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 .
Response to Amendment
Upon consideration, the previous rejection of record was withdrawn in light of new amendments. However new rejection is applied to the amended claims. All changes made in the rejection are necessitated by the amendment.
Claim Rejections - 35 USC § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-22 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation “…an oxide that has peaks at positions of 2θ=34.88°±1.00°, 50.20°±1.00°, and 59.65°±1.00° in an X-ray diffraction measurement using a CuKα ray…” renders the claims indefinite because it is unclear whether any oxide catalyst layer having the metal constituents of bismuth and ruthenium would show similar X-ray diffraction pattern. As evidence by the cited prior art (see figure 1 of JP 2019-195775 A), an oxide catalyst with bismuth and ruthenium shows the claimed X-ray diffraction pattern. It is therefore reasonable to conclude that the claimed X-ray diffraction pattern is extremely common to any oxides having in its composition a phase vaguely close to bismuth and ruthenium oxides without sodium. Examiner submits that such X-ray diffraction pattern would also show for an oxide catalyst material with bismuth, ruthenium, or sodium and recommends claimed subject matter that clearly describes the composition of the catalyst layer rather than the diffraction pattern.
Dependent claims 2-13, 15-19 and 21-22 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2013/0330651 hereinafter Thompsett in view of JP 2019-195775 A hereinafter Kinumoto.
Regarding Claim 1, Thompsett teaches an electrode for an electrochemical cell, the electrode comprising: a catalyst layer that includes sodium, bismuth, ruthenium, and oxygen (paragraphs 23-26 [i.e., one or more first metals including sodium and bismuth; one or more second metals including ruthenium; and oxygen]). The recitation “used for oxygen reactions” in the preamble is considered intended use and therefore not given patentable weight (see MPEP § 2111.02).
Thompsett does not specifically disclose the X-ray diffraction measurement of the oxide layer as claimed, however, regarding composition and product claims, when the structure or composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01).
Alternatively, Kinumoto teaches an electrode comprising an oxide catalyst layer that includes bismuth and ruthenium (paragraphs 13, 16). Kinumoto further teaches an X-ray diffraction pattern of the oxide catalyst layer (see figure 1 below) having crystal structure of a pyrochlore structure.
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As shown in figure 1 above, the oxide catalyst layer has peaks at positions of 2θ=34.88°±1.00°, 50.20°±1.00°, and 59.65°±1.00° in an X-ray diffraction measurement using a CuKα ray (i.e., peaks at positions of 35o, 50o, and 60o).
Therefore, it would have been obvious to one of ordinary skill in the art to form such oxide catalyst layer with the claimed metal constituents before the effective filing date of the claimed invention because Kinumoto discloses that such configuration can improve the performance of oxygen generation reaction and oxygen reduction reaction catalysts (paragraph 12).
Regarding Claim 2, the combination teaches that an atomic ratio of the oxygen to the bismuth and an atomic ratio of the oxygen to the ruthenium are both more than 3.5 (paragraphs 27,28 of Thompsett). In addition, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 -97 (2007) (see MPEP § 2143 , E.).
Regarding Claims 3-5, the combination teaches that the oxygen reactions occur in an alkaline aqueous solution as an electrolyte (paragraph 66 of Thompsett), and the oxygen catalyst having nanometer sized particles (paragraph 5 of Thompsett).
Regarding Claim 6, the combination teaches that the electrode comprises a gas diffusion layer (paragraphs 56, 57, 61 of Thompsett).
Regarding Claims 7-11, the combination teaches that the catalyst layer comprises an oxygen catalyst, conductive material, and water-repellent material (paragraph 57 of Thompsett).
Regarding Claims 12-13, the combination teaches an alkaline fuel cell comprising the electrode as claimed and expected to include a non-electronically conductive reaction space divider arranged on an electrolyte side, and the divider having holder portions configured to hold the liquid electrolyte (paragraph 66 of Thompsett).
Regarding Claim 14, Thompsett teaches an electrode for an electrochemical cell and a method for preparing the electrode (see preparation Examples), the method comprising: preparing a catalyst layer that includes sodium, bismuth, ruthenium, and oxygen (paragraphs 23-26 [i.e., one or more first metals including sodium and bismuth; one or more second metals including ruthenium; and oxygen]). The recitation “used for oxygen reactions” in the preamble is considered intended use and therefore not given patentable weight (see MPEP § 2111.02).
Thompsett does not specifically disclose the X-ray diffraction measurement of the oxide layer as claimed, however, regarding composition and product claims, when the structure or composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01).
Alternatively, Kinumoto teaches an electrode comprising an oxide catalyst layer that includes bismuth and ruthenium (paragraphs 13, 16). Kinumoto further teaches an X-ray diffraction pattern of the oxide catalyst layer (see figure 1 below).
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As shown in figure 1 above, the oxide catalyst layer has peaks at positions of 2θ=34.88°±1.00°, 50.20°±1.00°, and 59.65°±1.00° in an X-ray diffraction measurement using a CuKα ray (i.e., peaks at positions of 35o, 50o, and 60o).
Therefore, it would have been obvious to one of ordinary skill in the art to form such oxide catalyst layer with the claimed metal constituents before the effective filing date of the claimed invention because Kinumoto discloses that such configuration can improve the performance of oxygen generation reaction and oxygen reduction reaction catalysts (paragraph 12).
Regarding Claim 15, the combination teaches that an atomic ratio of the oxygen to the bismuth and an atomic ratio of the oxygen to the ruthenium are both more than 3.5 (paragraphs 27,28 of Thompsett). In addition, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 -97 (2007) (see MPEP § 2143 , E.).
Regarding Claim 16, the combination teaches that the oxygen catalyst has nanometer sized particles (paragraph 5 of Thompsett).
Regarding Claims 17-19, the combination teaches preparing a catalyst layer that comprises an oxygen catalyst, a conductive material, and a water-repellent material (paragraph 57 of Thompsett); and wherein the preparation step includes forming a gas diffusion layer on the catalytic layer with a current collector (paragraphs 57-68 of Thompsett).
Regarding Claims 20-22, the combination teaches an electrochemical device (alkaline fuel cell) comprising the electrode as described above and an anode (negative electrode) that includes hydrogen (paragraphs 61, 66).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OSEI K AMPONSAH whose telephone number is (571)270-3446. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICHOLAS A SMITH can be reached at (571)272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OSEI K AMPONSAH/ Primary Examiner, Art Unit 1752
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