DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The applicant’s response dated 24 April 2026 has been entered into the record and is considered fully responsive. The examiner agrees that no new matter was added in the submission of the amendments as per pg. 6 of the applicant’s response. The applicant has cancelled Claims 1, 16, and 18. Claim 2 is now the independent claim. Claim 5 is also an independent claim. The applicant has added new Claims 19, 20, 21, 22, and 23. Currently, Claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 19, 20, 21, 22, and 23 are pending and under examination.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. Claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 12, 13, 14, 15, 17, 19, 20, 21, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Haas et al.
Haas et al. (US Pub. No. 2019/0379058 A1) is directed towards an electrocatalyst composition (title).
Regarding Claim 2, Haas et al. discloses a particulate catalyst (i.e.: tin oxide particles which are at least partially coated by a noble metal oxide layer) comprising a support material (i.e.: undoped or doped tin oxide in ¶22-27) and an iridium coating (¶28-36). Haas et al. further indicates in ¶78 the iridium is deposited as the oxyhydroxide and present as the oxide upon final processing (¶108). In Fig. 1a and Fig. 1b, Haas et al. shows SEM image/EDX elemental maps of the catalyst composition (¶14) from Ex. 1. Fig. 1a shows the presence of Sn which is primarily concentrated in the center (i.e.: core) with a diameter ranging from 20 nm to 100 nm and Fig. 1b shows the presence of the Ir which is concentrated on the exterior (i.e.: shell) with thickness ranging from ~1 nm to 10 nm (mostly less than 5 nm). Haas et al. teaches an Ir content loading of 10 wt.% to 38 wt.% based on the total content of the catalyst composition with the all of the Ir being oxidized (¶28). Haas et al. discloses in inventive Ex. 1 a composite catalyst with an Ir content of 25 wt.% (¶109-112).
Pertaining to the amendment to Claim 2, the inventive examples in Haas et al. (i.e.: Ex. 1-5) all indicate the iridium present in the particulate catalyst is in the form of Ir(IV). However, Haas et al. does teach that the iridium present in the catalyst layer can be Ir3+ and/or Ir4+ (¶33) and that the oxidation state of Ir can be determined by X-ray Photoelectron Spectroscopy (XPS) as per ¶28. Haas et al. further indicates that the catalyst layer comprises a ratio of at least 80 at.% Ir(IV) to 20 at.% Ir(III) as per ¶34. When that ratio is normalized as per the ratio of amended Claim 2, the resultant ratio is 4.0/1.0.
A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 3, Haas et al. discloses the particulate catalyst according to Claim 2 wherein the iridium content of the catalyst is at most 40 wt.% as evidenced by inventive Example 1 where the Ir content is 25 wt.% (¶109-112). A prima facie case of obviousness exists when an example disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 4, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the BET surface area of the support material is 2 m2/g to 40 m2/g as supported by inventive Ex. 1 which has a BET surface area of 21 m2/g and an Ir content of 25 wt.% (¶109-112). A prima facie case of obviousness exists when an example disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 5, Haas et al. discloses a particulate catalyst, comprising: a support material (i.e.: undoped or doped tin oxide in ¶22-27) having a BET surface area ranging from 2 m2/g to <10 m2/g as supported by ¶41 where a preferred embodiment has a BET surface area from 5 m2/g to 35 m2/g. Haas et al. further discloses an iridium coating on the support material is deposited as the oxyhydroxide (¶78) and present as the oxide upon final processing (¶108) wherein the Ir content ranges from 10 wt.% to 38 wt.% based on the total content of the catalyst composition with the all of the Ir being oxidized (¶28) which meets the limitation of Claim 5 of the iridium content ranging from 5-20 wt.%. The oxidized iridium is present in the catalyst layer as Ir3+ and/or Ir4+ (Haas et al. in ¶33) and that the oxidation state of Ir can be determined by X-ray Photoelectron Spectroscopy (XPS) as per Haas et al. in ¶28. Haas et al. further indicates that the catalyst layer comprises a ratio of at least 80 at.% Ir(IV) to 20 at.% Ir(III) as per ¶34. When that ratio is normalized as per the ratio of amended Claim 5, the resultant ratio is 4.0/1.0. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 6, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the Ir content of the catalyst falls within the range defined by the formula in Claim 6. Inventive Ex. 1 of Haas et al. discloses a BET surface area of 21 m2/g and an Ir content of 25 wt.%. When the BET surface area is input into the formula in Claim 6, the minimum value is value is 25 inclusive and the maximum value is 40 inclusive. Since the catalyst content of inventive Ex. 1 is 25 wt.%, the example in Haas satisfies the requirement for Ir-G of Claim 6. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 7, Haas et al. discloses the particulate catalyst per Claim 2, wherein the average layer thickness of the iridium-containing coating is 1.5 nm to 4.0 nm as supported by In Fig. 1a and Fig. 1b. In Fig. 1a and Fig. 1b, Haas et al. shows SEM image/EDX elemental maps of the catalyst composition (¶14) from Ex. 1. Specifically, Fig. 1a shows the presence of Sn primarily concentrated in the center (i.e.: core) with a diameter ranging from 20 nm to 100 nm and Fig. 1b shows the presence of Ir concentrated on the exterior (i.e.: shell) with thickness ranging from ~1 nm to 10 nm (with most thicknesses less than 5 nm). A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 8, Haas et al. discloses the particles of the particulate catalyst according to Claim 2, wherein the catalyst particles comprise a core-shell structure in which the support material is the core and the iridium-containing coating forms the shell (¶27) as illustrated by Fig. 1a which shows that Sn is primarily concentrated in the center (i.e.: core) of the particles and Fig. 1b which shows the presence of the Ir is concentrated on the exterior (i.e.: shell) or the particles (¶114).
