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 .
Applicants’ remarks and amendments, filed on May 5, 2026, have been carefully considered. No claims have been canceled; new claims 6-10 have been added.
Claims 1-10 are presently pending in this application.
Support for the amendments to claims 1 and 5, and for new claims 6-10 can be found in paragraphs [0021], [0025], [0032], and [0033] of Applicants’ Specification.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on April 28, 2023.
Election/Restrictions
Claims 4 and 5 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected organic hydride producing device (claim 4) and to a nonelected method for preparing a cathode catalyst ink (claim 5), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 11, 2025.
Claims 1-3 and 6-10 are presently under consideration by the Examiner.
Withdrawn Rejections
The provisional nonstatutory double patenting rejection of claims 1 and 2 as being unpatentable over claims 1 and 2 of copending Application No. 18/251,104 (reference application), stated in the previous Office Action, has been withdrawn in view of the Terminal Disclaimer filed by Applicants on May 5, 2026.
The 35 U.S.C. 103 rejection of claims 1-3 as being unpatentable over Hanazawa (JP 2010 244952, Applicants' submitted art) in view of Singer (USP 4,177,159), and further in view of Matsuoka et al. (JP 2019 151876), stated in the previous Office Action, has been withdrawn in view of Applicants’ claim amendments and persuasive traversing arguments.
Applicants have amended claims 1 and 5 to recite volume fraction of non-porous body to be higher than 10 vol. % and 70 vol. % or less, which is outside the calculated ranges obtained from the PTFE/catalyzed carbon ratios disclosed in Singer.
New Grounds of Rejection
The following New Grounds of Rejection are being made in view of Applicants’ amendment to claim 1, the addition of new claims 6-10, and in view of the Examiner’s reconsideration of Hanazawa (JP 2010 244952, Applicants' submitted art), Singer (USP 4,177,159), and Matsuoka et al. (JP 2019 151876).
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 Rejections - 35 USC § 103
Claims 1-3, 6, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hanazawa (JP 2010 244952, Applicants’ submitted art) in view of Matsuoka et al. (JP 2019 151876).
Regarding claims 1 and 2, Hanazawa teaches an electrode catalyst layer (“cathode catalyst layer”) comprising catalyst particles and fluororesin particles (“non-porous body including an aggregate of arbitrary primary particles”; “primary particles are non-porous”) as a water repellent, wherein the electrode catalyst layer serves as a component in an electrode in a fuel cell. The catalyst particles include a platinum fine particle (“cathode catalyst”) and a catalyst carrier supporting the platinum fine particle (“porous catalyst support supporting the cathode catalyst”). See pages 2 and 3 and Figure 1 of Hanazawa, in which an electrode layer comprising platinum particles (element 16 in said Figure) are supported on a carbon carrier (element 17 in said Figure), and fluorine resin particles (element 15 in said Figure) is depicted. Because the fluorine resin particles in Figure 1 of Hanazawa appear solid in said Figure, the skilled artisan would reasonably expect that that said fluorine resin particles are "non-porous". See also the Example of Hanazawa (page 5), which depicts an embodiment in which an electrode catalyst layer comprising platinum particles supported on carbon particles and polytetrafluoroethylene (PTFE) is formed.
It is noted that paragraph [0022] of Applicants’ Specification lists polytetrafluoroethylene as an example of the “arbitrary primary particles” forming the “non-porous body”, as recited in Applicants’ claims. Therefore, the teaching of polytetrafluoroethylene by Hanazawa, as discussed above, is considered to read upon these claim limitations.
Regarding claim 3, it is considered that because Hanazawa teaches fluororesin particles structurally reading upon Applicants’ claimed “non-porous body”; the skilled artisan would have been motivated to reasonably expect the fluororesin particles to exhibit the characteristic of being inert to an electrolytic reduction reaction, absent the showing of convincing evidence to the contrary.
Regarding claim 6, it is considered that because Hanazawa teaches PTFE particles that structurally read upon Applicants’ claim limitation “non-porous body including an aggregate of primary particles”, the skilled artisan would have been motivated to reasonably expect the PTFE disclosed in Hanazawa to comparably exhibit the claimed “property of impeding a flow of the substance to be hydrogenated and the organic hydride”, absent the showing of convincing evidence to the contrary.
