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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 17 December 2025 is acknowledged.
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 (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.
Claims 1, 2, 4-9, 11, 12, 13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0307141 A1 to Hegge et al. (Hegge).
As to claim 1, Hegge teaches an electrolysis cell for electrolyzing water into hydrogen and oxygen, the electrolysis cell comprising a polymer electrolyte membrane (7), a porous transport layer (11) including a surface facing the PEM (7) and a surface morphology, and an anode catalyst layer (9) deposited on the PTL (11) surface morphology to form a porous transport electrode including a PTE surface morphology (Paragraphs 0028-0041; Figures 2 and 3).
As to claim 2, Hegge teaches the apparatus of claim 1. Hegge teaches that the PTL surface layer includes pores, i.e. the material is porous, and that the catalyst material can be coated on to the PTL, and thus that the anode catalyst material at least partially coats and occupies the PTL pores (Paragraphs 0047, 0120 and 0171-0174).
As to claims 4 and 5, Hegge teaches the apparatus of claim 1. Hegge further teaches that the anode catalyst layer includes an anode catalyst, such as iridium, supported on an anode catalyst support, such as titanium nanofibers (Paragraphs 0028-0034 and 0134-0137).
As to claim 6, Hegge teaches the apparatus of claim 4. Hegge further teaches that a weight percent of the catalyst material to the anode catalyst support is between 5 and 100 weight percent (ratio of, for example 1:0.5) (Paragraph 0052).
As to claim 7, Hegge teaches the apparatus of claim 1. Hegge further teaches that the anode catalyst layer can consist essentially of an anode catalyst, i.e. does not include the nanofiber, comprising, for example, iridium (Paragraphs 0032, 0051 and 0082).
As to claims 8 and 9, Hegge teaches the apparatus of claim 4. Hegge further teaches that the anode catalyst material includes an anode ionomer material, the polymer membrane material, for example, a perfluorinated sulfonic acid ionomer (Paragraphs 0145 and 0166-0168).
As to claim 11, Hegge teaches the apparatus of claim 1. Hegge further teaches that the PTL (11) surface morphology includes pores with a larger pore size than the pores of the PTE (9) surface morphology (Figure 2).
As to claims 12 and 16, Hegge teaches an electrolysis cell for electrolyzing water into hydrogen and oxygen, the electrolysis cell comprising, a polymer electrolyte membrane (7) comprising an ionomer material, for example a perfluorinated sulfonic acid ionomer, a porous transport layer (11) including a surface facing the PEM (7) and a surface morphology, and an anode catalyst layer (9) comprising a mixture comprising the same ionomer material as the electrolyte membrane and deposited on the PTL (11) surface morphology to form a porous transport electrode including a PTE surface morphology, the ionomer material of the catalyst layer thus infiltrating the surface of the PTE surface morphology (Paragraphs 0028-0041, 0145 and 0171-0174; Figures 2 and 3).
As to claim 13, Hegge teaches the apparatus of claim 12. Hegge teaches that the PTL surface layer includes pores, i.e. the material is porous, and that the catalyst material including the ionomer material can be coated on to the PTL, and thus that the ionomer material at least partially coats and occupies the PTL pores (Paragraphs 0047, 0120 and 0171-0174).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3 686 318 A1 to Buechi et al. (Buechi).
As to claim 1, Buechi teaches an electrolysis cell for electrolyzing water into hydrogen and oxygen, the electrolysis cell comprising a polymer electrolyte membrane, and a porous transport layer (2) including a surface facing the PEM and a surface morphology, and an anode catalyst layer deposited on the PTL surface morphology to form a porous transport electrode including a PTE surface morphology (Paragraphs 0002, 0017, 0021, 0022 and 0024; Figure 2).
As to claim 3, Buechi teaches the apparatus of claim 1. Buechi further teaches that the surface of the PTL can comprise a microporous layer (Paragraphs 0017, 0021 and 0022).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hegge as applied to claims 8 and 12 above, and further in view of US 2023/0287587 A1 to Rojas Herrera et al. (Rojas).
As to claim 10, Hegge teaches the apparatus of claim 8. However, Hegge fails to teach a percentage of ionomer material that should be formed in the anode catalyst layer. However, Rojas also discusses water electrolysis with iridium anode catalysts formed with an ionomer and teaches that the ionomer percentage should be below 40% (Paragraph 0105). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the ionomer to the anode catalyst at less than 40%, i.e. between 0 and 40%, with the reasonable expectation of effectively forming the anode catalyst layer as taught by Rojas.
As to claims 14 and 15, Hegge teaches the apparatus of claim 12. However, Hegge fails to further teach that the catalyst layer comprises a filler material bound to the ionomer. However, Rojas also discusses water electrolysis anode catalysts comprising iridium catalyst materials and ionomer and teaches that the catalyst should also comprises a filler material, such as a PTFE additive, in order to modify the mechanical properties of the catalyst layer (Paragraph 0047). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the catalyst layer with a PTFE filler bound with the ionomer and the catalyst material in order to modify the mechanical properties of the catalyst layer as taught by Rojas.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 8 and 9 of copending Application No. 18/134,835 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because although additional limitations are claimed in the copending claims all limitations of the present claims are explicitly or inherently claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794