DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
2. The applicant’s response dated 01 October 2025 has been entered into the record. New Claims 20 and 21 were added by the applicant and the examiners finds that these claims do not add any new matter. Claim 2 was cancelled by the applicant. Currently, Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, and 21 are pending and under examination.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. in view of Pawar et al.
Gao et al. (“Surface in situ self-reconstructing hierarchical structures derived from ferrous carbonate as efficient bifunctional iron-based catalysts for oxygen and hydrogen evolution reactions,” J. Mater. Chem. A 2020, 8, 18367-75 – previously presented) is directed toward water splitting catalysts (pg. 18367: title). Pawar et al. (“Spinel type Fe3O4 polyhedron supported on nickel foam as an electrocatalyst for water oxidation reaction,” J. Alloys Compounds 2021, 863, article 158742, pg. 1-9) is directed toward an OER catalyst (pg. 1: title).
Regarding Claim 1, Gao et al. discloses an electrocatalyst comprising an iron foam substrate and magnetite (Fe3O4) wherein at least one layer of the Fe3O4 is deposited onto the iron foam substrate (“IF”) as depicted in schematic of Figure 1(a) on pg. 18368 as nanoparticles covering the surface of the iron foam and described as tightly packed nanoparticles (i.e.: continuous) on pg. 18639 and further depicted in SEM images in Fig. S5c and S5d (Supporting Information pg. 5). However, Gao et al. is silent on the thickness of the layer and the SEM images do not provide a clear shape of the nanoparticles.
Pawar et al. is directed toward a magnetite OER catalyst (title) like Gao et al. so it is analogous art. Pawar et al. discloses an OER catalyst deposited onto nickel foam (which is analogous to the iron foam of Gao et al) in the abstract. Pawar et al. discloses a deposition method using immersion of the metal foam into a solution of Fe(II) and urea followed by heating in autoclave, rinsing, and then drying (pg. 2: 2.2. Anchoring of Fe3O4 polyhedron on nickel foam (Fe3O4-NF). As illustrated by SEM images, Pawar et al. discloses the magnetite particles have an approximately spherical shape (Fig. 3c) with a diameter of ~600 microns and are uniformly distributed across the metal foam substrate (pg. 3). In the supporting information on pg. S13, Pawar et al. discloses SEM images of magnetite on metallic foam that has been subjected to OER catalysis in a KOH electrolyte (Fig. S10f), indicating the thickness of the magnetite layer is ~5 µm to ~25 µm.
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the Fe3O4/iron foam system of Gao et al. by depositing Fe3O4 using the deposition method of Pawar et al. to form a magnetite layer ranging in thickness from 5 microns to 25 microns with the reasonable expectation of forming an active OER catalyst as indicated by Pawar et al. (pg. 1: abstract).
[AltContent: textbox ([img-media_image1.png]
Fig. 3c from Pawar et al. showing SEM Image of Fe3O4 film.)][AltContent: textbox ([img-media_image2.png]
Fig. S10f from Pawar et al. SI showing SEM Image of Fe3O4 film after catalysis)]
Regarding Claim 3, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1 wherein the magnetite particles are not aggregated as depicted in the SEM images from Pawar et al. (pg. 3: Fig. 3a, 3b, and 3c and pg. S13 Fig. S10e, 10f, and 10g).
Regarding Claim 4, Gao et al. in view of Pawar et al. discloses the electrocatalysts of Claim 1 discloses the Fe3O4 particles from a monolayer as depicted in the SEM images from Pawar et al. (pg. 3: Fig. 3a, 3b, and 3c and pg. S13 Fig. S10e, 10f, and 10g). According to ¶76 of the present application (cited as US Pub. No. 2024/0209526 A1), a monolayer is defined as having the Fe3O4 particles are in contact with one another and densely packed along the surface of the substrate.
