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 .
Specification
The disclosure is objected to because of the following informalities:
On page 5, paragraph 2, the end of the final sentence is missing a period.
On page 6, paragraph 1, the end of the final sentence is missing a close parenthesis.
On page 10, paragraph 10, the end of the final sentence is missing a period.
Appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: In claim 7, on line 3, "microporous layer…" should read " Appropriate correction is required.
Claim 12 is objected to because of the following informalities: In claim 12, on line 2, "at least one of an ionomer" is unclear and should read either "an ionomer" or "at least one ionomer." Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a) and 35 U.S.C. 112(b):
(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.
(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 the first and second paragraphs 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.
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 11 and 15 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 claim(s) contains 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 inventor(s), at the time the application was filed, had possession of the claimed invention. “Hydrogen exchange ionomer” is not a term in common use in the art, and no mention of it is made in the specification of the present application. For the purpose of examination on the merits, the phrase as it appears in claim 11 will be interpreted as “proton exchange ionomer.” Claim 15 is rejected because it inherits all limitations of claim 11 from which it depends.
Claim 15 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 15 recites the limitation "gas diffusion " in lines 1 and 2 of the claim. There is insufficient antecedent basis for this limitation in the claim drawn to a gas diffusion electrode, as its parent claims are directed to a gas diffusion cathode.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-11 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kato (US 6054230 A).
Regarding claims 1 and 7-11, Kato discloses a gas diffusion electrode (Col. 9, line 30) comprising a supported or carbon substrate layer (Col. 9, lines 49-51, collector sheet), a microporous layer disposed on the support or carbon substrate layer, the microporous layer comprising a carbon and a hydrophobic binder (Col. 9, lines 32-52, porous electrode sheet with a pore size of 1 micrometer, equivalent to microporous layer, comprising carbon black and PTFE, equivalent to a hydrophobic binder; see also Col. 1, lines 33-41), and a catalyst layer disposed on the microporous layer (Col. 9-10, lines 56-2; Col. 3-4, lines 62-3), comprising a catalyst and ionomeric binder (Col 9, lines 56-63; solid polymer ion exchange resin acts as a binder in the catalyst material, the solid polymer ion exchange resin is NAFION, a proton exchange ionomer). The gas diffusion electrode as disclosed by Kato is applicable to both fuel and electrolyzer cells (Col. 1, lines 5-11). Kato does not specifically teach that the electrode is a cathode, but since it teaches the claimed structure, it would be expected by one of ordinary skill in the art that the electrode of Kato would inherently function as a cathode. In the alternative, it would have been obvious to one of ordinary skill in the art to use the electrode of Kato as a cathode, in either a fuel or electrolyzer cell.
Regarding claims 2-4, 13, and 14, Kato discloses all limitations of claims 1 and 7-9, particularly the electrically-conductive gas permeable electrode sheet with nominal pore size of about 1 micrometer (Col. 9, lines 45-48; see also Col. 11, lines 48-53, example with nominal pore size of 0.7 micrometer). This anticipates the present application’s ranges of mean pore diameter between 0.4 and 13 or 50 micrometers. It is also prima facie obvious to one skilled in the art to modify the disclosed pore sizes “…according to the needs of the layer of the composite assembly in which [it] will be used to obtain desired cell properties…” (Kato, Col. 5, lines 38-43). Bubble point as measured by capillary flow porometry serves as an additional method of quantifying the porosity of the gas diffusion cathode, and modifying the disclosed pore size would in turn also affect the bubble point of the resulting electrode.
Regarding claim 5, Kato teaches that catalyst materials may be prepared with “various alcohols and other organic solvents, water, or mixtures of these with water.” (Col 5-6, lines 66-2; applicable to catalyst materials by Col 6, lines 11-20.) The catalyst material may be platinum supported on carbon black (Col. 6, lines 19-20). This anticipates the present claim’s “method of preparing an ink containing one or more carbon-supported precious metal catalysts with a solvent that is a combination of water and one or more of 1-propanol, iso-propanol, …”
Regarding claims 6, 15, and 16, Kato teaches all limitations of the claims 1-5 and 7-13 on which they depend. Kato also teaches the use of the disclosed gas diffusion electrodes in membrane electrode assemblies and electrolyzer cells (Col. 1, lines 6-12).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 6054230 A) in view of Ebbrell et al. (US 2004/0175506 A1).
Regarding claim 12, Kato discloses the limitations of claim 7. Kato does not teach a topcoat layer disposed on the catalyst layer, where the topcoat layer comprises an ionomer; but suggests improving contact between the ion exchange resin of the electrode and the ion exchange membrane to increase the rate of ion movement (Col. 1, lines 56-61). Ebbrell discloses a method of applying an ionomer layer as a stable foam to a substrate, which may include a catalyst layer, and fuel cells incorporating the method (Ebbrell paragraphs 0014-0020). Ebbrell further discloses a membrane electrode assembly comprising a gas diffusion electrode which includes an ionomer-containing stable foam coated on the catalyst layer (Ebbrell paragraphs 0030, 0042, ionomer layer coated on the catalyst layer is equivalent to a topcoat layer). The reference teaches that when the ionomer layer is applied to the catalyst layers in a membrane electrode assembly, a continuum of ionomer is formed between the anode and cathode catalyst surfaces, improving access to protons, which increases efficiency and power density (Ebbrell paragraphs 0008-0010). Ebbrell and Kato are analogous because they both disclose membrane electrode assemblies comprising ionomeric materials, applicable to either fuel or electrolyzer cells.
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 gas diffusion electrode disclosed by Kato to include an ionomer layer applied to the catalyst layer as disclosed by Kato. Doing so would improve efficiency and power density in both fuel and electrolyzer cells.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-9 and 12 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 7-11 and 13 of copending Application No. 17/704,987 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claims 7 and 8 of the present application are directed to a gas diffusion cathode, but claims 7 and 8 of the reference application are directed to a gas diffusion electrode. It would have been prima facie obvious to one of ordinary skill in the art as of the effective filing date to apply the broader concepts of gas diffusion electrodes to cathodes.
Claim 9 of the present application is directed to a gas diffusion cathode, but claim 9 of the reference application is directed to a gas diffusion membrane while referencing claim 7, directed to a gas diffusion electrode. By the broadest reasonable interpretation of the reference application’s parent claim, claim 9 is also rejected for the same reason as claim 7 and 8.
Claim 12 of the present application discloses that a topcoat layer disposed on the catalyst layer of the gas diffusion cathode of claim 7 “comprises at least one of an ionomer [sic].” Claim 13 of the reference application recites this same limitation, and although it is directed to a gas diffusion membrane, the relevant structure is identical by the language of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Appleby et al. (US 2001/0031389) discloses layered gas-diffusion electrodes on a carbon substrate, with nano-sized pores. Suchsland et al. (US 2015/0354072) discloses a protective barrier layer for corrosion protection in electrochemical cells between the catalyst and support layers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colton B. Forry whose telephone number is 571-272-8873. The examiner can normally be reached Monday through Friday, 7:30 AM-5:00 PM Eastern Time.
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/CBF/Examiner, Art Unit 1711
/MICHAEL E BARR/Supervisory Patent Examiner, Art Unit 1711