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 .
Election/Restriction
Applicant’s affirmation of the telephonic election of the invention of group I on 10/07/2025 in the Remarks filed on 01/23/2026 is acknowledged.
Status of the Claims
This is a final Office action in response to Applicant’s amendments and Remarks filed on 01/23/2026. Claims 1, 3-11, and 13-22 are pending in the current Office action. Of these, claims 19-20 are withdrawn from consideration. Claims 2 and 12 were cancelled by Applicant. Claims 1, 3, 8-11, 16, and 19 were amended by Applicant. Claims 21 and 22 are new claims.
Status of the Rejection
The objection to claim 9 is withdrawn in view of Applicant’s amendments.
The rejections of claims 13-14 and 16-17 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-18 under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
New rejections are necessitated by Applicant’s amendments.
Claim Objections
Claims 11 and 22 are objected to because of the following informalities:
Claim 11 line 12 recites “the porogen”, but should recite “the second porogen” to correct the typographical error;
Claim 22 line 1 recites “the catalyst of claim 9;”, but should recite “the catalyst coated membrane of claim 9”, because claim 9 is drawn to a catalyst coated membrane.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action i.e., 35 U.S.C. § 112(b), can be found in a prior Office action.
Claims 16 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 16, claim 16 recites the limitation “the additive comprises a solution of an electron conductive polymer” in line 2, but also recites the limitation “the catalyst layer comprises … optionally an additive” in claim 9 lines 3-7). It is unclear, in light of the specification, how this limitation is intended to be interpreted. Specifically, the plain language of the claim requires the additive in the catalyst layer to comprise a solvent. However, based on the specification, it appears that the solvent is removed during conversion of the catalyst ink to the catalyst layer (see e.g., paras. 58-62). It is therefore unclear if the claim is intended to indicate the additive is added to the catalyst ink in the form of a solution, or if some other meaning was intended.
Claim 16 is therefore indefinite.
Regarding claim 22, claim 22 recites the limitation “the additive comprises a solution of poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate)” in lines 2-3, but also recites the limitation “the catalyst layer comprises … optionally an additive” in claim 9 lines 3-7). It is unclear, in light of the specification, how this limitation is intended to be interpreted. Specifically, the plain language of the claim requires the additive in the catalyst layer to comprise a solvent. However, based on the specification, it appears that the solvent is removed during conversion of the catalyst ink to the catalyst layer (see e.g., paras. 58-62). It is therefore unclear if the claim is intended to indicate the additive is added to the catalyst ink in the form of a solution, or if some other meaning was intended.
Claim 22 is therefore indefinite.
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 1, 4-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Morioka (US Pat. Pub. 2021/0226223 A1) in view of Bashyam (US Pat. Pub. 2021/0126262 A1).
Regarding claim 1, Morioka teaches a catalyst ink (“catalyst ink” para. 56) comprising:
a catalyst (“catalyst support particles” paras. 56 and 58-60);
an ionomer (“a polyelectrolyte” paras. 56-57);
a solvent (“a solvent” paras. 56 and 70-71);
a porogen soluble in the solvent (“a pore-forming agent” paras. 82-84); and
optionally an additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Bashyam teaches a catalyst ink for forming a membrane electrode assembly (see e.g., para. 49), the catalyst ink comprising co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO) or tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO) (“a block co-polymer comprising poly(ethylene oxide) and polypropylene oxide) … the PEO-PPO block co-polymer” para. 22, see also para. 24) which improves cohesion and adhesion of the catalyst layer formed by the catalyst ink (“the PEO-PPO block co-polymer improves cohesion and adhesion of the catalyst layer …” para. 22).
Because Morioka and Bashyam each teach catalyst inks for forming membrane electrode assemblies, Morioka and Bashyam are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka by adding PEO-PPO or PPO-PEO-PPO, as taught by Bashyam. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving the cohesion and adhesion of the catalyst layer formed by the catalyst ink, as taught by Bashyam. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 4, Morioka further teaches the catalyst comprises iridium, platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, copper, nickel, molybdenum, iron, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 5, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the catalyst comprises platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, nickel, molybdenum, iron, copper, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 6, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the solvent comprises water (para. 71), alcohol, acetone, methyl ethyl ketone, ether, tetrahydrofuran, dimethylacetamide, dimethylformamide, or combinations thereof (para. 70).
