DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s resposne filed 7/29/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
2. The objection to claim 1 is withdrawn in view of the appropriate correction filed.
Claim Rejections - 35 USC § 112
3. 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.
4. Claim 1, and thus dependent claims 2, 4, 7-8, and 9-10; claim 4; claim 9; and claim 10 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.
A) Claim 1 was amended to recite the following newly added feature with emphasis added:
“and the second catalyst consists of fibers consisting of an oxide of a transitional metal.”
The same is recited in each of claims 9 and 10. The meaning of “a transitional metal” is entirely unclear and does not have a standard meaning in the prior art; there is no group of elements termed transitional metals. The use of this term within claim 1 creates another issue under 35 U.S.C. 112(b)/second paragraph in claim 4 which recites “the transition metal” as there is now insufficent antecedent basis for this term within claim 4.
For compact prosecution purposes, it will be assumed that claim 1 is meant to define:
“and the second catalyst consists of fibers consisting of an oxide of a transition metal.”
Claims 9 and 10 require the same correction shown above.
B) With the above assumption, claim 1, lines 14-15 recites the newly added feature of:
“wherein the first catalyst consists of platinum catalyst on carrier particles; and the second catalyst consists of fibers consisting of an oxide of a transition metal.”
The claim earlier recites in lines 7-8:
“the electrode catalyst layer contains a first catalyst containing platinum and a second catalyst containing transtion metal oxide…”
The use of multiple transitional phrases with different meanings (i.e., “containing” is open-ended whereas “consisting of” is closed - see MPEP § 2111.03) to define the component(s) of the first catalyst and the second catalyst is improper and renders the claim indefinite as it is not clear which option of the two is considered controlling. The issue with respect to be indefinite is then further compounded because it is not clear if the “platinum catalyst on carrier particles” of lines 14-15 is intended to be the same “containing platinum” feature of lines 7, or is attempting to set forth additional components; and it is not clear if the “fibers consisting of an oxide of a transition metal” is intended to be the same as the “containing transition metal oxide” feature of line 8. It is further not clear if the subsequent features are meant to be relative to the first and second catalysts defined in claims 7-8, or those defined in claims 14-15, or if they are intended to be one in the same. Accordingly, the use of mulitple transitional phrases and alternative language for the componets thereafter renders the claim indefinite.
C) With the above assumption from section A, claim 1 recites the newly added feature of with emphasis added:
“and the second catalyst consists of fibers consisting of an oxide of a transition metal.”
The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948); Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004); MPEP § 2111.03. A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or a step (MPEP § 2111.03).
Accordingly, claim 1 requites the second catalyst to consist of fibers, said fibers consisting of an oxide of a transition metal. There is thus a singular oxide of a singular transition metal. This is consistent with the court’s interpretation within Norian Corp. v. Stryker Corp., 432 F.3d 1356 (Fed. Cir. 2005):
“In particular, this court has interpreted the word "a" in its singular sense when, as in this case, it has been used in conjunction with the closed transitional phrase "consisting of." See Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (" [A]lthough `a' without more generally could mean one or more in an open-ended patent claim, `a' with `consisting of' in this case indicates only one member of a Markush group."). Thus, the claim language "consisting of . . . a sodium phosphate," on its own, suggests the use of a single sodium phosphate.”
Each of claims 4, 9, and 10 are thus rendered indefinite because they add additional components outside the bounds of what is defined by this closed transitional phrase.
Claim 4 defines, “…wherein the transition metal is at least one selected from the group consisting of titanium, tantalum, niobium, iron and zirconium.” The use of “at least one” allows for multiple transition metals to be present in the oxide composition, whereas the controlling parent claim limits the fibers to consist of an oxide (singular) of a transition metal (singular).
A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or a step (MPEP § 2111.03), wherein this claim allows for the option (“at least one”) to include a second transition metal, a third transition metal, etc. Accordingly, claim 4 is indefinite given it is not possible to simultaneously meet the requirements of claim 1, and then go on to then meet the contradictory requirements of claim 4.
