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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, Claims 1–12, drawn to a layer.
Group II, Claims 13–18, drawn to a layer system.
Group III, Claim 19, drawn to an electrically conductive plate.
Group IV, Claims 20–23, drawn to an electrochemical cell.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I–IV lack unity of invention because even though the inventions of these groups require the technical feature of a layer for forming an electrically conductive plate for an electrochemical cell, the layer comprising: a first chemical element from the group of precious metals including ruthenium in a concentration in a range from 50 to 99 at.%; and at least one second chemical element including silicon in a concentration of < 10 at.% (Claim 1) this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Georg (DE 102016221395 A1), as set forth in the 35 U.S.C. § 103 rejection of Claim 1 below.
During a telephone conversation with Randolph Huis on 12 March 2026, a provisional election was made without traverse to prosecute the invention of Group I, Claims 1–12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13–23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 12 is objected to because of the following informality” “The layer (3a) according to claim 1” should instead read “The layer according to claim 1”.
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.
Claims 1–12 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.
Claim 1 is indefinite for the following reasons:
Neither the claim nor the instant specification make clear what elements constitute “the group of precious metals”, and therefore a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear whether the phrase “including ruthenium” in the claim is meant to refer back to “a first chemical element” or “the group of precious metals”, and thus it is unclear whether “a first chemical element” must be ruthenium specifically, or if “a first chemical element” can be any element from the group of precious metals (where ruthenium is simply a part of this group).
If the former interpretation is the intended meaning, the phrase “including ruthenium” is also unclear, as the use of the word “including” suggests that other additional elements could be present in “a first chemical element”; one of ordinary skill in the art will understand that “a first chemical element” can only include one singular chemical element, which in this case would be ruthenium.
It is unclear whether the limitation “in a concentration of < 10 at.%” is meant to refer back to “at least one second chemical element” or “silicon” specifically.
For the purposes of this office action, Claim 1 has been interpreted as:
A layer for forming an electrically conductive plate for an electrochemical cell, the layer comprising:
a first chemical element ruthenium in a concentration in a range from 50 to 99 at.%; and
at least one second chemical element including silicon, wherein the silicon is in a concentration of < 10 at.%.
Claims 2–12 are rejected as they depend upon Claim 1 and do not resolve the indefinite language described above.
Claim 2 is further indefinite because use of the inclusive word “comprising” in the phrase “the group comprising nitrogen, carbon, boron, fluorine, hydrogen and oxygen” makes it unclear whether this group contains further unnamed elements which would also be suitable for satisfying the limitations of Claim 2, or if the group is meant to be only limited to the elements nitrogen, carbon, boron, fluorine, hydrogen and oxygen.
For the purposes of this office action, Claim 2 has been interpreted as:
The layer according to claim 1, further comprising at least one further second chemical element from the group consisting of nitrogen, carbon, boron, fluorine, hydrogen and oxygen.
Claim 4 is indefinite because it requires “one of” the options a) – e) to be selected, however in multiple cases a layer which could be represented by one option would necessarily also be represented by another, making the claim unclear. For instance, a layer which comprises ruthenium, silicon, carbon, oxygen, and hydrogen can be represented not only by option e) but also options a), b), and d).
For the purposes of this office action, Claim 4 has been interpreted as:
The layer according to claim 1, wherein the layer comprises at least one of options a) – e):
the ruthenium, the silicon and carbon;
the ruthenium, the silicon, carbon and hydrogen;
the ruthenium, the silicon, carbon and fluorine;
the ruthenium, the silicon, carbon, and oxygen; or
the ruthenium, the silicon, carbon, oxygen, and hydrogen.
Claims 5 and 6 are indefinite because neither the claim nor the instant specification make clear what elements constitute “the group of refractory metals”, and therefore a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [0039] (PGPub) of the instant specification only lists titanium, zirconium, hafnium, niobium, tantalum, and tungsten as “particular” elements within the group, and does not disclose that the group consists only of these elements.
Claims 7–9 are indefinite because neither the claim nor the instant specification make clear what elements constitute “the group of base metals”, and therefore a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [0040] (PGPub) of the instant specification only lists aluminum, iron, nickel, cobalt, zinc, cerium, and tun as “preferable” elements within the group, and does not disclose that the group consists only of these elements.
