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 .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 3, 4, 5, 7, 12, 14, 15, 17, and 18 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Multiple examples of this are present in the instant application and are indicated below.
In the present instance, Claim 3 recites the broad recitation “at most 40% by weight”, and the claim also recites “(preferably at most 35% by weight” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 4 recites the broad recitation “the BET surface area in the range of 2 m2/g to 40 m2/g,” and the claim also recites “(preferably) 2 m2/g to <10 m2/g” and “(even more preferably) 2 m2/g to 9 m2/g” which are narrower statements of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 5 recites the broad recitation “2 m2/g to <10 m2/g,” and the claim also recites “(more preferably) 2 m2/g to 9 m2/g” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 5 recites the broad recitation “5% by weight to 20% by weight,” the claim also recites “(preferably) 5% by weight to 14% by weight” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 7 recites the broad recitation “1.5 nm to 4.0 nm,” and the claim also recites “1.7 nm to 3.5 nm” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 12 recites the broad recitation “preferably more than 250 degrees Celsius,” and the claim also recites multiple other cascading temperature ranges which are the narrower statements of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 14 recites the broad recitation “preferably more than 250 degrees Celsius,” and the claim also recites multiple other cascading temperature ranges which are the narrower statements of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 15 recites the broad recitation “an ionomer,” and the claim also recites “(in particular) a sulfonic acid group-containing ionomer” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, Claim 17 recites the broad recitation “at most 40% by weight”, and the claim also recites “(preferably at most 35% by weight” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 18 is also rejected under 35 U.S.C. 112(b) since it depends from Claim 15, which is currently rejected.
Claim Rejections - 35 USC § 102
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
5. Claims 1, 3, 8, 9, 10, 11, 12, 13, 14, 15, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klose-Schubert et al.
Klose-Schubert et al. (US Pub. No. 2014/0322631 A1) is directed toward a composite catalyst (abstract).
Regarding Claim 1, Klose-Schubert et al. 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 (e.g.: TiO2, Al2O3, ZrO2 and mixtures thereof). Klose-Schubert further discloses the support material (i.e.: the inorganic oxide) has a BET surface area that ranges from 30 m2/g to 200 m2/g and the total catalyst loading (i.e.: iridium oxide and optionally ruthenium oxide) range from 25 wt.% to 70 wt.%. In example 1 (¶38-39), Klose-Schubert et al. explicitly discloses the formation of IrO2 on TiO2 with the TiO2 having a BET surface area of 50 m2/g and catalyst loading of 46 wt.% IrO2 (i.e.: 40 wt.% Ir). When the Ir content of the catalyst (“Ir-G”) is 40 wt.% as taught by Example 1 of Klose-Schubert et al., the values falls within the range defined by the formula in Claim1 with the lower limit of 40 (wt.%) inclusive and the upper limit of 60 (wt.%) inclusive when the BET surface area of the support is 50 m2/g. A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 3, Klose-Schubert et al. discloses the particulate catalyst as per Claim 1, wherein the Ir content of the catalyst is at most 40% by weight. Klose-Schubert et al. discloses a catalyst loading ranging from 20 wt.% to 70 wt.% IrO2, which converts to 17 wt.% Ir to 60 wt.% Ir (abstract). In example 1, Klose-Schubert et al. specifically discloses a loading of 40 wt.%. Ir (¶38-39). A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The limitation “preferably at most 35% by weight” in Claim 3 is being treated as optional since the claim contains both a broader range and a narrower range.
Regarding Claim 8, Klose-Schubert et al. discloses the particulate catalyst according to Claim 1, 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 as indicated in ¶30 where it is written, “the iridium oxide particles are precipitated in a very fine, nano-sized form on or at the surface of the inorganic oxide.”
