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 .
Status of Amendment
The amendment filed on 5 March 2026 fails to place the application in condition for allowance.
Claims 1, 2, 5-8, 10-17 are currently pending.
Claims 1, 2, and 5-8 are currently under examination.
Claims 10-17 are currently withdrawn.
Status of Rejections
All previous rejection are herein withdrawn due to Applicant’s amendment filed 5 March 2026.
It is noted Zhao is maintained as previously applied with respect to limitations now incorporated into claim 1 from previous claims 3 and 4, which are herein withdrawn.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, and 5-8 are 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.
The term “approximately oriented” in claim 1 is a relative term which renders the claim indefinite. The term “approximately oriented” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is indefinite as to what degree of orientation is deemed to be approximate, particularly because the phrase “oriented” is not found within the instant specification and there is no evidence of record to suggest that the definition of “oriented” is identical to “aligned”, which appears in the instant specifiation.
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.
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 1, 2, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al (US 2007/0166539 A1).
As to claims 1, 2, and 6, Zhou discloses a three-dimensional non-noble-metal-based electrocatalysis electrode structure ([0032]) comprising:
one or more layers of fused and approximately oriented electrocatalyst nanorods (Fig. 2 #s 34, 46, 54 which satisfies the definition of instant claim 2 of being approximately aligned), the oriented electrocatalyst nanorods (“nanorod” as required by instant claim 2 [0040]comprising a non-noble metal alloy or non-noble metal compound ([0037] “The metals can include, but are not limited to…nickel…copper, cobalt…oxides of each, nitrides of each, oxynitrides of each, and combinations thereof.” Which reads on instant claim 6); anisotropic
anisotropic nanochannels positioned between the fused and approximately oriented electrocatalyst nanorods configured to transfer generated gas bubbles therethrough ([0038] “The array of nanostructures can be defined as having a distance of about 10 to 30 nm, about 10 to 60 nm, about 10 to 100 nm, about 10 to 150 nm, and about 10 to 200 nm, between each of the nanostructures” which overlaps the instant claim 5 structureof providing nanochannels between each nanorod thus satisfying the claimed function of “configured to transfer…” in accordance with MPEP 2114).
wherein the nanorods have a diameter of approximately 20 to 50 nanometers ([0039] “The diameter of the nanostructure is about 10 to 30 nm, about 10 to 60 nm, about 10 to 100 nm, about 10 to 150 nm” which overlaps the instantly claimed range thus prima facie obvious. See MPEP 2144.05 I)
and wherein the nanorods have length of approximately 80 to 300 nanometers ([0039] “he nanostructure can have a length of about 10 nm to 5000 nm, about 10 nm to 4000 nm, about 10 nm to 3000 nm, about 10 nm to 2000 nm, about 10 nm to 1000 nm, about 10 nm to 500 nm, about 10 nm to 250 nm, about 10 nm to 100 nm, and about 10 nm to 50 nm” which overlaps the instantly claimed range thus prima facie obvious. See MPEP 2144.05 I)
As to claim 5, Zhao discloses wherein the anisotropic nanochannels have a channel width of approximately 50-150 nanometers. ([0038] “The array of nanostructures can be defined as having a distance of about 10 to 30 nm, about 10 to 60 nm, about 10 to 100 nm, about 10 to 150 nm, and about 10 to 200 nm, between each of the nanostructures” which overlaps the instantly claimed range thus prima facie obvious. See MPEP 2144.05 I).
Response to Arguments
Applicant's arguments filed 5 March 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument towards Zhao on pg. 8 of the response that the instant claims are recited to provide directional transport pathways to mitigate bubble traffic during electrolysis, this argument is not persuasive because the claims merely require the “configured” arrangement of the nanorods. The configured language is deemed to be non-structurally limiting because it does not impart particular structural distinction as to how the bubble may be transferred or required structure to enable the transfer. Because the recitation is drawn towards an intent and not particular structural orientation, the limitation is not deemed indefinite as to the requires structure so long as the nanorods are oriented in the manner directed by the claim. As to the recitation of “fused”, its is noted the claim does not required the nanorods fused to each other, merely generically fused without particular structure of the fusing or method of fusing. As to the argument with respect to being self-supporting, this argument is not persuasive because the claims do not require such a distinction.
No further arguments are presented.
Allowable Subject Matter
Claims 7 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 7 and 8 would be allowable if rewritten to overcome the rejection(s), as applied to claim 1, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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