Regarding claim 7, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer (“Any polyelectrolyte, as long as it has proton conductivity, … such as a fluorinated polyelectrolyte, or a hydrocarbon polyelectrolyte. …” para. 57).
Regarding claim 8, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the additive is present and comprises a solution of (see below) an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67).
Morioka teaches the catalyst ink comprises a solvent (“a solvent” paras. 56 and 70-71), which forms a solution with the electron conductive polymer (see e.g., para. 100). The instant specification indicates the solvent used to form the solution of electron conductive polymer is the same as the solvent used to form the catalyst ink (see paras. 59-60). Thus, Morioka teaches the catalyst ink comprises “a solution of an electron conductive polymer”. In other words, the limitation “a solution of an electron conductive polymer” limits the method by which the electron conductive polymer is added to the catalyst ink, but does not limit the composition of the catalyst ink itself (see MPEP § 2113).
Regarding claim 9, Morioka teaches a catalyst coated membrane (“fuel cell membrane electrode assembly (which may also be merely termed a membrane electrode assembly hereinafter) 11” para. 29 and Fig. 1) comprising:
a membrane (“polyelectrolyte film 1” Id.); and
a layer of catalyst on a first surface of the membrane (“electrocatalyst layers 2” Id.), wherein the catalyst layer comprises:
a catalyst (“catalyst support particles” para. 30);
an ionomer (“a polyelectrolyte” Id.); and
optionally an additive (“a fibrous material” Id.);
wherein the catalyst layer is formed from a catalyst ink (paras. 48-49) comprising:
the catalyst (“catalyst support particles” paras. 56 and 58-60);
the ionomer (“a polyelectrolyte” paras. 56-57);
a solvent (“a solvent” paras. 56 and 70-71);
a porogen soluble in the solvent (“a pore-forming agent” paras. 82-84); and
optionally the additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Bashyam teaches a catalyst ink for forming a membrane electrode assembly (see e.g., para. 49), the catalyst ink comprising co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO) or tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO) (“a block co-polymer comprising poly(ethylene oxide) and polypropylene oxide) … the PEO-PPO block co-polymer” para. 22, see also para. 24) which improves cohesion and adhesion of the catalyst layer formed by the catalyst ink (“the PEO-PPO block co-polymer improves cohesion and adhesion of the catalyst layer …” para. 22).
Because Morioka and Bashyam each teach catalyst inks for forming membrane electrode assemblies, Morioka and Bashyam are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka by adding PEO-PPO or PPO-PEO-PPO, as taught by Bashyam. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving the cohesion and adhesion of the catalyst layer formed by the catalyst ink, as taught by Bashyam. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 10, Morioka further teaches a second layer of catalyst on a second surface of the membrane (“electrocatalyst layers … 3” para. 29 and Fig. 1, see also para. 51).
Regarding claim 11, Morioka further teaches the second catalyst layer on the second surface comprises:
a second catalyst (“catalyst support particles” para. 30);
a second ionomer (“a polyelectrolyte” Id.); and
optionally a second additive (“a fibrous material” Id.);
wherein the second catalyst layer is formed from a second catalyst ink (paras. 48-49) comprising:
the second catalyst (“catalyst support particles” paras. 56 and 58-60);
the second ionomer (“a polyelectrolyte” paras. 56-57);
a second solvent (“a solvent” paras. 56 and 70-71);
a second porogen soluble in the second solvent (“a pore-forming agent” paras. 82-84); and
optionally the second additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the second porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the second catalyst ink of Morioka by adding PEO-PPO or PPO-PEO-PPO, as taught by Bashyam, for the same reasons a person having ordinary skill in the art would have been motivated to modify the catalyst ink of Morioka enumerated in the rejection of claim 9.
Regarding claim 13, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the catalyst comprises iridium, platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, copper, nickel, molybdenum, iron, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 14, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the catalyst comprises platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, nickel, molybdenum, iron, copper, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 15, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the solvent comprises water (para. 71), alcohol, acetone, methyl ethyl ketone, ether, tetrahydrofuran, dimethylacetamide, dimethylformamide, or combinations thereof (para. 70).
