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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 03/10/2026.
Status of Rejections
The objections to the claims are partially withdrawn in view of applicant’s amendments.
The rejection(s) of claim(s) 2-4, 6-7 and 9 is/are obviated by applicant’s cancellation.
The rejection of claim(s) 3-5 under 35 USC 112(b) is/are withdrawn in view of applicant’s amendment.
All other previous rejections are withdrawn in view of applicant’s amendments.
New grounds of rejection are necessitated by applicant’s amendments.
Claims 1, 5, 8, 10 and 21-30 are pending and under consideration for this Office Action.
Claim Objections
Claim 10 is objected to because of the following informalities:
In claim 10, line 1, “substrate that is” should read “substrate.
Appropriate correction is required.
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.
Claim 27 is 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.
Claim 27 recites the limitation "a surface density in a range of from about 280 g/cm3 to about 340 g/cm3" in lines 1-2. However, “g/cm3” are not units of surface density, and instead are units representative of a volumetric density, making it unclear what physical property is being claimed. For examination purposes, based on paragraph 0080 of the instant specification, this limitation has been interpreted to be intended to have units of “g/cm2” corresponding to surface density.
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.
Claims 1, 5 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (U.S. 2018/0327918) in view of Li et al. (“Bimetallic Ni–Fe phosphide nanocomposites with a controlled architecture and composition enabling highly efficient electrochemical water oxidation”, J. Mater. Chem. A, Jan 2018), and further in view of Kwong et al. (“Scalable Two-Step Synthesis of Nickel–Iron Phosphide Electrodes for Stable and Efficient Electrocatalytic Hydrogen Evolution”, J. Phys. Chem. C, 2016).
Regarding claim 1, Wang teaches an electrode for overall water splitting (see e.g. Fig. 1, electrode material 1 for hydrogen and oxygen evolution from water; Paragraph 0024 and Paragraph 0052, lines 1-3), the electrode comprising:
a substrate comprising foam (see e.g. Fig. 1, core material 2 comprising a foam; Paragraph 0018 and Paragraph 0052, lines 4-5); and
a uniform distribution of a bifunctional electrocatalyst comprising metallic phosphides comprising a combination of iron phosphide (FeP) and dinickel phosphide (Ni2P) grown directly on a surface of the substrate, the electrode comprising primarily the metallic phosphides comprising FeP and the Ni2P on the foam (see e.g. Fig. 1, coating 4 comprising transition metal phosphides including FeP, Ni2P and combos thereof grown uniformly on core material 2; Paragraph 0052, lines 4-7, and Paragraph 0054, lines 4-8, Paragraph 0058, lines 2-4, and Paragraph 0066).
Wang does not explicitly teach the foam being Ni foam. Wang does however teach Ni foam being used as an electrode material (see e.g. Paragraph 0063, lines 7-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the three dimensional substrate of Wang to comprise Ni foam as an exemplary foam material suitable for use in an electrode. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Further, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Wang does not teach the metallic phosphides primarily comprising the combination of FeP and Ni2P, but does teach that the metallic phosphides may include transition metal phosphides such as FeP, Ni2P and combinations thereof (see e.g. Paragraph 0022).
Li teaches an Ni-Fe phosphide electrocatalyst for water splitting (see e.g. Abstract), wherein the Ni-Fe phosphide primarily comprises FeP and Ni2P (see e.g. Page 2233, Col. 2, bottom paragraph, lines 1-5), the intimate contact between Ni2P and FeP and inter-doping of Ni and Fe species optimizing local electronic states of the catalytic sites, boosting the electrocatalytic activity (see e.g. Page 2235, Col. 1, bottom paragraph, lines 3-8, and Col. 2, lines 9-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metallic phosphides of Wang to primarily comprise the FeP and Ni2P as taught by Li as a particular suitable combination of metallic phosphides that can optimize local electronic states of catalytic sites due to the intimate contact between Ni2P and FeP and inter-doping of Ni and Fe species, thereby boosting the electrocatalytic activity for water splitting.
Modified Wang does not explicitly teach the metallic phosphides comprising a majority of the FeP and a minority of the Ni2P.
