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 .
Claim Rejections - 35 USC § 112
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 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a particular ratio mixture of an alcohol and water at the particular particle diameters of Table 2, when used with a Ni particles, Ni-Fe LDH, and Nafion polymer as shown in Example 4, does not reasonably provide enablement for the entire scope of any solvent when used with a polymer and layered double hydroxide catalysts. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claims are drawn towards an ink composition to deposit a catalyst layer for a water electrolysis cell comprising three generic constituents, the catalysts, a solvent and an organic polymer. The claims further specifically require Hansen Solubility Parameters between the solvent and catalyst, and solvent and polymer, respectively.
(B) The nature of the invention:
The invention is drawn towards ink composition to deposit catalyst layers that prevent aggregation of the catalysts material in the electrode ink.
(C) The state of the prior art:
The following is deemed to be the most relevant prior art:
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have a general understanding of appropriate catalysts and structures of electrolysis cells with an advanced understanding of solubility parameters and their subsequent calculation.
(E) The level of predictability in the art:
There does not appear to be any predictability in the art based on the Examples provided.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
All working examples are drawn towards combination of water and an alcohol in particular ratios, where the use of both water and organic solvent at the proper ratios is explicitly required to provide the solubility parameters as claimed as evidenced by Table 3.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The quantity cannot be adequately determined to do the breadth of the recitation where a solvent may be water in accordance with any particular catalyst and polymer. There is not apparent generic relationship inherent to the generic composition of a catalyst, polymer, and solvent thus providing no basis of ascertaining whether prior art catalyst inks possess said properties.
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.
Claims 1, 2, 5-10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Koshikawa et al (Koshikawa, Hiroyuki, et al. "Single nanometer-sized NiFe-layered double hydroxides as anode catalyst in anion exchange membrane water electrolysis cell with energy conversion efficiency of 74.7% at 1.0 A cm–2." Acs Catalysis 10.3 (2020): 1886-1893).
As to claim 1, Koshikawa discloses an electrode catalyst ink for a water electrolysis cell, the electrode catalyst ink (pg. 1887 Section 2.4) including:
a catalyst including a layered double hydroxide (“A 2.37-g portion of NiFe-LDH/KB (2/1)…” section 2.4 as required by instant claim 2); .
an organic polymer (“A 3.62 mL portion of 20 wt % Nafion solution” section 2.4 which is a perfluorocarbon polymer with a sulfonate ion as required by instant claim 5); and
a solvent (“…water/ethanol (1/1) solvent.” Section 2.4).
Koshikawa discloses the solvent is combination of water and an alcohol in a ratio of 1:1 as required by instant claim 6 and 7.
Thus, the prior art discloses the structural, material, and same composition of the instant claim language. Koshikawa does not explicitly calculate the Hansen solubility parameters of “wherein a Hansen solubility parameter distance Ra1 between the solvent and the catalyst is 15.0 MPa1/2 or more and less than 20.5 MPa1/2; and a Hansen solubility parameter distance Ra2 between the solvent and the organic polymer is 10.0 MPa1/2 or more and 14.0 MPa1/2 or less.” as instantly claimed. MPEP 2112.01 guides:
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Based on the instant disclosure of Example 5 at [0124] of the as filed specification which discloses a water:ethanol volume with a Ni-Fe LDH in 5% Nafion dispersion in Table 3 is evidence that the solubility parameters of the catalyst and polymer with respect to the solvent are an inherent property of the prior art ink.
As to claim 8, Koshikawa discloses solidifying the ink composition (Section 2.4 via spraying”).
As to claim 9, Koshikawa discloses a water electrolysis cell comprising an anode (See Supplementary S1 C anode catalysts layer) a cathode (See Supplementary S1 B cathode catalyst layer) an electrolyte membrane disposed between the anode and the cathode (See Supplementary S1 A anion exchange membrane as required by instant claim 10), where the anode includes the electrode catalyst according to claim 8 (see above with respect to section 2.4) and comprising a voltage application (as required by instant claim 13 – Section 3.3 inherent to provide current/voltage curves),
As to claim 12, Koshikawa discloses water electrolysis cell comprising: a diaphragm (See Supplementary S1 A anion exchange membrane as required by instant claim 10) separating a first space and a second space (space between A and F microchannels); an anode provided in the first space (See Supplementary S1 C anode catalysts layer); and a cathode provided in the second space (See Supplementary S1 B cathode catalyst layer), wherein at least one selected from the group consisting of the anode includes the electrode catalyst according to claim 8 (see above with respect to section 2.4) and comprising a voltage application (as required by instant claim 14 – Section 3.3 inherent to provide current/voltage curves).
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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Koshikawa in view of Logan et al (US 2023/0279557 A1).
As to claim 11, Koshikawa fails to disclose the use of a cation exchange membrane.
Logan discloses a water electrolyzer (Title) that using a cation exchange membrane (#110, [0110]) which includes a cation exchange membrane with a NiFe layered double hydroxide anode ([0091]).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a cation exchange membrane as taught by Logan in the apparatus of Koshikawa in order to allow selective transport across the membranes depending on the particular reactions taking place ([0050] Logan).
Allowable Subject Matter
The following claim drafted by the examiner and considered to distinguish patentably over the art of record in this application, are presented to applicant for consideration:
The Examiner suggests a combined claim with limitations, including intervening claim limitations, from dependent claim 4 (dependent upon claim 3), dependent claim 5, and dependent claim 7 (dependent upon claim 6) into claim 1 to overcome the 112(a) rejection above.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795