Regarding claim 16, claim 16 has been interpreted as “wherein the additive is present and comprises an electron conductive polymer, and is added to the catalyst ink as a solution”.
Modified Morioka renders the limitations of claim 9 obvious, as described above.
Morioka further teaches the additive is present and comprises an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67), and is added to the catalyst ink as a solution (“a solvent” paras. 56 and 70-71 and see below).
As currently interpreted, the limitation “is added to the catalyst ink as a solution” limits the method by which the catalyst ink used to form the catalyst layer on the membrane is prepared, rather than the structure of the catalyst layer itself. I.e., the limitation is interpreted as a product-by-process limitation. For product-by-process limitations, the product is not limited by the recited steps, but only the structure implied by the recited steps (MPEP § 2113). In the instant case, the structure of the claimed product i.e., the catalyst layer of the coated membrane, is not expected to be materially altered whether the additive is added to the catalyst ink as a pre-formed solution, or whether the additive is added as a solid which then forms a solution in the solvent. I.e., absent evidence to the contrary, the order of addition of the additive is not considered to have a material effect on the composition of the catalyst ink, and therefore would not be expected to have a material effect on the catalyst layer produced therefrom (see also MPEP § 2144.04(IV)(C)).
Regarding claim 17, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer (“Any polyelectrolyte, as long as it has proton conductivity, … such as a fluorinated polyelectrolyte, or a hydrocarbon polyelectrolyte. …” para. 57).
Regarding claim 18, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the membrane comprises a proton-exchange membrane (para. 54).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Morioka in view of Bashyam as applied to claims 1 or 9 above, and further in view of Luo (CN 114836767 A).
Regarding claim 21, modified Morioka renders the limitations of claim 1 obvious, as described above.
Morioka further teaches the additive is present and comprises a solution of (see below) an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67).
Morioka teaches the catalyst ink comprises a solvent (“a solvent” paras. 56 and 70-71), which forms a solution with the electron conductive polymer (e.g., para. 100). The instant specification indicates the solvent used to form the solution of electron conductive polymer is the same as the solvent used to form the catalyst ink (see paras. 59-60). Thus, Morioka teaches the catalyst ink comprises “a solution of an electron conductive polymer”. In other words, the limitation “a solution of an electron conductive polymer” limits the method by which the electron conductive polymer is added to the catalyst ink, but does not limit the structure of the catalyst ink (see MPEP § 2113).
Modified Morioka does not teach the electron conductive polymer is poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate).
However, Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies (see e.g., abstract), the catalyst ink comprising comprising poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate) as an electron conducting polymer additive (“the proton-electron conductor is poly(3,4-ethylenedioxythiophene)-poly(styrenesulfonic acid), i.e., PEDOT-PSS” para. n0008), which provides the predictable benefit of conferring improved proton-transport properties to the formed catalyst layer, thereby reducing the amount of catalyst required (para. 48).
As Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies, Luo is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka, such that the electron conductive polymer is PEDOT-PSS, as taught by Luo. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefits of improving proton conductivity, thereby reducing the amount of catalyst required, as taught by Luo. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding claim 22, claim 22 has been interpreted as “the catalyst coated membrane of claim 9, wherein the additive is present and comprises an electron conductive polymer, and is added to the catalyst ink as a solution”.
Modified Morioka renders the limitations of claim 9 obvious, as described above.
Morioka further teaches the additive is present and comprises an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67), and is added to the catalyst ink as a solution (“a solvent” paras. 56 and 70-71 and see below).
As currently interpreted, the limitation “is added to the catalyst ink as a solution” limits the method by which the catalyst ink used to form the catalyst layer on the membrane is prepared, rather than the structure of the catalyst layer itself. I.e., the limitation is interpreted as a product-by-process limitation. For product-by-process limitations, the product is not limited by the recited steps, but only the structure implied by the recited steps (MPEP § 2113). In the instant case, the structure of the claimed product i.e., the catalyst layer of the coated membrane, is not expected to be materially altered whether the additive is added to the catalyst ink as a pre-formed solution, or whether the additive is added as a solid which then forms a solution in the solvent. I.e., absent evidence to the contrary, the order of addition of the additive is not considered to have a material effect on the composition of the catalyst ink, and therefore would not be expected to have a material effect on the catalyst layer produced therefrom (see also MPEP § 2144.04(IV)(C)).