Regarding claim 10, Hanazawa teaches, in the Example therein, the formation of a catalyst layer from a dispersion comprising a platinum-supported catalyst (“cathode catalyst”; “porous catalyst support”), an anionic surfactant, and polytetrafluoroethylene (PTFE; “non-porous body”). Said dispersion is subjected to ultrasonic waves, stirring, and homogenizing and further dispersing to form a slurry (“cathode catalyst ink”. The slurry is then applied to an electrode substrate, subjected to suction filtering, washing, drying, and firing to form the catalyst layer.
Hanazawa does not explicitly teach or suggest the limitations of Applicants' claims regarding the volume fraction of the non-porous body in the cathode catalyst layer being higher than 10 vol% and 70 vol% or less with respect to the volume of the total solid content of the cathode catalyst layer, as recited in claim 1.
However, Hanazawa teaches, in the Example therein, the formation of a catalyst layer from a dispersion comprising a platinum-supported catalyst, an anionic surfactant, and polytetrafluoroethylene (PTFE), wherein the amount of PTFE is preferably 40% to 100% by weight relative to the weight of the catalyst.
By dividing this weight percentage range by the density of PTFE, the volume percentage range can be determined:
40-100 g/2.2 g/cm3 = 18.18-45.45 cm3, or 18.18-45.45 vol. %.
Since the aforementioned dispersion comprises PTFE in a volume percentage range reading upon that recited in Applicants’ claim 1, and said dispersion is employed to form the catalyst layer, the skilled artisan would reasonably expect said catalyst layer to contain PTFE in an amount of from 18.18-45.45 vol.%, which falls within the range “higher than 10 vol% and 70 vol% or less with respect to the volume of the total solid content of the cathode catalyst layer”, as recited in Applicants’ claim 1.
Hanazawa does not explicitly teach or suggest the limitations of Applicants' claims regarding the cathode catalyst layer being able to hydrogenate a substance to be hydrogenated with a proton to generate an organic hydride, as also recited in Applicants' claim 1.
Additionally, although Figure 1 of Hanazawa depicts an electrode layer comprising (a) platinum particles supported on a carbon carrier and (b) fluorine resin particles, this reference does not teach or suggest the limitations of claim 9 regarding the thickness of the electrode layer (“cathode catalyst layer”).
Regarding claim 1, Matsuoka et al. teach, in a device for producing an organic hydride, a reduction electrode disposed on one side of an electrolyte membrane. The reduction electrode comprises a reduction electrode catalyst layer containing a reduction catalyst (comprising metal particles selected from the group consisting of Pt, Ru, Pd, Ir, and alloys thereof) and a catalyst support (e.g., porous carbon, such as mesoporous carbon, porous metal, or porous metal oxide). The reduction electrode additionally comprises a microporous layer in contact with the reduction electrode catalyst layer, and a diffusion layer disposed adjacent to the microporous layer. The microporous layer can be formed by applying a paste-like mixture of a conductive powder, e.g., carbon, and a water repellent agent, e.g., polytetrafluoroethylene (PTFE), onto the surface of the diffusion layer and drying. See paragraphs [0031]-[0040] of Matsuoka et al.
Matsuoka et al. further teach that the production of organic hydrides involves adding hydrogen produced by water electrolysis to a substance to be hydrogenated in a hydrogenation reactor, and also involves generation of protons from water supplied to an oxidation electrode, and hydrogenating pyrazines with the protons through an electrochemical reaction to generate piperazines as organic hydrides. See paragraphs [0005] and [0011] of Matsuoka et al.
Note that the components defining the reduction electrode catalyst layer and the microporous layer, as disclosed in Matsuoka et al., are also disclosed in Hanazawa, as discussed above. Therefore, because Matsuoka et al. teach a reduction electrode comprising (a) a reduction electrode catalyst layer comprising (i) a reduction catalyst comprising metal particles selected from, inter alia, Pt, and (ii) a catalyst support comprising carbon, and (b) a microporous layer comprising a mixture of a conductive powder, e.g., carbon, and a water repellent agent, e.g., PTFE, and further teach that said reduction electrode serves as a component in a device for producing an organic hydride, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the electrode catalyst disclosed in Hanazawa to suitably and effectively hydrogenate a substance to be hydrogenated with a proton to generate an organic hydride, motivated by the teachings of Matsuoka et al.
