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
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/19/25.
Applicant's election with traverse of claims 1-7 in the reply filed on 12/ is 19/25 acknowledged. The traversal is on the ground(s) that there is (1) no serious burden and (2) the reaction bath cannot be practiced without the product produced by claim 1 because claim 8 recites “the…electrode according to claim 1”. This is not found persuasive because (1) the as noted below, the electrode as recited in claim 8 can be formed by a materially different process (either a non-microwave thermal decomposition reaction in an oven or a CVD process) and the recitation in claim 8 is a product by process claim which does not require the process steps of claim 1 which also provides evidence that there is a serious burden because the process of forming the coating is classified in different areas and would require different prior art.
In the restriction mailed on 11/10/25, Groups I & II were restricted as combination and sub-combination. Applicant is advised that this restriction was improper and has been withdrawn because the groups are not a combination and sub-combination.
However, restriction is still proper as discussed below.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a method of forming a coating on an electrode, classified in C23C18/00.
II. Claims 8-13, drawn to an electrolytic reaction bath comprising the coated electrode, classified in C23B9/19.
The inventions are independent or distinct, each from the other because:
Inventions I & II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the coating can be formed by a materially different process, such as a thermal decomposition in solution using an oven instead of a microwave or by CVD instead of a solution decomposition reaction.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries);
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 2-4 are objected to because of the following informalities:
Claim 2 “Microwave” should not be capitalized. Appropriate correction is required.
Claims 3 & 4 recite “Ni…2~10 mmol” which should read “Ni… at 2-10 mmol”. Appropriate correction is required.
Claims 3 & 4 recite “NH4F4~10 mmol” which should be “NH4F at 4-10 mmol”. Appropriate correction is required.
Claims 3 & 4 recite “Co(NH2)210 mmol” which based on the specification appears to be a typo and should be “CO(NH2)2 10 mmol”. 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.
Claims 5-7 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.
Claims 5-7: Claims 5-7 recite “the nickel foam electrode is immersed in the precursor solution prior to pretreatment, the steps comprising” which renders the claims indefinite because it is ambiguous of what the “pretreatment” references or when the steps following “steps comprising” are to be performed because the electrode is immersed prior to a pretreatment and yet the steps listed appear to be referencing a pretreatment process as discussed in the specification.
For the purpose of examination, the claims will be interpreted as “the nickel foam is pretreated prior to immersion in the precursor solution, the pretreatment comprises:”.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Geng (Geng et al. Nickel Ferrocyanide as High-Performance Next Generation Electrocatalyst for Urea Oxidation; found at. https://www.researchsquare.com/article/rs-67358/v1, 9/20/2021; hereafter Geng) in view of Feng (Feng, Journal of Alloys and Compounds 881 (2021) 160603; hereafter Feng) and Shanmugavani (Shanmugavani, Materials Letters 304 (2021) 130593; hereafter Shanmugavani).
Claim 1: Geng is directed towards electrocatalyst for urea oxidation (title) and a method of producing a coated nickel foam (pgs 4-5 & 8) to produce an electrode (see pg 5; i.e. a preparation method for oxidation of nitrogen-containing compound electrode), the steps comprising:
providing a nickel foam electrode (pgs 4-5 & 8);
immersing the nickel foam electrode in a precursor solution containing precursors (pgs 4-5 & 8);
evenly dispersing the precursor solution containing the nickel foam electrode and precursor (pgs 4-5 & 8); and
forming Ni2Fe(CN)6 nanoparticles on the nickel foam (pgs 4-5 & 8).
Geng does not teach forming the electrocatalyst by irradiation by microwave followed by drying and annealing.
However, Feng, which is directed towards electrocatalysts for hydrogen evolution reactions (HER; title) teaches that HER electrocatalyst can be formed by immersing a substrate in a precursor solution followed by thermal decomposition to form the electrocatalyst nanoparticles, drying the coating, and then annealing said coating (see § 2.2, pg 2).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the HER electrocatalyst of Feng with the taught precursor solution and thermal decomposition process for the HER electrocatalyst of Geng and its formation solution and process because they are art recognized alternative HER electrocatalyst and the process and HER electrocatalyst of Feng would have predictably produced the desired oxidation of nitrogen-containing compound nickel foam electrode.
The combination does not teach performing the thermal decomposition by irradiating with a microwave.
However, Shanmugavani, which is also directed towards metal hexanoferrates (M-HCF; ¶ 1, pg 1) discloses that the M-HCF nanoparticles can be formed by microwave-assisted reflux of the precursors (title, abstract & §2, pgs 1-2)
The Examiner notes that Ni2Fe(CN)6 is a metal hexanoferrate.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the microwave-assisted reflux of Shanmugavani as the specific method of forming thermal decomposition in the process because is an art recognized thermal decomposition method in the art and would have predictably produced the desired deposit.
Claim 2: Shanmugavani teaches microwave irradiating with a commercial microwave for 10 s on and 5 s off for 1 hour (see § 2, pg 1).
Feng further teaches the drying is performed by hanging in air and the annealing is performed at 250, 300, & 400 ºC in argon gas for 2 hours(§ 2.2, pg 2).
The Examiner notes that commercial microwaves are available with wattages of 700-1000W.
It would have been obvious to one of ordinary skill in the art at the time of filing to use a microwave with a wattage of 700-1000W because they are readily available microwaves and it is prima facie obvious to use art recognized suitable devices.
Time is an art recognized result effective variable which controls how dry, reduced, annealed, or complete a process is.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the time for each process because it is prima facie obvious to optimize result effective variables.
Temperature is an art recognized result effective variable.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed temperatures because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 3 & 4: Feng teaches using 1 mmol Co(NO3)2·6H2O, 8 mmol NH4F, and 15 mmol CO(NH2)2 in 50mL of water (§ 2.2, pg 2).
It would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed concentrations because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Geng, Feng, & Shanmugavani as applied above, and further in view of Bakar (Bakar, Materials Today: Proceedings 60 (2022) 1036–1041; hereafter Bakar).
Claims 5-7: Geng teaches pretreatment the nickel foam prior to coating by sonicating with acetone, nitric acid, and deionized water respectively for 15 minutes (pg 8, Geng).
Geng does not teach cutting the nickel foam, sonicating in 50 mL of 3M HCL or drying in an oven.
However, Bakar, which directed towards cleaning of nickel foam prior to use (abstract) discloses cutting the nickel foam to the selected size and that a known acid cleaning includes sonicating the nickel foam in various concentrations of HCl followed by drying in an oven to remove the remnants of the acid (§ 2, pg 1037).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the HCl acid wash for the nitric acid wash because the are art recognized alternative means for acid washing nickel foam for preparing said material for use and the HCl wash would have predictably provided the same desired results.
Additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to further incorporate the taught “cutting to desired size” and the drying in an oven taught by Bakar because they are art recognized processes for preparing a piece of nickel foam for further use and would have predictably provided a piece of nickel foam suitable for deposition as desired.
Time is an art recognized result effective variable which controls how dry, reduced, annealed, or complete a process is.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the time for each process because it is prima facie obvious to optimize result effective variables.
Temperature is an art recognized result effective variable.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed temperatures because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
It would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed concentrations because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759