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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I claims 1-4 in the reply filed on 29 December 2025 is acknowledged. The traversal is on the ground(s) that all claims depend from claim 1. This is not found persuasive because while the dependent claims incorporate subject matter from claim 1, each group requires different search considerations as outlined in the restriction requirement mailed 31 October 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 29 December 2025.
Claim Rejections - 35 USC § 112(a)
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, 2, and 4 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 wherein the P-block element is lead, does not reasonably provide enablement for the entirety of the scope of possible P-block elements as defined at pg. 22 first paragraph of the as filed specification. 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 and use 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 a catalysts for an oxygen evolution reaction comprising a cobalt oxide doped with any P-block element, where P-block element is defined as any element whose last electron occupies a p-orbital as defined in the specification at pg. 22 1st paragraph.
(B) The nature of the invention:
The nature of the invention is defined by the specific catalyst as claimed.
(C) The state of the prior art:
The most relevant prior art is deemed to be cited below in the rejection and not repeated here for brevity.
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have an understanding of different catalysts and their uses for different types of reaction, as well as their preparation methods.
(E) The level of predictability in the art:
There is no evidence of record of predictability of using different P-block elements as a dopant into cobalt oxide as an oxygen evolution reaction catalysts.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
The only examples presented are those drawn towards the incorporation and use of lead as the doping P-block element into the amorphous cobalt oxide.
While a generic definition of -block element is defined, the scope of P-block elements is wide and includes elements like oxygen (which is already contained in the cobalt oxide), the noble gases, or any element in the Group 13-18 of the periodic table. No direction is provided into the specific selection or use of all the elements possibly included from all the P-block elements or how to use the elements to dope into the amorphous cobalt oxide.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
A specific quantity of experimentation cannot be gleaned from the absolute possible combinations of each P-block element with cobalt oxide coupled with the multitude of different preparation methods.
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.
Claim 4 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.
As to claim 4, the recitation “CoOx” is deemed indefinite because the most common oxidation states of cobalt are +2 and +3 the defining CoO and Co3O4, thus only providing a singular state of CoO with x=1 where the Co need the proper subscript as defined in order to balance the generic equation.
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, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al (Chemical Engineering Journal 416 (2021) 127884).
As to claims 1, 2, and 4, Zhou discloses a catalyst for an oxygen evolution reaction electrode for water splitting (Title), comprising: porous amorphous cobalt oxide (Abstract “amorphous cobalt phosphide-cobalt oxide composite”); and 0.5 to 3 at% of at least one P-block element as a dopant, based upon the catalyst (Table S1 Sample P-300 P% 2.09%), where the catalyst has a specific surface area (BET) of 35 to 85 m2/g (Fig. 2 (b) BET for P-300 48.4 m2/g as required by instant claim 2 which falls within the instantly claimed range), and the porous amorphous cobalt oxide in the catalyst is represented by CoOx, wherein x is 1 to 4 (pg. 4 col 1 “The above results further confirmed that during the phosphating process, phosphate ions were successfully introduced into the surface of Co3O4.”).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shinya et al (JP 2013/071069 with citations drawn towards the translation provided via Espacnet).
As to claims 1 and 3, Zhou discloses a catalyst for an oxygen evolution reaction electrode for water splitting (Title where the recitation of “for an oxygen evolution reaction electrode for water splitting” is interpreted as an intended use of the specific catalysts as claimed which does not further structurally define the catalysts as claimed in accordance with MPEP 2111.02 II), comprising: porous amorphous cobalt oxide ([0007]-[0008] cobalt oxide as its main component, ); and 0.5 to 3 at% of at least one P-block element as a dopant, based upon the catalyst ([0028] “…to obtain catalyst A having a Pb/Co ratio of 0.05” showing the relative amounts after mixed. [0029] discloses Examples 2-3 are prepared the same way which result in a 0.02, and 0.01 ratio, or 2% and 1% respectively according to Table 1 on pg. 9), wherein the P-block element is lead (See Table 1 Pb/Co ratio using lead nitrate [0028]).
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.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795