DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission on 05/11/2026 has been entered. Upon entering the submission, claims 1 and 13 have been amended. Claim 10 is cancelled. Claims 1-9, and 11-13 are pending, and under examination on the merits.
Response to Arguments/Amendments
Claim rejections under 35 U.S.C.§102/103
Applicant amended claims 1 and 13 by further limiting the preamble of the claimed method “for producing a metal oxide catalyst”. In addition, Applicant argued that “A key feature of Applicants' claimed invention is that the carbon-based spacer is removed during the heat-treating process after its role is completed. In other words, Applicants' claimed invention does not use the carbon-based spacer as a carbon support; specifically, it is intended to produce a pure metal oxide catalyst rather than a catalyst composite such as Pt/C.” Applicant further argued that “Song explicitly uses carbon as a "carbon support" or "carrier carbon." Song fails to teach, disclose, or suggest that the carbon support is a temporary support that is removed during Song's disclosed preparation method.”, wherein “Song” refers the cited `935 publication.
Applicant’s amendment and arguments have been fully considered, but not sufficient to overcome the rejection. Amended claim 1 does not define the method is intended to produce a pure metal oxide catalyst as being argued, but to produce a metal oxide catalyst. Therefore, the limitation Applicant argued is not part of claim 1. In addition, claim 1 does not define a step of “the carbon-based spacer is removed during the heat-treating process after its role is completed”. Instead, claim 1 defines a method for producing a metal oxide catalyst comprising: preparing a mixture by mixing a carbon-based spacer and a catalyst precursor; and heat-treating the mixture, wherein the heat-treating is carried out in a temperature range of 150 °C to 950 °C, see Applicant’s specification [0026].
In terms of the amendment to the preamble of claim 1 by adding “metal oxide”, the preamble does not define the metal oxide is a pure metal oxide, and therefore not exclude other component in the metal oxide catalyst. In addition, it should be noted that the phrase of claim 1 “A method for producing a metal oxide catalyst” is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017).
For the instant case, amended claim 1 is drawn to a method for producing a metal oxide catalyst comprising: preparing a mixture by mixing a carbon-based spacer and a catalyst precursor; and heat-treating the mixture; wherein, in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture. Claim 1 does not specifically define what a carbon-based spacer is. Instead, dependent claim 5 defines the carbon-based spacer comprises at least one of Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof. However, Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof is an inorganic carbon, and cannot be further carbonized because “carbonized” describes an organic material (like wood, food, or plant matter) that has been converted into carbon or charcoal according to Cambridge Dictionary. In addition, claim 1 does not define the temperature of “heat-treating the mixture”, nor how much of the carbonized carbon-based spacer is carbonized, and removed. Applicant’s specification [0026] describes the heat treatment may be performed in a temperature range of 150 °C to 950 °C. The examiner is required to give the claimed limitation of “heat-treating the mixture” broadest reasonable interpretation in light of the specification as in a temperature range of 150 °C to 950 °C. Under such heat-treating condition (i.e., a temperature range of 150 °C to 950 °C), amount of carbon from Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof containing in the mixture to form pores in the mixture is very limited.
On the other hand, the `935 publication (claim 2) teaches the carbon support is carbon block, activated carbon, carbon nanotubes, or graphene, which is also defined as the carbon-based spacer in Applicant’s claim 5. In terms of heat-treating temperature, the `935 publication (claim 1) teaches the heating temperature is at a range 100-800°C, and Examples 1-14 teaches the heating temperature is 200°C. The heating temperature of the `935 publication much overlapped with the heating temperature range of 150 °C to 950 °C disclosed in Applicant’s specification [0026]. Therefore, the added limitation of Applicant’s claim 1 “wherein, in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture” is an inherited or inevitable property, naturally flew from the method disclosed by the `935 publication. Therefore, the rejections of 102/103 are maintained.
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 1-9, and 11-13 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 pre-AIA the applicant regards as the invention.
Specifically, claim 1 contains a phrase “in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture”, wherein the term “heat-treating” is defined by a functional language “the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture”. By definition of Cambridge Dictionary, “carbonized” describes an organic material (like wood, food, or plant matter) that has been converted into carbon or charcoal according to Cambridge Dictionary. However, an organic material is not cited om claim 1. Applicant’s claim 5 defines the carbon-based spacer comprises at least one of Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof. Applicant’s specification [0075] describes Vulcan carbon was used as a carbon-based spacer. According to Google search, Vulcan carbon is a type of carbon black, called Vulcan XC 72. However, Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof is an inorganic carbon, and cannot be further carbonized in light of the definition of “carbonized”.
