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 .
Claim Objections
Claims 13 is objected to because of the following informalities: in claim 13, line 3, “10” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-7 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (US 2011/0151354).
Regarding claims 1-3, Jin et al. teaches an electrode catalyst for a fuel cell (Abstract) comprising a graphite carbon support, palladium metal catalyst, and a metal oxide dispersed on the support ([0030]-[0032], [0039]). Jin et al. further teaches that the catalyst composition is calcined in air at 300 degrees C to oxidize a metal precursor to the metal oxide [0041]. A palladium precursor is reduced to palladium metal [0047]. The effect of these steps is to form a palladium metal/metal oxide catalyst on a graphite carbon support. These treatment steps, particularly the calcination in air, are the same or similar to the treatment steps disclosed in the instant specification that results in (1) the first metal being electron deficient; (2) surface oxygen present on the carbon support; and (3) the first metal having an electron deficiency increased by the surface oxygen and the second metal oxide. Therefore, it is the position of the examiner that the structure required by claims 1-3 are inherently met by the disclosure of Jin et al. When the examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicants to prove that the subject matter shown in the prior art does not possess the characteristics relied upon. In re Fitzgerald et al. 205 USPQ 594.
Regarding claim 4, Jin et al. teaches that the catalyst can have a fibrous shape [0039].
Regarding claim 5, Jin et al. teaches that the support can be graphitic carbon [0039]. The process limitations are noted. However, when the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to applicant to establish that their product is patentably distinct and not the examiner to show the same process of making. In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
Regarding claims 6-7, Jin et al. teach that the first metal can be palladium and that the second metal oxide can be tungsten, molybdenum, manganese, and chromium ([0030], [0032]-[0033]).
Regarding claim 15, Jin et al. teaches a catalyst composition suitable for use in an electrode (Abstract). The intended use is noted; however, it is the position of the examiner that the prior art teaches the same structure and would therefore be capable of performing the intended use.
Claim Rejections - 35 USC § 103
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.
Claims 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2006/012548 in view of Jin et al. (US 2011/0151354) and KR 20090041135 (all references made to the English language machine translation).
Regarding claim 8-10 and 13-14, the WO reference discloses fiber structures that include catalytic material and methods of making such a structure (page 4, lines 1-7). The WO reference teaches that the catalyst may be prepared by electrospinning a polymer solution comprising a dissolved polymeric material and a catalytic material precursor followed by heat treating the formed structure (page 9, lines 20-25; page 12, lines 15-20; page 12, line 30 – page 13, line 1). The WO reference broadly teaches that any suitable catalytic material may be used, including palladium, platinum, gold, silver, rhodium, rhenium, iron, chromium, cobalt, copper, manganese, tungsten, niobium, titanium, tantalum, lead, indium, cadmium, tin, bismuth, and gallium, as well as compounds and alloys of these metals (page 8, lines 3-10) and further teaches the use of metal oxides and metal salts (page 10, lines 1-5; page 10, lines 22-25) but does not specifically teach a first metal oxide and a second metal salt in combination as required by claim 8.
Jin et al. teaches an electrode catalyst for a fuel cell (Abstract) comprising a graphite carbon support, palladium metal catalyst, and a metal oxide dispersed on the support ([0030]-[0032], [0039]). Jin et al. further teaches that the catalyst composition is calcined in air at 300 degrees C to oxidize a metal precursor to the metal oxide [0041]. A palladium precursor is reduced to palladium metal [0047]. The effect of these steps is to form a palladium metal/metal oxide catalyst on a graphite carbon support. Jin et al. further teach that the first metal can be palladium and that the second metal oxide can be tungsten, molybdenum, manganese, and chromium ([0030], [0032]-[0033]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the method of the WO reference to use a combination of metals as taught by Jin et al. First, the examiner notes that the WO reference is not particularly limited as to the type and content of catalytic metal included in the catalytic structure. Additionally, Jin et al. teaches that the use of palladium in combination with the metal oxides has a higher stability and greater catalytic characteristics than a palladium only catalyst [0036]. This would have motivated a person of ordinary skill to modify the structure taught by the WO reference to include the use of both palladium and a metal oxide in light of the benefits taught by Jin et al. Because both catalysts can be used as fuel cell electrodes, one would have a reasonable expectation of success from the combination.
