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 .
Claim 1 has been amended. Claim 10 is cancelled. Claims 1-9, and 11-13 are pending, and under examination on the merits.
Response to Amendment
The Amendment by Applicants’ representative Jori R. Fuller on 12/09/2025 has been entered.
Response to Arguments/Amendments
Claim rejections under 35 U.S.C.§102/103
Applicant amended claim 1 by further limiting the claimed method with “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”. In addition, Applicant argued that by heat-treating the mixture, the carbon-based spacer functions to create a gap between the catalyst precursors and is removed during the heat-treatment process after completing such function. That is, the carbon-based spacer of the present invention is not used as a carbon support, and specifically, the invention produces a pure metal oxide, rather than a composite catalyst such as Pt/C. Song fails to discloses a step of removing carbon during the catalyst synthesis process. Applicant further argued that in Song (the `935 publication), a "carbon support" or "carrier carbon" is explicitly employed as a support. The prior art documents cited by Song also consistently assume the use of carbon as a support, and nowhere is there any disclosure or suggestion regarding the removal of the carbon support. In contrast, the present application fundamentally differs in that it does not use the carbon material as a support but instead as a temporary spacer. That is, the carbon-based spacer of the present application serves to create gaps between the catalyst precursors and is removed during the heat-treatment process, functioning only as a temporary component. In this regard, paragraph [0063] of the specification explicitly states that the carbon-based spacer is removed during heat treatment, and paragraph [0064] clearly describes that carbon is not used as a support and that the invention produces a pure metal oxide. Furthermore, FIG. 5C of the present application, reproduced below, experimentally demonstrates the carbon removal behavior during heat treatment.
Applicant’s amendment and arguments have been fully considered, but not sufficient to overcome the rejection. It should be pointed out that it is improper to import claim limitations from the specification, see MPEP §2111.01 (II): "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). For the instant case, amended claim 1 is drawn to a method for producing a 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 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 such as <1%, 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, 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.
The following rejections are necessitated by the amendment filed 12/09/2025:
Claim Rejections - 35 USC § 102
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 1-11 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 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.
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 (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 such as <1%, 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, 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 `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 10, 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, Example 9 of the `935 publication [0043-0044] teaches heat treating the mixture at 800°C under inner atmosphere, which leads carbonizing the mixture, and removing the carbon contained in the mixture to form pores in the mixture.
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
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 catalyst comprising: preparing a mixture by mixing a carbon-based spacer and a catalyst precursor; and heat-treating the mixture, wherein 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.
The `192 publication [0017] discloses a method for preparing an electrochemical catalyst, including: (a) obtaining a water-soluble support with a metal catalyst or an alloy catalyst deposited by depositing a catalytic metal on a water-soluble support; (b) obtaining a dispersion including the water-soluble support with a metal catalyst or an alloy catalyst deposited and a carbon support; (c) obtaining a dispersion including a metal catalyst supported on the carbon support by stirring the dispersion at 20-90 °C for 1-24 hours; (d) obtaining the metal catalyst supported on the carbon support in solid phase by washing and filtering the dispersion including the metal catalyst supported on the carbon support; and (e) drying and pulverizing the metal catalyst supported on the carbon support in solid phase.
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 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. Specifically, the `192 publication [0017] discloses a method for preparing an electrochemical catalyst, including drying and pulverizing the metal catalyst supported on the carbon support in solid phase. Therefore, the `935 publication in view of the `192 publication would have rendered claim 12 obvious.
Conclusions
Claims 1-13 are rejected.
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 extension fee 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 date of this final action.
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.
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/YONG L CHU/Primary Examiner, Art Unit 1731