Claim 8 is further considered to be indefinite because it is unclear whether “aluminum, iron, nickel, cobalt, zinc, cerium and tin” are meant to be defining what “the group of base metals” first recited in Claim 7 is meant to consist of, or if “aluminum, iron, nickel, cobalt, zinc, cerium and tin” is meant to be defining a sub-group of base metals within the larger “group of base metals” which the at least one chemical element is meant to be chosen from.
For the purposes of this office action, Claim 8 has been interpreted as:
The layer according to claim 7, wherein the at least one chemical element from the group of base metals is from a group consisting of aluminum, iron, nickel, cobalt, zinc, cerium and tin.
Claim 9 is further considered to be indefinite because there is insufficient antecedent basis for the claim element “the at least one further chemical element from the group of base metals”.
For the purposes of this office action, Claim 9 has been interpreted as:
The layer according to claim 7, wherein the at least one chemical element from the group of base metals is contained in the layer in a concentration range of 0.01 to 10 at.%.
Claim 10 is indefinite for the following reasons:
Neither the claim nor the instant specification make clear what elements constitute “the group of refractory metals”, and therefore a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [0039] (PGPub) of the instant specification only lists titanium, zirconium, hafnium, niobium, tantalum, and tungsten as “particular” elements within the group, and does not disclose that the group consists only of these elements.
It is not clear which elements are being referred to in the phrase “contained together” in the limitation “and the at least one chemical element from the group of refractory metals are contained together in the concentration range of 0.01 to 10 at.% in the layer”, i.e. is contained together meant to reference: 1) the at least one chemical element from the group of refractory metals + the at least one chemical element from the group of base metals [which] includes tin, or 2) the multiple chemical elements from the group of refractory metals in the case that more than one chemical element from the group of refractory metals is included. It is noted that the first interpretation appears to have support in e.g. [0041] (PGPub) of the instant specification.
For the purposes of this office action, Claim 10 has been interpreted as:
The layer according to claim 7, wherein the layer further comprises at least one chemical element from the group of refractory metals, the at least one chemical element from the group of base metals includes tin, and the at least one chemical element from the group of base metals including tin and the at least one chemical element from the group of refractory metals are contained together in a concentration range of 0.01 to 10 at.% in the layer.
Claim 11 is indefinite for the following reasons:
use of the inclusive word “comprising” in the phrase “the group comprising iridium, platinum, gold, silver, rhodium and palladium” makes it unclear whether this group contains further unnamed elements which would also be suitable for satisfying the limitations of Claim 11, or if the group is meant to be only limited to the listed elements iridium, platinum, gold, silver, rhodium and palladium.
There is insufficient antecedent basis for the claim element “the group”.
For the purposes of this office action, Claim 11 has been interpreted as:
The layer according to claim 1, wherein the layer further comprises at least one additional chemical element from a group consisting of iridium, platinum, gold, silver, rhodium and palladium in a concentration range of 0.01 to 25 at.%.
Appropriate correction is required.
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.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Georg (DE 102016221395 A1; see attached machine translation).
Regarding Claim 1, Georg discloses a layer (see layer (S), [0008]) for forming an electrically conductive plate (see bipolar plate (BP), [0008]) for an electrochemical cell (see electrolyser, [0008]), the layer comprising:
a first chemical element ruthenium (see Ru, [0008], which can be in metallic form, [0008] and [0045]); and
at least one second chemical element including silicon (see Si, [0046]).
Georg further discloses ruthenium in a concentration in a range from 70 to 100 at.% ([0045], [0046]) which overlaps with the claimed range of 50 to 99 at.%, and silicon in a concentration of 0 to 30 at.% ([0046]), which overlaps with the claimed range of < 10 at.%. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I).
Claims 2–12 are rejected under 35 U.S.C. 103 as being unpatentable over Georg (DE 102016221395 A1; see attached machine translation) as applied to Claim 1 above, in view of Dobrenizki et al. (US 20190051913 A1).
