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 .
Status of the Claims
This is a non-final Office action in response to Applicant’s amendments and Remarks filed on 05/26/2026. Claims 1, 3-11, and 13-22 are pending in the current Office action. Of these, claims 19-20 are withdrawn from consideration. Claims 1, 9, 11, 16, 19, and 22 were amended by Applicant.
Status of the Rejection
The objections to claims 11 and 22 are withdrawn in view of Applicant’s amendments.
The rejections of claims 16 and 22 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1, 3-11, 13-18, and 21-22 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
The provisional rejections of claims 9 and 16-17 on the grounds of non-statutory double patenting are withdrawn in view of Applicant’s amendments.
New grounds of rejection are established for claims 1, 3-11, 13-18, and 21-22.
Claim 3 is now rejected under 35 U.S.C. § 112(d), but would be allowable if rewritten in independent form including all limitations of the base claim and to comply with § 112.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 3, claim 3 recites the limitation “wherein the porogen comprises glycine, sulfosuccinic acid, or combinations thereof”. However, claim 1, from which claim 3 depends, has been amended to remove “glycine” (and combinations comprising glycine) from the Markush group. Therefore, claim 3, as currently drafted, inappropriately broadens the scope of claim 1.
A rejection under 35 U.S.C. § 112(d) is therefore appropriate.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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).
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); and
optionally an additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the catalyst ink comprises a porogen selected from the group consisting of sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Morioka further teaches that polyvinylpyrrolidone (PVP) (“polyvinylpyrrolidone” para. 76) and quaternary ammonium salts (“… octadecyltrimethylammonium chloride, beef tallow trimethylammonium chloride, dodecyltrimethylammonium chloride, coconut trimethylammonium chloride, hexadecyltrimethylammonium chloride, behenyltrimethylammonium [sic] chloride, coconut dimethylbenzylammonium chloride, tetradecyldimethylbenzylammonium chloride, octadecyldimethylbenzylammonium chloride, dioleyldimethylammonium chloride, l-hydroxyethyl-2-beef tallow imidazoline quaternary salt, … and perfluoroalkyl quaternary ammonium iodide” para. 74) may be suitably added to the catalyst ink as a surfactant (para. 72).
Because Morioka teaches catalyst inks for forming membrane electrode assemblies, Morioka 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 by adding polyvinylpyrrolidone (PVP). A person having ordinary skill in the art would have been motivated to make this modification because Morioka explicitly suggests adding a surfactant to the catalyst ink, and lists polyvinylpyrrolidone (PVP) as one of the options.
Furthermore, 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 catalyst ink of Morioka by adding one of more of the quaternary ammonium salts tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, or tetramethylammonium acetate, because these compounds are chemically analogous to the quaternary ammonium salts Morioka suggests adding to the catalyst ink as a surfactant. Use of a chemical compound closely related to a prior art compound has been held prima facie obvious (MPEP § 2144.09).
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, 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, 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, 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); and
optionally the additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the catalyst ink comprises a porogen selected from the group consisting of sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Morioka further teaches that polyvinylpyrrolidone (PVP) (“polyvinylpyrrolidone” para. 76) and quaternary ammonium salts (“… octadecyltrimethylammonium chloride, beef tallow trimethylammonium chloride, dodecyltrimethylammonium chloride, coconut trimethylammonium chloride, hexadecyltrimethylammonium chloride, behenyltrimethylammonium [sic] chloride, coconut dimethylbenzylammonium chloride, tetradecyldimethylbenzylammonium chloride, octadecyldimethylbenzylammonium chloride, dioleyldimethylammonium chloride, l-hydroxyethyl-2-beef tallow imidazoline quaternary salt, … and perfluoroalkyl quaternary ammonium iodide” para. 74) may be suitably added to the catalyst ink as a surfactant (para. 72).
Because Morioka teaches catalyst inks for forming membrane electrode assemblies, Morioka 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 by adding polyvinylpyrrolidone (PVP). A person having ordinary skill in the art would have been motivated to make this modification because Morioka explicitly suggests adding a surfactant to the catalyst ink, and lists polyvinylpyrrolidone (PVP) as one of the options.