Kwong teaches a nickel-iron phosphide electrocatalyst for H2 production from water splitting (see e.g. Abstract) wherein a Ni:Fe molar ratio is optimized to 1:4 for higher HER catalytic activity (see e.g. Page 286, Col. 1, under “Results and Discussion”, lines 1-7, and Page 287, Col. 2, 2nd paragraph), this 1:4 nickel-iron phosphide comprising FeP as the bulk phase (see e.g. Page 287, Col. 2, lines 11-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metallic phosphides of modified Wang to comprise a majority of the FeP and minority of Ni2P as taught by Kwong to provide higher HER catalytic activity in water splitting.
Regarding claim 5, Wang as modified by Li teaches the electrode consisting essentially of FeP and Ni2P on Ni foam (see e.g. Wang Fig. 1, coating 4 comprising FeP and Ni2P on core material 2 such as a foam, e.g. Ni foam, Paragraph 0052, lines 4-7, Paragraph 0054, lines 4-8, and Paragraph 0063, lines 7-8; see e.g. Li Page 2233, Col. 2, bottom paragraph, lines 1-5, Ni-Fe phosphide consisting essentially of FeP and Ni2P).
Regarding claim 28, the limitations of the claim are product-by-process limitations. MPEP § 2113 states “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. As there does not appear to be any indication in the disclosure of further structural limitations implied by this process beyond the formation of FeP and Ni2P directly on the substrate, modified Wang teaches all structural limitations of the claimed electrode as stated above in regards to claim 1.
Regarding claim 29, Wang as modified by Li and Kwong teaches the metallic phosphides comprising 82.4 wt% of the FeP and 17.6 wt% of the Ni2P (see e.g. Li Page 2233, Col. 2, bottom paragraph, lines 1-5, and Kwong Page 286, Col. 1, under “Results and Discussion”, lines 1-7, and Page 287, Col. 2, 2nd paragraph, phosphides consisting of FeP and Ni2P, and 1:4 Ni:Fe molar ratio, resulting in about 17.6 wt% Ni2P and 82.4 wt% FeP).
Regarding claim 30, the limitation of the bifunctional electrocatalyst being “stable at current densities of at least 100 mA/cm2” is a property of the electrode in use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Further, MPEP§ 2112.01 I states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”. Modified Wang teaches all the elements of the claimed electrode as stated above and would therefore be expected to exhibit the same or very similar property in use. Wang also provides examples of metal phosphide electrocatalysts being able to perform decently even at 100 mA/cm2 (see e.g. Wang Figs. 7c-7d and Paragraph 0076).
Claims 8 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li and Kwong, as applied to claim 1 above, and further in view of Zhang et al. (“Ternary nickel iron phosphide supported on nickel foam as a high-efficiency electrocatalyst for overall water splitting”, Int J Hydrogen Energy, Mar 2018).
Regarding claim 8, modified Wang teaches all the elements of the electrode of claim 1 as stated above. Modified Wang does not explicitly teach a loading of the bifunctional electrocatalyst comprising primarily metallic phosphides being in the range of from 8 to 13.5 mg/cm2.
Zhang teaches a bifunctional nickel iron phosphide electrocatalyst for water splitting (see e.g. Abstract), wherein a mass loading of the iron nickel phosphide was 8 mg/cm2 (see e.g. Page 7300, Col. 2, lines 17-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mass loading of the electrocatalyst of modified Wang to be 8 mg/cm2 as taught by Zhang as a suitable loading for a bifunctional nickel iron phosphide electrocatalyst for water splitting. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claims 24-25, modified Wang does not explicitly teach a loading of dinickel phosphide (Ni2P) being in a range of from 1 to about 2 mg/cm2, a loading of iron phosphide (FeP) being in a range of from 7 to 13 mg/cm2, or a combination thereof, of claim 24, or the loading of the dinickel phosphide (Ni2P) on the substrate being in a range of from 1 to 1.5 mg/cm2, of claim 25. Wang as modified by Li and Kwong does however teach the metallic phosphides consisting of FeP and Ni2P (see e.g. Wang Paragraph 0022; see e.g. Li Page 2233, Col. 2, bottom paragraph, lines 1-5), as well as the Ni:Fe molar ratio of the electrocatalyst being 1:4 (see e.g. Kwong Page 286, Col. 1, under “Results and Discussion”, lines 1-7, and Page 287, Col. 2, 2nd paragraph).
Zhang teaches a bifunctional nickel iron phosphide electrocatalyst for water splitting (see e.g. Abstract), wherein a mass loading of the iron nickel phosphide was 8 mg/cm2 (see e.g. Page 7300, Col. 2, lines 17-20).