Modified Morioka does not teach the electron conductive polymer is poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate).
However, Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies (see e.g., abstract), the catalyst ink comprising an additive (“proton-electron conductor” para. 11), the additive comprising poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate) as an electron conducting polymer (“the proton-electron conductor is poly(3,4-ethylenedioxythiophene)-poly(styrenesulfonic acid), i.e., PEDOT-PSS” para. n0008), which provides the predictable benefit of conferring improved proton-transport properties to the formed catalyst layer, thereby reducing the amount of catalyst required (para. 48).
As Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies, Luo is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka, such that the electron conductive polymer is PEDOT-PSS, as taught by Luo. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefits of improving proton conductivity, thereby reducing the amount of catalyst required, as taught by Luo. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claims 1, 3-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Morioka (US Pat. Pub. 2021/0226223 A1) in view of Oloman (US Pat. Pub. 2011/0171555 A1).
Regarding claim 1, Morioka teaches a catalyst ink (“catalyst ink” para. 56) comprising:
a catalyst (“catalyst support particles” paras. 56 and 58-60);
an ionomer (“a polyelectrolyte” paras. 56-57);
a solvent (“a solvent” paras. 56 and 70-71);
a porogen soluble in the solvent (“a pore-forming agent” paras. 82-84); and
optionally an additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Oloman teaches that glycine is suitable as a porogen (“pore formers (e.g. Glycine,” Table 1(b), excerpted below) used in a catalyst ink (“Anode face brush AgNO3 + Mn(NO3)2 + PTFE 30 T emulsion. Hold at 350° C., 40 mins. Catalyst precusor mixtures may include wetting agents (e.g Triton X100, Makon NF12) and/or pore formers” Id.) for the production of membrane electrode assemblies (see para. 33 and e.g., Fig. 2).
Because Morioka and Oloman each teach catalyst inks for forming membrane electrode assemblies, Morioka and Oloman are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka by using glycine as the porogen, as taught by Oloman. A person having ordinary skill in the art would have been motivated to make this modification because glycine is known to serve as a porogen in catalyst inks for membrane electrode assemblies, as taught by Oloman. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
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Excerpt of Oloman Table 1(b)
Regarding claim 3, modified Morioka further teaches, via Oloman, the porogen comprises glycine (“pore formers (e.g. Glycine,” Table 1(b)).
Regarding claim 4, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the catalyst comprises iridium, platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, copper, nickel, molybdenum, iron, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 5, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the catalyst comprises platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, nickel, molybdenum, iron, copper, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 6, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the solvent comprises water (para. 71), alcohol, acetone, methyl ethyl ketone, ether, tetrahydrofuran, dimethylacetamide, dimethylformamide, or combinations thereof (para. 70).
Regarding claim 7, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer (“Any polyelectrolyte, as long as it has proton conductivity, … such as a fluorinated polyelectrolyte, or a hydrocarbon polyelectrolyte. …” para. 57).
Regarding claim 8, modified Morioka renders the limitations of claim 1 obvious, as described above. Morioka further teaches the additive is present and comprises a solution of (see below) an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67).
Morioka teaches the catalyst ink comprises a solvent (“a solvent” paras. 56 and 70-71), which forms a solution with the electron conductive polymer (e.g., para. 100). The instant specification indicates the solvent used to form the solution of electron conductive polymer is the same as the solvent used to form the catalyst ink (see paras. 59-60). Thus, under the broadest reasonable interpretation, Morioka teaches the catalyst ink comprises “a solution of an electron conductive polymer”. In other words, the limitation “a solution of an electron conductive polymer” limits the method by which the electron conductive polymer is added to the catalyst ink, but does not limit the structure of the catalyst ink (see MPEP § 2113).
