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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4, in the reply filed on 28 August 2025 is acknowledged. The traversal is on the grounds that a search of the catalyst of claim 1 would necessarily include the various aspects of all pending claims, and therefore there is no search burden. This is not found persuasive because there may be multiple ways to synthesize the catalyst of invention I, and because the method of invention II need not produce a catalyst with the features of invention I, including the claimed particle size and thickness of the carbon coating. It is further noted that, as recited, claim 5 does not contain all the limitations of claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 28 August 2025.
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 applicant regards as his invention.
Claims 3 and 4 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 3 recites “a molar ratio of CoMnNi of the alloy oxide core to C of carbon layer is 90:10 to 60:40”. However, it is unclear how to calculate this ratio. In particular, it is unclear if the claim requires the combined moles of cobalt, manganese and nickel (the total moles of metal atoms) to be compared to the moles of carbon or if it requires the number of moles of a CoMnNi unit to be compared to moles of carbon. It is also unclear if the non-CoMnNi metal atoms for the quaternary and quinary alloys allowed in claim 2 are to be included in this ratio or not, or if the further limitations of claim 3 do not apply when the alloy selected in claim 2 is not CoMnNi, but is instead a quaternary or quinary alloy. For the purposes of further examination, any of these interpretations may be used.
Claim 4 places a limitation of the surface area of “the catalyst according to claim 1” but then proceeds to recite a value that can only reasonably be interpreted as the surface area of a single particle, while the catalyst will be composed of many particles. Furthermore, because claim 1 allows the catalyst to comprise more than the particles recited in cited in claim 1, it is unclear how to calculate the values recited in the claim when the catalyst has other components, as allowed by claim 1.
It is noted that page 8, lines 2-3 support interpreting the claimed surface areas as averages per particle, but no method is provided to guide how this number was arrived at. Another possibility is that the limitation is met if any of the catalyst particles of claim 1 meet the criteria of claim 4.
It is common in the art to report BET surface areas calculated on m2/gram basis, no such measurement is referenced in the specification, and one could also calculate the surface are geometrically based on particle shapes. For the purposes of further examination, any of the above interpretations may be used.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiang et al. (ACS Appl. Nano Mater. 2020, 3, 7119−7129).
Regarding claim 1, Jiang discloses a catalyst used for oxygen evolution reaction/oxygen reduction reaction (catalytic activity for the oxygen reduction reaction (ORR) [and] oxygen evolution reaction (OER); abstract), comprising: an alloy oxide core (an alloyed FeCoNi core covered with a thin layer of spinel oxides; abstract); and a carbon layer coated on a surface of the alloy oxide core (encapsulated in nitrogen-doped graphene layers; abstract), wherein the alloy oxide is a ternary to quinary alloy oxide comprising a transition metal element (FeCoNi is a ternary alloy comprising a transition metal element and the oxide layer makes it an alloy oxide). Jiang further discloses in Figure 1c and 1d (copied and annotated with extra scale bars below) the alloy oxide core having a particle size of ~35 nm and the carbon coating having a thickness of ~3 nm, each of which fall in the instantly claimed ranges.
PNG
media_image1.png
340
677
media_image1.png
Greyscale
Figure 1c and 1d of Jiang (HRTEM image of FeCoNiOx@NG) with red scale bars added.
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.
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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (ACS Appl. Nano Mater. 2020, 3, 7119−7129), as applied to claim 1 above, and further in view of Gupta et al. (ACS Catal. 2017, 7, 8386−8393), and with respect to claim 3, as evidenced by Massa ("Crystal Structure Determination". English Edition. New York: Springer, 2000), DeGruyter (Table 8.1. Properties of Graphite and Other Materials in "Nanocarbon-Inorganic Hybrids - Next Generation Composites for Sustainable Energy Applications." De Gruyter, 2014), and Long et al. (Frontiers Mat., 2020, 7, 537812).
Regarding claim 2, Jiang teaches the catalyst of claim 1, where the alloy is represented by the formula FeCoNi, but Jiang does not teach the ternary to quinary alloy oxide being represented by any of the formulas (I), (II), or (III) recited in claim 3.
However, Gupta teaches FeCoNiMn (CoMnNiFe where the molar ratio is 1:1:1:1) ternary alloy/oxides encased in a carbon shell for catalyzing oxygen evolution and oxygen reduction reactions (abstract and Section 3.1). Gupta further teaches that the introduction of Mn into FeCoNi-nanocarbon composite catalysts increases the catalyst stability (the combination of Mn and FeCoNi seems to generate a synergistic effect of enhancing catalyst stability; p. 8389, column 1, paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the catalysts of Jiang to include a quaternary alloy oxide of the formula CoMnNiFe where the molar ratio is 1:1:1:1, as taught by Gupta. One of ordinary skill would have been motivated to do so in order to increase catalyst stability, as taught by Gupta.