Claim 9 defines, “…wherein the oxide of the transitonal metal is selected from the group consisting of TiwOxNyPz or ZrwOxNyCv.” The compositions recited are not limited to examples that consist of an oxide of a transition metal and instead include additional elements therein. An exemplary option for “fibers consisting of an oxide of a transition metal” includes fibers consisting of TiO2. Claim 9 does not define such an option, but instead defines compositions outside the scope of “fibers consisting of an oxide of a transition metal.” For example, TiwOxNyPz includes the additional elemental components of nitrogen (N) and phosphorous (P). A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or a step (MPEP § 2111.03).
Claim 10 defines, “…wherein the oxide of the transitonal metal is TiwOxNyPz or ZrwOxNyCv having a ratio of (NN/NTi) of the number of nitrogen atoms (NN) to the number of Ti atoms (NTi) of 1.0 or more and 1.5 or less.” The compositional genus recited is not limited to a genus that consists of an oxide of a transition metal, and instead include additional elements therein. An exemplary option for “fibers consisting of an oxide of a transition metal” includes fibers consisting of TiO2. Claim 10 does not define such an option, but instead defines compositions outside the scope of “fibers consisting of an oxide of a transition metal.” TiwOxNyPz includes the elemental components of nitrogen (N) and phosphorous (P). A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or a step (MPEP § 2111.03).
Appropriate correction is required. The claims will be examined as best as possible with respect to prior art application.
Claim Rejections - 35 USC § 102
5. The rejection of claims 1-4 and 7-8 under 35 U.S.C. 102(a)(1) as being anticipated by Takehiro et al. (JP 2008-123728) (machine translation previously provided) is withdrawn in view of the amendments provided.
Claim Rejections - 35 USC § 103
6. The rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of under in view of Kaczur et al. (US 2017/0037522) is withdrawn in view of the claim amendments filed.
7. Claims 1-2, 41, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of Ozawa et al. (WO 2019/189839), published 10/03/2019, using US 2021/0013524 as an English-language family member and translation thereof.
Regarding claim 1, Takehiro teaches an electrode catalyst layer 12a (P26) having a first surface configured to be in contact with a polymer electrolyte membrane 11 in a membrane electrode assembly 202 (P16-21; 26-34, 51-58; Fig. 3), and a second surface facing away from the first surface (see Fig. 3), the electrode catalyst layer 12a comprising:
an innermost layer 22a (“a first portion”) having a layer shape including the first surface (Fig. 3; P16, 30-34, 51-52); and
an outermost layer 32a (“a second portion”) having a layer shape including the second surface, the outermost layer 32a (“second portion”) being laminated on the innermost layer 22a (“first portion”) (Fig. 3; P16, 30, 53-55), wherein
the electrode catalyst layer 12a contains a first catalyst containing platinum (P17-21, 30, 32-33, 52-54) and a second catalyst containing a transition metal oxide (P17-21,30, 53-54; note both titanium (Ti) and molybdenum (Mo) are transition metals) with P21 reproduced below for convenience:
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the first catalyst has catalytic activity higher than that of the second catalyst (intrinsic property to the materials described; see also P20),
a density of the first catalyst in the electrode catalyst layer 12a is highest in a region
including the first surface in the innermost layer 22a (“first portion”) [i.e., the first catalyst only exists in the innermost layer 22a (“first portion”) such that this is intrinsically true], and
a maximum value of the density of the first catalyst in the outermost layer 32a (“a second portion”) is smaller [i.e., it is zero as it does not exist in this layer] than a minimum value of the density of the first catalyst in the innermost layer 22a (“first portion”) (P16-21; 26-34, 51-58; Fig. 3; entire disclosure relied upon).
It is noted that that in addition to the overall disclosure teaching the construct claim, Example 1 also teaches a non-limiting, specific embodiment that reads on the construct claimed (see P51-55).
Takehiro thus provides the necessary teaching, suggestion, and/or motviation to provide the first catalyst to consist of platinum catalyst (i.e,. “at least platinum” (P21) encompasses the option of only platinum) on conductive carbon (“carrier particles”); and explicitly teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21) with an optional metal species thereon (P17, 21, 53).
Takehiro fails to disclose the second catalyst (metal oxide that is titanium oxide, molybdenum oxide, etc.) consists of fibers.