In addition, claim 1 does not define “heat-treating”. Applicant’s specification [0026] describes the heat treatment may be performed in a temperature range of 150 °C to 950 °C. The examiner is required to give the claimed limitation of “heat-treating the mixture” a broadest reasonable interpretation in light of the specification as in a heating temperature range of 150 °C to 950 °C. However, under such a heat-treating condition (e.g., a temperature range of 150 °C), amount of carbon from Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof in the mixture to form pores is very limited. Applicant’s specification [0076] describes the solvent in the mixture of a carbon-based spacer and a catalyst precursor was subjected to heat treatment at 400 °C in a furnace, without disclosing the carbon-based spacer was carbonized. Therefore, it is not clear how the carbon is removed from the mixture in the claimed process.
The use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). See MPEP§2173.05(g). One skilled in the art does not fully appreciate the entire scope of the term “heat-treating” since one skilled in the art would have not known how to carry out the step of carbonizing the carbon-based spacer to remove the carbon contained in the mixture to form pores in the mixture. Metes and bounds of the claim is not clear. Therefore, claim 1 is indefinite. Claims 2-9, and 11-13 depending on claim 1 are rejected accordingly.
Claim Rejections - 35 USC § 102 (revised)
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 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.
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.
Claims 1-9, 10-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chinese Patent Application Publication No. CN105355935A (“the `935 publication”) to Song et al.
Applicant’s claim 1 is drawn to a method for producing a metal oxide catalyst comprising: preparing a mixture by mixing a carbon-based spacer and a catalyst precursor; and heat-treating the mixture wherein, in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture.
Claim interpretation: The preamble of claim 1 does not define the metal oxide is a pure metal oxide, and therefore not exclude other component in the metal oxide catalyst. In addition, it should be noted that the phrase “A method for producing a metal oxide catalyst” is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017).
The `935 publication [0013] discloses a method for preparing a noble metal electrocatalyst comprising mixing a carbon support, an alkaline substance, and an aqueous solution of a noble metal salt, ultrasonically dispersing the mixture to obtain a suspension; refluxing the mixture at 50-200 °C for more than 0.5 hour, removing the supernatant; adding a reducing agent to obtain a precipitate, filtering the mixture, washing the mixture to neutrality; and heat treating the mixture at 100-800 °C for 0.5-5 hours to obtain the catalyst. In addition, the `935 publication [0021-0023] discloses the carbon carrier or support (i.e., carbon-based spacer) is one or a mixture of two or more of carbon black, activated carbon, carbon nanotubes, carbon fibers, and graphene; the alkaline substance is one or a mixture of two or more of potassium hydroxide, sodium hydroxide, lithium hydroxide, beryllium hydroxide, magnesium hydroxide, strontium hydroxide, calcium hydroxide, barium hydroxide, ammonia, and urea; and the precious metal salt is one selected from the group consisting of chloroplatinic acid, chloroplatinous acid, potassium chloroplatinate, potassium chloroplatinite, sodium chloroplatinate, sodium chloroplatinite, ammonium chloroplatinate, ammonium chloroplatinite, ruthenium trichloride, chlororuthenic acid, potassium chlororuthenate, sodium chlororuthenate, ammonium chlororuthenate, ammonium chlororuthenate, rhodium trichloride, chlororhodic acid, potassium chlororhodate, sodium chlororhodate, ammonium chlororhodate, palladium dichloride, potassium chloropalladate, sodium chloropalladate, ammonium chloropalladate, potassium chloropalladate, sodium chloropalladate, ammonium chloropalladate, iridium tetrachloride, chloroiridic acid, sodium chloroiridate, potassium chloroiridate, ammonium chloroiridate, gold trichloride, chloroauric acid, sodium chloroaurate, potassium chloroaurate, and ammonium chloroaurate, or a mixture of two or more thereof. The `935 publication [0031-0058] discloses specific methods for preparing a noble metal electrocatalysts in Examples 1-14. The method comprising preparing a mixture by mixing a carbon-based spacer (i.e., carbon nanotubes, or graphene) and a catalyst precursor (i.e., noble metal of chloroplatinic acid or ruthenium trichloride); and heat-treating the mixture at 200°C or 800°C under inner atmosphere.