Regarding Claims 2–4, modified Georg discloses the layer of Claim 1, but the embodiment of modified Georg cited in the rejection of Claim 1 above does not disclose the layer further comprising at least one further second chemical element from the group consisting of nitrogen, carbon, boron, fluorine, hydrogen and oxygen (Claim 2), wherein the at least one further second chemical element is present in the layer in a concentration in a range from 1 at.% to 40 at.% (Claim 3), and wherein the layer comprises at least one of options a) – e):
the ruthenium, the silicon and carbon;
the ruthenium, the silicon, carbon and hydrogen;
the ruthenium, the silicon, carbon and fluorine;
the ruthenium, the silicon, carbon, and oxygen; or
the ruthenium, the silicon, carbon, oxygen, and hydrogen (Claim 4).
Dobrenizki teaches a layer (see layer, [0018]) for forming an electrically conductive plate (see bipolar plate, [0018]) for an electrochemical cell (see fuel cell or electrolyzer, [0018]), the layer comprising ruthenium ([0018]). Dobrenizki teaches ([0030]) that introducing carbon to the layer increases its conductivity and oxidation stability in acidic solution, and further teaches ([0037]) that the carbon can be present in the layer in a concentration range from 10 at.% to 25 at.%.
Dobrenizki is analogous to the claimed invention as it is in the same field of electrically conductive plates for electrochemical cells. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that it further comprises carbon in a concentration range from 10 at.% to 25 at.% (therefore comprising the ruthenium, the silicon and carbon), as taught by Dobrenizki, for the purpose of increasing its conductivity and oxidation stability in acidic solution.
Regarding Claims 5 and 6, modified Georg discloses the layer of Claim 1, but the embodiment of modified Georg cited in the rejection of Claim 1 above does not disclose wherein the layer further comprises at least one chemical element from the group of refractory metals (Claim 5), wherein the at least one chemical element from the group of refractory metals is contained in the layer in a concentration range of 0.01 to 10 at.% (Claim 6).
Dobrenizki teaches a layer (see layer, [0018]) for forming an electrically conductive plate (see bipolar plate, [0018]) for an electrochemical cell (see fuel cell or electrolyzer, [0018]), the layer comprising ruthenium ([0018]). Dobrenizki teaches that including at least one chemical element from the group of refractory metals in the layer can partially control the amounts of H2O2 and ozone formed during electrolysis ([0047]), and also results in high conductivity and high corrosion resistance in a temperature range from 0 to about 200 °C ([0049]). Dobrenizki further teaches ([0051]) that the at least one chemical element from the group of refractory metals is preferably present in 0.01 to 5 at.%.
Dobrenizki is analogous to the claimed invention as it is in the same field of electrically conductive plates for electrochemical cells. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that the layer further comprises at least one chemical element from the group of refractory metals in a concentration range of 0.01 to 5 at.%, as taught by Dobrenizki, for the purpose of partially controlling the amounts of H2O2 and ozone formed during electrolysis, and achieving high conductivity and high corrosion resistance in a temperature range from 0 to about 200 °C.
Regarding Claims 7–9, modified Georg discloses the layer of Claim 1, but the embodiment of modified Georg cited in the rejection of Claim 1 above does not disclose wherein the layer further contains at least one chemical element from the group of base metals (Claim 7), wherein the at least one chemical element from the group of base metals is from a group consisting of aluminum, iron, nickel, cobalt, zinc, cerium and tin (Claim 8), wherein the at least one chemical element from the group of base metals is contained in the layer in a concentration range of 0.01 to 10 at.% (Claim 9).
Dobrenizki teaches a layer (see layer, [0018]) for forming an electrically conductive plate (see bipolar plate, [0018]) for an electrochemical cell (see fuel cell or electrolyzer, [0018]), the layer comprising ruthenium ([0018]). Dobrenizki teaches ([0046]) including at least one chemical element from the group of base metals in the layer, preferably aluminum, iron, nickel, cobalt, zinc, cerium, or tin, in a concentration range of 0.01 to 5 at.%. Note that Dobrenizki is analogous to the claimed invention as it is in the same field of electrically conductive plates for electrochemical cells.