Regarding Claim 5, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, wherein at least 90% of the outer surface area of the iron foam substrate is covered with particles of the Fe3O4 as depicted in the SEM images from Pawar et al. (pg. 3: Fig. 3a, 3b, and 3c and pg. S13 Fig. S10e, 10f, and 10g). It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 6, Gao et al. in view of Pawar et al. discloses the electrocatalyst as per Claim 1 with an average diameter ranging from 0.1 microns to 1 micron as supported by the SEM images from Pawar et al. in Fig. 3c and indicated on pg. 3 of Pawar et al. where the avg. crystallite size is 600 nm. It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 7, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, wherein the Fe3O4 has a cubic phase as described on pg. 2-3 in section 3.1. Crystal structure analysis of Pawar et al. where it is written successful deposition of cub magnetic on the surface of the metallic foam.
Regarding Claim 8, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, which comprises Fe2+ and Fe3+ species since the XRD and XPS analysis in Pawar et al. (pg. 2: Fig. 2a for XRD and pg. 4: Fig. 4a and Fig. 4b for XPS) indicated the deposited material was Fe3O4. Specifically, XPS analysis in Pawar et al. that that there was no metallic iron present (i.e.: Fe0) on pg. 4 in section 3.3. Chemical structure analysis.
Regarding Claim 9, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1 wherein a distribution of the average diameter if the particles of Fe3O4 does not vary by more than 100 nm as evidenced by the SEM image of Pawar et al. in Fig. 3c. It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 10, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, wherein the iron foam substrate is porous and has an average pore size between 50 microns and 500 microns as depicted in the SEM images in Fig. S6a and S6b on pg. 6 of the Supplementary Information of Gao et al. It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 11, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1 wherein the pores of the iron foam have a spherical shape as depicted in the SEM images in Fig. S6a and S6b on pg. 6 of the Supplementary Information of Gao et al. The description of the spherical shape of the pores in the iron foam substrate disclosed in Gao et al. is similar to the SEM image of coated iron foam depicted in FIG. 2A of the present application.
Regarding Claim 12, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, which is magnetite as supported by XRD and XPS. Magnetite has a molar ratio of 3 mol Fe to 4 mol O which corresponds to a 72 wt.% iron (from 3 mol Fe x 55.845 g/1 mol Fe = 167.5 g Fe) and 28 wt.% oxygen (4 mol O x 16 g/1 mol O = 64.0 g O) based on the total weight of the composition. It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 13, Gao et al. in view of Pawar et al. discloses an oxygen evolution catalytic system, comprising the electrocatalyst as per Claim 1 (e.g.: as deposited on iron foam as the working electrode), a counter electrode (e.g.: a carbon rod on pg. 18374: electrochemical measurements section of Gao et al.), an electrolyte (e.g.: 1 M KOH on pg. 18369: results and discussion section of Gao et al.). Gao et al. in view of Pawar et al. further discloses the oxygen evolution catalytic system wherein the electrocatalyst and the counter electrode are at least partially submerged in the aqueous solution of the electrolyte and are not in physical contact with each other as indicated in the electrochemical measurements section of Gao et al. on pg. 18374.
Regarding Claim 14, Gao et al. in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13, wherein the electrolyte is potassium hydroxide (i.e.: a base that is an alkaline metal hydroxide (on pg. 18369: results and discussion section of Gao et al.).
Regarding Claim 15, Gao et al. in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13, wherein the electrolyte is 1.0 M aqueous potassium hydroxide (pg. 18369: results and discussion section of Gao et al.). It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 16, Gao et al. in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13, wherein the counter electrode is made from carbon (e.g.: a carbon rod on pg. 18374: electrochemical measurements section of Gao et al.).
Regarding Claim 17, Gao et al. in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13 with the electrocatalyst of Claim 1. Gao et al. in view of Pawar et al. is silent on the specific activity of the electrocatalyst of Claim 1 in an oxygen evolution catalytic system. In ¶79 of the present application (cited as US Pub. No. 2024/0209526 A1), the oxygen evolution catalytic system comprises the electrocatalyst disclosed in the present application and continues in ¶81 to indicate that the oxygen evolution catalytic system has a specific activity of 2-4 milliampere per square centimeter (mA/cm2). Therefore, the electrocatalyst of Claim 1 disclosed by Gao et al. in view of Pawar et al. used in the oxygen evolution catalytic system of Claim 13 would inherently have a specific activity of 2-4 mA/cm2, as evidenced by, at least, the Applicant’s own disclosure (¶23, 81, and 95). See MPEP 2112-III.
