant’s argument that Xu does not teach a monolayered double hydroxide. Remarks pp. 11-12.
The Examiner respectfully submits that Song teaches this and thus Xu does not have to.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794
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