The combination of a 1:4 Ni:Fe molar ratio and an 8 mg/cm2 total iron nickel phosphide loading would result in an Ni2P loading of about 1.41 mg/cm2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metallic phosphides of modified Wang to have a total loading of 8 mg/cm2, resulting in an Ni2P loading of about 1.41 mg/cm2 with the 1:4 Ni:Fe molar ratio, as taught by Zhang as a suitable loading for a bifunctional nickel iron phosphide electrocatalyst for water splitting. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li and Kwong, as applied to claim 1 above, and further in view of Mei et al. (U.S. 2017/0130348) and Billings (U.S. Patent No. 4,720,331).
Regarding claim 10, modified Wang teaches all the elements of the electrode of claim 6 as stated above. Modified Wang does not teach a porosity of the FeP/Ni-2-P electrocatalyst on the substrate being greater than or equal to a porosity of the substrate, but does teach the substrate generally being porous (see e.g. Wang Paragraph 0009, porous core material).
Mei teaches an electrode for water electrolysis comprising a catalyst layer on a base material (see e.g. Abstract and Paragraph 0024), wherein the catalyst layer preferably has a porosity of 70-95% from the viewpoint of structural stability and enabling substances to adequately move through the catalyst layer without lowering usage efficiency (see e.g. Paragraph 0028).
Billings teaches an electrolyzer for water electrolysis comprising a porous cathode and porous anode (see e.g. Abstract), wherein an anode substrate preferably has a porosity of 40-50% to enable homogenous liquid diffusion (see e.g. Col. 6, lines 59-66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode of modified Wang to comprise the FeP/Ni2P catalyst having a 70-95% porosity and the substrate having a 40-50% porosity as taught by Mei and Billings as suitable porosities for the catalyst layers and substrates of electrodes for water electrolysis that respectively provide structural stability and adequate movement through the catalyst layer without lowering catalyst usage efficiency and enable homogeneous liquid diffusion in the substrate. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claims 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li and Kwong as applied to claim 1 above, and further in view of Wang et al. (U.S. 2018/0087163, hereinafter Wang2).
Regarding claim 21, modified Wang teaches all the elements of the electrode of claim 1 as stated above. Modified Wang does not explicitly teach the substrate having a porosity of from 95 to 97%, but does teach the substrate being porous Ni foam (see e.g. Wang Paragraph 0018 and Paragraph 0063, lines 7-8).
Wang2 teaches a porous electrode material comprising transition metal phosphide on a porous structure (see e.g. Abstract), wherein the porous structure may be Ni foam with a preferable porosity between 85% and 98% (see e.g. Paragraphs 0068-0069), encompassing the claimed range of the present invention.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ni foam substrate of modified Wang to have a porosity between 85% and 98% as taught by Wang2 as a preferable suitable porosity for an Ni foam electrode substrate on which transition metal phosphides are provided. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Regarding claim 23, modified Wang teaches all the elements of the electrode of claim 1 as stated above. Modified Wang does not explicitly teach the substrate comprising average pore diameters in a range of from 0.2 to 0.6 mm, but does teach the substrate being porous Ni foam (see e.g. Wang Paragraph 0018 and Paragraph 0063, lines 7-8).
Wang2 teaches a porous electrode material comprising transition metal phosphide on a porous structure (see e.g. Abstract), wherein the porous structure may be Ni foam with a preferable maximum average pore size of 500µm, equal to 0.5 mm, or more preferably 300µm, equal to 0.3mm (see e.g. Paragraphs 0068 and 0070), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ni foam substrate of modified Wang to have a maximum average pore size of 0.5 mm, or preferably 0.3 mm, as taught by Wang2 as preferable suitable average pore sizes for an Ni foam electrode substrate on which transition metal phosphides are provided. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li and Kwong as applied to claim 1 above, and further in view of Xiao et al. (“Partial-sacrificial-template Synthesis of Fe/Ni Phosphides on Ni Foam: a Strongly Stabilized and Efficient Catalyst for Electrochemical Water Splitting”, Electrochimica Acta, 2017).
Regarding claim 22, modified Wang teaches all the elements of the electrode of claim 1 as stated above. Modified Wang does not explicitly teach the substrate comprising from about 80 to about 110 pores per inch, but does teach the substrate being porous Ni foam (see e.g. Wang Paragraph 0018 and Paragraph 0063, lines 7-8).