Regarding claim 9, Morioka teaches a catalyst coated membrane (“fuel cell membrane electrode assembly (which may also be merely termed a membrane electrode assembly hereinafter) 11” para. 29 and Fig. 1) comprising:
a membrane (“polyelectrolyte film 1” Id.); and
a layer of catalyst on a first surface of the membrane (“electrocatalyst layers 2” Id.), wherein the catalyst layer comprises:
a catalyst (“catalyst support particles” para. 30);
an ionomer (“a polyelectrolyte” Id.); and
optionally an additive (“a fibrous material” Id.);
wherein the catalyst layer is formed from a catalyst ink (paras. 48-49) comprising:
the catalyst (“catalyst support particles” paras. 56 and 58-60);
the ionomer (“a polyelectrolyte” paras. 56-57);
a solvent (“a solvent” paras. 56 and 70-71);
a porogen soluble in the solvent (“a pore-forming agent” paras. 82-84); and
optionally the additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Oloman teaches that glycine is suitable as a porogen (“pore formers (e.g. Glycine,” Table 1(b), excerpted above) used in a catalyst ink (“Anode face brush AgNO3 + Mn(NO3)2 + PTFE 30 T emulsion. Hold at 350° C., 40 mins. Catalyst precusor mixtures may include wetting agents (e.g Triton X100, Makon NF12) and/or pore formers” Id.) for producing membrane electrode assemblies (see para. 33 and e.g., Fig. 2).
Because Morioka and Oloman each teach catalyst inks for forming membrane electrode assemblies, Morioka and Oloman are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka by using glycine as the porogen, as taught by Oloman. A person having ordinary skill in the art would have been motivated to make this modification because glycine is known to serve as a porogen in catalyst inks for membrane electrode assemblies, as taught by Oloman. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding claim 10, Morioka further teaches a second layer of catalyst on a second surface of the membrane (“electrocatalyst layers … 3” para. 29 and Fig. 1, see also para. 51).
Regarding claim 11, Morioka further teaches the second catalyst layer on the second surface comprises:
a second catalyst (“catalyst support particles” para. 30);
a second ionomer (“a polyelectrolyte” Id.); and
optionally a second additive (“a fibrous material” Id.);
wherein the second catalyst layer is formed from a second catalyst ink (paras. 48-49) comprising:
the second catalyst (“catalyst support particles” paras. 56 and 58-60);
the second ionomer (“a polyelectrolyte” paras. 56-57);
a second solvent (“a solvent” paras. 56 and 70-71);
a second porogen soluble in the second solvent (“a pore-forming agent” paras. 82-84); and
optionally the second additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the second porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the second catalyst ink of Morioka by using glycine as the porogen, as taught by Oloman, for the same reasons a person having ordinary skill in the art would have been motivated to modify the catalyst ink of Morioka enumerated in the rejection of claim 9.
Regarding claim 13, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the catalyst comprises iridium, platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, copper, nickel, molybdenum, iron, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 14, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the catalyst comprises platinum, ruthenium, osmium, rhodium, palladium, vanadium, cobalt, gold, nickel, molybdenum, iron, copper, chromium, alloys thereof, or oxides thereof (para. 58).
Regarding claim 15, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the solvent comprises water (para. 71), alcohol, acetone, methyl ethyl ketone, ether, tetrahydrofuran, dimethylacetamide, dimethylformamide, or combinations thereof (para. 70).
Regarding claim 16, claim 16 has been interpreted as “wherein the additive is present and comprises an electron conductive polymer, and is added to the catalyst ink as a solution”.
Modified Morioka renders the limitations of claim 9 obvious, as described above.
Morioka further teaches the additive is present and comprises an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67), and is added to the catalyst ink as a solution (“a solvent” paras. 56 and 70-71 and see below).
As currently interpreted, the limitation “is added to the catalyst ink as a solution” limits the method by which the catalyst ink used to form the catalyst layer on the membrane is prepared, rather than the structure of the catalyst layer itself. I.e., the limitation is interpreted as a product-by-process limitation. For product-by-process limitations, the product is not limited by the recited steps, but only the structure implied by the recited steps (MPEP § 2113). In the instant case, the structure of the claimed product i.e., the catalyst layer of the coated membrane, is not expected to be materially altered whether the additive is added to the catalyst ink as a pre-formed solution, or whether the additive is added as a solid which then forms a solution in the solvent. I.e., absent evidence to the contrary, the order of addition of the additive is not considered to have a material effect on the composition of the catalyst ink, and therefore would not be expected to have a material effect on the catalyst layer produced therefrom (see also MPEP § 2144.04(IV)(C)).
