DETAILED ACTION
Claims 1-12 are rejected were rejected in the Office action mailed 03/23/2026
Applicants filed a Request for Continued Examination, and amended claim 1 on 06/22/2026
Claims 1-12 are pending
Claims 1-12 are rejected
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants' submission filed on 06/22/2026 has been entered.
Claim Objections
3. Claims 1, 4-7, and 12 are objected to because of the following informalities:
4. In order to provide further clarity, it is suggested to amend “m2/g” to “m2/g” in claim 1 – line 3, claim 4 – line 2, claim 5 – line 2, both instances in claim 6 – line 2, both instances in claim 7 – line 2, and both instances in claim 12 – line 2. Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
7. Claim 1 is amended to recite, “a length of the nanoplates is less than 1 µm”. While applicant points to Specification - paragraph [0015], FIG. 3A and 3B for support, paragraph [0015] does not provide support for the claimed length of the nanoplates, and FIG. 3A and 3B are specific examples of the nanoplates having specific length of the nanoplates. Therefore, there is no support to recite “a length of the nanoplates is less than 1 µm” (i.e. any length is 1 µm), as presently claimed.
8. Regarding dependent claims 2-12, these claims do not remedy the deficiencies of parent claim 1 noted above and are rejected for the same rationale.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rhodes et al. (US 20180154346 A1) (Rhodes) in view of Ying et al. (US 20190273255 A1) (Ying) and Li et al. (WO 2021108461 A1) (Li).
11. Regarding claim 1, Rhodes teaches a catalytic nanoarchitecture with a second architecture that include openings for a catalytic metal (i.e. a catalytic material) (Rhodes, Abstract) wherein the catalytic metal is iridium (i.e. an iridium based catalyst ) (Rhodes, [0028]);
wherein the catalytic nanoarchitecture is an electrocatalyst (Rhodes, [0018]) in the oxygen evolution reaction (OER) (Rhodes, [0155]);
wherein the second architecture for the catalytic metal (i.e. a catalytic material) (Rhodes, Abstract) comprises a two-dimensional architecture consisting of nanosheets (i.e. nanoplates) (Rhodes, [0023]) including a non-catalytic metal oxide (Rhodes, [0076]);
wherein the non-catalytic metal is a metal oxide (Rhodes, [0028]) within a nanosheet (i.e. nanoplates) architecture with the catalytic metal (i.e. nanoplates comprising a mixture of iridium or iridium oxide) (Rhodes, [0019]).
Rhodes further teaches the second architecture for the catalytic metal (i.e. a catalytic material) (Rhodes, Abstract) consists of nanosheets (i.e. nanoplates) with thicknesses of less than 20 nm (Rhodes, [0023]), which falls within the claimed range.
Rhodes further teaches the nanosheets have a thickness to lateral dimension of length ratio of greater than or equal to 4 (Rhodes, [0023])
wherein the length of the nanosheets is greater than 80 nm (i.e. 20 nm * 4), which overlaps with the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Rhodes further teaches the catalytic nanoarchitecture (Rhodes, Abstract) is composed of an interconnected network of particles or domains rather than distinct, separate particles (Rhodes, [0019]) to provide a 3D molecular assembly (Rhodes, [0022]) such as a 2D Ni-Ir nanoframe (Rhodes, [0140]) (i.e. the nanoplates form a continuous and interconnected structure).
However, Rhodes does not teach (a) having a BET surface area of at least 50 m2/g, (b) having a pore volume of at least 0.10 cc/g, and (c) wherein the catalyst is formed using an organic structure-directing template and an inorganic structure-directing template.
With respect to the difference (a), Ying teaches Ying teaches a method for preparing metal oxide nanosheets (i.e. nanoplates) (Ying, Abstract), wherein examples of industrial applications of the metal oxide nanosheet are in the fields of energy storage and catalysis (Ying, [0240]), such as being a catalyst for various chemical reactions such as oxidation reaction (Ying, [0243]),
wherein the metal oxide nanosheets comprises at least one transition metal (Ying,
[0013]), such as iridium (Ying, [0033]) (i.e., iridium-based catalyst comprising a catalytic
material comprising nanoplates comprising iridium oxide).
Ying further teaches the metal oxide nanosheets that have a Brunauer-Emmett-Teller (BET) surface area in the range of 15 m2/g to 350 m2/g (Ying, claim 50), which overlaps with the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Ying expressly teaches the high surface area of the nanosheets allows for good contact between an active material and an electrolyte to facilitate access to electrochemically active sites (Ying, [0003]).
