DETAILED ACTION
Application 18/211078, “CATALYST FOR FUEL CELLS AND A METHOD OF MANUFACTURING THE SAME”, was filed with the USPTO on 6/16/23 and claims priority from a foreign application filed on 11/18/22.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 6/16/23.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a catalyst, classified in H01M4/921.
II. Claim 12-20, drawn to method of making a catalyst, classified in H01M4/8817.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, such as a process of performing a hydrophilizing treatment on one or both of the catalyst and support, separately, then joining the two treated members.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have separate fields of search, requiring searching in different subclasses and/or employing different search queries.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Bryan Lempia on 1/21/26, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 12-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 9 is/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 pre-AIA the applicant regards as the invention.
Regarding claim 9, the recitation, “wherein a weight ratio (O/H) of oxygen atoms (O) to hydrogen atoms (H) on the surface of the catalyst is in a range of 15 to 35” does not provide a clear indication of the scope of the claim.
More specifically, applicant’s specification (see applicant’s published paragraph [0053]) teaches that various techniques may be used to determine the O/H weight ratio such as directly measuring the contents of the respective elements of the catalyst using an elemental analyzer, by the component analysis method using an electron beam or X-ray spectrum analyzer, such as an electron probe microanalyzer (EPMA) or an energy dispersive X-ray spectroscopy (EDX). These techniques may produce different results, for example by analyzing the surface to different depths or failure to detect hydrogen amounts. Since the claim does not set forth the method used to determine the weight ratio, and multiple different techniques are suggested by the specification, the claim is indefinite.
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 1-3, 7-8 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 2018/0166698).
Regarding claim 1-3 and 8, Kim teaches catalyst for fuel cells (Fig. 1; paragraph [0009]), the catalyst comprising: core-shell particles (see mixed metal particles of Fig. 1); and a carbon-based support (“carbon” support at Fig. 1) configured to support the core-shell particles, wherein the core-shell particles include cores having an alloy of a precious metal [e.g. platinum as in claim 2] and a transition metal [e.g. nickel as in claim 3] and shells having the precious metal located on the cores (see Fig. 1 which illustrates Pt shell / Pt-Ni core particles disposed on a carbon support), and wherein a surface of the catalyst includes a hydrophilic group, such as a carboxyl group [as in claim 8] (paragraph [0046-0047], wherein the PCA-doped crystalline carbon is provided with a hydrophilic property, and carboxyl groups are expected from the carboxylic acid).
Regarding claim 7, the cited art remains as applied to claim 1. Kim further teaches wherein the core-shell particles have a particle size lying within the range of 2 nm to 20 nm (Table 1; paragraph [0055]).
Regarding claim 11, the cited art remains as applied to claim 1. Kim further teaches wherein based on a total weight of the catalyst: an amount of 30 wt. % to 70 wt. % of the carbon-based support; and an amount of 30 wt. % to 70 wt. % of the core-shell particles (Example 1 at [0046-0050] teaches 175 mg of Pt/C catalyst formed using 110 mg of PCA doped crystalline carbon, suggesting about 65 mg of platinum, and adding, 64 mg nickel compound, for an apparent carbon:metal ratio of the catalyst being about 58.5%:41.5%).
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 of this title, 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 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim (US 2018/0166698) and Kaneko (US 2023/0105398).
Regarding claims 4-5, the cited art remains as applied to claim 1. Kim does not appear to teach wherein a molar ratio (P/M) of the precious metal (P) to the transition metal (M) of the core is in a range of 1 to 3 as in claim 4, or the shell is in a range of 3 to 10 as in claim 5.
In the fuel cell art, Kaneko teaches that in a platinum-transition metal catalyst, wherein the ratio of platinum to transition metal is 20-40 mol%transtion metal per 100 mol% platinum [a Pt:TM ratio range of 5:1 to 2.5:1] for the benefit of maximizing catalytic activity (paragraphs [0041-0042]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the catalyst material of Kim to have a molar ratio (P/M) of the precious metal (P) to the transition metal (M) of the composite particle to lie in the 5:1 to 2.5:1 range for the benefit of providing desirable catalytic activity as taught by Kaneko.
As to the ratios corresponding to the core and shell, specifically, these are not disclosed by the cited art. However, it has been held that “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (MPEP 2144.05 IIA). Here, the claimed ranges of 1 to 3 for the core as in claim 4, and 3 to 10 for the shell as in claim 5, are found to be obvious over the combination of Kim and Kaneko because Kaneko teaches a range close to that claimed, while Kim teaches that the platinum tends to form a thin layer on the surface of the composite particle, there by suppressing elution of transition metal (Kim paragraph [0089]), indicating an increased Pt content in the surface compared to the core to provide the elution suppression function. Manipulation of the relative platinum content to optimize this effect is prima facie obvious.