Regarding Claim 18, Gao et al. in view of in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13 with the electrocatalyst of Claim 1. Gao et al. in view of Pawar et al. is silent on the overpotential of the electrocatalyst of Claim 1 in an oxygen evolution catalytic system at 10 mA/cm2. In ¶79 of the present application (cited as US Pub. No. 2024/0209526 A1), the oxygen evolution catalytic system comprises the electrocatalyst disclosed in the present application and continues in ¶81 to indicate that the oxygen evolution catalytic system has an overpotential of 150 to 200 mV at 10 mA/cm2. Therefore, the electrocatalyst of Claim 1 disclosed by Gao et al. in view of Pawar et al. used in the oxygen evolution catalytic system of Claim 13 would inherently have an overpotential of 150 to 200 mV at 10 mA/cm2, as evidenced by, at least, the Applicant’s own disclosure (¶24, 81, 89, 105, and 107). See MPEP 2112-III.
Regarding Claim 19, Gao et al. in view of Pawar et al. discloses the oxygen evolution catalytic system of Claim 13 with the electrocatalyst of Claim 1. Gao et al. in view of Pawar et al. is silent on the turnover frequency of the electrocatalyst of Claim 1 in an oxygen evolution catalytic system at an over potential of 0.32 V. In ¶79 of the present application (cited as US Pub. No. 2024/0209526 A1), the oxygen evolution catalytic system comprises the electrocatalyst disclosed in the present application and continues in ¶81 to indicate that the oxygen evolution catalytic system has a turnover frequency of 2-6 s−1 at an overpotential of 0.32 V. Therefore, the electrocatalyst of Claim 1 disclosed by Gao et al. in view of Pawar et al. used in the oxygen evolution catalytic system of Claim 13 would inherently have a turnover frequency of 2-6 s−1 at an overpotential of 0.32 V, as evidenced by, at least, the Applicant’s own disclosure (¶25, 81, and 109). See MPEP 2112-III.
Regarding Claim 20, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, wherein the at least one layer of magnetite on the iron foam substrate has a thickness of 10 to 45 microns and wherein the magnetite particles have a spherical shape have an average diameter of 0.1 to 1.5 microns as evidenced by the supporting information on pg. S13 (Pawar et al.) where SEM images of magnetite on metallic foam that has been subjected to OER catalysis in a KOH electrolyte (Fig. S10f) shows that the thickness of the magnetite layer is ~5 µm to ~25 µm. Pawar et al. also demonstrated the magnetite particles have an approximately spherical shape (Fig. 3c) with a diameter of ~600 microns and are uniformly distributed across the metal foam substrate (pg. 3). It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 21, Gao et al. in view of Pawar et al. discloses the electrocatalyst of Claim 1, wherein the at least one layer of magnetite on the iron foam substrate has a thickness of 20 to 35 microns and wherein the magnetite particles have a spherical shape have an average diameter of 0.5 to 1.0 microns as evidenced by the supporting information on pg. S13 (Pawar et al.) where SEM images of magnetite on metallic foam that has been subjected to OER catalysis in a KOH electrolyte (Fig. S10f) shows that the thickness of the magnetite layer is ~5 µm to ~25 µm. Pawar et al. also demonstrated the magnetite particles have an approximately spherical shape (Fig. 3c) with a diameter of ~600 microns and are uniformly distributed across the metal foam substrate (pg. 3). It has been found that a prima facie case of obviousness exists when the prior art discloses an example that is contained in the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Response to Arguments
5. Applicant’s arguments, see pg. 6-8, filed 01 October 2025, with respect to the rejection(s) of Claim(s) 1-19 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Gao et al. in view of Pawar et al. The specific reasons for the new rejections can be found in detail above in this final Office action.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Han et al. (“Electrodeposited Co-Doped Fe3O4 Thin Films as Efficient Catalysts for the Oxygen Evolution Reaction,” Electrochimica Acta 2016, 210, 942-949) is directed toward thick Co-doped magnetite films for OER (pg.: 942: title and abstract).
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794