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/Restrictions
Applicant’s election of group I claims 1-2 in the reply filed on 4/28/2026 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)).
Claims 3-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse.
Claim Rejections - 35 U.S.C. § 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.
Claims 1-2 are rejected under 35 U.S.C. § 112(b) 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.
1. It is unclear what the terms “arbitrary” and “primary” mean in the context of this claim. What makes the particles arbitrary? What are the particles primary compared to? It seems the specification does not give answers. Thus this claim is indefinite.
2. This claim is rejected for being dependent upon a rejected claim.
Claim Rejections - 35 U.S.C. § 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 1-2 are rejected under 35 U.S.C. § 103 as being unpatentable over Lister et al., U.S. Patent App. Pub. No. 2020/0056292 A1 [hereinafter Lister] in view of Coker et al., U.S. Patent No. 4,276,146 [hereinafter Coker] and Mitsushima et al., U.S. Patent App. Pub. No. 2020/0080212 A1.
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references render this claim obvious.
I. Lister
A cathode catalyst layer (cathode 104; Lister [0014], fig. 1) that hydrogenates a substance to be hydrogenated with a proton to generate an organic hydride (electrochemical hydrogenation of an organic feed material; Lister abstract, fig. 1), the cathode catalyst layer comprising:
a cathode catalyst to hydrogenate the substance to be hydrogenated (catalyst; Lister [0017], fig. 1); and
a water repellent (polytetrafluoroethylene; Lister [0018], [0032]-[0033]; fig. 1) including … arbitrary primary particles (a suspension of PTFE was used, a person having ordinary skill in the art would recognize that a suspension would involve PTFE particles; Lister [0043]), the water repellent having a higher affinity for the substance to be hydrogenated and the organic hydride than for water (hydrophobic; Lister [0018], [0032]-[0033]; fig. 1) … .
II. Aggregate - Coker
Lister is silent on the particles being in an aggregate. However, the particles must be in some form.
Coker teaches that having Teflon (i.e. PTFE) in agglomerated mass (i.e. aggregated) is a suitable form for a hydrophilic polymer in an electrode layer. Coker col. 3 ll. 26-48, col. 8 ll. 3-23.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s form to be Coker’s aggregated form to yield the predictable result of having a suitable form for a hydrophilic polymer in an electrode layer.
III. Volume Fraction - Mitsushima
Lister is silent on wherein a volume fraction of the water repellent in the cathode catalyst layer is higher than 10 vol% with respect to the volume of the total solid content of the cathode catalyst layer.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious. MPEP § 2144.05.
Mitsushima teaches that the water repellent ratio is a variable that achieves the recognized result of affecting the water repellency. See Mitsushima [0030]. A person having ordinary skill in the art would have recognized that the volume fraction is a variable that impacts the water repellent ratio, hence making it a result-effective variable. See id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have routinely experimented with the variable and determined the optimum or workable range to be inclusive of the claimed range/value(s).
2. The cathode catalyst layer according to claim 1, further comprising:
a … catalyst support supporting the cathode catalyst (carbon support). Lister [0016].
Lister is silent of the support being porous.
However, Mitsushima teaches the electrode support to be porous. Mitsushima [0055]-[0057]. A person having ordinary skill in the art would recognize the porosity would allow for ions and/or water to travel to and from the membrane.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s catalyst support to be porous to allow for ions and/or water to travel to and from the membrane.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571) 270-7578. The examiner can normally be reached Monday-Wednesday, 9 AM - 6 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794
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