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 .
FUEL CELL ELECTRODE CATALYST
Examiner: Adam Arciero S.N. 18/272,675 Art Unit: 1727 January 26, 2026
DETAILED ACTION
The Application filed on June 17, 2023 has been received. Claims 13-28 are currently pending and have been fully considered.
Claim Interpretation
Claim 1 recites an intended use for a catalyst. The courts have held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02.
Claim Rejections - 35 USC § 102
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 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) 13-23 and 26-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumazawa et al. (JP 2010-089032 A; as found in IDS dated 11/05/2025 and using machine translation for citation purposes); as evidenced by Daimon et al. (US 2005/0142428 A1).
As to Claims 13-14 and 26-28, Kumazawa discloses a fuel cell comprising: a catalyst layer comprising: platinum particles on a carbon support wherein the number of platinum particles per unit surface area of the carbon support is 1017/m2 (10/100 nm2) (Abstract and paragraphs [0001-0002, 0013, 0020, 0025]). The catalyst layer of Kumazawa intrinsically refers to an anode of a fuel cell given that the materials and structure used int eh prior art and the claimed invention are the same (see MPEP 2112); and as evidenced by Daimon (Abstract).
As to Claims 15-16, Kumazawa discloses wherein the mean particle size of the catalyst metal particles is 3 nm (paragraph [0023]).
As to Claims 17-20, Kumazawa teaches of the same number of catalyst metal particles per unit surface area of the carbon carrier and the same mean particle size of the catalyst metal particles, as discussed in the rejections above. Therefore, it is the position of the Office that the claimed loading amount of the catalyst metal particles is intrinsically present in the prior art, see MPEP 2112.
As to Claims 21-23, Kumazawa discloses wherein the crystalline carbon (reads on graphitized carbon) is the catalyst support (paragraph [0020]).
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(s) 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumazawa et al. (JP 2010-089032 A; as found in IDS dated 11/05/2025 and using machine translation for citation purposes) in view of Daimon (US 2005/0142428 A1).
As to Claims 24-25, Kumazawa does not specifically disclose the claimed specific surface area of the carbon support.
However, Daimon teaches of an anode catalyst comprising a metal catalyst provided on a carbon support, wherein the carbon support has a specific surface area of 20-300 m2/g, which overlaps with the claim. In addition, Daimon recognizes the specific surface area of the carbon support as a result-effective variable, wherein if the specific surface area is less than 20 m2/g, the carbon cannot support the catalyst and if the specific surface area is higher than 300 m2/g, the number of pores existing in the carbon support is too large and the size of the pores is too small, thereby increasing the number of catalyst particles buried in the pores (paragraph [0042]). The courts have held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, see MPEP 2144.05, II, B. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the carbon support of Kumazawa to have the claimed specific surface area, because Daimon teaches that the metal catalyst can be sufficiently supported (paragraph [0042]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727