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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to an electrochemical cell and its assembly, classified in C25B 9/40.
II. Claims 17-20, drawn to a method of forming encapsulated catalyst particles, classified in C23C 18/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as a product and its process of making. 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 catalyst particles of invention I, claims 1-16, may be made by, e.g. solid-state diffusion processes not involving an oxygen treatment. Additionally, the encapsulated catalyst particles of invention II, claims 17-20, may be used in an electrochemical cell without the limitation of both electrodes containing said catalyst particles.
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 differ in their field of classification, and therefore, require a different field of search. Invention I is classified by the electrochemical cell comprising electrodes made of particles. Invention II is classified by chemical coating with solution of the coating-forming compound.
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 Matthew Jakubowski on March 5, 2026, a provisional election was made without traverse to prosecute the invention of group I, claims 1-. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 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 7 and 16 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.
Regarding claims 7 and 16, the phrase "e.g., Ru, Ph, Pd, Os, and/or Ir" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination on the merits, claims 7 and 16 will be interpreted as referring to platinum group metals as defined in the art except for platinum, i.e. one species selected from the closed group of Ru, Rh, Pd, Os, and Ir.
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.
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, 7, 8, 11-13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shimazaki et al. (US 7,659,224) in view of Tetzlaff et al. (US 5,656,389).
Regarding claims 1 and 13, Shimazaki teaches a fuel cell comprising electrodes made of catalyst particles (Col. 3, lines 6-17: particles; col. 3, lines 45-49: fuel cell), wherein the catalyst particles are at least partially encapsulated in silica (Col. 9, lines 39-46) formed from a precursor of a silicon-based copolymer (Col. 7, lines 14-53: "silane coupling agent"), with the silica encapsulation sustaining the activity of the first and/or second catalyst particles (Col. 4, lines 19-26: the catalyst particles are prevented from clumping together and therefore maintain catalytic activity over long periods of time). Shimazaki does not teach the number of electrodes comprising catalyst particles in the fuel cell. However, Tetzlaff discloses an electrochemical cell in which both electrodes are made of active catalyst particles (Col. 4, lines 16-18). It would have been obvious for one having ordinary skill in the art to have modified the fuel cell of Shimazaki to use two electrodes consisting of catalytically active particles. One would be motivated to make this modification in order to improve the transport of electrolyte throughout the cell (Tetzlaff Col. 1, lines 20-27) and also prevent a loss of catalytic activity as the cell operates (Shimazaki Col. 4, lines 9-26).
Regarding claims 7 and 16, modified Shimazaki teaches that the catalyst particles are selected from the group of Pt, Ru, Ir, Pd, Os, and Rh, either as a single species or combination thereof (Col. 5, lines 20-31).
Regarding claims 8 and 12, modified Shimazaki discloses the silica encapsulation including a silica network of SiO (Col 8, lines 20-35) and that the catalyst particles are nanoparticles (Col 3, lines 18-22).
Regarding claim 11, Shimazaki does not disclose the completeness of encapsulation of the previously anticipated silica encapsulation. However, the pore size of the silica encapsulation is ideally small enough such that the nanoparticles’ metal surfaces do not contact one another (Col. 9, lines 39-57). Therefore, it would be obvious to one skilled in the art to completely encapsulate the nanoparticles with a silica layer to achieve this same goal.
Claims 2-6, 9, 10, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tetzlaff and Shimazaki as applied to claims 1 and 13 above, and further in view of Zhu et al. (US 11,981,815).
Regarding claims 2, 4-6, 9, 14, and 15, Shimazaki teaches a silicon oxide precursor disclosed as a solution containing a coupling agent applied to the catalyst particles to form a layer of silica (Col. 7, lines 14-19). Shimazaki does not teach wherein the silicon-based copolymer is a silicon-carbon copolymer including silicon and carbon-based monomers; nor wherein the silicon-based monomers include carbosiloxane, silane, carbosilane groups, or a combination thereof; nor wherein the carbon-based monomers include styrene, ethylene, propylene groups, or a combination thereof; nor a carbon film with silica forming on an outer surface portion of the silica encapsulation. However, Zhu teaches a silicon-carbon copolymer (Col. 1-2, lines 61-14) which may be disposed onto a substrate and cured to yield a composite final product, such as a component of an electrode (Col. 38, lines 8-14). The silicon monomers may include siloxanes, carbosiloxanes, silanes, carbosilanes, or any combination thereof (Col. 7, lines 46-63; Col. 21-22, lines 60-6). The carbon monomers may include linear, branched, and/or cyclic hydrocarbons, such as styrene, ethylene, and propylene groups (Col. 5, lines 3-22). The carbon film of claim 9 may be formed by inclusion of additives in the silicon-carbon copolymer (Col. 22, lines 20-23). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silane coupling agent disclosed by Shimazaki by using a silicon-carbon copolymer to coat the catalyst particles with silica. One of ordinary skill in the art would have been motivated to make this modification in order to better control the composition of the end product, including its mechanical and chemical properties, to suit the application of the claimed electrochemical cell or a preferred embodiment.
Regarding claims 3 and 10, Zhu also teaches that the Si-O chain lengths, side groups, and crosslinking may be varied to produce a wide variety of properties in silicones (Col. 1, lines 32-35). The composition of the silicon-carbon copolymer is also not limited in the inclusion of additives as previously applied to claims 2, 4-6, 9, 14, and 15. One with ordinary skill in the art would expect varying these aspects of the composition to affect the average molecular weight of the copolymer and the density of the resultant silica encapsulation on the catalyst particles. It is not inventive to discover the optimum or workable ranges of either by routine experimentation. See MPEP §2144.05(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bonastre et al. (US 11,404,701) details catalyst particles comprising metals alloyed by the deposition of silicon oxide onto the particles' surface.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colton B. Forry whose telephone number is (571)272-8873. The examiner can normally be reached Monday through Friday, 7:30 AM-5:00 PM Eastern Time.
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, Michael Barr can be reached at 571-272-1414. 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.
/CBF/Examiner, Art Unit 1711
/MICHAEL E BARR/Supervisory Patent Examiner, Art Unit 1711