Rhodes and Ying are analogous art as they are all drawn to iridium-based catalysts for electrochemical reactions.
In light of the motivation for high surface area of the nanosheets allows for good contact between the active material and the electrolyte as disclosed by Ying, it therefore would have been obvious to one of ordinary skill in the art to include metal oxide nanosheets that have a Brunauer-Emmett-Teller (BET) surface area in the range of 15 m2/g to 350 m2/g to the catalytic nanoarchitecture with a second architecture that include openings for a catalytic metal of Rhodes, in order to facilitate access to electrochemically active sites, and thereby arrive at the claimed invention.
With respect to difference (b), Li teaches a catalyst material comprising iridium oxide (i.e. an iridium-based catalyst) (Li, Abstract) for oxygen evolution reaction (OER) (Li, [0006]), wherein examples of the catalyst material having porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g (Li, Table 1, [0089]), which fall within the recited range.
As Li expressly teaches, if porous volume of the particles were to be too low, this would result in a decrease in catalytic activity of the catalyst for the OER (Li, [0066]). Therefore, it is clear that high porous volume of the particles, such as the porous volume in the examples above, would provide desirable catalytic activity of the catalyst for the OER
Rhodes, Ying, and Li are analogous art as they are both drawn to iridium-based catalysts for chemical reaction such as oxidation reaction.
In light of the motivation for the porous volume in the catalyst materials comprising
iridium oxide as disclosed by Li, it therefore would have been obvious to one of ordinary skill in the art to include a high porous volume, such as 0.418, 0.389, 0.339, and 0.245 cc/g in the catalytic nanoarchitecture with a second architecture that include openings for a catalytic metal of Rhodes in view of Ying, in order to provide desirable catalytic activity of the catalyst for chemical reaction such as oxidation reaction, and thereby arrive at the claimed invention.
However, Rhodes in view of Ying and Li do not teach the catalyst is formed using an organic structure-directing template and an inorganic structure-directing template.
Although Rhodes, Ying, and Li do not explicitly teach wherein the catalyst is formed using an organic structure-directing template and an inorganic structure-directing template, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Rhodes in view Ying and Li meets the requirements of the claim product, Rhodes in view Ying and Li clearly meets the requirements of the present claim.
12. Regarding claim 2, Rhodes further teaches the second architecture for the catalytic metal (i.e. a catalytic material) (Rhodes, Abstract) consists of nanosheets (i.e. nanoplates) with thicknesses of less than 20 nm (Rhodes, [0023]), which falls within the claimed range.
13. Regarding claim 3, Rhodes further teaches the second architecture for the catalytic metal (i.e. a catalytic material) (Rhodes, Abstract) consists of nanosheets (i.e. nanoplates) with thicknesses of less than 20 nm (Rhodes, [0023]), which overlaps with the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
14. Regarding claim 4, Rhodes in view of Ying further teaches the metal oxide nanosheet having BET of about 100 m2/g to 350 m2/g, which falls within the recited range (Ying, [0142]).
15. Regarding claim 5, Rhodes in view of Ying further teaches the metal oxide nanosheet having BET of about 150 m2/g to 350 m2/g, which falls within the recited range (Ying, [0142]).
16. Regarding claim 6, Rhodes in view of Ying further teaches the metal oxide nanosheet having BET of about 50 m2/g to 350 m2/g, which falls within the recited range (Ying, [0142]).
17. Regarding claim 7, Rhodes in view of Ying further teaches the metal oxide nanosheet having BET of about 50 m2/g to 300 m2/g, which falls within the recited range (Ying, [0142]).
18. Regarding claim 8, Rhodes in view of Li further teaches a catalyst material having porous
volumes 0.418, 0.389, 0.339, and 0.245 cc/g, which fall within the recited range (Li, Table 1,
[0089]).
19. Regarding claim 9, Rhodes in view of Li further teaches a catalyst material having porous
volumes 0.418, 0.389, and 0.339 cc/g, which fall within the recited range (Li, Table 1, [0089]).
20. Regarding claim 10, Rhodes in view of Li further teaches a catalyst material having porous volumes 0.418, 0.389, 0.339, and 0.245 cc/g, which fall within the recited range (Li, Table 1, [0089]).
21. Regarding claim 11, Rhodes in view of Li further teaches a catalyst material having porous volumes 0.389, 0.339, and 0.245 cc/g, which fall within the recited range (Li, Table 1, [0089]).
