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
Applicant’s confirmation of the election without traverse of Group I, Claims 1–12 in the reply filed 19 May 2026 is acknowledged.
Response to Amendment and Claim Status
The amendment filed 19 May 2026 has been entered. Applicant’s amendments to the claims have overcome each and every claim objection and 35 USC § 112 rejection set forth in the Office Action mailed 24 March 2026. Claims 1–23 are pending in the application. Claims 13–23 are withdrawn from consideration.
Claim Objections
Claim 1 is objected to because of the following informality:
Line 3: “a first chemical element from a group of precious metals, the first chemical element being ruthenium” could be rewritten as “a first chemical element being ruthenium” to improve clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Georg (DE 102016221395 A1; art already of record).
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 from a group of precious metals, the first chemical element being ruthenium (see Ru, [0008], which can be in metallic form, [0008] and [0045]); and
at least one second chemical element being 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; art already of record) as applied to Claim 1 above, in view of Dobrenizki et al. (US 20190051913 A1; art already of record).
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 selected 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:
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 refractory metal selected from the group consisting of titanium, zirconium, hafnium, niobium, tantalum, and tungsten (Claim 5), wherein the at least one refractory metal 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 refractory metal, particularly titanium, zirconium, hafnium, niobium, and/or tantalum, 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 refractory metal is preferably present in the layer 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 refractory metal, specifically at least one of titanium, zirconium, hafnium, niobium, and tantalum, 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 and 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 base metal selected from the group consisting of aluminum, iron, nickel, cobalt, zinc, cerium, and tin (Claim 7), wherein the at least one base metal 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 base metal in the layer, preferably aluminum, iron, nickel, cobalt, zinc, cerium, or tin, in a concentration range of 0.01 to 5 at.%. Dobrenizki further teaches ([0052]) wherein the base metal can specifically be tin. 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 a base metal, specifically at least one of 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 8, modified Georg discloses the layer of Claim 7. Modified Georg further discloses (Dobrenizki [0052]) wherein the at least one base metal includes tin.
Regarding Claim 10, modified Georg discloses the layer of Claim 7. Modified Georg further discloses (Dobrenizki [0052]) wherein the at least one base metal includes tin. However, the embodiment of modified Georg cited in the rejection of Claims 7 and 9 above does not disclose wherein the layer further comprises at least one refractory metal selected from the group consisting of titanium, zirconium, hafnium, niobium, tantalum, and tungsten, and the tin and the at least one refractory metal are contained together in the concentration range of 0.01 to 10 at. % in the layer.
Dobrenizki teaches that including at least one refractory metal, particularly titanium, zirconium, hafnium, niobium, and/or tantalum, 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 base metal includes tin, this and the at least one refractory metal 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 at least one refractory metal, specifically at least one of titanium, zirconium, hafnium, niobium, and tantalum, which is contained together with the base metal 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 selected from the 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 selected 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 selected 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.
Response to Arguments
Applicant’s arguments in the Remarks filed 19 May 2026 regarding the 35 U.S.C. § 103 rejection of Claim 1 as being unpatentable over Georg have been fully considered but are not persuasive for the following reasons:
Applicant argues on p. 8–9 of Remarks that Georg discloses a total amount of Ir, Ru, Rh, and Os in metallic and oxidic form when referencing the amount of 70 to 100 at. %, and that this collective disclosure of a total amount of several alternative noble metals and their oxides is materially different from a disclosure of the concentration of one selected element ruthenium, and thus that an overlapping range with the range recited in Claim 1 cannot be established.
This argument is not persuasive. Georg discloses in [0008] that the component can be “selected from Ir, Ru, Rh, Os, their oxides, or mixtures thereof”. Georg’s use of “or” makes clear that any of the listed elements and their oxides can be used singularly or in combination. Thus, Georg can be understood as disclosing an embodiment in which metallic Ru is used alone as the selected component, and thus that the “total amount of Ir, Ru, Rh, and Os in metallic and oxidic form” referenced in [0045] is equivalent to the total amount of metallic Ru, since it is used alone, which is equivalent to at least 70 at. %. As set forth in the rejection of Claim 1 above, the range disclosed by Georg overlaps with the range recited in Claim 1, establishing a prima facie case of obviousness (MPEP § 2144.05.I). It is noted that Applicant can rebut a prima facie case of obviousness by showing the criticality of the range (MPEP § 2144.05.III). However, Applicant does not appear to have established such a criticality; the instant specification discloses ([0018]) “the layer contains a first chemical element from the group of precious metals in the form of ruthenium in a concentration in the range from 50 to 99 at. %” but does not specifically describe any positive effects of selecting a concentration within this range or deleterious effects of selecting a concentration outside of it. The instant specification further discloses ([0026]) which appears to contradict the above and recommend an entirely different preferable range of 1 at. % to 40 at. %. Applicant also does not appear to report the concentration of Ru in any experimental examples to show evidence of criticality.
