DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election of Group I, claims 1-5 and 7-8, in the reply filed on 4/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
It is noted that Applicant requests rejoinder of Group II; however, mutually exclusive product inventions are not eligible for rejoinder practice. Accordingly, unless Group II is amended to be fully commensurate with and include all the limitations of the elected independent claim (once in an allowable condition), Group II will respectfully not be rejoined.
Claim Objections
3. Claim 1 is objected to because of the following informalities: the comma in line 3 prior to “comprising” is improper and should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takehiro et al. (JP 2008-123728)1 (machine translation provided).
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).
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 3, Takehiro teaches wherein
the innermost layer 22a (“first portion”) contains the first catalyst but does not contain the second catalyst (P16-21; 26-34, 51-58; Fig. 3; entire disclosure relied upon), and
the outermost layer 32a (“second portion”) contains the second catalyst but does not contain the first catalyst (P16-21; 26-34, 51-58; Fig. 3; entire disclosure relied upon).
Regarding claim 4, Takehiro teaches wherein a transition metal in the transition metal oxide is at least one selected from the group claimed (titanium is taught – 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).
Claim Rejections - 35 USC § 103
6. 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.
7. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation provided) as applied to at least claim 1 above, and further 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 5, Takehiro teaches the second catalyst (metal oxide that is titanium oxide, molybdenum oxide, etc.) (P21), optionally also including a metal species such as platinum “but not necessarily made of platinum” (P17) that is independent or supported on the metal oxide (P17, 21, 53). Takehiro fails to disclose the second catalyst (metal oxide that is titanium oxide, molybdenum oxide, etc.) has a fibrous shape.
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., optionally also including a metal species such as platinum “but not necessarily made of platinum” (P17) that is independent or supported on the metal oxide (P17, 21, 53)] 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).
8. Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Takehiro et al. (JP 2008-123728) (machine translation provided) as applied to at least claim 1 above, and further in view of Kaczur et al. (US 2017/0037522).
Regarding claim 5, Takehiro teaches the second catalyst (metal oxide that is titanium oxide, molybdenum oxide, etc.) (P21), optionally also including a metal species such as platinum “but not necessarily made of platinum” (P17) that is independent or supported on the metal oxide (P17, 21, 53). Takehiro fails to disclose the second catalyst (metal oxide that is titanium oxide, molybdenum oxide, etc.) that may take the format of a carrier/support for the metal species has a fibrous shape.
In the same field of endeavor, Kaczur teaches analogous art of a polymer electrolyte fuel cell comprising a catalyst layer that has a conductive electrocatalyst support that include metal oxide particles and specifically titanium suboxides as conductive electrocatalyst support materials and teaches that that may take the form of high surface area powders, fibers, and other physically obtainable forms (P237).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to look to known shapes for the second catalyst of Takehiro that may take the format of a carrier/support for a metal species catalyst, and to select a known shape option such as a fiber shape as taught by Kaczur for the titanium oxide support of the electrocatalyst (P237). 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).
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references anticipate at least the subject matter of claim 1:
Takahashi Ikiyuuma (JP 2005-353408)3 (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).
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW 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 Ruddock 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 BARROW/Primary Examiner, Art Unit 1729
1 D1 “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).
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 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).
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