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 .
Claims 1-8 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on April 12, 2023.
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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 2007 0067265; English translation provided and relied upon).
Regarding claims 1-3, Lee et al. teach a catalyst for a fuel cell comprising a modified carbon nanotube or modified fullerene (“porous carrier comprises…fullerene, carbon nanotube”), to which a phosphoric acid group (“phosphate-containing acid group”; “phosphoric acid group”) is bound. The modified carbon nanotube or modified fullerene is formed by binding, for example, a hydroxyl group, to a carbon nanotube or fullerene (“hydroxyl groups on a surface of the porous carrier”). The modified carbon nanotube or modified fullerene, having the phosphoric acid group bound thereto, is then mixed with catalytic particles (“metal microparticles…”) to prepare a catalyst (“modified catalyst…metal-doped porous material”). See Figure 2 and pages 12-15 of Lee et al.
While Lee et al. do not explicitly teach or suggest the limitations of Applicants’ claims regarding the aforementioned catalyst being a “catalyst of a phosphoric acid fuel cell”, it is considered that because this reference teaches a modified catalyst structurally reading upon that instantly claimed, the skilled artisan would reasonably expect the modified catalyst disclosed in Lee et al. to suitably and effectively function as a catalyst of a phosphoric acid fuel cell, absent the showing of convincing evidence to the contrary.
Regarding claim 4, Lee et al. teach platinum as exemplary catalytic particles; see page 13 of Lee et al. (“catalyst support…includes platinum particles”).
Regarding claim 5, Lee et al. teach a fuel cell comprising the aforementioned catalyst for a fuel cell; see page 13 of Lee et al. (“fuel cell manufactured using the catalyst support according to present invention is provided”). While Lee et al. do not explicitly disclose the aforementioned fuel cell as a “a phosphoric acid fuel cell”, it is considered that because this reference teaches a fuel cell comprising the aforementioned modified catalyst in a fuel cell, the skilled artisan would reasonably expect the aforementioned fuel cell to suitably and effectively function as a phosphoric acid fuel cell, absent the showing of convincing evidence to the contrary.
Regarding claims 6-8, Lee et al. teach the preparation of the aforementioned catalyst, wherein, as a first step, a carbon nanotube is modified with, for example, a hydroxyl group, followed by attaching a phosphoric acid group by reacting the hydroxyl group with, for example, phosphoric acid, to bind a phosphorus-based substance to the hydroxyl group and form a modified carrier (“phosphate-containing acid group…bonded to a second portion of the plurality of hydroxyl groups on the surface of the porous carrier”). Following the first step, a second step of mixing a platinum precursor in water with the modified carrier and reducing is performed, thereby manufacturing a catalyst (“process for preparing the modified catalyst…, wherein the catalyst comprises…a synthesized catalyst”). See pages 16 and 17 of Lee et al., as well as page 18, which teaches the feasibility in (a) changing the order of the first and second steps and (b) employing fullerene instead of a carbon nanotube.
Motivated by these feasibilities, the skilled artisan would have been motivated to modify the preparation of Lee et al. by changing the order of the steps disclosed therein, e.g., by mixing the modified carbon nanotube or modified fullerene with a platinum precursor (“providing a catalyst that is a particle of a metal-doped porous material as a precursor source”), followed by mixing with phosphoric acid to bond a phosphorus-based substance to the hydroxyl carrier (“provided catalyst is modified by mixing with a phosphate-containing acid…”).
Additionally, it has been held that reversing or rearranging the order of steps in a known process is within the level of ordinary skill in the art.
Reversing the order of steps in a process does not impart patentability when no unexpected result is obtained. Ex parte Rubin (POBA 1959) 128 U.S.P.Q. 440, Cohn v. Comr. Pats. (DCDC 1966) 251 F Supp 378, 148 U.S.P.Q. 486.
Further, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
While Lee et al. teach the limitations of Applicants’ claims regarding phosphate-containing acid groups being bonded to a portion of the plurality of hydroxyl groups of the surface of the porous carrier, this reference does not explicitly teach or suggest the limitations of Applicants’ claims regarding the metal microparticles being attached to a first portion of the plurality of hydroxyl groups on the surface of the porous carrier. However, as stated above, Figure 2 of Lee et al. depicts a modified carbon nanotube having thereon both phosphoric acid groups and catalytic particles. Because the modified carbon nanotube is formed by binding thereto, for example, hydroxyl groups, the skilled artisan would have been motivated to reasonably expect the catalytic particles to be attached to the hydroxyl groups present on the modified carbon nanotube that are not bonded to the phosphate-containing acid groups, absent the showing of convincing evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See, for example, Saguchi (JP 2013 137954).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732