Claims 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim (US 2018/0166698) and Gatalo (US 2022/0037673).
Regarding claim 6, the cited art remains as applied to claim 1. Kim further characterizes the platinum layer as being a “skin” type layer (abstract), but does not describe the layer has having a thickness of 2 nm to 20 nm.
In the fuel cell art, Gatalo teaches that a “platinum skin” on a platinum alloy particle configured to have desirable activity would be understood to have a thickness of up to about 2 nm (paragraph [0007]).
The claimed range of 2 nm to 20 nm is found to be obvious over the combination of Kim and Gatalo because either the platinum skin of Kim would be understood to have a thickness of up to 2 nm, or otherwise it would have been obvious to configure the skin to have this thickness for the benefit of providing desirable catalytic activity as taught by Galato. The claimed range includes 2 nm, and therefore overlaps the suggested range of the prior art.
Claims 9 is/are rejected under 35 U.S.C. 103 as being obvious over Kim (US 2018/0166698).
Regarding claim 9, the cited art remains as applied to claim 1. Kim is silent as to a weight ratio (O/H) of oxygen atoms (O) to hydrogen atoms (H) on the surface of the catalyst is in a range of 15 to 35.
However, applicant’s specification at paragraphs [0052-0053] suggests that the claimed oxygen to hydrogen ratio is associated with a hydrophilized surface comprising a hydrophilic functional group, such as a carboxyl group.
Although Kim does not teach the O/H ratio at the surface, Kim does teach functionalizing the catalyst surface using carboxylic acid, suggesting an abundance of oxygen on the surface of the catalyst, and further teaches the consequence of the treatment as production of a hydrophilic property (paragraphs [0046-0047]).
Therefore, the claimed range is found to be obvious because the even if the O/H range of the cited art does not lie within the claimed O/H weight ratio range of 15 to 35, Kim does suggest an oxygen-rich surface which provides similar properties in the production of a hydrophilic surface comprising a hydrophilic group such as a carboxyl group.
Claims 9 is/are rejected under 35 U.S.C. 103 as being obvious over the combination of Kim (US 2018/0166698) and Iijima (USP 10886539).
Regarding claim 9, the cited art remains as applied to claim 1. Kim is silent as to a weight ratio (O/H) of oxygen atoms (O) to hydrogen atoms (H) on the surface of the catalyst is in a range of 15 to 35.
In the fuel cell art, Iijima teaches a catalyst composition comprising residual oxygen at 0.4 mass % and residual hydrogen at 0.0022 mass % (Table 1 Example g), an O/H ratio of about 18. Iijima further teaches that the content of residual hydrogen and oxygen in the catalyst is controlled in order achieve desirable durability and power generation performance (c5:39-60).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the catalyst of Kim to have a residual oxygen to hydrogen ratio of 18, as this ratio is associated with a desirable embodiment and may produce improved durability and power generation performance as taught by Iijima. The claimed range of 15 to 35 weight percent O/H is found to be obvious as the suggestion of Iijima lies within the claimed range.
Claims 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or alternatively, under 35 U.S.C. 103 as being unpatentable over of Kim (US 2018/0166698).
Regarding claim 10, the cited art remains as applied to claim 1. Kim is silent as to wherein an elution amount of the precious metal or the transition metal, when the catalyst is immersed in a 1 mol/L (M) perchloric acid (HClO4) solution at a temperature of 80° C. for 24 hours is in a range of 0.1 parts per million (ppm) to 15 ppm per gram of the catalyst.
However, it has been held that a rejection under 102 or 103 can be made when the prior art product seems to be identical, but is silent as to an inherent characteristic (MPEP 2112 III). Here, the behavior of the Kim-Lee material if tested as described in the claim is not reported, but is a consequence of the material, thus a possibly inherent property.
As described above, the combination of Kim and Lee teaches a product which possesses all the structural features set forth in claim 1, such as a platinum/nickel core-shell particles disposed on a carbon support, and having a hydrophilic surface (Kim paragraph [0046]; Lee paragraph [0041]). Kim further teaches that the catalyst is configured such that it suppresses elution of metal (paragraph [0089]).
Therefore, the limitations of claim 10 are not found to patentably distinguish the claimed invention from the cited art because the same structure is taught, and the structure is described as providing the same or similar advantage in that elution of transition metal is suppressed. Although the particular amount of elution is not disclosed by Kim, absent any evidence to the contrary, since the structure and noted advantages are similar, the same or similar result is expected leaving the claimed feature found to be implicitly present, or at least obvious since only a difference in degree of suppressed elution is achieved.
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Itoh (USP 5876867) platinum alloyed with transition metal in order to promote catalytic activity;
Kakinuma (US 2023/0321633) platinum transition metal catalyst including high platinum content for improving resistance to elution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (EST).
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723