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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-8, 10-13, 17-19, and 21 in the reply filed on 19 March 2026 is acknowledged.
Claims 23, 29, 30, and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 March 2026.
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 19 is 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). In the present instance, claim 19 recites the broad recitation less than 10 nm, and the claim also recites less than 5 nm 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 Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7, 8, 10, 18, 19, and 21are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pak et al (US 2009/0075157 A1).
As to claims 1, 3, and 4, Pak discloses an electrolyzer (Fig. 13) comprising a first electrode (Fig. 13 anode) and a second electrode ( Fig. 13 cathode) each electrode comprising a conductive element (shown in Fig. 1 backing structure 10 [0106] [0016], ) (the catalyst structure (Fig. 1) comprising at least one catalyst layer comprising a catalyst structure comprising a plurality of elongated nano structures (Fig. 1 #12 carbon nanotubes [0099] which reads on instant claims 3 and 4) and a plurality of electrocatalyst particles attached to the plurality of elongated nanostructures (Fig. 1 #13 catalyst particles) wherein a plurality of elongated nanostructures is arranged to control a position of the plurality of electro catalyst particles relative to the ion exchange membrane (See Fig. 13).
As to claim 2, Pak discloses wherein the elongated nanostructures extend generally along respective axes where the axes are oriented in parallel to each other and extend perpendicularly to the conductive element (See Fig. 1).
As to claim 7, Pak discloses wherein the elongated nanostructures are grown on a substrate comprising a component of the electrolyzer such as a conductive element or porous transport layer ([0090] [0102] among others).
As to claim 8, Pak further discloses wherein the substrate comprises a structured surface, and the elongated nanostructures are grown on the structured surface (see secondary carbon nanotubes #s 42’ in Fig. 4C OR carbon fibers Fig. 13).
As to claim 10, Pak further discloses wherein a surface of the ion exchange membrane is arranged to follow a contour of the structured surface. (See Fig. 13 where the membrane is parallel to the structure surface and thus follows it).
As to claim 18, Pak further discloses wherein the plurality of elongated nanostructures is arranged to connect the conductive element to the plurality of electrocatalyst particles (222), where each electrocatalyst particle is localized at an end of a respective elongated nanostructure opposite from the conductive element See Fig. 1C particles 13 at end of 12).
As to claim 19, since the catalyst layer contacts the membrane, the catalyst particles at the end of the carbon nanotubes are deemed to be closer than 10 nm to the membrane via the contact between the two layers).
As to claim 21, Pak discloses where the catalyst structure comprises a porous carbon material (carbon fibers Fig. 13).
Claim(s) 1-8, 10, 17-19, and 21are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (US 2006/0115711 A1).
As to claims 1, 3, and 4, Kim discloses an electrolyzer (Figs. 3 and 4) comprising a first electrode (#100) and a second electrode ( #101) each electrode comprising a conductive element (#101 OR separators between cells in Fig. 4 #s 20 ) the catalyst structure (Fig. 1b) comprising at least one catalyst layer comprising a catalyst structure comprising a plurality of elongated nano structures (Fig. 1 #103 nano-carbon which may be carbon nanotubes, nanowires or nanofibers [0043] which reads on instant claims 3 and 4) and a plurality of electrocatalyst particles attached to the plurality of elongated nanostructures (Fig. 1 #105 catalyst particles) wherein a plurality of elongated nanostructures is arranged to control a position of the plurality of electro catalyst particles relative to the ion exchange membrane (See Fig. 1b).
As to claim 2, Kim discloses wherein the elongated nanostructures extend generally along respective axes where the axes are oriented in parallel to each other and extend perpendicularly to the conductive element (See Fig. 1b upright).
As to claims 5 and 6, Kim discloses wherein the catalysts fully cover the elongated nanostructure and wherein the catalysts may be platinum, titanium ([0050]) and thus a section being covered by this layer is deemed to be a protective layer, i.e. the side of the nanostructures.
As to claim 7, Kim discloses wherein the elongated nanostructures are grown on a substrate comprising a component of the electrolyzer such as a conductive element or porous transport layer ([0044]).
As to claim 8, Kim further discloses wherein the substrate comprises a structured surface, and the elongated nanostructures are grown on the structured surface (see 1b grown on 102 which is deemed to be a structured surface).
As to claim 10, Kim further discloses wherein a surface of the ion exchange membrane is arranged to follow a contour of the structured surface. (See Fig. 3).
As to claim 17, Kim further discloses wherein at least one electrode comprises a porous transport layer arranged between the conductive element and the catalyst layer, and the porous transport layer comprises a porous material. (#102 microporous layer [0039]-[0041]).
As to claim 18, Kim further discloses wherein the plurality of elongated nanostructures is arranged to connect the conductive element to the plurality of electrocatalyst particles where each electrocatalyst particle is localized at an end of a respective elongated nanostructure opposite from the conductive element (See Fig. 1b particles 105 at end of 103).
As to claim 19, since the catalyst layer contacts the membrane, the catalyst particles at the end of the carbon nanotubes are deemed to be closer than 10 nm to the membrane via the contact between the two layers).
As to claim 21, Kim discloses where the catalyst structure comprises a porous carbon material (carbon nanotubes, nanowires or nanofibers [0043] Fig. 13).
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.
Claim(s) 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Pak in view of Debe et al (US 5,879,828).
As to claims 11-13, Pak discloses wherein at least one electrocatalyst particle is affixed to a first section of the at least one elongated nanostructure wherein the first section of the at least one elongated nanostructure is located at an end of the at least one elongated nanostructure opposite from the conductive element (See Fig. 1C as required by claim 12 and 13).
Pak fails to explicitly disclose wherein at least one of the elongated nanostructures is arranged to extend at least partially into the ion exchange membrane and wherein at least the first section of the at least one elongated nanostructure (221) extends into the ion exchange membrane.
Debe discloses embedding the catalyst particles on nanostructure into the membrane layer of an electrolyzer or fuel cell (Abstract, col. 17 lines 51-59, claim 1 among other passages).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have embedded the nanostructures of Pak into the membrane as disclosed in Debe because it leads to a firm attachment between the particles and the membrane (col. 17 lines 24-25 Debe.)
Claim(s) 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Debe et al (US 5,879,828).
As to claims 11-13, Kim discloses wherein at least one electrocatalyst particle is affixed to a first section of the at least one elongated nanostructure wherein the first section of the at least one elongated nanostructure is located at an end of the at least one elongated nanostructure opposite from the conductive element (See Fig. 1b as required by claim 12 and 13).
Kim fails to explicitly disclose wherein at least one of the elongated nanostructures is arranged to extend at least partially into the ion exchange membrane and wherein at least the first section of the at least one elongated nanostructure (221) extends into the ion exchange membrane.
Debe discloses embedding the catalyst particles on nanostructure into the membrane layer of an electrolyzer or fuel cell (Abstract, col. 17 lines 51-59, claim 1 among other passages).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have embedded the nanostructures of Kim into the membrane as disclosed in Debe because it leads to a firm attachment between the particles and the membrane (col. 17 lines 24-25 Debe.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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