Regarding claim 17, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer (“Any polyelectrolyte, as long as it has proton conductivity, … such as a fluorinated polyelectrolyte, or a hydrocarbon polyelectrolyte. …” para. 57).
Regarding claim 18, modified Morioka renders the limitations of claim 9 obvious, as described above. Morioka further teaches the membrane comprises a proton-exchange membrane (para. 54).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Morioka in view of Oloman as applied to claims 1 or 9 above, and further in view of Luo (CN 114836767 A).
Regarding claim 21, modified Morioka renders the limitations of claim 1 obvious, as described above.
Morioka further teaches the additive is present and comprises a solution of (see below) an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67).
Morioka teaches the catalyst ink comprises a solvent (“a solvent” paras. 56 and 70-71), which forms a solution with the electron conductive polymer (e.g., para. 100). The instant specification indicates the solvent used to form the solution of electron conductive polymer is the same as the solvent used to form the catalyst ink (see paras. 59-60). Thus, Morioka teaches the catalyst ink comprises “a solution of an electron conductive polymer”. In other words, the limitation “a solution of an electron conductive polymer” limits the method by which the electron conductive polymer is added to the catalyst ink, but does not limit the structure of the catalyst ink (see MPEP § 2113).
Modified Morioka does not teach the electron conductive polymer is poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate).
However, Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies (see e.g., abstract), the catalyst ink comprising an additive (“proton-electron conductor” para. 11), the additive comprising poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate) as an electron conducting polymer (“the proton-electron conductor is poly(3,4-ethylenedioxythiophene)-poly(styrenesulfonic acid), i.e., PEDOT-PSS” para. n0008), which provides the predictable benefit of conferring improved proton-transport properties to the formed catalyst layer, thereby reducing the amount of catalyst required (para. 48).
As Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies, Luo is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka, such that the electron conductive polymer is PEDOT-PSS, as taught by Luo. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefits of improving proton conductivity, thereby reducing the amount of catalyst required, as taught by Luo. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding claim 22, claim 22 has been interpreted as “the catalyst coated membrane of claim 9, wherein the additive is present and comprises an electron conductive polymer, and is added to the catalyst ink as a solution”.
Modified Morioka renders the limitations of claim 9 obvious, as described above.
Morioka further teaches the additive is present and comprises an electron conductive polymer (“The fibrous material may, for example … electrically conductive polymer nanofibers” para. 66, see also para. 67), and is added to the catalyst ink as a solution (“a solvent” paras. 56 and 70-71 and see below).
As currently interpreted, the limitation “is added to the catalyst ink as a solution” limits the method by which the catalyst ink used to form the catalyst layer on the membrane is prepared, rather than the structure of the catalyst layer itself. I.e., the limitation is interpreted as a product-by-process limitation. For product-by-process limitations, the product is not limited by the recited steps, but only the structure implied by the recited steps (MPEP § 2113). In the instant case, the structure of the claimed product i.e., the catalyst layer of the coated membrane, is not expected to be materially altered whether the additive is added to the catalyst ink as a pre-formed solution, or whether the additive is added as a solid which then forms a solution in the solvent. I.e., absent evidence to the contrary, the order of addition of the additive is not considered to have a material effect on the composition of the catalyst ink, and therefore would not be expected to have a material effect on the catalyst layer produced therefrom (see also MPEP § 2144.04(IV)(C)).
Modified Morioka does not teach the electron conductive polymer is poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate).
However, Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies (see e.g., abstract), the catalyst ink comprising an additive (“proton-electron conductor” para. 11), the additive comprising poly(3,4-ethylenedioxythiophene) and poly(styrenesulfonate) as an electron conducting polymer (“the proton-electron conductor is poly(3,4-ethylenedioxythiophene)-poly(styrenesulfonic acid), i.e., PEDOT-PSS” para. n0008), which provides the predictable benefit of conferring improved proton-transport properties to the formed catalyst layer, thereby reducing the amount of catalyst required (para. 48).
As Luo teaches a catalyst ink for forming catalyst layers in membrane electrode assemblies, Luo is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the catalyst ink of Morioka, such that the electron conductive polymer is PEDOT-PSS, as taught by Luo. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefits of improving proton conductivity, thereby reducing the amount of catalyst required, as taught by Luo. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9 and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 17/662675 (the reference application) as drafted in the amended claim set filed 11/19/2025 in view of Bashyam (US Pat. Pub. 2021/0126262 A1).
