DETAILED ACTION
Claims 1-12 are pending
Claims 1-12 are rejected
Examiner’s note
1. It is noted that there is inadvertent typographic error in item #8 in the previous Office action mailed 11/07/2025. "Claims 1-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ying et al. (US-2019/0273255 Al) (Ying) in view of evidence by Li et al. (WO-2021/108461 Al) (Li)." should have read as "Claims 1-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ying et al. (US-2019/0273255 Al) (Ying) in view of Li et al. (WO-2021/108461 Al) (Li)”, given that Li is clearly a teaching reference as set forth in item #8 in the Office action mailed 11/07/2025. Corrected heading is provided as set forth below
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
3. 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.
4. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
5. Claims 1-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ying et al. (US-2019/0273255 Al) (Ying) in view of Li et al. (WO-2021/108461 Al) (Li).
6. Regarding claims 1-2, Ying teaches a method for preparing metal oxide nanosheets
(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)
wherein the metal oxide nanosheets have a thickness in the range of 0.5 to 10 nm, which
falls within the recited range (Ying, claim 46).
However, Ying does not explicitly teach the metal oxide nanosheets having comprising a
pore volume of at least 0.10 cc/g.
With respect to the difference, Li teaches a catalyst material comprising iridium oxide
(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.
Li and Ying 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 having the porous volume in the catalyst materials
comprising iridium oxide as disclosed by Li as described above, it therefore would have been
obvious to one of ordinary skill in the art to modify the metal oxide nanosheet of Ying to have
high porous volume, such as 0.418, 0.389, 0.339, and 0.245 cc/g, in order to in provide desirable
catalytic activity of the catalyst for chemical reaction such as oxidation reaction, and thereby
arrived at the claimed invention.
Ying further teaches that the graphene oxide (GO) or graphite oxide (i.e. inorganic structure-directing template) is employed in the formation of metal oxide nanosheets (Ying, Abstract).
Li further teaches that the aggregated micelles serve as a soft template (i.e. organic structure directing template) to control the formation of the iridium nitrate during the reaction step and formation of iridium oxide during the calcination step (Li, [0053]).
However, Ying and Li do not teach the catalyst is formed using an organic structure-directing template and an inorganic structure-directing template.
Although 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 Ying in view of Li meets the requirements of the claim product, Ying in view of Li clearly meets the requirements of the present claim.
7. Regarding claim 3, Ying further teaches the thickness of the metal oxide nanosheet being
about 0.5 nm to 9 nm, which falls within the recited range. (Ying, [0150]).
8. Regarding claim 4, 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]).
9. Regarding claim 5, 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]).
10. Regarding claim 6, 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]).
11. Regarding claim 7, 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]).
12. Regarding claim 8, Ying 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]).
13. Regarding claim 9, Ying 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]).
14. Regarding claim 10, Ying 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]).
15. Regarding claim 11, Ying 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]).
16. Regarding claim 12, Ying in view of 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
17. Applicants primarily argue:
“Ying does not use any organic molecular ligands as directing agents, nor does it disclose or suggest the use of any inorganic molten salt- based structure directing templates. Ying's morphology is derived exclusively from the layered structure of GO and is fundamentally tied to its carbonaceous template. Nothing in Ying teaches cooperative ` templating or the use of organic and inorganic structure- directing agents.”
Remarks, p. 5
The Examiner respectively traverses as follows:
While it is agreed that Ying does not explicitly teach the catalyst formed using an organic structure-directing template and an inorganic structure-directing template, however it is noted that the present claims are drawn to a product and not drawn to a method of making. 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 (i.e., applicants have not come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product) and given that Ying in view of Li meets the requirements of the claimed product, Ying in view of Li clearly meets the requirements of the present claim.
18. Applicants further argue:
“Li does not employ any organic structure directing template, nor does Li use any coordinated ligand chemistry that would produce nanoplates. The porous structure in Li arises from bulk salt decomposition and particle coarsening, not from template directed assembly. Li does not teach or suggest dual template strategies or morphology control via coordinated organic and inorganic templating.”
Remarks, p. 5-6
Examiner respectively traverses as follows:
While it is agreed that Li does not explicitly teach the catalyst formed using an organic structure-directing template and an inorganic structure-directing template, however it is noted that the present claims are drawn to a product and not drawn to a method of making. 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 (i.e., applicants have not come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product) and given that Ying in view of Li meets the requirements of the claimed product, Ying in view of Li clearly meets the requirements of the present claim.
19. Applicants further argue:
“Ying's nanosheets which are formed through GO templated exfoliation cannot be modified by Li's molten salt porosity teachings to yield nanoplates produced through dual organic/inorganic structure-directing templating. The two references operate through fundamentally incompatible mechanisms; Ying relies on carbonaceous 2D templates to guide sheet morphology, whereas Li relies on salt mediated calcination of iridium precursors to yield porous bulk oxide particles. Neither Ying nor Li teach or suggest that these unrelated methods could be combined, nor is there any indication that such a combination would form a catalyst derived from cooperative organic-inorganic structure- directing templating, as in claim 1.”
Remarks, p. 6
Examiner respectively traverses as follows:
As stated above, while it is agreed that Ying and Li do not explicitly teach the catalyst formed using an organic structure-directing template and an inorganic structure-directing template, however it is noted that the present claims are drawn to a product and not drawn to a method of making. 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 (i.e., applicants have not come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product) and given that Ying in view of Li meets the requirements of the claimed product, Ying in view of Li clearly meets the requirements of the present claim.
Further, Ying and Li are related as they are drawn to iridium-based catalysts for
chemical reaction such as oxidation reaction. Li provides proper motivation, namely for having the porous volume in the catalyst materials comprising iridium oxide, in order to in provide desirable catalytic activity of the catalyst for chemical reaction such as oxidation reaction. Therefore, it is the examiner's position that Ying and Li are properly combined.
Additionally, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. Therefore, the Examiner’s position remains, it would be obvious to one of ordinary in the art to achieve a successful modification, absent evidence to the contrary.
20. Applicants further argue:
“The specification clearly establishes that the combined use of an organic structure- directing template and an inorganic structure-directing template results in nanoplate morphology distinct from nanosheets, controlled porosity and surface area, enhanced network connectivity and catalyst layer uniformity, and structural features unattainable through GO templating (Ying) or molten salt porosity generation (Li).”
“The combination of Ying and Li does not teach or suggest that "the catalyst is formed using an organic structure-directing template and an inorganic structure-directing template," as claimed. This dual template process defines and necessarily produces a structurally distinct nanoplate catalyst that cannot be obtained from either reference alone or in combination.”
Remarks, p. 6-7
Examiner respectively traverses as follows:
While applicants point to Specification paragraphs [0014-0015] and [0022] for support, it is noted that they are merely conclusory statements. Applicants have not provided sufficient evidence (i.e. data) to support the position.
Therefore, absent evidence of criticality regarding the presently claimed process (i.e., applicants have not come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product) and given that Ying in view of Li meets the requirements of the claimed product, Ying in view of Li clearly meets the requirements of the present claim.
Conclusion
21. 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.
20. 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