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 .
Status of Claims
Claims 1, 2, 8, 10, and 12-15 are currently amended, Claims 3-7, 9, 11, 16, 19, and 20 are as originally filed, and Claims 17 and 18 are canceled.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa et al (US 2022/20258231 A1) as evidenced by Sineover.
Kitagawa et al teaches a novel alloy nanoparticle that contains five or more types of elements directly supported on a carbon material carrier (abstract). The metal elements include Pt, Ru, Ni, Co, and Fe [0031]. The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III. In this case, the specification does not indicate Fe materially affects the basic and novel characteristics. The solvent includes methanol and polyols [0132].
Regarding Claim 3, polyol is synonymous with polyhydric alcohol.
Regarding Claim 4, the solvent includes ethylene glycol, diethylene glycol, triethylene glycol, and propylene glycol [0132].
Regarding Claim 5, Sineover International teaches as evidence that carbon black [0122] contains a small amount of oxygen, hydrogen, nitrogen and sulfur. Most of the heteroatoms are bonded to the surface of the carbon black particles (first page).
Regarding Claim 6, Sineover International teaches oxygen.
Regarding Claim 7, the carbon support includes carbon black, graphite, carbon nanotubes [0122].
Claim 2 is rejected under 35 U.S.C 103 as being unpatentable over Kitagawa et al as applied to Claim 1 above, further in view of Vanheusden et al (US 2007/0034052 A1).
Kitagawa et al discloses the invention substantially as claimed. Though Kitagawa et al teaches polyols [0132], Kitagawa et al does not exemplify tetraethylene glycol as in Claim 2.
Vanheusden et al teaches producing metal particles with a polyol solution (abstract). The polyols include ethylene glycol, propylene glycol, and butylene glycols [0030] and tetraethylene glycol [0031]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the polyols in Kitagawa et al could include tetraethylene glycol as identified in Vanheusden et al, since Vanheusden et al teaches the equivalence of polyols as solvents for producing metal nanoparticles [0003].
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa et al in view of Karczmarska et al in Crystals.
Kitagawa et al teaches a novel alloy nanoparticle that contains five or more types of elements directly supported on a carbon material carrier (abstract). The metal elements include Pt, Ru, Ni, Co, and Fe [0031]. The mixture is heated in a liquid reducing agent at 170-300 °C [0152], which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. Though Kitagawa et al teaches a carbon carrier that excludes graphene or carbon fibers [0031], Kitagawa et al does not teach mesoporous carbon, carbon nanowire, acetylene black, fullerene or combinations thereof.
Karczmarska et al teaches preparing noble metals in the form of nanoparticles and their assembling with carbon supports (abstract) such as active carbon, carbon black, graphite, and carbon nanotubes [0122]. The carbon atoms can be fullerenes and acetylene black (page 9) and mesoporous carbon (page 10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the carbon material carrier in Kitagawa et al may include fullerene, acetylene black, and mesoporous carbon as taught by Karczmarska et al, since Kitagawa et al teaches acetylene black is a common carbon black for Pt nanoparticles (page 10), and mesoporous carbon and fullerene are equivalent to carbon nanotubes (page 11).
Regarding Claim 9, the heating time is 1 minute to 12 hours [0150], which overlaps the claimed range.
Regarding Claim 10, the first, second, and third periods have no limitations on time and read on heating the solution to the temperature range taught by Kitagawa et al.
Regarding Claim 11, the solvent includes polyols [0132], which is synonymous with polyhydric alcohol.
Claims 15, 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa et al.
Kitagawa et al teaches a novel alloy nanoparticle that contains five or more types of elements directly supported on a carbon material carrier (abstract). The metal elements include Pt, Ru, Ni, Co, and Fe [0031]. The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III. In this case, the specification does not indicate Fe materially affects the basic and novel characteristics. The solvent includes methanol and polyols [0132]. The mixture is heated in a liquid reducing agent at 170-300 °C [0152], which overlaps the claimed range. The pressure is 0.1 to 10 MPa [0156], which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 16, the proportion of the platinum group elements (Pt and Ru) is 10 atomic percent or more [0057]. The proportion of elements including Ni, Co, and Fe is a combination having 30 atomic percent or more [0073], which overlaps the claimed range.
Regarding Claim 19, the solvent includes a glycol [0132].
Regarding Claim 20, the glycol includes ethylene glycol, diethylene glycol, triethylene glycol, and propylene glycol [0132].
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kitagawa et al teaches a carbon carrier that excludes graphene or carbon fibers [0031], and there is no basis to suggest modifying Kitagawa et al to include graphene or a graphene derivative as claimed.
Response to Arguments
Applicant’s arguments, see page 7, filed 03/19/2026, with respect to the rejection of Claims 1, 2, 4-6, and 13 under 35 U.S.C. 102(a)(1) as being anticipated by and Claims 15 and 16 under 35 U.S.C. 103 as being unpatentable over CN 110112430 A have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive with respect to the rejections over Kitagawa et al. Regarding Claim 1, the limitation of “consisting essentially of” has support in the specification in [0059] but does not read over Kitagawa et al as described above. The presence of iron (Fe) as taught in Kitagawa et al does not materially affect the claimed invention. Regarding Claim 8, the limitation of the carbon material carrier is addressed above. Regarding Claim 15, the solvent is addressed above.
Conclusion
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.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
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