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’ Preliminary Amendment, filed on August 22, 2023, has been made of record and entered. In this amendment, claims 3 and 4 have been amended to eliminate multiple claim dependency.
No claims have been canceled or added; claims 1-5 are presently pending in this application.
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
Applicant's election with traverse of Group I, claims 1-3, in the reply filed on December 11, 2025, is acknowledged. The traversal is on the ground(s) that “examination of all three groups can be made without serious burden as it would involve consideration of only two additional claims”.
This is not found persuasive because the Examiner respectfully submits that, in restriction requirements, the consideration of additional claims in an application is not always a serious burden. The serious burden lies within the subject matter of said additional claims and, in this instance, whether the claims in their entirety form a group of inventions that are linked to form a single general inventive concept where there is a technical relationship among the inventions that involves at least one common or corresponding technical feature.
As stated in the previous Restriction Requirement, Groups I-III were shown to lack unity of invention, as the special technical feature of a porous cathode catalyst was shown to not make a contribution over the prior art in view of Hachitani et al. (JP 2004-209468; Applicants’ submitted art).
The requirement is still deemed proper and is therefore made FINAL.
Claims 4 and 5 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected organic hydride producing device (claim 4) and to a nonelected method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 are presently under consideration by the Examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/251,104 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the respective sets of claims are drawn to a cathode catalyst layer that hydrogenates a substance to be hydrogenated with a proton to generate an organic hydride, said cathode catalyst layer comprising a cathode catalyst to hydrogenate the substance to be hydrogenated and a porous catalyst support supporting the cathode catalyst.
In the instant application, the cathode catalyst layer additionally comprises a non-porous body including an aggregate of arbitrary primary particles, whereas in the copending ‘104 application, the cathode catalyst layer additionally comprises a water repellent including an aggregate of arbitrary primary particles.
In both the instant application and in the copending ‘104 application, the non-porous body and the water repellent are present in a volume fraction of higher than 10 vol% with respect to the volume of the total solid content of the cathode catalyst layer.
Because the respectively claimed cathode catalyst layers possess the same capability of hydrogenating a substance to be hydrogenated with a proton to generate an organic hydride, comprise the same components, and because the non-porous body and the water repellent both exhibit a volume fraction in the cathode catalyst layer higher than 10 vol% with respect to the volume of the total solid content of the cathode catalyst layer, the claims in the instant application and in the copending ‘104 application are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hanazawa (JP 2010 244952, Applicants’ submitted art; English translation provided and relied upon), in view of Singer (USP 4,177,159), and further in view of Matsuoka et al. (JP 2019 151876, English translation provided and relied upon).
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.
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% with respect to the volume of the total solid content of the cathode catalyst layer, as recited in claim 1.
Regarding claim 1, Singer teaches a powder that is a mechanical mixture of polytetrafluoroethyene (PTFE) and carbon particles precatalyzed with platinum. Singer teaches that, when said powder is to be used as a fuel cell catalyst layer, the ratio, by weight, of PTFE to catalyzed carbon may be as low as 30:70 and at least as high as 50:50. See col. 3, lines 9-28 of Singer, 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.
By employing the aforementioned weight ratios and the densities of PTFE, platinum, and carbon, the volume percentages of PTFE and of catalyzed carbon can be determined:
Density of PTFE: 2200 kg/m3 (2.2 g/cc)
Density of Pt: 21.45 g/cc Density of C: 2.267 g/cc
Weight ratio of PTFE/catalyzed carbon is 30/70:
30 g PTFE/2.2 g/cc PTFE = 13.6364 cc PTFE
70 g catalyzed carbon/(21.45 + 2.267), or 70/23.717 = 2.951 cc catalyzed carbon
13.6364 + 2.951 = 16.5879
13.6364/16.5879 = 82.21 vol. % PTFE
2.951/16.5879 = 17.79 vol. % catalyzed carbon
Weight ratio of PTFE/catalyzed carbon is 50/50:
50 g PTFE/2.2 g/cc PTFE = 22.7272 cc PTFE
50 g catalyzed carbon/(21.45 + 2.267), or 50/23.717 = 2.108 cc catalyzed carbon
22.7272 + 2.108 = 24.8352
22.7272/24.8352 = 91.51 vol. % PTFE
2.108/24.8352 = 8.49 vol. % catalyzed carbon
Therefore, the PTFE/catalyzed carbon weight ratios of 30:70 and 50:50 convert to PTFE volume percentages of 82.21 vol. % and 91.51 vol. %, which are considered to read upon the claim limitation "volume fraction of the non-porous body...is higher than 10 vol%..." in Applicants’ claim 1.
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 by employing a powder that is a mechanical mixture of polytetrafluoroethyene (PTFE) and carbon particles precatalyzed with platinum, said powder exhibiting PTFE/catalyzed carbon weight ratios of 30:70 and 50:50, which convert to PTFE volume percentages of 82.21 vol. % and 91.51 vol. %, as suggested by Singer, as said powder is “particularly useful in fabricating fuel cell electrodes”; see col. 5, lines 31-33 of Singer.
Neither Hanazawa nor Singer 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.
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 and Singer, 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 obtained by the combined teachings of Hanazawa and Singer 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references of record provide teachings regarding electrodes comprising supported catalysts and particles: Baba et al. (GB 1222172); Baris et al. (U. S. Patent No. 4,058,482); Darland, Jr., et al. (U. S. Patent No. 3,423,247); Huo et al. (U. S. Patent Publication No. 2021/0207275); Hampden-Smith et al. (U. S. Patent No. 7,255,954); Tian et al. (CN 101145613).
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 February 2, 2026