Regarding Claim 9, Klose-Schubert et al. discloses the particulate catalyst according to Claim 1, wherein the iridium is present in both 3+ and 4+ oxidation states, i.e.: Ir(III) and Ir(IV) (¶24). In particular, Klose-Schubert et al. indicates that the Ir present is predominantly in the 4+ oxidation state as IrO2, but may also present as Ir2O3 (i.e.: Ir3+) depending upon the manufacturing conditions.
Regarding Claim 10, Klose-Schubert et al. discloses the particulate catalyst according to Claim 1, wherein the support material is an oxide of a transition metal (e.g.: TiO2 or ZrO2), an oxide of a main group element (e.g.: Al2O3), or SiO2 as per ¶21 and ¶27. Example 1 uses TiO2 as the support material in Klose-Schubert et al. (¶38-39).
Regarding Claim 11, Klose-Schubert et al. discloses the particulate catalyst according to Claim 10, wherein the support material is a titanium dioxide as per Ex. 1, the abstract, and ¶27.
Regarding Claim 12, Klose-Schubert et al. discloses the particulate catalyst according to Claim 1, wherein the catalyst has been subjected to a thermal treatment at a temperature of more than 250 degrees Celsius as indicated in ¶29 where the heat treatment step is in the range of 300 to 800 degrees Celsius for 30 to 120 minutes. Klose-Schubert et al. further indicates the narrower heating range is 300 to 500 degrees Celsius (¶29). Ex. 1 in Klose-Schubert et al. teaches an annealing temperature of 400 degrees Celsius. A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The narrower temperature ranges of Claim 12 (e.g.: >250 to 550 degrees Celsius) are being treated as optional since the claim contains both a broader range and a narrower range
Regarding Claim 13, Klose-Schubert et al. discloses a method for producing a particulate catalyst according to Claim 1, wherein an iridium containing coating containing iridium oxide is deposited onto a support material (abstract, ¶21, ¶27, ¶30, and Ex. 1 in ¶38-39).
Regarding Claim 14, Klose-Schubert et al. disclose 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 ¶29 where the heat treatment step is in the range of 300 to 800 degrees Celsius for 30 to 120 minutes. Klose-Schubert et al. further indicates the narrower heating range is 300 to 500 degrees Celsius (¶29). Ex. 1 in Klose-Schubert et al. teaches an annealing temperature of 400 degrees Celsius. A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The narrower temperature ranges of Claim 14 (e.g.: >250 to 550 degrees Celsius) are being treated as optional since the claim contains both a broader range and a narrower range.
Regarding Claim 15, Klose-Schubert et al. discloses a composition containing the particulate catalyst according to Claim 1 and an ionomer (¶9, ¶13, and ¶32). In ¶32, Klose-Schubert explicitly discloses the formation of the composition comprising both the particulate catalyst according to Claim 1 and an ionomer as used in the preparation of electrodes for use in a PEM. Moreover, Klose-Schubert et al. teaches the ionomer can be Nafion (¶7) which is a sulfonic acid-group containing ionomer.
Regarding Claim 16, Klose-Schubert et al. discloses the use of a particulate catalyst according to Claim 1, as an anode for water electrolysis (abstract, ¶22, 24, and 32).
Regarding Claim 18, Klose-Schubert et al. discloses the use of a particulate catalyst according to Claim 15, as an anode for water electrolysis (abstract, ¶7, ¶22, 24, and 32).
6. Claims 1, 2, 3, 4, 6, 7, 8, 15, 16, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haas et al.
Haas et al. (US Pub. No. 2019/0379058 A1) is directed towards an electrocatalyst composition (title).
