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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to an oxygen evolution catalyst, classified in H01M4/92.
II. Claims 7-15, drawn to a method of preparing an oxygen evolution catalyst, classified in H01M2008/1095.
The inventions are independent or distinct, each from the other because:
Inventions II and I 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 process as claimed can be used to make another and materially different product specifically a hydrogen evolution catalyst.
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: Each invention requires a substantially non-overlapping burdensome search.
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.
During a telephone conversation with Jori Fuller on 19 December 2025 a provisional election was made without traverse to prosecute the invention I, Claims 1-6, drawn to an oxygen evolution catalyst. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected 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 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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou, Qiusheng, et al. "Interface engineering of NixSy@MoS2 heterostructured nanorods as high-efficient electrocatalysts for water splitting." International Journal of Hydrogen Energy 46.71 (2021): 35077-35087. (hereafter referred to as Zhou-2021) in view of Subbaraman US20140116890A1.
Regarding claim 1, Zhou-2021 discloses an oxygen evolution catalyst (Zhou-2021, abstract), comprising:
a core comprising nickel sulfide (Zhou-2021, p. 35078, right column [0002], “the catalyst with core-shell nanostructure is beneficial to endow more active sites and regulate the electronic structure”, p. 35079, right column [0001], “NixSy@...NixSy nuclei” )
and a shell surrounding a surface of the core (Zhou-2021, p 35078, right column [0002], “the shell with the controllable structure, such as thickness, composition, crystallinity, and porosity, could provide a potential possibility for improving the catalytic activity of materials”. P. 35079, right column [0001], “shell on the matrix surface and the formation of the core-shell nanostructure”) but does not disclose the shell comprising iridium oxide and ruthenium oxide.
In an oxygen evolution catalyst Subbaraman teaches the shell comprising iridium oxide and ruthenium oxide (Subbaraman, [0004], [0032]).
Therefore it would be obvious to the skilled artisan to modify the shell structure of Zhou-2021 with the teaching of Subbaraman wherein a shell surrounding a surface of the core and comprising iridium oxide and ruthenium oxide thereby the design of core-shell materials with the more noble metal species localized to the surfaces of the catalyst particles will further help in lowering the cost of these catalysts and given that the active materials are 3d transition metal oxides, such as iridium oxide and ruthenium oxide, the cost of these catalysts can then be significantly lowered without significant compromise in performance at all levels (Subbaraman, [0004], [0069]).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou-2021 (see above for full reference) in view of Subbaraman US20140116890A1, as applied to claim 1 above, and further in view of Chai, Yong-Ming, et al. "Solvent dependent in situ growth of NixSy supported on nickel foam as electrocatalysts for oxygen evolution reaction." International Journal of Electrochemical Science 11.4 (2016): 3050-3055 (hereafter referred to as Chai-2016).
Regarding claim 2, modified Zhou-2021 teaches all of the claim limitations as set forth above, Zhou-2021 however does not teach the shape of the core.
In an oxygen evolution catalyst comprising nickel sulfide Chai-2016 teaches wherein the NixSy has a shape of a polyhedral prism (Chai-2016, section 3, p. 3053, [0001], “(Figure 2h) displays many polyhedron structures dispersing on NixSy film of S-3”, Fig. 2h). Therefore it would be obvious to the skilled artisan before the effective filing date of the claimed invention to modify the nickel sulfide core of modified Zhou-2021 using art known engineering techniques and the teaching of Chai-2016 wherein the core has a shape of a polyhedral prism, thereby having an earlier onset potential with much higher current density as the polyhedral prism shape may expose more activity sites for OER (Chai-2016, section 3, p. 3053, [0001], “S-3 has an earlier onset potential (1.24 V vs. RHE) than that of S-1 and S-2 (1.55 V vs. RHE), with much higher current density after 1.25 V (vs. RHE)”).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou-2021 (see above for full reference) in view of Subbaraman US20140116890A1, as applied to claim 1 above, and further in view of Lv, Hong, et al. "Self-assembled RuO2@IrOx core-shell nanocomposite as high efficient anode catalyst for PEM water electrolyzer." Applied Surface Science 514 (2020): 145943 (hereafter referred to as Lv-2020).
Regarding claim 3, modified Zhou-2021 teaches all of the claim limitations as set forth above but does not explicitly teach wherein the shell comprises: a first layer surrounding the core and comprising ruthenium oxide; and a second layer surrounding the first layer and comprising iridium oxide.
In a catalyst for oxygen evolution Lv-2020 teaches a first layer comprising ruthenium oxide and a second layer surrounding the first layer and comprising iridium oxide (Lv-2020, section 3, p. 3, left column [0001], “RuO2@IrOx”). Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nickel sulfide core and iridium oxide and ruthenium oxide shell, of modified Zhou-2021 with the teaching of Lv-2020 wherein the shell comprises: a first layer surrounding the core and comprising ruthenium oxide; and a second layer surrounding the first layer and comprising iridium oxide thereby maintaining high efficient OER activity and good stability (Lv-2020, section 4, p. 7, right column [0001], “designed and constructed to maintain high efficient OER activity and good stability”).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou-2021 (see above for full reference) in view of Subbaraman US20140116890A1, as applied to claim 1 above, and further in view of Lee, Seung Woo, et al. "Multifunctional Ir–Ru alloy catalysts for reversal-tolerant anodes of polymer electrolyte membrane fuel cells." Journal of Materials Science & Technology 60 (2021): 105-112 (hereafter referred to as Lee-2021).