22. Regarding claim 12, Rhodes in view of Ying and Li further teaches the metal oxide nanosheet having BET of about 50 m2/g to 350 m2/g (Ying, [0142]) and a catalyst material having porous volumes 0.389, 0.339, and 0.245 cc/g cc/g and 0.245 cc/g, which fall within the recited ranges (Li, Table 1, [0089]).
Response to Arguments
23. In response to the amendments in claim 1, regarding “… a length of the nanoplates is less than 1 µm… and wherein the nanoplates form a continuous and interconnected structure.”, it is agreed that Ying would not meet the present claims. Hence, the previous 35 U.S.C. 103(a) rejections over Ying in view of Li is withdrawn from the rejection of record. However, the amendments necessitate new sets of rejections as set forth above.
24. Applicants primarily argue:
“However, for the nanosheet metal oxide prepared by Ying, as shown in the microscopic images in Figure 7 reproduced below, they are extended nanosheets without the presence of any discrete nanoplatelet particles and with a length of much longer than 1 µm.”
Remarks, p. 6
“Additionally, Ying discloses a general methodology of making nanosheet metal oxides which can be used in the field of energy storage and catalysis, but they use different types of templates and obtain the nanosheet without discrete nanoplatelet particles and the length much longer than 1 µm. For example, Ying teaches that by mixing a template with at least one metal oxide precursor and calcining the metal oxide precursor-bonded template obtained in operation forms the metal oxide nanosheets. Paragraphs 0007-0008 of Ying.”
Remarks, p. 6
Examiner respectively traverses as follows:
While it is agreed that Ying are extended nanosheets without the presence of any discrete nanoplatelet particles and with a length of much longer than 1 µm. It is noted that while Ying does not disclose all the features of the present claimed invention, Ying is used as teaching reference, namely the metal oxide nanosheets that have a Brunauer-Emmett-Teller (BET) surface area in the range of 15 m2/g to 350 m2/g, in order to facilitate access to electrochemically active sites, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
25. Applicants further argue:
“Li discloses porous iridium oxide particles prepared by molten salt mediated thermal treatment. The porous structure in Li arises from bulk salt decomposition and particle coarsening, not from template directed assembly. Li provides no teaching or suggestions regarding dual template strategies or morphology control via coordinated organic and inorganic templating.”
Remarks, p. 6-7
Examiner respectively traverses as follows:
While it is agreed that Li provides no teaching or suggestions regarding dual template strategies or morphology control via coordinated organic and inorganic templating. It is noted that while Li does not disclose all the features of the present claimed invention, Li is used as teaching reference, namely that a high porous volume, such as 0.418, 0.389, 0.339, and 0.245 cc/g, in order to provide desirable catalytic activity of the catalyst for chemical reaction such as oxidation reaction, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
26. Applicants further argue:
“Using the method taught by Ying would not generate nanosheet iridium oxide. This is evidenced by Li's examples. The procedure followed by Li falls in the range claimed by Ying, for example, the Ir precursor and a Co precursor are mixed in the presence of a template, the PLURONIC F127 tri-block polymer surfactant, and the mixture is calcined, generating a high surface area, high pore volume amorphous iridium oxide, but not nanosheet iridium oxide. The materials prepared by Li have large pore volumes, important for their high catalytic activity for the oxygen evolution reaction. Their large pore volume is, however, due to their highly amorphous nature and the doping of other earth abundant 3D elements. In addition, Ying discloses a template of two-dimensional carbonaceous material with surface functional groups selected from graphite oxide and graphene oxide (GO). Claim 35 of Ying.”
Remarks, p. 6-7
Examiner respectively traverses as follows:
Firstly, Ying is only used as teaching reference in order to teach modifying the BET surface area of the catalytic nanoarchitecture with a second architecture that include openings for a catalytic metal of Rhodes to have a Brunauer-Emmett-Teller (BET) surface area in the range of 15 m2/g to 350 m2/g, including that presently claimed, in order to facilitate access to electrochemically active sites. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", ln re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Secondly, Li is only used as teaching reference in order to teach modifying the porous volume of the catalytic nanoarchitecture with a second architecture that include openings for a catalytic metal of Rhodes to have a porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g in order to provide desirable catalytic activity of the catalyst for chemical reaction such as oxidation reaction. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", ln re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Conclusion
27. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Remy Frederic Lalisse whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
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/R.F.L./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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