Regarding claim 3, modified Jiang teaches the catalyst of claim 2, and under the interpretation where the limitations of claim 3 only apply to alloy oxide cores of CoMnNi (Formula I of claim 2), claim 3 puts no further limitations on the alloys of CoMnNiFe, such as that taught by modified Jiang; the limitations of claim 3 are thus all taught by modified Jiang.
Under an alternate interpretation where claim 3 limits the ratio of all metal atoms in the alloy to the carbon atoms of the shell, while Jiang does not explicitly teach the molar ratio of alloy to carbon in the catalyst particles, this ratio can be estimated from the data provided.
In particular, Jiang shows an alloy oxide core ~35 nm in diameter (~17.5 nm in radius; Fig. 1c), which will have a volume of ~22,500 nm3. Jiang further teaches the alloy core displaying an XRD (111) 2θ peak at 43.60°, which, given the use of X-rays at 1.54059 Å (Section 2.4), corresponds to a cubic lattice parameter, a = 0.359 nm, and a unit cell volume, a3, of 0.046 nm3.
s
i
n
2
θ
=
λ
2
4
a
2
h
2
+
k
2
+
l
2
(Massa, Table 3.3)
F
o
r
(
111
)
,
λ
=
1.54059
Å
,
2
θ
=
43.60
°
:
a
=
3
(
1.54059
Å
)
2
4
s
i
n
2
21.8
°
1
/
2
=
3.593
Å
=
0.359
n
m
The XRD data (Jiang, Fig. 4a) and this calculated unit cell parameter are consistent with the face-centered-lattice of a FeCoNi alloy described by Long (Fig. 3 and Table 4 (x=0)), and will contain 4 metal atoms, as evidenced by Massa (Fig 2.8). Therefore, the alloy particle contains ~2.0 million metal atoms.
The graphite layer is approximately 3 nm thick (Fig. 1d), and lies at an average diameter of ~19 nm; it will have a volume of approximately 13,600 nm3. From the density of graphite (2.1 g/cm3; DeGruyter), one can calculate that the shell will contain ~105 atoms of carbon per nm3:
2.1
g
C
c
m
3
1
c
m
10
7
n
m
3
1
m
o
l
C
12.011
g
C
6.022
x
10
23
a
t
o
m
C
1
m
o
l
C
= 105 atoms C/nm3
The entire carbon shell therefore contains approximately 1.4 million carbon atoms.
The molar ratio of metal atoms to carbon atoms in this particular particle taught by Jiang is therefore ~2:1.4, or ~60:40, which falls at the boundary of the instantly claimed range. It is also noted that beyond being an approximation, not all particles in the catalyst of modified Jiang will possess identical alloy particle size and shell thickness, and that natural variations in alloy core diameter, carbon shell thickness, and particle aspect ratios, as seen in Fig 1b, will cause variations in the metal:carbon ratio of the individual particles of the catalyst, including into the claimed range for slightly larger particles or thinner carbon shells.
It is also noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges of molar ratios merely represent an obvious variant and/or routine optimization of the values observed in the cited prior art and the limitations of claim 3 are obvious in view of modified Jiang.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (ACS Appl. Nano Mater. 2020, 3, 7119−7129), as applied to claim 1 above, and further in view of Bai et al. (ACS Appl. Nano Mater. 2021, 4, 12663−12671).
Regarding claim 4, Jiang teaches the catalyst of claim 1, and also teaches that catalysis occurs at the ternary alloy surface (p. 7126, column 2, paragraph 2).
Jiang does not explicitly teach the surface area of the individual particles comprising the catalyst (see Claim Rejections – 35 USC 112).
However, Bai teaches similar alloy nanoparticles coated in carbon (iron (Fe)−cobalt (Co)-based nanoparticles coated with a few layers of amorphous carbon shell; abstract) for oxygen evolution (abstract). Bai further teaches that the surface area can be tuned (reduces with increasing annealing temperature; p. 12666, column 1, paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the surface area of the particles taught by Jiang by routine experimentation according to the method taught by Bai, including into the claimed range of between 6,500 and 9,500 nm2. One of ordinary skill in the art would have been motivated to do so in order to control the activity of the catalyst by varying the surface area, as taught by Jiang.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rui et al. (Energy Fuels 2022, 36, 12816−12825; published 3 October 2022) discloses carbon-coated MnCoNi alloy/oxide catalysts for the oxygen evolution reaction and oxygen reduction reaction.
Sivakumar et al. (Mat. Chem. Phys. 2019, 229, 190–196) discloses nanostructured spinels composed of nickel, cobalt, and manganese ions and their bifunctional catalytic activity towards oxygen evolution and oxygen reduction reaction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738