In the same field of endeavor, Ozawa teaches analogous art of an electrocatalyst layer for a polymer electrolyte fuel cell and that it is a known technique to utilize catalytic electron-conducting fibers including those made from a transition metal element such as titanium (Ti) that make be a conductive oxide thereof (P86) within the catalyst layer, generally termed a fibrous material 24 (P85-89; not limited to entire disclosure), the use thereof allowing for the strength of the electrocatalyst layer 12 to be increased, and further, the occurrence of cracking is minimized in the electrocatalyst layer 12 when it is formed (P89). Additionally, the use of the fiber-format material allows for voids in the electrocatalyst layer 12 to be increased, and further, the output of the polymer electrolyte fuel cell 30 can be increased (P89).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the second catalyst of Takehiro [i.e., the metal oxide that is titanium oxide, molybdenum oxide, etc.] to have a fibrous shape given Ozawa teaches analogous art of the same entity in an analogous construct (i.e., within a catalyst layer for a PEM fuel cell), and that the use of a fibrous shape allows for the advantages of allowing for the strength of the electrocatalyst layer 12 to be increased, the occurrence of cracking to be minimized, the voids in the electrocatalyst layer 12 to be increased, and further, the output of the polymer electrolyte fuel cell 30 can be increased (P89). The courts have held that the use of a known technique to improve similar products in the same way supports a conclusion of obviousness, as does applying a known technique to a known product ready for improvement to yield predictable results (see MPEP 2143, Exemplary Rationales C and D that support a conclusion of obviousness).
Regarding claim 2, Takehiro teaches wherein
a density of the second catalyst in the electrode catalyst layer 12a is highest in a
region including the second surface in the outermost layer 32a (“second portion”), and
a maximum value of the density of the second catalyst in the innermost layer 22a (“first portion”) is less than [i.e., it is zero as it does not exist in this layer] a minimum value of the second catalyst in the outermost layer 32a (“second portion”).
Regarding claim 4, Takehiro teaches wherein a transition metal in the transition metal oxide is titanium (P16, 21).
Regarding claim 7, Takehiro teaches a membrane electrode assembly 20 (P22-23, 26; Fig. 3), comprising:
the electrode catalyst layer 12a of claim 1 (the rejection of which is entirely incorporated herein and not repeated); and
a polymer electrolyte membrane 11, wherein
the first surface of the electrode catalyst layer 12a is bonded to the polymer electrolyte
membrane 11 (P41-46; note the method of making includes applying a catalyst ink to the polymer electrolyte and additionally includes a step of joining the components via hot pressing or similar).
Regarding claim 8, Takehiro teaches a polymer electrolyte fuel cell (P47-48; Figs. 1, 4) comprising the membrane electrode assembly of claim 7 (entire disclosure relied upon).
8. Claim 93 is rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of Ozawa et al. (WO 2019/189839), published 10/03/2019, using US 2021/0013524 as an English-language family member and translation thereof, as applied to at least claim 1 above, and further in view of Chisaka et al., “Phosphor and nitrogen co-doped rutile TiO2 covered on TiN for oxygen reduction reaction in acidic media,” Catal. Sci. Technol., 2019, 9, 611-6194 (copy provided).
Regarding claim 9, Takehiro teaches teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21).
Takehiro does not teach that the oxide of the transition metal is selected from the group consisting of TiwOxNyPz or ZrwOxNyCv.