KSR Rationale C states that it is obvious to use a “known technique to improve similar devices (methods, or products) in the same way” (MPEP § 2141). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that the layer further contains at least one chemical element from the group of base metals, specifically aluminum, iron, nickel, cobalt, zinc, cerium or tin, in a concentration range of 0.01 to 5 at. % with a reasonable expectation of success, as Dobrenizki teaches this is a known technique for the improvement of a similar layer.
Regarding Claim 10, modified Georg discloses the layer of Claim 7. As previously set forth in the rejection of Claims 7–9 above, modified Georg (Dobrenizki [0046]) discloses wherein the at least one chemical element from the group of base metals includes tin. However, the embodiment of modified Georg cited in the rejection of Claims 7–9 above does not disclose wherein the layer further comprises at least one chemical element from the group of refractory metals, and the at least one chemical element from the group of base metals including tin and the at least one chemical element from the group of refractory metals are contained together in a concentration range of 0.01 to 10 at.% in the layer.
Dobrenizki teaches that including at least one chemical element from the group of refractory metals in the layer can partially control the amounts of H2O2 and ozone formed during electrolysis ([0047]), and also results in high conductivity and high corrosion resistance in a temperature range from 0 to about 200 °C ([0049]). Dobrenizki further teaches ([0052]) that when the at least one chemical element from the group of base metals includes tin, this and the at least one chemical element from the group of refractory metals can be contained together in a concentration range of 0.01 to 5 at.%.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that the layer further comprises at least one chemical element from the group of refractory metals, which is contained together with the chemical element from the base metals including tin in a concentration range of 0.01 to 5 at.%, as taught by Dobrenizki, for the purpose of partially controlling the amounts of H2O2 and ozone formed during electrolysis, and achieving high conductivity and high corrosion resistance in a temperature range from 0 to about 200 °C.
Regarding Claim 11, modified Georg discloses the layer of Claim 1, but the embodiment of modified Georg cited in the rejection of Claim 1 above does not disclose wherein the layer further comprises at least one additional chemical element from a group consisting of iridium, platinum, gold, silver, rhodium and palladium in a concentration range of 0.01 to 25 at.%.
Dobrenizki teaches a layer (see layer, [0018]) for forming an electrically conductive plate (see bipolar plate, [0018]) for an electrochemical cell (see fuel cell or electrolyzer, [0018]), the layer comprising ruthenium ([0018]). Dobrenizki teaches ([0053]) that it is useful to include at least one additional chemical element from the group consisting of platinum, gold, silver, rhodium, and palladium in a concentration range of 0.01 to 10 at.% in the layer. Note that Dobrenizki is analogous to the claimed invention as it is in the same field of electrically conductive plates for electrochemical cells.
KSR Rationale C states that it is obvious to use a “known technique to improve similar devices (methods, or products) in the same way” (MPEP § 2141). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that the layer further contains at least one additional chemical element from the group consisting of platinum, gold, silver, rhodium, and palladium in a concentration range of 0.01 to 10 at. % with a reasonable expectation of success, as Dobrenizki teaches this is a known and useful technique for the improvement of a similar layer.
Regarding Claim 12, modified Georg discloses the layer of Claim 1, but does not disclose wherein the layer has a layer thickness in a range of 0.5 nm to 500 nm.
Dobrenizki teaches a layer (see layer, [0018]) for forming an electrically conductive plate (see bipolar plate, [0018]) for an electrochemical cell (see fuel cell or electrolyzer, [0018]), the layer comprising ruthenium ([0018]). Dobrenizki teaches ([0033]) that the layer preferably has a layer thickness in a range of 1 nm to 10 nm, and ([0070]) that a thickness of the layer of less than 10 nm is sufficient to protect against resistance-increasing oxidation of an underlying base layer that can be present on the electrically conductive plate. Note that Dobrenizki is analogous to the claimed invention as it is in the same field of electrically conductive plates for electrochemical cells.
KSR Rationale C states that it is obvious to use a “known technique to improve similar devices (methods, or products) in the same way” (MPEP § 2141). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the layer of modified Georg such that the layer has a thickness in the range of 1 nm to 10 nm, with a reasonable expectation of success, as Dobrenizki teaches that limiting the thickness of the layer to within this preferable range is a known technique for the improvement of a similar layer and protection against resistance-increasing oxidation of an underlying base layer that can be present on the electrically conductive plate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725