Regarding claim 4, modified Zhou-2021 teaches all of the claim limitations as set forth above but does not explicitly teach wherein the shell is an alloy comprising an oxide of an alloy of iridium and ruthenium.
In an oxygen evolution catalyst Lee-2021 teaches a shell comprising an Ir-Ru alloy (Lee-2021, section 3, p. 107, right column [0001], “Ir-Ru alloy catalysts”). Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nickel sulfide core and iridium oxide and ruthenium oxide shell of modified Zhou-2021 with the teaching of Lee-2021 wherein the shell is an alloy comprising an oxide of an alloy of iridium and ruthenium thereby having excellent OER activity, maintaining a low increase in overpotential and exhibiting good reversal-tolerance durability (Lee-2021, section 3, p. 110, Figs. 6a-c).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou-2021 (see above for full reference) in view of Subbaraman US20140116890A1, as applied to claim 1 above, and further in view of Heras-Domingo, Javier. Modeling of RuO₂ surfaces and nanoparticles: their potential use as catalysts for the oxygen evolution reaction. 2020 (hereafter referred to as H-D-2020).
Regarding claim 5, modified Zhou-2021 teaches all of the claim limitations as set forth above but does not explicitly teach wherein the shell comprises: a first layer surrounding the core and comprising iridium oxide; and a second layer surrounding the first layer and comprising ruthenium oxide.
In an oxygen evolution catalyst H-D-2020 teaches layering a first layer comprising iridium oxide and a second layer surrounding the first layer and comprising ruthenium oxide (He-D-2020, p. 29, [0001], “Another way to enhance their electrocatalytic stability is to synthesize a core-shell structure (lrO2 @ RuO2) and once subjected to OER electrocatalysis.”). Therefore it would be obvious to one of ordinary skill in the art to modify the nickel sulfide core and iridium oxide and ruthenium oxide shell of modified Zhou-2021 with the teaching of H-D-2020 wherein the shell comprises: a first layer surrounding the core and comprising iridium oxide; and a second layer surrounding the first layer and comprising ruthenium oxide thereby lowering the overpotential but also increasing the whole stability (He-D-2020, p. 29, [0001], “…this core-shell conformation can not only lower the overpotential but also increases the whole stability”).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lv -2020 (see above for full reference) in view of Zhou-2021 (see above for full citation) and further in view of Subbaraman US20140116890A1.
Regarding claim 6, Lv-2020 discloses a fuel cell (Lv-2020, p. 2, left column [0001], “The unique physicochemical property of the core-shell structure, which results from the surface strain and the atomic vicinity affecting the charge transfer between the core and shell, reveals multifunctional capabilities and/or enhanced properties in a wide range of applications (e.g. electrocatalytic[42,43], fuel cell”) comprising an oxygen evolution catalyst (Lv-2020, p. 2, left column [0002], “The OER activity of RuO2@IrOx”), comprising: a core and a shell comprising iridium oxide (Lv-2020, p. 2, left column [0002], “IrOx shell”). Lv-2020 however does not teach a core comprising nickel sulfide; and a shell surrounding a surface of the core and comprising iridium oxide and ruthenium oxide.
In an oxygen evolution catalyst Zhou-2021 teaches comprising: a core comprising nickel sulfide (Zhou-2021, p. 35078, right column [0002], “the catalyst with core-shell nanostructure is beneficial to endow more active sites and regulate the electronic structure”, p. 35079, right column [0001], “NixSy@...NixSy nuclei” ). Therefore it would be obvious to one of ordinary skill in the art to modify the core of Lv-2020 with the teaching of Zhou-2021 wherein the core comprising nickel sulfide thereby enhancing the sufficient exposure and utilization of actives sites and accelerate the electron transfer rate of catalyst with a nickel sulfide core (Zhou-2021, abstract, “in order to enhance the sufficient exposure and utilization of actives sites and accelerate the electron transfer rate of catalyst, NixSy@MoS2 core-shell”). Lv-2020 as modified by Zhou-2021 does not teach a shell surrounding a surface of the core and comprising iridium oxide and ruthenium oxide.
In an oxygen evolution catalyst Subbaraman teaches the shell comprising iridium oxide and ruthenium oxide (Subbaraman, [0004], [0032]).
Therefore it would be obvious to the skilled artisan to modify the shell structure of Lv-2020 as modified by Zhou-2021 with the teaching of Subbaraman wherein a shell surrounding a surface of the core and comprising iridium oxide and ruthenium oxide thereby the design of core-shell materials with the more noble metal species localized to the surfaces of the catalyst particles will further help in lowering the cost of these catalysts and given that the active materials are 3d transition metal oxides, such as iridium oxide and ruthenium oxide, the cost of these catalysts can then be significantly lowered without significant compromise in performance at all levels (Subbaraman, [0004], [0069]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang CN108380224A (discloses an OER catalyst comprising a nickel sulfide core and a shell layer)
Huang CN113802139A (discloses an OER catalyst comprising a nickel sulfide core and a shell layer)
Zhao, Yonggui, et al. "Development and Characterization of Transition Metal-Based Nanomaterials for Electrochemical Water Splitting." (discloses and iridium oxide and ruthenium oxide OER catalyst).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARED HANSEN whose telephone number is (571)272-4590. The examiner can normally be reached M-F.
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/JARED HANSEN/Examiner, Art Unit 1723
/TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723