In the same field of endeavor, Chisaka teaches analogous art phosphor and nitrogen co-doped TiO2 as a catalyst material for use in polymer electrolyte fuel cells (PEFC’s), the goal thereof to find catalyts for use that are free from platinum-group metal (PGM) due to its scarcity and cost (p. 611). The taught catalyst material is TiOxNyPz catalyst (Experimental section) that achieves enhanced ORR activity (p. 616) and allows for reducing the cost of the PEFC system (p. 611). It is noted that in the background section, other non-platinum catalysts are discussed including ZrOxNy-MWCNT with MWCNT being carbon such that this equates to ZrOxNyCz (i.e., the other option from the group listed (P. 612).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to utilize in place of fibrous TiO2 as taught by modified Taekhiro/Ozawa, a doped version thereof including nitrogen and phorphosur dopants, namely, TiOxNyPz, given Chisaka teaches the material is known in the art, suitable for the same use, and provides the advantages of providing enhanced ORR activity (p. 616) and allows for reducing the cost of the PEFC system (p. 611). Moreover, the courts have held the following (MPEP § 2144.07):
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
9. Claims 9 and 105 are rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of Ozawa et al. (WO 2019/189839), published 10/03/2019, using US 2021/0013524 as an English-language family member and translation thereof, as applied to at least claim 1 above, and further in view of Chisaka et al., “Efficient Phosphorous Doping into the Surface Oxide Layers on TiN to Enhance Oxygen Reduction Reaction aCtivity in Acidic Media,” ACS Appl. Energy Mater. 2020, 3, 9866-9876 (copy provided).
Regarding claim 9, Takehiro teaches teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21).
Takehiro does not teach that the oxide of the transition metal is selected from the group consisting of TiwOxNyPz or ZrwOxNyCv.
In the same field of endeavor, Chisaka teaches analogous art phosphor and nitrogen co-doped TiO2 as a catalyst material for use in polymer electrolyte fuel cells (PEFC’s), the goal thereof to find catalyts for use that are free from platinum-group metal (PGM) due to cost given the higher amounts required on the cathode side (p. 9866). The taught catalyst material is TiOxNyPz catalyst (Experimental section) that achieves enhanced ORR activity (abstract) by way of optimizing the doping thereof (abstract). It is noted that in the background section, other non-platinum catalysts are discussed including ZrOxNy-MWCNT with MWCNT being carbon such that this equates to ZrOxNyCz (i.e., the other option from the group listed (P. 9867).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to utilize in place of fibrous TiO2 as taught by modified Taekhiro/Ozawa, a doped version thereof including nitrogen and phorphosur dopants, namely, TiOxNyPz, given Chisaka teaches the material is known in the art, suitable for the same use, and provides the advantages of providing enhanced ORR activity (abstract). Moreover, the courts have held the following (MPEP § 2144.07):
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Regarding claim 10, Takehiro teaches teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21).
Takehiro does not teach that the oxide of the transition metal is TiwOxNyPz. Please see the rejection of claim 9 above, entirely incorporated into the instant rejection and not repeated here.
Takehiro as modified by Chisaka teaches the effects of the dopoing amounts of both phosphorus and nitrogen, including that the selectivity toward the 4-electron reaction was enahced by the sibtutional nitrogen doping into the surface rutile TiO2 of the TiOxNyPz catalyst (p. 9871). The basis core material is TiN having a 1:1 ratio of the number of nitrogen atoms to the number of titanium atoms. The surface is TiO2 doped with both nitrogen and phosphorus, and the optimization thereof (p. 9871; entire disclosure).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable ranges of the amount of nitrogen and/or phosphorus doping, and the final number of those dopants relative to titanium atoms, in order to achieve the desired ORR activity and electron conductivity, Chisaka teaching that the nitrogen doping has the known effect of enhancing the selectivity toward the 4-electron reaction (p. 9871). The courts have held, “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05.
10. Claim 9 is6 rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of Ozawa et al. (WO 2019/189839), published 10/03/2019, using US 2021/0013524 as an English-language family member and translation thereof, as applied to at least claim 1 above, and further in view of Morioka et al. (WO 2021/025157) (published Feb. 11th, 2021) (using US 2022/0173419 as an English language translation and copy thereof).
It is noted that the applied Morioka ´157 is prior art under 102(a)(1) and 35 U.S.C. 102(a)(2) and has a common inventor and common assignee with the instant application.
In order to qualify for an exception under 35 U.S.C. 102(b)(1), a certified English translation of the foreign application to which priority is claimed would have to be filed. 37 CFR 41.154(b) and 41.202(e).
Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 9, Takehiro teaches teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21).
Takehiro does not teach that the oxide of the transition metal is selected from the group consisting of TiwOxNyPz or ZrwOxNyCv.