Xiao teaches an electrode comprising iron-nickel phosphide on nickel foam for water splitting (see e.g. Abstract), wherein the nickel foam has 110 pores per linear inch (see e.g. Page 261, Col. 1, under “2.1”, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ni foam substrate of modified Wang to have 110 pores per linear inch as taught by Xiao as a suitable pores per inch value for an Ni foam electrode substrate on which transition metal phosphides are provided. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li, Kwong and Zhang, as applied to claim 24 above, and further in view of Kenney et al. (U.S. 2021/0002777).
Regarding claim 26, Modified Wang teaches all the limitations of the electrode of claim 24 as stated above. Modified Wang does not teach the loading of the iron phosphide (FeP) on the substrate being in a range of from about 10 to 13 mg/cm2, instead teaching a loading of 6.59 mg/cm2 (see e.g. Li Page 2233, Col. 2, bottom paragraph, lines 1-5, Kwong Page 286, Col. 1, under “Results and Discussion”, lines 1-7, and Page 287, Col. 2, 2nd paragraph, and Zhang Page 7300, Col. 2, lines 17-20, phosphides consisting of FeP and Ni2P, 1:4 Ni:Fe molar ratio, 8 mg/cm2 total phosphide loading, resulting in 6.59 mg/cm2 FeP).
Kenney teaches an electrode for electrolysis comprising an electrocatalyst layer (see e.g. Abstract), wherein an electrocatalyst loading is doubled from about 8 mg/cm2 to about 16 mg/cm2 to improve performance at high current (see e.g. Paragraph 0089, lines 16-23).
In combination with modified Wang, this would result in an FeP loading of 13.18 mg/cm2, which meets the claimed limitation of “about 10 to 13 mg/cm2”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrocatalyst of modified Wang to have the total loading doubled from 8 mg/cm2 to 16 mg/cm2, resulting in an FeP loading of 13.18 mg/cm2, as taught by Kenney to improve performance at high current. MPEP § 2144.05 I further states “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.”.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, Li and Kwong as applied to claim 1 above, and further in view of Li et al. (“Enhancing hydrogen production with Ni–P coated nickel foam as cathode catalyst in single chamber microbial electrolysis cells”, Int. J. Hydrogen Energy, 2016, hereinafter Li2).
Regarding claim 27, modified Wang teaches all the elements of the electrode of claim 1 as stated above. Modified Wang does not explicitly teach the substrate having a surface density in a range of from about 280 g/m2 to about 340 g/m2, but does teach the substrate being porous Ni foam (see e.g. Wang Paragraph 0018 and Paragraph 0063, lines 7-8).
Li2 teaches an electrode for electrolysis comprising Ni phosphide coated nickel foam (see e.g. Abstract), the nickel foam having a surface density of 320 g/m2 (see e.g. Page 3642, Col. 1, under “Preparation of cathodes”, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ni foam substrate of modified Wang to have a surface density of 320 g/m2 as taught by Li2 as a suitable surface density for an Ni foam electrode substrate on which transition metal phosphides are provided. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 03/10/2026, with respect to the rejection(s) of amended claim(s) 1 under 35 USC 102 over Wang or, alternately, Li, particularly regarding the phosphide comprising a majority of Fe and minority of Ni2P on Ni foam, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang, Li and Kwong.
Applicant's arguments filed 03/10/2026 have been fully considered but they are not all persuasive.
On pages 8-10, applicant argues, regarding previous claim 7 now incorporated into claim 1, that the cited references do not teach or disclose the electrode primarily comprising the majority FeP and minority Ni2P on nickel foam, particularly as none of the references teaches a nickel foam substrate. This is not considered persuasive. Wang teaches that the porous substrate can be a foam (see e.g. Wang Paragraph 0018), and further teaches nickel foam being used as an electrode material (see e.g. Wang Paragraph 0063, lines 7-8), providing a basis for said nickel foam being used as the porous foam substrate in the electrode. This is combined with the teaching of Li of a combination of primarily FeP and Ni2P in an Ni-Fe phosphide electrocatalyst having improved electrocatalytic activity for water splitting (see e.g. Li Page 2235, Col. 1, bottom paragraph, lines 3-8, and Col. 2, lines 9-20), and the teaching of Kwong of a 1:4 atomic ratio of Ni:Fe in a nickel-iron phosphide electrocatalyst with a bulk FeP phase providing high HER catalytic activity (see e.g. Kwong Page 286, Col. 1, under “Results and Discussion”, lines 1-7, and Page 287, Col. 2, lines 11-13 and 2nd paragraph).
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.
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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