Regarding claim 9, claim 7 of the reference application recites a catalyst coated membrane (“a catalyst-coated ionically conductive membrane” claim 1 line 1) comprising:
a membrane (“an ionically conductive membrane” claim 1 line 3); and
a layer of catalyst on a first surface of the membrane (“an anode catalyst on a first surface of the ionically conductive membrane” claim 1 lines 4-5),
wherein the catalyst layer comprises (“wherein the anode catalyst coating layer comprises” claim 1 lines 7-8):
a catalyst (“an anode catalyst comprising iridium” claim 1 lines 8-9);
an ionomer (“a polymeric ionomer” claim 4 line 3); and
optionally an additive (“an electrically conductive polymer” claim 1 line 8).
Claim 7 of the reference claim does not recite the catalyst layer is formed from a catalyst ink comprising:
a catalyst;
an ionomer;
a solvent;
a porogen soluble in the solvent; and
optionally an additive;
wherein the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Bashyam teaches that application of a catalyst ink comprising a catalyst, an ionomer, a solvent, and a porogen soluble in the solvent (e.g., para. 13), wherein the porogen is PEO-PPO, PPO-PEO-PPO, or combinations thereof (e.g., para. 24), is a suitable method for forming a catalyst layer on a membrane (e.g., abstract and para. 13).
As Bashyam teaches a method for forming a catalyst layer on a membrane, Bashyam is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the invention recited in claim 7 of the reference application such that the catalyst layer is formed from a catalyst ink comprising a catalyst, an ionomer, a solvent, a porogen soluble in the solvent, and optionally an additive, wherein the porogen is PEO-PPO, PPO-PEO-PPO, or a combination thereof. A person having ordinary skill in the art would have been motivated to make this modification because Bashyam teaches applying an ink comprising the catalyst layer components is a suitable method for forming a catalyst layer on a membrane. Combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 7 of the reference application in view of Bashyam thus renders obvious all limitations of claim 9. A rejection on the grounds of non-statutory double patenting is therefore warranted.
Regarding claim 16, claim 7 of the reference application further recites the additive comprises an electron conductive polymer (“an electrically conductive polymer” claim 1 line 8).
Claim 7 of the reference application in view of Bashyam therefore renders obvious all the limitations of claim 16. A rejection on the grounds of non-statutory double patenting is therefore warranted.
Regarding claim 17, claim 7 of the reference application in view of Wilson renders obvious the limitations of claim 9, as described above.
Claim 7 of the reference application further recites the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer or a hydroxide- conductive polymeric ionomer, or combinations thereof (“the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer or a hydroxide- conductive polymeric ionomer, or combinations thereof” claim 7 lines 2-4).
Claim 7 of the reference application in view of Bashyam therefore renders obvious all the limitations of claim 17. A rejection on the grounds of non-statutory double patenting is therefore warranted.
Claims 9 and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 17/662675 (the reference application) as drafted in the amended claim set filed 11/19/2025 in view of Bashyam (US Pat. No. 5211984).
Regarding claim 9, claim 16 of the reference application recites a catalyst coated membrane (“a membrane electrode assembly” claim 10 line 1) comprising:
a membrane (“an ionically conductive membrane” claim 10 line 2); and
a layer of catalyst on a first surface of the membrane (“an anode catalyst coating layer on the first side of the ionically conductive membrane” claim 10 lines 8-9),
wherein the catalyst layer comprises (“wherein the anode catalyst coating layer comprises” claim 10 lines 17-18):
a catalyst (“an anode catalyst comprising iridium” claim 10 lines 19-20);
an ionomer (“a polymeric ionomer” claim 13 line 3); and
optionally an additive (“an electrically conductive polymer” claim 10 line 19).
Claim 16 of the reference claim does not recite the catalyst layer is formed from a catalyst ink comprising:
a catalyst;
an ionomer;
a solvent;
a porogen soluble in the solvent; and
optionally an additive;
wherein the porogen is selected from the group consisting of glycine, co-block-poly(ethylene oxide)-poly(propylene oxide) (PEO-PPO), tri-block-poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO), sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Bashyam teaches that application of a catalyst ink comprising a catalyst, an ionomer, a solvent, and a porogen soluble in the solvent (e.g., para. 13), wherein the porogen is PEO-PPO, PPO-PEO-PPO, or combinations thereof (e.g., para. 24), is a suitable method for forming a catalyst layer on a membrane (e.g., abstract and para. 13).
