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 .
The Applicant’s amendments were received on 4/1/26. Claim 2, 3, 5-8 are cancelled. Claim 1 and 4 have been amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Declaration
The Declaration under 37 CFR 1.132 filed 4/1/26 is insufficient to overcome the rejection of claims 1 and 4 based upon the 35 U.S.C. 112 (pre-AIA ), first paragraph and under 35 U.S.C. 103(a) as set forth in the last Office action because: the Declaration discloses that Example 5-7 provides a starting material that is titanium (IV) oxysulfate, however, it is not clear if the product would also comprise the same valance.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed on 4/1/26 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/10/26 is considered by the examiner.
Specification
The disclosure objection is maintained.
The disclosure is objected to because of the following informalities: “j” is not further define.
In addition, the disclosure is objected to because of the following informalities:
“2> j ≥ 0” is not supported in Applicant’s specification.
Appropriate correction is required without adding new matter.
Claim Rejections - 35 USC § 112
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the upper limit of j is not defined in j≥0 are withdrawn because the Applicant amended the claim.
Claims 2, 3, 5-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, are withdrawn because the Applicant amended the claim.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “j” is not defined since it is unknown what “j” is 2>j≥0 is considered new matter. The Applicant’s discloses a formula j≥0, and how the upper limit is now 2>j is not supported. That is, it is unknown if 1.99 is included in the invention or if the upper limit is really 0.5, for example, which puts 1.99 out of the range. There is absolutely no support for the upper limit of 2>j and how j is applicable to the current invention. Appropriate corrections are required.
Claims depending from claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph are also rejected for the same.
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.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 is to an electrode catalyst layer, thus the claimed polymer electrolyte is not part of the electrode catalyst layer but claimed as so. Appropriate corrections or further clarification is required.
Claim Analysis
It is noted that claim 1 has “intended use” language such as “configured to be joined to a polymer layer in a polymer electrolyte fuel cell,” “a polymer electrolyte,” and “for fuel cells” and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
However, the recitation an electrode catalyst layer in claim 1 has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self- contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951.).
Claim Rejections - 35 USC § 102
As best understood, the rejections under 35 U.S.C. 102(a)(1) as being anticipated by Morikawa et al., on claim 1 has been maintained. The rejection is modified in view of the Applicant’s amendments.
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morikawa et al. (EP1205244).
Regarding claim 1, the Morikawa et al. reference discloses a known component film comprising fibrous, rutile, an oxide including an oxygen atom, a nitrogen atom, and a transition metal atom, wherein the transition metal atom is at least one from titanium atom, the fibrous rutile-type oxide is represented by a chemical formula MOXNy, where the transition metal atom is represented by M, and x in the chemical formula satisfies the following: x=2-(y+j) (j≥0) (P10).
It is noted that the claim limitation “configured to be joined to a polymer electrolyte layer in a polymer electrolyte fuel cell,” “a polymer electrolyte” and “of the catalyst for the fuel cell” are “intended” use limitations and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (N-doped rutile TiO2/C with significantly enhanced Na storage capacity for Na-ion batteries).
Regarding claim 1, the He et al. reference disclose an electrode catalyst rutile N-doped TiO2 (110 phase) with a structure formula of TiO2-xNy with N-doping oxygen vacancies (3. Results and discussion). That is, the structure formula will have 2>x and y<2-x with j is 0. The He et al. reference discloses known N-doped TiO2 nanofiber (1. Introduction) comprises twice higher capacity than the TiO2 particles. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate N-doped TiO2 nanofiber teaching in rutile phase disclose by the He reference in order to increase the conductivity of the electrode catalyst to provide an improved battery.
Regarding claim 4, the He et al. reference discloses a cell assembly with electrode catalyst (combination of 2.3 and interface) disclosed in claim 1. The He et al. reference also discloses polymer electrolyte membrane is known for Na-ion batteries (Introduction, [8]), therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate Na-ion batteries with known polymer electrolyte membrane joining the electrode catalyst disclosed in the He et al. reference would have been obvious.
A patent for a combination, which only unites old elements with no change in their respective functions, obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men. Where the combination of old elements performed a useful function, but it added nothing to the nature and quality of the subject matter already patented, the patent failed under §103. When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious. KSR v. Teleflex
Response to Arguments
Applicant's arguments filed 4/1/2026 have been fully considered but they are not persuasive.
The variable of “j” aren’t define in how one of ordinary skill would find “j” to even understand what the maximum limit would be. Thus, the rejection are maintained.
The Applicant provides a Declaration, stating that the disclosed starting material comprises a valence of -4, however, it is unknown if the product would still have the same valence. That is, if Ti-O-N with Ti having the same valence of the starting material. In addition, it is unknown what x and y are even if j=0, in formula MOxNy Therefore, the Declaration is insufficient to overcome the rejections and is moot.
The Applicant’s argue, “As described in paragraphs [0024] and [0025], the fibrous catalyst 21 is a rutile- type metal oxide in which a part of the oxygen atoms are replaced with nitrogen atoms. For example, when the transition metal atom of the catalyst is titanium, in the chemical formula TiOXNy, the valence of Ti is +4, that of O is -2, and that of N is -3. In TiOXNy, only a part of the oxygen atoms are replaced with nitrogen atoms, and not all of them.”
However, that is assuming that Ti has a valence of -4 for x to be -2 and potentially for N is -3. It can be possible that Ti can be valence of -3 or even 2p-3/2 or even TiO6-xNx for rutile oxides, for example. The Applicants have to provide, specifically where to find the valence of Ti, O and N from Applicant’s specification for the Examiner to consider these arguments. Otherwise, since it is unknown if Ti product even comprises a valence of -4 from Applicant’s specification, these arguments are moot.
The Applicants argue, “Paragraph [0025] further states that "a part of the oxygen atoms is removed to eliminate the charge imbalance caused by the replacement of oxygen atoms with nitrogen atoms."
Since the valence of O is -2 and that of N is -3, in TiOXNy, charge balance can be achieved only when x is greater than y (i.e., x > y) and x is less than 2. However, that is only assuming that Ti comprises a valence of -4 which isn’t supported. Again, it can be possible that Ti can be valence of -3 or even 2p-3/2 or even TiO6-xNx for rutile oxides, for example. In these examples, x>y but one cannot assume that O can be less than 2 for TiO6- xNx since it appears to state that O can equal to 2 or more.
The Applicants argue, “Accordingly, it is apparent that x corresponds to the number obtained by subtracting the sum of y and j (which compensates for the charge imbalance) from 2, i.e., x= 2 -(y +7). It is also evident that x, y, and j are each less than 2, and that (y +j) is less than 2.”
However, there is no evidence that Applicant’s specification discloses x, y, or j is less than 2. Therefore, these arguments are moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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/Helen Oi K CONLEY/ Primary Examiner, Art Unit 1752
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