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 September 1, 2026
DETAILED ACTION
Applicant’s response filed on April 28, 2026 has been received. Claims 13-14, 16-18 and 24-28 are currently pending. Claims 13, 16-17 and 24 have been amended. Claims 15 and 19-23 have been canceled.
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 Interpretation
Claim 13 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
The claim rejections under 35 USC 102(a)(1) as being anticipated by Kumazawa on claims 13-23 and 26-28 are withdrawn because Applicant has amended the independent claim.
Claim Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Kumazawa and Daimon on claims 24-25 are withdrawn because Applicant has amended the independent claim.
Claim(s) 13-14, 16-18 and 26-28 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); as evidenced by Daimon et al. (US 2005/0142428 A1) in view of Terrazono et al. (US 2009/0162725 A1).
As to Claims 13-14, 16 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 in the prior art and the claimed invention are the same (see MPEP 2112); and as evidenced by Daimon (Abstract). Kumazawa teaches wherein the mean particle size of the catalyst metal particles is 3 nm, which is very close to the claimed range (paragraph [0023]). Kumazwa does not specifically disclose the claimed mean particle size. However, the courts have held that similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the particle size of the catalyst particles and the number of catalyst particels per unit surface area of the carrier of Kumazawa to read on the claims because Kumazawa teaches that a catalyst with excellent surface activity is provided (Abstract).
In addition, Terrazono teaches of a fuel cell electrode catalyst comprising a highly graphitized carbon support and platinum catalyst particles with an average particle size of about 2.5 nm (paragraphs [0029 and 0069]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the catalyst of Kumazawa to comprise the claimed particle size because Terrazono teaches that a catalyst for a fuel cell having a high power generation performance is provided (Abstract).
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(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 Terrazono et al. (US 2009/0162725 A1) as applied to claims 13-14, 16-18 and 26-28 above and in further 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]).
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) Although Kumazawa recites a broad range for the number of catalyst particles per unit surface area of the carrier that overlaps with the claimed range, Kumazawa discloses wherein every example is outside the claimed range (claim 13).
b) The present invention provides for unexpected results with the claimed particle size (claim 13).
c) Kumazawa teaches away from the claimed particle size (claim 13).
d) Kumazawa does not teach of graphitized carbon particles (claim 13).
In response to Applicant’s arguments, please consider the following comments:
a) Kumazawa teaches an overlapping claimed range and the teaching cannot be ignored. Kumazawa does not teach away from the claimed range.
b) The results are not persuasive for at least the following reasons. The claims are not fully commensurate in scope with the results because there are no examples/data for the claimed upper and lower limits of the of the count. In addition, the claims do not fully reflect the examples, such as the type of carbon carrier, the specific surface area, the platinum amount and the mass. Furthermore, the results are not sufficiently greater than Example 5 where the mean particle size is greater than 2.5 nm.
c) Kumazawa does not explicitly teach away from the claimed particle size. In addition, Terrazono teaches the claimed particle size.
d) Kumazawa teaches of crystalline carbon carriers which read on graphitized carbon. In addition, Terrazono teaches of graphitizes carbon carriers as discussed in the rejections above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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
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