Regarding Claim 9, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the iridium is present in the catalyst layer as Ir3+ and/or Ir4+ (¶33). Haas et al. also indicates that one preferred embodiment of the catalyst layer comprises a ratio of at least 80 at.% Ir(IV) to 20 at.% Ir(III) according to ¶34. All of the inventive examples (i.e.: Ex. 1-5 in ¶113, 120, 126, 131, and 136) has iridium present in the IV oxidation state. As per ¶32 of Haas et al, no metallic iridium is present in the final catalyst nor involved in the preparation process. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 10, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the support material is an oxide of a main group element (e.g.: SnO2 or Sb-doped SnO2) as per inventive Ex. #1 (¶109-114) and inventive Ex. #2 (¶115-121).
Regarding Claim 12, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the catalyst has been subjected to a thermal treatment at a temperature of more than 250 degrees Celsius as indicated in ¶79 where the broadest temperature range is 300 to 800 degrees C and a narrower range of 500 to 700 degrees C in ¶82 and Claim 32. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 13, Haas et al. discloses a method for producing a particulate catalyst according to Claim 2, wherein the method comprising depositing an iridium containing coating containing iridium oxide is deposited onto a support material as indicates in ¶78 that the iridium is deposited as the oxyhydroxide and present as the oxide upon final processing (¶108).
Regarding Claim 14, Haas et al. discloses the method according to Claim 13, wherein the coated support material is subjected to a thermal treatment at a temperature of more than 250 degrees Celsius as indicated in ¶79 where the broadest temperature range is 300 to 800 degrees C and a narrower range of 500 to 700 degrees C in ¶82 and Claim 32. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 15, Haas et al. discloses a composition containing the particulate catalyst according to Claim 2 and an ionomer (i.e.: a binder). In ¶142, Haas et al. explicitly discloses the formation of the composition comprising both the particulate catalyst according to Claim 2 and an ionomer, Nafion, as used in the preparation of electrodes for use in a PEM. Moreover, Nafion is a sulfonic acid-group containing ionomer.
Regarding Claim 17, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the Ir-content is at most 40 wt.% as evidenced by inventive example 1 where the Ir content is 25 wt.% (¶109-112). A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 19, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the Ir-content is at most 35 wt.% as evidenced by Inventive example 1 where the Ir content is 25 wt.% (¶109-112). A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 20, Haas et al. discloses the particulate catalyst of Claim 2, where in the BET surface area of the support material is from 2 m2/g to <10 m2/g as supported by ¶41 where a preferred embodiment has a BET surface area from 5 m2/g to 35 m2/g when the support is non-doped tin oxide. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 21, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the average layer thickness of the iridium-containing coating is from 1.7 nm to 3.5 nm as evidenced by Fig. 1a which shows the presence of Sn which is primarily concentrated in the center (i.e.: core) with a diameter ranging from 20 nm to 100 nm and Fig. 1b shows the presence of the Ir which is concentrated on the exterior (i.e.: shell) with thickness ranging from ~1 nm to 10 nm (mostly less than 5 nm). A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 22, Haas et al. discloses the particulate catalyst according to Claim 2, wherein the catalyst has been subjected to a thermal treatment at a temperature of more than 250 degrees Celsius to 550 degrees Celsius as indicated in ¶79 where the broadest temperature range is 300 to 800 degrees C and a narrower range of 500 to 700 degrees C in ¶82 and Claim 32. A prima facie case of obviousness exists when the range disclosed by the prior art overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Regarding Claim 23, Haas et al. discloses the composition of Claim 15, wherein the ionomer is a sulfonic acid group-containing ionomer. In ¶142, Haas et al. explicitly discloses the formation of the composition comprising both the particulate catalyst according to Claim 2 and an ionomer, Nafion, as used in the preparation of electrodes for use in a PEM. Moreover, Nafion is a sulfonic acid-group containing ionomer.
6. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Haas et al. as applied to Claim 2 above, and further in view of Klose et al.
Haas et al. (US Pub. No. 2019/0379058 A1 – previously presented) is directed towards an electrocatalyst composition (title). Klose-Schubert et al. (US Pub. No. 2014/0322631 A1 – previously presented) is directed toward a composite catalyst (abstract).
Regarding Claim 11, Haas et al. discloses the particulate catalyst according to Claim 2, where the support material is tin oxide or antimony-doped tin oxide. However, Haas et al. does not disclose the use of titanium dioxide as the support material. One of ordinary skill in the art would expect different metal oxide supports to have very similar properties (i.e.: catalytic activity) when coated with an iridium oxide catalyst layer. Support for this expectation is found in Klose-Schubert et al.
Klose-Schubert discloses a particulate catalyst comprising a support material (i.e.: inorganic oxide) and an iridium coating which is provided on the support material and which contains iridium oxide as per the abstract which describes a composite catalyst materials of iridium oxide (IrO2) in combination with an inorganic oxide. Klose-Schubert further discloses the support material (i.e.: metal oxide/inorganic oxide) should be powdery, inert, and have a low solubility in aqueous electrolytes (¶26 of Klose-Schubert et al). These properties facilitate a long lifetime and high endurance when used in a PEM electrolyzer unit (¶26). Klose-Schubert et al. further indicates that suitable high surface area inorganic oxides are TiO2, SiO2, Al2,O3, Nb2O5, SnO2, F-doped tin oxide (SnO2/F), zirconia (ZrO2), ceria doped zirconia (CeO2/ZrO2) and mixtures and combinations thereof (¶27). Given that Klose-Schubert discloses the use of SnO2 as a support material like Haas et al., these two references are considered analogous art.
Prior to the effective filing date of the claimed invention, it would be obvious to one of ordinary skill in the art that substituting the SnO2 support in the composite iridium oxide catalyst of Haas et al. with titanium dioxide as the support as taught by Klose-Schubert et al. will result in a particulate catalyst with similar properties (e.g.: catalytic activity) since metal oxides/inorganic oxides that are powdery, inert, and have a low solubility in aqueous electrolytes, such as SnO2 and TiO2, are known equivalents with the same purpose (Klose-Schubert et al. in ¶26-27). See MPEP 2144.06(II) - SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE
Response to Arguments
7. The applicant has amended Claims 3, 4, 5, 7, 12, 14, 15, and 17 to remove a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim). Claim 18 (which depended from Claim 15) was cancelled by the applicant. The previous rejection of the aforementioned claims under 112(b) is withdrawn as a result of the claim amendments.
8. Applicant's arguments filed 24 April 2026 have been fully considered but they are not persuasive. Since the applicant cancelled independent Claim 1 and made Claim 2 the new independent claim from which Claims 3, 4, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 19, 20, 21, 22, and 23 depend, new ground(s) of rejection is made in view of Haas et al.
The applicant has amended the independent Claim 2 and Claim 5 to include the limitation “the iridium-containing coating has an atomic ratio of iridium(IV) to iridium(III), as determined by means of X-ray photoelectron spectroscopy (XPS), is in the range from 1.9/1.0 to 4.7/1.0.” This limitation was previously presented as an optional limitation in Claim 12. Therefore, the applicant’s contention that the Office conceded that Haas et al. did not disclose the above limitation is unfounded. In fact, pertaining to the amendment to Claim 2, Haas et al. teaches that the iridium present in the catalyst layer is Ir3+ or Ir4+ (¶33) and that the oxidation state(s) of Ir can be determined by X-ray Photoelectron Spectroscopy (XPS) as per ¶28. Haas et al. further indicates that one embodiment of the catalyst layer comprises at least 80 at.% of the iridium in the IV oxidation state (¶34) meaning the remainder is in the III oxidation state (i.e.: 20 at.% is the remainder). When that ratio is normalized as per the ratio of amended Claim 2, the resultant ratio is 4.0/1.0. Therefore, as explained above in this office action, Haas et al. renders obvious the limitation “the iridium-containing coating has an atomic ratio of iridium(IV) to iridium(III), as determined by means of X-ray photoelectron spectroscopy (XPS), is in the range from 1.9/1.0 to 4.7/1.0.”
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Saveleva et al. (“Insight into the Mechanisms of High Activity and Stability of Iridium Supported on Antimony-Doped Tin Oxide Aerogel for Anodes of Proton Exchange Membrane Water Electrolyzer,” ACS Catal. 2020, 10, 2508-2516) is directed toward an Ir supported on Sb-doped SnO2 aerogel for catalysis (pg. 2508: title).
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 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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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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