As Bashyam teaches a method for forming a catalyst layer on a membrane, Bashyam is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the invention recited in claim 7 of the reference application such that the catalyst layer is formed from a catalyst ink comprising a catalyst, an ionomer, a solvent, a porogen soluble in the solvent, and optionally an additive, wherein the porogen is PEO-PPO, PPO-PEO-PPO, or a combination thereof. A person having ordinary skill in the art would have been motivated to make this modification because Bashyam teaches applying an ink comprising the catalyst layer components is a suitable method for forming a catalyst layer on a membrane. Combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 16 of the reference application in view of Bashyam thus renders obvious all limitations of claim 9. A rejection on the grounds of non-statutory double patenting is therefore warranted.
Regarding claim 16, claim 16 of the reference application further recites the additive comprises an electron conductive polymer (“an electrically conductive polymer” claim 10 line 19).
Claim 16 of the reference application in view of Bashyam therefore renders obvious all the limitations of claim 16. A rejection on the grounds of non-statutory double patenting is therefore warranted.
Regarding claim 17, claim 16 of the reference application in view of Wilson renders obvious the limitations of claim 9, as described above.
Claim 16 of the reference application further recites the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer or a hydroxide- conductive polymeric ionomer, or combinations thereof (“the ionomer comprises a proton-conductive fluorinated or non-fluorinated polymeric ionomer or a hydroxide- conductive polymeric ionomer, or combinations thereof” claim 16 lines 2-3).
Claim 16 of the reference application in view of Bashyam therefore renders obvious all the limitations of claim 17. A rejection on the grounds of non-statutory double patenting is therefore warranted.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Remarks p. 8, filed 01/23/2026, regarding the rejections of claims 13-14 and 16-17 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 13-14 and 16-17 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 8-10, filed 01/23/2026, regarding the rejections of claims 1, 3-11, and 13-18 under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. The rejections of claims 1, 3-11, and 13-18 under 35 U.S.C. § 102(a)(1) have been withdrawn.
Applicant’s arguments, see Remarks p. 10-11, filed 01/23/2026, regarding the rejections of claims 9 and 16-17 on the grounds of non-statutory double patenting, have been fully considered and are persuasive. The rejections of claims 9 and 16-17 on the grounds of non-statutory double patenting have been withdrawn.
Applicant’s Argument #1
Applicant argues on p. 9-10 that Morioka does not teach the electrically conductive fibers of Morioka are added in the form of a solution, and that Morioka therefore does not read on the limitation “the additive comprises a solution of an electron conductive polymer” as recited in amended claims 8 and 16.
Examiner’s Response #1
Examiner respectfully disagrees. Claims 8 and 16 are drawn to a composition and a product, respectively. For claims drawn to a composition or product, the claims are only limited by the structure implied by the limitations, not the steps by which the structure is made (MPEP § 2113(I)).
In the instant case, the cumulative limitations of the claims in question limit the composition of the “catalyst ink”, such that it comprises “a catalyst”, “an ionomer”, “a solvent”, “a porogen soluble in the solvent” and “an additive”, wherein “the additive comprises a solution of an electron conductive polymer”. The instant specification indicates the solvent used to form the “solution of electron conductive polymer” is the as the “a solvent” (see paras. 59-60).
Therefore, in the absence of evidence to the contrary, it is considered the structure required by the cumulative limitations of claims 8 and 16 is “a catalyst”, “an ionomer”, “a solvent”, “a porogen soluble in the solvent” and “an electron conductive polymer”. I.e., requiring the electron conductive polymer to be added to the catalyst ink as a solution is not considered to change the implied structure of the catalyst ink or the catalyst coated membrane formed therefrom.
Applicant’s argument is therefore not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Latour (WO 2009/080920 A2) teaches PEDOT-PSS provides the predictable benefit of improving the proton conductivity of a catalyst layer in an MEA, and is considered to be interchangeable with Luo regarding the rejections of claims 21 and 22.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/ Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795