Claim 1 does not define the temperature of “heat-treating the mixture”, nor how much of the carbonized carbon-based spacer is carbonized, and removed. Applicant’s specification [0026] describes the heat treatment may be performed in a temperature range of 150 °C to 950 °C. The examiner is required to give the claimed limitation of “heat-treating the mixture” broadest reasonable interpretation in light of the specification as in a temperature range of 150 °C to 950 °C. In terms of the carbon-based spacer, Applicant’s claim 5 defines the carbon-based spacer comprises at least one of Vulcan carbon, Ketjen black, carbon nanotube, carbon black, reduced graphene oxide, graphene oxide, or any combination thereof. Under such heat-treating condition, the degree of the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture could be very minimum, as long as some amount of the carbon-based spacer is carbonized to remove the carbon contained in the mixture because the heating temperature is not specifically defined in the claims. On the other hand, the `935 publication (claim 2) teaches the carbon support is carbon block, activated carbon, carbon nanotubes, or graphene, which is also defined as the carbon-based spacer in Applicant’s claim 5. In terms of heat-treating temperature, the `935 publication (claim 1) teaches the heating temperature is at a range 100-800°C. Examples 1-8 and 10-14 teach the heating temperature is 200°C. Example 9 teaches using carbon nanotube as a carbon-based spacer, a mixture of chloroplatinic acid and chloropalladic acid as a catalyst precursor, ammonia water at 75 C to form a precipitate, which was reduced and washed with water and heat-treating the mixture at 800°C. The heating temperature of the `935 publication much overlapped with the heating temperature range of 150 °C to 950 °C disclosed in Applicant’s specification [0026]. Therefore, the limitation “wherein, in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture” is an inherited or inevitable property, naturally flew from the method disclosed by the `935 publication. Therefore, the `935 publication anticipates claims 1-3, 5-8, and 11.
In terms of claim 4, wherein the carbon-based spacer forms a gap between the catalyst precursors, it is an inherited property of the preparation method disclosed by the `935 publication.
In terms of claim 9, wherein in preparing the mixture, the mixture is mixed in 100 parts by weight of the catalyst precursor and an amount of about 10 to 10,000 parts by weight of the carbon-based spacer, Example 2 of the `935 publication teaches mixing 25 mg of carbon nanotube (carbon-based spacer) with 19.225 ml of 20 mM chloroplatinic acid (Mw=409.81). A solution of 19.225 ml of 20 mM chloroplatinic acid contains 157.57 mg of chloroplatinic acid [0.019225Lx(20 mmole/L)x409.81 mg/mmole=157.57 mg]. Therefore, a mixture of Example 2 contains 100 parts by weight of the catalyst precursor (chloroplatinic acid) and 15.87 parts by weight of the carbon-based spacer (carbon nanotube), which reads on claim 9.
In terms of claim 13, wherein the specific surface area of a catalyst is in the range of 10 to 100 m2/g, the `935 publication [0031-0058] discloses specific methods for preparing a noble metal electrocatalysts in Examples 1-14. The method comprising preparing a mixture by mixing a carbon-based spacer (i.e., carbon nanotubes, or graphene) and a catalyst precursor (i.e., noble metal of chloroplatinic acid or ruthenium trichloride); and heat-treating the mixture at 200°C or 800°C under inner atmosphere. Because the method of preparing the catalyst disclosed by the `935 publication reads on Applicant’s claim 1, the resulting catalyst prepared by the method of the `935 publication inherently would also have the specific surface area in the range of 10 to 100 m2/g.
Claim Rejections - 35 USC § 103 (revised)
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Chinese Patent Application Publication No. CN105355935A (“the `935 publication”) to Song et al. in view of US20140221192A1 (“the `192 publication”) to Yoo et al.
Applicant’s claim 12 is drawn to a method for producing a metal oxide catalyst comprising: preparing a mixture by mixing a carbon-based spacer and a catalyst precursor; and heat-treating the mixture, wherein in heat-treating the mixture, the carbon-based spacer is carbonized to remove the carbon contained in the mixture to form pores in the mixture; and the method further comprises pulverizing the heat-treated product.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `935 publication [0031-0058] discloses specific methods for preparing a noble metal electrocatalysts in Examples 1-14. The method comprising preparing a mixture by mixing a carbon-based spacer (i.e., carbon nanotubes, or graphene) and a catalyst precursor (i.e., noble metal of chloroplatinic acid or ruthenium trichloride); and heat-treating the mixture at 200°C or 800°C under inner atmosphere.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between the instantly claimed method and the method of the `935 publication is that the prior art does not teach the step of pulverizing the heat-treated product of the electrocatalysts.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, presently claimed method would have been obvious over the method taught by the `935 publication because pulverizing the heat-treated product is a crucial step in preparing catalysts to increase their surface area, creating more active sites for reactions and improving catalytic efficiency, demonstrated in the process disclosed in the `192 publication [0017], and is well-known to one ordinary skilled in the art based on a Google search of “pulverizing is a crucial step in preparing catalysts to increase their surface area”_06/17/2026. Therefore, the `935 publication in view of the `192 publication would have rendered claim 12 obvious.
Conclusions
Claims 1-9, and 11-13 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Status Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/YONG L CHU/Primary Examiner, Art Unit 1731
Prosecution Insights