In the same field of endeavor, Morioka teaches analogous art of an electrode catalyst layer that utilized a fibrous oxide-based catalyst that includes at least one transition metal including titantium (P13, 26). The oxide-based catalytic material is preferably TiONP (P65), , with Morioka teaching that the layer exhibits high power generation characteristics when used in a PEFC (P11), the fibrous catalystic material entangling to inhibit cracking of the layer and providing an electrocatalyst layer with high durability andgood mechanical properties. The fibers also allow for pore creation that allows draining of the water (P32).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to utilize in place of fibrous TiO2 as taught by modified Taekhiro/Ozawa, a doped version thereof including nitrogen and phorphosur dopants, namely, TiOxNyPz, given Morioka teaches the material is known in the art, suitable for the same use, and provides the advantages of providing a layer that exhibits high power generation characteristics when used in a PEFC (P11), achieves entanglement by way of being fibrous to inhibit cracking of the layer and providing an electrocatalyst layer with high durability and good mechanical properties, and also allows for pore creation that allows draining of the water (P32). Moreover, the courts have held the following (MPEP § 2144.07):
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
11. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation previously provided) in view of Ozawa et al. (WO 2019/189839), published 10/03/2019, using US 2021/0013524 as an English-language family member and translation thereof and Morioka et al. (WO 2021/025157) (published Feb. 11th, 2021) (using US 2022/0173419 as an English language translation and copy thereof) as applied to claim 9 above, and further in view of Chisaka et al., “Efficient Phosphoruos Doping into the Surface Oxide Layers on TiN to Enhance Oxygen Reduction Reaction aCtivity in Acidic Media,” ACS Appl. Energy Mater. 2020, 3, 9866-9876 (copy provided).
Regarding claim 10, Takehiro teaches teaches the second catalyst may consist of TiO2 (“consists of an oxide of a transition metal”) (P21).
Takehiro does not teach that the oxide of the transition metal is TiwOxNyPz. Please see the rejection of claim 9 above, entirely incorporated into the instant rejection and not repeated here.
Takehiro as modified by Morioka does not teach the ratio of the number of nitrogen atoms to the number of titanium atoms or the claiemd range of 1.0 or more and 1.5 or less.
Chisaka teaches analogous art phosphor and nitrogen co-doped TiO2 as a catalyst material for use in polymer electrolyte fuel cells (PEFC’s), the taught catalyst material is TiOxNyPz catalyst (Experimental section) that achieves enhanced ORR activity (abstract) by way of optimizing the doping thereof (abstract). Chisaka teaches the effects of the doping amounts of both phosphorus and nitrogen, including that the selectivity toward the 4-electron reaction was enahced by the sibtutional nitrogen doping into the surface rutile TiO2 of the TiOxNyPz catalyst (p. 9871). The basis core material is TiN having a 1:1 ratio of the number of nitrogen atoms to the number of titanium atoms. The surface is TiO2 doped with both nitrogen and phosphorus, and the optimization thereof (p. 9871; entire disclosure). This is the same construct of Morioka (P65).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable ranges of the amount of nitrogen and/or phosphorus doping, and the final number of those dopants relative to titanium atoms, in order to achieve the desired ORR activity and electron conductivity, Chisaka teaching that the nitrogen doping has the known effect of enhancing the selectivity toward the 4-electron reaction (p. 9871). The courts have held, “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05.
Interview Summary Comments
12. Applicant provides the following regarding the summary of the 6/26/2026 interview:
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This statement/reply is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the prior interview (MPEP 713.04; 37 CFR 1.133(b)). The limitations now presented in the claim set do not match any of the three amendment interations previously presented by Applicant and discussed during the interview or via written correspondence. The subject matter of the interview is thus not appropirately reflected in the reply filed 7/29/2026 as alleged because the reply filed 7/29/2026 argues a newly presented combination of limitations. The Examiner thus relies on the Examiner Interview Summary Record mailed 6/30/2026 as appropirately memoralizing the discussion held and the merits of the application discused.