Furthermore, 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 catalyst ink of Morioka by adding one of more of the quaternary ammonium salts tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, or tetramethylammonium acetate, because these compounds are chemically analogous to the quaternary ammonium salts Morioka suggests adding to the catalyst ink as a surfactant. Use of a chemical compound closely related to a prior art compound has been held prima facie obvious (MPEP § 2144.09).
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); and
optionally the second additive (“a fibrous material” paras. 56 and 66-69).
Morioka does not teach the second catalyst ink comprises a porogen selected from the group consisting of sorbitol, polyvinylpyrrolidone (PVP), polyacrylic acid (PAA), sulfosuccinic acid, tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, tetramethylammonium acetate, or combinations thereof.
However, Morioka further teaches that polyvinylpyrrolidone (PVP) (“polyvinylpyrrolidone” para. 76) and quaternary ammonium salts (“… octadecyltrimethylammonium chloride, beef tallow trimethylammonium chloride, dodecyltrimethylammonium chloride, coconut trimethylammonium chloride, hexadecyltrimethylammonium chloride, behenyltrimethylammonium [sic] chloride, coconut dimethylbenzylammonium chloride, tetradecyldimethylbenzylammonium chloride, octadecyldimethylbenzylammonium chloride, dioleyldimethylammonium chloride, l-hydroxyethyl-2-beef tallow imidazoline quaternary salt, … and perfluoroalkyl quaternary ammonium iodide” para. 74) may be suitably added to the catalyst ink as a surfactant (para. 72).
Because Morioka teaches catalyst inks for forming membrane electrode assemblies, Morioka 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 second catalyst ink of Morioka by adding polyvinylpyrrolidone (PVP). A person having ordinary skill in the art would have been motivated to make this modification because Morioka explicitly suggests adding a surfactant to the catalyst ink, and lists polyvinylpyrrolidone (PVP) as one of the options.
Furthermore, 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 one of more of the quaternary ammonium salts tetradecyltrimethylammonium bromide, tetramethylammonium bromide, tetradecyltrimethylammonium acetate, or tetramethylammonium acetate, because these compounds are chemically analogous to the quaternary ammonium salts Morioka suggests adding to the catalyst ink as a surfactant. Use of a chemical compound closely related to a prior art compound has been held prima facie obvious (MPEP § 2144.09).
Regarding claim 13, 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, 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, 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, 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), wherein the additive is introduced to the catalyst ink as a solution (“a solvent” paras. 56 and 70-71 and see below).
As currently drafted, the limitation “wherein the additive is introduced 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, 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, 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 as applied to claims 1 or 9 above, and further in view of Luo (CN 114836767 A).
Regarding claim 21, 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).
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, 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), wherein the additive is introduced as a solution in the catalyst ink (“a solvent” paras. 56 and 70-71 and see below).
As currently drafted, the limitation “wherein the additive is introduced as a solution in the catalyst ink” 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)).
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).
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(d) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, the prior art of record, alone or in combination, does not reasonably teach or render obvious the cumulative limitations of claim 3 when interpreted as “the porogen comprises sulfosuccinic acid”.
The closest prior art of record is considered to be Morioka (US Pat. Pub. 2021/0226223 A1), Oloman (US Pat. Pub. 2011/0171555 A1), and Bashyam (US Pat. Pub. 2021/0126262 A1). Choi (US Pat. Pub. 2016/0272515 A1) is considered to provide evidence as to the level of knowledge a person having ordinary skill in the art would have had at the effective filing date of the instant application.
The teachings of Morioka are detailed in the rejection of claim 1 under 35 U.S.C. § 103, above. Morioka does not teach the catalyst ink comprises sulfosuccinic acid. While Morioka does suggest using dialkyl sulfosuccinates as surfactants in the catalyst ink, these compounds are chemically distinct from the claimed sulfosuccinic acid, and a person having ordinary skill in the art would not have reasonably been expected sulfosuccinic acid to have similar chemical properties to alkyl sulfosuccinates. Specifically, dialkyl sulfosuccinates comprise ester groups which are not nucleophilic and therefore, as described in Morioka, are known to serve as surfactants. In contrast, as evidenced by e.g., Choi para. 100, sulfosuccinic acid comprises carboxylic acid groups which are nucleophilic, and is therefore known to serve as a cross-linking agent, but not a surfactant or porogen.