Regarding claim 9, Matsuoka et al. teach that the electrode catalyst layer disclosed therein exhibits a thickness ranging from 1 to 100 µm, and that the microporous layer exhibits a thickness of from 1 to 50 µm. See paragraphs [0036] and [0040] of Matsuoka et al. As the components in the electrode catalyst layer and in the microporous layer disclosed in Matsuoka et al. are also disclosed in Hanazawa, it would have been obvious to one skilled in the art before the effective filing date of Applicants’ invention to modify the electrode layer disclosed in Hanazawa by employing a thickness ranging from 2 to 150 µm, i.e., the sum of the thicknesses of the electrode catalyst layer and the microporous layer, as suggested by Matsuoka et al.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hanazawa (JP 2010 244952, Applicants’ submitted art) in view of Matsuoka et al. (JP 2019 151876, Applicants’ submitted art) as applied to claim 1 above, and further in view of Singer (U. S. Patent No. 4,177,159).
Hanazawa and Matsuoka et al. are relied upon for their combined teachings with respect to claim 1, as stated above. However, neither of these references teach or suggest the limitations of claims 7 and 8 regarding the average particle size of the PTFE (“non-porous body”).
Regarding claims 7 and 8, Singer teaches a powder that is a mechanical mixture of polytetrafluoroethylene (PTFE; “non-porous body”) and carbon particles precatalyzed with platinum. See col. 3, lines 9-28 of Singer, which teaches that the PTFE is in the form of particles which are on the order of 100 microns in size, as well as col. 5, lines 28-30, which further teaches that the catalyzed carbon is in the form of platinum supported on the carbon.
Singer additionally teaches the feasibility in reducing the particle size of the mixture “to on the order of about five microns or less”; see col. 3, lines 29-31. From this teaching, the skilled artisan would readily envision that both the PTFE particles and the carbon particles precatalyzed with platinum would, subsequent to the particle size reduction, exhibit sizes of about five microns or less. The teaching of PTFE particles having a particle size of “about five microns or less” falls within the average particle size ranges recited in Applicants’ claims 7 and 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to modify the electrode catalyst layer of Hanazawa in view of Matsuoka et al. by employing a powder that is a mechanical mixture of polytetrafluoroethylene (PTFE) and carbon particles precatalyzed with platinum, said mechanical mixture exhibiting sizes of about five microns or less, as suggested by Singer, as said powder is "particularly useful in fabricating fuel cell electrodes"; see col. 5, lines 31-33 of Singer.
Response to Arguments
In response to Applicants’ remarks traversing the teachings of Hanazawa, in that “the fluororesin content in the gas diffusion electrode tends to be high, or can be made high”, thereby facilitating the discharge of water from the electrode, and “even if the amount of fluororesin contained in the gas diffusion electrode is increased, the diffusion of air, which is intended to be diffused into the gas diffusion electrode, is unlikely to be impeded”, the Examiner respectfully submits that, as stated in the above New Ground of Rejection, the Example of Hanazawa teaches a weight percentage range of PTFE (“non-porous body”) that converts to a volume percentage range that reads upon Applicants’ claim limitation “higher than 10 vol% and 70 vol% or less with respect to the volume of the total solid content of the cathode catalyst layer”. Therefore, the compatibility between the discharge of water and the diffusion of the substance to be hydrogenated would be expected to be exhibited by Hanazawa, absent the showing of convincing evidence to the contrary.
For these reasons, Applicants’ arguments with respect to Hanazawa have been considered, but are not persuasive.
Applicants’ request for rejoinder of presently non-elected claims 4 and 5 is noted, and will be considered upon the indication of allowable subject matter in presently elected claims 1-3 and 6-10.
Conclusion
Applicant's amendment (i.e., the amendment to claim 1, and the addition of new claims 6-10) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 June 8, 2026
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