Response to Arguments
13. Applicant's arguments filed 7/29/2026 have been fully considered but they are not persuasive.
Applicant argues the reference of Ozawa in terms of meeting the feature that the second catalyst consists of fibers:
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In response: This argument is not persuasive based on P86 of Ozawa teaching that the fibers are related to the fibers may be catalytic, as well as electron conducting, and formed of similar materials later claimed (see newly added claims 9-10):
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Accordingly, the primary reference to Takihiro teaches a second catalyst that consists of a transtion metal oxide (TiO2), and Ozawa teaches it is a known technique to provide such a material providing the same funcitonality in the format of a firbous material (P86) for the benefits described (P85-89). Thus, the combination of references meet the claim, and provides the necessary teaching, suggestion, and motivation to arrive at the claimed features.
Applicant argues:
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In response: It is noted that the last sentence is non-sensical and the Examiner respectfully cannot interpret the meaning thereof. This argument is moot given claim 1 requires the the second catalyst to consist of fibers, said fibers consisting of an oxide of a transition metal. There is thus a singular oxide of a singular transition metal. An example of this would be TiO2. Example 3 in the instant specification as relied upon is for fibrous TiwOxNyPz catalyst. This is outside the scope of what is required for claim 1. Moreover, arguendo, even if this example were TiO2, this would still not be commensurate with the claim which allows for any oxide material of any transition metal. The following case law is pertinent to this scenario:
In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.);
In the case law of In re Grasselli cited above, the evidence of experiments limited to sodium were considered insufficient to rebut the prima facie case of obviousness because the claims were directed to catalysts containing an alkali metal (sodium being a species of the genus alkali metal of which there are only six alkali metals). Likewise, in terms of rebutting a prima facie case of obviousness on the basis of unexpected results, the single example of TiO2 does not provide sufficent evidence for the claim genus of “an oxide of a transition metal,” of which the number is 38 (d-block elements – groups 3 to 12) or 68 (the latter number including inner transion metals or f-block elements as well).
Additionally, it is further noted that unexpected results have to be just that: unexpected. Ozawa teaches that by using a fibrous catalytic material (P85-89; not limited to entire disclosure), this allows for the strength of the electrocatalyst layer 12 to be increased, and further, the occurrence of cracking is minimized in the electrocatalyst layer 12 when it is formed (P89). Additionally, the use of the fiber-format material allows for voids in the electrocatalyst layer 12 to be increased, and further, the output of the polymer electrolyte fuel cell 30 can be increased (P89). Accordingly, one would expect that by utilizing a fibrous shaped material within the construct of Takehiro for the TiO2 material, that the above advantages and results would be achieved, and one would expect the output of the polmyer fuel cell to be increased (P89).
It is noted that the prior art cited above to meet claims 9 and/or 10 would also provide evidence that one would expect “fuel cell power generation performance and durability” (the alleged “new and unexpected result”) to be achieved by the use of TiwOxNyPz.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references previously anticipated at least the subject matter of claim 1 prior to the amendments filed 7/29/2026:
Takahashi Ikiyuuma (JP 2005-353408)7 (cited and abstract provided by Applicant);
Song et al. (US 2019/0379057);
Shintani et al. (US 2010/0209807);
Mei et al. (US 2016/0087282); and
Kanai et al. (US 2021/0083300).
Highly relevant prior art includes Sharman et al. (US 2017/0288234).
15. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
1 For compact prosecution purposes (see rejection under 35 U.S.C. 112(b)/second paragraph), claim 4 will be examined as if it read, “the transition metal element is
2 Note that although met/taught by Takehiro, the italicized “configured to” statement does lend itself any structure outside of being capable of being in contact with another entity such as a PEM) (P16-21; 26-34, 51-58; Fig. 3),
3 This claim is examined as best as possible given the issues outlined above under 35 U.S.C. 112(b)/second paragraph.
4 The prior art reference has a common inventor with the instant application but is not subject to any 102(b)(1 or 2) exceptions.
5 These claim(s) are examined as best as possible given the issues outlined above under 35 U.S.C. 112(b)/second paragraph.
6 These claim(s) are examined as best as possible given the issues outlined above under 35 U.S.C. 112(b)/second paragraph.
7 D2 “X” reference applied in each of: the EP Search report mailed 8/11/2024; the Written Opinion of the ISA mailed 12/08/2022; and the JP Notice of Reasons for Refusal dated 10/6/2025 (see Global Dossier File).
Prosecution Insights