Thus, Morioka cannot reasonably be considered to teach or render obvious a composition comprising sulfosuccinic acid as required by the claim.
Oloman and Bashyam each teach porogens suitable for use in catalyst inks, such as the one used in Morioka. However, neither Oloman nor Bashyam suggest the use of sulfosuccinic acid. Additional details on the teachings of Oloman and Bashyam may be found in the Office action dated 02/25/2026.
No particular suggestion or motivation to add sulfosuccinic acid to a catalyst ink for use in a membrane electrode assembly (MEA), whether as a porogen or otherwise, could be identified in the prior art.
Therefore, the prior art, alone or in combination, does not reasonably teach or render obvious a catalyst ink as recited in claim 1, wherein the catalyst ink comprises sulfosuccinic acid, as recited in claim 3. Therefore, if amended to remove the limitations “glycine” and “or combinations thereof”, the cumulative limitations of claim 3 would be patentably distinguished over the prior art of record, and would be allowable if amended in independent form including all limitations of the base claim.
Response to Arguments
Applicant’s arguments, see Remarks p. 8, filed 05/26/2026, regarding the objections to claims 11 and 22 have been fully considered and are persuasive. The objections to claims 11 and 22 have been withdrawn.
Applicant’s arguments, see Remarks p. 8-9, filed 05/26/2026, regarding the rejections of claims 16 and 22 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 9-12, filed 05/26/2026, regarding the rejections of claims 1, 3-11, 13-18, and 21-22 under 35 U.S.C. § 103 have been fully considered and are persuasive in part. The rejections of claims 1, 3-11, 13-18, and 21-22 under 35 U.S.C. § 103 have been withdrawn.
Applicant’s arguments, see Remarks p. 12-13, filed 05/26/2026, 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. 10 that, while Morioka teaches the catalyst ink composition may comprise polyvinylpyrrolidone (PVP), esters based on sorbitol, and esters based on sulfosuccinic acid, because Morioka does not teach these compounds serve as porogens, but rather serve as surfactants, Morioka does not read on the limitation “wherein the porogen is selected from …” in claims 1, 3, 9, and 11.
Examiner’s Response #1
Examiner agrees in part. As described in the reasons for indicating allowable subject matter, the sulfosuccinate esters described by Morioka cannot reasonably be considered to teach or render obvious the use of sulfosuccinic acid.
However, Applicant’s argument that Morioka’s disclosure teaches these compounds serve as surfactants rather than porogens, and that therefore Morioka does not teach or render obvious the limitations “wherein the porogen is selected from …” is not persuasive.
At issue is the broadest reasonable interpretation of claims 1, 9, and 11. Specifically, whether the recitation “a porogen …” further limits the compositions recited in claims 1, 9, and 11 beyond the inclusion of the compounds recited in the Markush group “the porogen …”.
Under their broadest reasonable interpretation, composition and apparatus claims are limited by the structure required by the claims. When claim limitations are drawn to a functional limitation, such limitations limit the claim such that the claimed composition or apparatus is capable of performing the recited function (MPEP § 2114).
In the instant case, Morioka renders obvious a catalyst ink composition having each of the structural limitations recited in claims 1, 9, and 11. Compositions that are physically the same must, necessarily, have the same properties (MPEP § 2112.01(II)). It is therefore considered that the polyvinylpyrrolidone (PVP) taught by Morioka is necessarily capable of serving as a porogen, because the instant application explicitly teaches PVP serves as a porogen when used in a catalyst ink comprising the components recited in claims 1, 9, and 11. Furthermore, it is considered that the quaternary ammonium salts taught by Morioka are capable of serving as porogens, because the instant application indicates that compounds of this class serve as porogens.
Therefore, Applicant’s argument is not persuasive.
Conclusion
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
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