The Wo reference as modified by Jin et al. further does not teach that the spinning solution comprises a first metal oxide. However, the KR reference discloses the preparation of a noble metal catalyst on a graphite carbon support by electrospinning a polymeric solution and a catalytic metal salt (page 1, claim 1). The KR reference teaches that the use of a noble metal oxide is suitable and equivalent to the metal salts taught by the primary reference in the electrospinning preparation of noble metal catalyst on a carbon support (see 3, paragraph 10 of the KR reference). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have further modified the WO reference to include the use of a first metal oxide (i.e. a noble metal oxide) since its use is known, conventional, and suitable for the production of a catalyst by electrospinning.
Regarding claim 11, the WO reference teaches fiber structures (page 4, lines 3-5 of the WO reference).
Regarding claim 12, the WO reference teaches that the polymer compound may be polyvinylpyrrolidone or polyvinyl alcohol (page 10, lines 10-20).
Claims 1-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2006/012548 in view of Jin et al. (US 2011/0151354).
Regarding claims 1-4 and 6-7, the WO reference discloses fiber structures that include catalytic material and methods of making such a structure (page 4, lines 1-7). The WO reference teaches that the catalyst may be prepared by electrospinning a polymer solution comprising a dissolved polymeric material and a catalytic material precursor followed by heat treating the formed structure (page 9, lines 20-25; page 12, lines 15-20; page 12, line 30 – page 13, line 1). The WO reference teaches that the carbon fibers produced may be formed in part of graphite (page 7, lines 28-30). The WO reference broadly teaches that any suitable catalytic material may be used, including palladium, platinum, gold, silver, rhodium, rhenium, iron, chromium, cobalt, copper, manganese, tungsten, niobium, titanium, tantalum, lead, indium, cadmium, tin, bismuth, and gallium, as well as compounds and alloys of these metals (page 8, lines 3-10) and further teaches the use of metal oxides and metal salts (page 10, lines 1-5; page 10, lines 22-25) but does not specifically teach a first metal and a second oxide in combination as required by claim 1.
Jin et al. teaches an electrode catalyst for a fuel cell (Abstract) comprising a graphite carbon support, palladium metal catalyst, and a metal oxide dispersed on the support ([0030]-[0032], [0039]). Jin et al. further teaches that the catalyst composition is calcined in air at 300 degrees C to oxidize a metal precursor to the metal oxide [0041]. A palladium precursor is reduced to palladium metal [0047]. The effect of these steps is to form a palladium metal/metal oxide catalyst on a graphite carbon support. Jin et al. further teach that the first metal can be palladium and that the second metal oxide can be tungsten, molybdenum, manganese, and chromium ([0030], [0032]-[0033]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the method of the WO reference to use a combination of metals as taught by Jin et al. First, the examiner notes that the WO reference is not particularly limited as to the type and content of catalytic metal included in the catalytic structure. Additionally, Jin et al. teaches that the use of palladium in combination with the metal oxides has a higher stability and greater catalytic characteristics than a palladium only catalyst [0036]. This would have motivated a person of ordinary skill to modify the structure taught by the WO reference to include the use of both palladium and a metal oxide in light of the benefits taught by Jin et al. Because both catalysts can be used as fuel cell electrodes, one would have a reasonable expectation of success from the combination.
The modified disclosure of the WO reference does not specifically disclose (1) the first metal being electron deficient; (2) surface oxygen present on the carbon support; and (3) the first metal having an electron deficiency increased by the surface oxygen and the second metal oxide. However, these treatment steps, particularly the calcination in air, are the same or similar to the treatment steps disclosed in the instant specification that results in (1) the first metal being electron deficient; (2) surface oxygen present on the carbon support; and (3) the first metal having an electron deficiency increased by the surface oxygen and the second metal oxide. Therefore, it is the position of the examiner that the structure required by claims 1-3 are necessarily met by the combined teachings of the WO reference and Jin et al.
Regarding claim 5, the WO reference teaches that the support can be graphitic carbon (page 7, lines 28-30). The process limitations are noted. However, when the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to applicant to establish that their product is patentably distinct and not the examiner to show the same process of making. In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324. It is noted that the WO reference teaches that the polymer compound may be polyvinylpyrrolidone or polyvinyl alcohol (page 10, lines 10-20).
Regarding claim 15, the WO reference further teaches that the fiber structures may be used in a variety of applications, including as electrodes in batteries and fuel cells. The intended use is noted; however, it is the position of the examiner that the prior art teaches the same structure and would therefore be capable of performing the intended use.
Response to Arguments
Applicant’s arguments with respect to claims 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/CHRISTINA A JOHNSON/Primary Examiner, Art Unit 1742