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/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 6/22/2026 is acknowledged.
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 5-6 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.
Regarding claim 5-6, the claims require molar percentages, but do not specify the basis on which the percentages are calculated, i.e. it is unclear of the percentages are of the total catalyst including oxygen, hydrogen, etc; only the metals; or the metals and boron. For purposes of examination, the percentage will be interpreted as of the total of the metals and boron since this appears to be most consistent with the specification.
Claim Rejections - 35 USC § 102
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) 1-2 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al., “Trace tungsten and iron-doped nickel hydroxide nanosheets for an efficient oxygen evolution reaction”, Sustainable Energy Fuels, 2020, 4, 2792-2799.
Regarding claims 1-2, Li teaches a non-platinum group metal catalyst for oxygen evolution reaction which comprises a nickel-iron-tungsten oxyhydroxide having a layered double hydroxide structure. See the abstract.
Regarding claim 9, Li teaches the use and thus insolubility of the OER catalyst in 1 M KOH solution which has a pH of 14. See page 2796 in the Oxygen evolution activity section. The catalyst would also be insoluble in neutral water since it does not dissolve in the more extreme pH of 14.
Regarding claim 10, Li teaches disposing the catalyst on carbon cloth which is considered a porous transport material and/or membrane.
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.
Claims 1-5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al.; “Ternary Ni-Co-Fe oxyhydroxide oxygen evolution catalyst: Intrinsic activity trends, electrical conductivity, and electronic band structure”, Nano Research 2019, 12(9): 2288-2295; in view of Ahn et al., “Electrochemical oxidation of boron-doped nickel-iron layered double hydroxide for facile charge transfer in oxygen evolution electrocatalyst”, RSC Adv., 2021, 11, 8198-8206.
Regarding claims 1-2, Stevens teaches nickel, iron, and cobalt containing oxyhydroxide oxygen evolution catalysts with LDH structure. See the abstract and Section 1. Stevens does not teach boron in the oxyhydroxide as claimed.
However, it is known in the art to dope nickel- and iron- containing oxyhydroxides with boron. See the abstract of Ahn. One of ordinary skill in the art would have been motivated to perform a boronization on the product of Steven in view of the teachings of Ahn in order to enhance OER catalytic activity as disclosed by Ahn.
Regarding claims 3-4, Stevens teaches various compositions including Ni0.54Co0.10Fe--0.36OOH which, when expressed in the form claimed, with other elements expressed with respect to one mole iron, is Ni1.5FeCo0.28O2.8(OH)2.8. See Figure 4(a) and associated text. Thus Stevens teaches a = 1.5, b = 0.28, d = 2.7, and e = 2.7.
Stevens does not teach boron in the oxyhydroxide as required by the claim. However, when boronizing in view of Ahn, rendered obvious above, it would have been obvious to one of ordinary skill in the art to include a similar amount of boron with respect to nickel as taught by Ahn in order to achieve the disclosed enhancement of catalytic activity. Table S1 in Ahn shows a molar ratio of Ni:B of 1:0.013. When used in this ratio with nitrogen, the resulting product would be Ni1.5FeCo0.28B0.2O2.8(OH)2.8 with c = 0.20. The references do not discuss associated water, however, this water is an intrinsic characteristic of LDH structures and would be present in the required amount especially during or after use in the oxygen evolution reaction.
Regarding claim 5, following the composition render obvious above, Ni1.5FeCo0.28B0.2O2.8(OH)2.8,, the catalyst of Stevens in view of Ahn would comprise about 50 molar % nickel, 9.4% cobalt, 34% iron, and 6.7% boron.
Regarding claim 9, teaches use in an oxygen evolution reaction which takes place in water at alkaline pH values, and the catalyst must be insoluble in water. See the abstract.
Regarding claim 10, Stevens teaches disposition on an electrode material. See Sections 2.1 and 2.2. The electrodes used appear to be non-porous and are not membranes. However, it is known to dispose OER catalyst on porous transport materials such as nickel foam. See the experimental section of Ahn. It would have been obvious to one of ordinary skill in the art to dispose the catalyst of Stevens on the nickel foam of Ahn with the motivation of increasing the surface area for use in OER.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 6 requires the catalyst to contain 10-45 mol. % nickel, 5-30% iron, 0.01-20% tungsten, molybdenum, cobalt, cerium, or mixtures thereof, and 0.01-20% boron. The closest prior art references Li et al., Stevens et al., and Ahn et al. do not teach or suggest the claimed composition.
Stevens teaches various Ni:Fe:Co molar ratios, but since Ahn only teaches a ratio of Ni:B of 1:0.013, as discussed in the rejections above, the references cannot be combined to meet the compositional limitations. Any composition meeting the upper limits of each of the metals would need to comprise at least 5 molar % boron, an amount which is not motivated from the combination with Ahn, which at best would teach including 0.45 mole Ni x (0.013 mole B/mole Ni) = 0.006 moles or about 0.6 molar %.
Claims 7-8 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claims 7 and 8 require surface areas greater than 50 m2/g and greater than 100 m2/g, respectively. None of the prior art references used in the rejections above teach or suggest the surface areas claimed. The catalysts of the prior art are also prepared using processes that are different than that used in the instant application, and thus cannot be said to inherently posses the claimed surface areas.
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ANTHONY J. ZIMMER
Supervisory Patent Examiner
Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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