Regarding Claim 1, Haas et al. discloses a particulate catalyst comprising a support material (i.e.: tin oxide particles in ¶22-27) and an iridium coating (i.e.: a noble metal oxide layer – iridium oxide in ¶28-36) which is provided on the support material and which contain iridium oxide as per the abstract. Haas et al. further indicates that the catalyst composition (i.e.: the tin oxide coated with Ir oxide) has a similar BET surface area to the starting tin oxide material (¶24). The preferred BET range (for the catalyst composition) is 5 m2/g to 35 m2/g (¶40-41) which is contained within the range of Claim 1 (i.e.: BET ranging between 2 m2/g to 50 m2/g). Moreover, Hass et al. discloses 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) and is in the form of the oxyhydroxide (¶78) upon deposition and the oxide upon final processing (¶108). Haas et al. discloses in inventive Ex. 1 a BET of 21 m2/g and an Ir content of 25 wt.% (¶109-112). When the BET surface area value is input into the formula in Claim 1, the resultant values are a minimum of 23 and a maximum of 42. Therefore, the Ir-G (i.e.: 25 wt.% Ir) taught in Ex. 1 of Haas et al. falls within the limits of the formula of Claim 1 of the instant application. A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
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). Hass 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). A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 3, Haas et al. discloses the particulate catalyst according to Claim 1, wherein the iridium content of the catalyst 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 an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 4, Haas et al. discloses the particulate catalyst according to Claim 1, 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 from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The narrower BET surface area ranges of Claim 4 (e.g.: 2 m2/g to <10 m2/g and 2 m2/g to 9 m2/g) are being treated as optional since the claim contains both a broader range and a narrower range
Regarding Claim 6, Haas et al. discloses the particulate catalyst according to Claim 1, 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 an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 7, Haas et al. discloses the particulate catalyst per Claim 1, 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 an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The narrower particle size range of Claim 7 is being treated as optional since the claim contains both a broader range and a narrower range.
Regarding Claim 8, Haas et al. discloses the particulate catalyst according to Claim 1, 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 15, Haas et al. discloses a composition containing the particulate catalyst according to Claim 1 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 1 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 16, Haas et al. discloses the use of a particulate catalyst according to Claim 1, as an anode for water electrolysis (¶86).
Regarding Claim 17, 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 an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 18, Haas et al. discloses the use of a particulate catalyst according to Claim 15, as an anode for water electrolysis (¶86).
7. Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated Karimi et al.
Karimi et al. (“Metal Carbide and Oxide Supports for Iridium-Based Oxygen Evolution Reaction Electrocatalysts for Polymer-Electrolyte-Membrane Water Electrolysis,” Electrochim. Acta 2017, 246, 654-670) is directed towards supports for Ir-based OER catalysts (pg. 654: title).
Regarding Claim 5, Karimi et al. discloses a particulate catalyst comprising a support material (e.g.: WC, TaC, NbO2, NbC, TiC, or Sb2O5-SnO2 in Table 1 on pg. 657). The support materials have a BET surface area ranging from ~1 m²/g to ~35 m²/g (Table 1 on Pg. 657). All of the support materials were treated with an Ir(III) solution via the polyol method to prepare particulate catalysts with a 20 wt.% Ir(IV) oxide loading (pg. 655: 1. Introduction and pg. 656: 2. 3. Synthesis Procedure). When the IrO2 loading is converted to Ir content, the level is 17 wt.% Ir in the composite catalyst of Karimi et al. Furthermore, Karimi et al. further discloses a series of catalysts prepared using tantalum carbide (“TiC”) with a BET surface area of ~1 m2/g as the support at different catalyst loadings of IrO2 (2 wt.%, 5 wt.%, 10 wt.%, 20 wt.%, and 30 wt.%) which convert to ~2 wt.%, 4 wt.%, 9 wt.%, 17 wt.%, and 26 wt.% Ir (pg. 664: Table 4, Fig. 16, and Fig. 17).
Therefore, Karimi et al. discloses the numerical limitations of Claim 5 pertaining to both the BET surface area range (i.e.: 2 m2/g to <10 m2/g) and the catalyst having an Ir content ranging from 5 to 20 wt.% Ir. A prima facie case of obviousness exists when an example from the prior art falls within claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
The narrower BET surface area and the narrower Ir catalyst content of Claim 5 are being treated as optional since the claim contains both broader ranges and narrower ranges.
Conclusion
8. 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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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794