Applicant argues on p. 9 of Remarks that Georg describes preferred variants directed to iridium, its oxides, or mixtures thereof, and thus when Georg addresses a particular noble-metal species, it does so expressly.
This argument is not persuasive. As already set forth above, Georg sufficiently discloses an embodiment wherein Ru is selected as the component and present in an amount of 70 to 100 at. %, such that expressly addressing ruthenium as described by Applicant is not necessary. Further, it is submitted that Georg’s references to iridium and its oxides further support this. Specifically, Georg discloses in [0099] that “iridium or iridium oxide layers were applied…”. As such, Georg discloses examples wherein only one of the components listed in [0008], specifically Ir and Ir oxide, were utilized, lending further support to the above assertion that Ru could also be used as the singular component in the layer of Georg.
Applicant argues on p. 8–10 of Remarks that Georg does not require Si be present at all, and further does not disclose silicon individually in a concentration of less than 10 at. %.
This argument is not persuasive. Like ruthenium, Georg discloses Si amongst a finite list of options; as per § MPEP 2141.III (KSR Rationale E), choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. Further, [0046], particularly the wording at the end of the list “…or mixtures thereof” makes clear that any of the components can be selected in the singular. Thus, it would have been obvious to a person of ordinary skill in the art in light of Georg’s disclosure to select Si alone from this list, and include it in the most preferable amount of 0 to 30 at. % in the layer. Such an embodiment is considered to be disclosed by Georg. Furthermore, as set forth in the rejection of Claim 1 above, 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). It is noted that Applicant can rebut a prima facie case of obviousness by showing the criticality of the range (MPEP § 2144.05.III). However, Applicant does not appear to have established such a criticality; the instant specification discloses ([0020]) “The silicon is preferably contained in a concentration in the range from 3 to < 10 at.%”, but does not specifically describe any positive effects of selecting a concentration within this range or deleterious effects of selecting a concentration outside of it. Applicant also does not, in any experimental examples, appear to report the silicon concentration utilized or any effects which would arise from selecting a specific concentration.
Applicant argues on p. 10 of Remarks that the total amounts are based on the total amounts of metal atoms in layer S, and that particularly in a disclosure that expressly includes oxides, it is not the same as an individual atomic-percent concentration of ruthenium or silicon in the claimed layer.
This argument is not persuasive. The disclosure by Georg regarding Ru, Si, and their respective concentrations in the layer has already been described above. In both cases, Ru and Si are selected from groups that include oxides, but it is not required by Georg that any oxides be selected; as such, it is respectfully submitted that Applicant’s assertion that the layer “expressly includes oxides” is not accurate, and that in the embodiment of Georg described in the rejection above, the at. % disclosed by Georg will be the at. % for the entire layer, which will not include non-metal atoms.
Applicant’s arguments in the Remarks filed 19 May 2026 regarding the 35 U.S.C. § 103 rejection of Claims 2–12 as being unpatentable over Georg in view of Dobrenizki have been fully considered but are not persuasive for the following reasons:
Applicant argues on p. 11–12 of Remarks that Dobrenizki discloses a different layer chemistry; specifically, that Dobrenizki describes a layer in which the noble-metal component is iridium or iridium together with ruthenium, and that the layer further includes at least one nonmetallic chemical element selected from nitrogen, carbon, boron, fluorine, and hydrogen, but does not disclose a layer comprising ruthenium in the claimed individual concentration together with silicon in the claimed concentration.
This argument is not persuasive. Firstly, it is noted that Dobrenizki is used as a teaching reference in the rejection, and therefore it is not necessary for such a secondary reference to contain all the features of the presently claimed invention, e.g. inclusion of silicon in the layer. Rather, this reference is used to teach certain concepts, e.g. inclusion of carbon in the layer, and in combination with the other cited reference, discloses the presently claimed invention. Secondly, like both Georg and the claimed invention, Dobrenizki discloses a layer for forming an electrically conductive plate for an electrochemical cell, the layer comprising ruthenium, and the layer being specifically directed to improving resistance to corrosion (see e.g. Georg [0007], Dobrenizki [0024], instant specification [0024]). Thus, while Dobrenizki does e.g. include iridium in addition to ruthenium as argued by Applicant, it can be understood that Dobrenizki is indeed directed to similar layer chemistry which works to solve a similar problem, and therefore that the use of Dobrenizki as a teaching reference in the rejection is appropriate.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/J.M.F./Examiner, Art Unit 1725
/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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