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 .
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamiuchi et al. (“Nanoscopic Observation of Strong Chemical Interaction between Pt and Tin Oxide,” The Journal of Physical Chemistry C, Vol. 111, No. 44, pp. 16470-16476, 10/9/2007, hereinafter Kamiuchi) and evidence provided by Korber et al. (“Barrier heights at the SnO2/Pt interface: In situ photoemission and electrical properties," Surface Science, 602, pp. 3246-3252, 2008, hereinafter Korber).
Re Claim 1. Kamiuchi teaches a Schottky junction-type electrochemical catalyst comprising:
a support layer including a semiconductor material (Experimental Section, SnO2 powder); and
a catalyst layer including a metal (Experimental Section, Pt) formed on the support layer,
wherein the support layer and the catalyst layer are formed in a Schottky junction state (evidenced by Korber, Fig. 7),
wherein the semiconductor material included in the support layer has a work function value smaller than the work function value of the metal included in the catalyst layer if the semiconductor material included in the support layer is n-type (evidenced by Korber, Fig. 7& p3250), and
wherein the electrochemical catalyst exhibits semiconductor-type-dependent catalytic selectivity such that:
when the semiconductor material is n-type, the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed.
Kamiuchi does not expressly teach that the support layer and the catalyst layer are formed in a Schottky junction state, and the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed.
However, Korber displays that Pt on SnO2 forms a Schottky barrier junction as Pt has a higher work function than SnO2.
In addition, since Kamiuchi and the claimed catalyst employ substantially similar materials, it is reasonable to believe that the claimed properties (the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed) would have naturally flowed following the teachings of Kamiuchi. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP 2112- 2112.02.
Re Claim 3. Kamiuchi teaches wherein the metal included in the catalyst layer is platinum (Experimental section).
Re Claim 4. Kamiuchi teaches wherein the platinum includes platinum particles having a size of 3 nm (P16472).
Re Claim 5. Kamiuchi teaches wherein the semiconductor material of the n-type is tin oxide (SnO2) (Experimental section).
Claim(s) 1, 3, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaneko et al. (US 2014/0349200 A1, hereinafter Kaneko, previously cited).
Re Claim 1. Kaneko teaches a Schottky junction-type electrochemical catalyst (Fig. 1) comprising:
a support layer including a semiconductor material (Fig. 1, item 20, para. 85); and
a catalyst layer including a metal (item 10, para. 85 & 94) formed on the support layer,
wherein the support layer and the catalyst layer are formed in a Schottky junction state (para. 85),
wherein the semiconductor material included in the support layer has a work function value smaller than the work function value of the metal included in the catalyst layer if the semiconductor material included in the support layer is n-type (Fig. 1), and
wherein the electrochemical catalyst exhibits semiconductor-type-dependent catalytic selectivity such that:
when the semiconductor material is n-type, the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed.
Kaneko does not expressly teach that the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed.
However, since Kaneko and the claimed catalyst employ substantially similar materials, it is reasonable to believe that the claimed properties (the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed) would have naturally flowed following the teachings of Kamiuchi. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Re Claim 3. Kaneko teaches wherein the metal included in the catalyst layer is platinum (para. 94).
Re Claim 5. Kaneko teaches wherein the semiconductor material of the n-type is tin oxide (SnO2) (para. 93).
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.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko as applied to claim 1 above, and further in view of Zhang et al. "Mesoporous Tin Oxide as an Oxidation-Resistant Catalyst Support for Proton Exchange Membrane Fuel Cells," Journal of The Electrochemical Society, 157(8) B1163-B1172, 2010).
The teachings of Kaneko have been discussed above.
Kaneko fails to specifically teach that the platinum includes platinum particles having a size of 1.2 nm or more.
The research of Zhang encompasses Tin oxide as a catalyst support. Zhang teaches that the platinum includes platinum particles having a size of 5.2 nm.
In view of Zhang, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Kaneko to have platinum particles having a size of 5.2 nm, since using a well-known size of platinum particle for Pt/SnO-2 catalyst would be within purview of one skill in the art.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko.
Re Claim 6. Kaneko teaches wherein the thickness of the catalyst layer of the platinum is 0.1 nm to 1 mm (para. 102).
Kaneko does not explicitly teach the thickness of the semiconductor material of the p-type of the support layer, is 15 to 30nm. However, since Claim 1 is rejected on the basis of the semiconductor being n-type, thickness of the semiconductor material when the material is p-type does not further limit the claim.
In the case where the claimed ranges “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). See MPEP § 2144.05.
Re Claim 7. Kaneko teaches the thickness of the catalyst layer of the platinum is 0.1 nm to 1 mm (para. 102) and the thickness of the semiconductor material of the n-type of the support layer, is 10 nm to 1 mm (para. 101), and wherein the Schottky junction-type electrochemical catalyst functions as a selective reduction catalyst (para. 86).
Response to Arguments
Applicant's arguments filed 6/26/26 have been fully considered but they are not persuasive.
On page 6, regarding claim 1, applicant argued that Kamiuchi does not teach the work function relationship between Pt and SnO2.
Although Kamiuchi is silent regarding the work function relationship between Pt and SnO2, the work function is an inherent property of a material. In addition, Korber provides the evidence that work function of SnO2 is smaller than Pt, thus making a Schottky junction.
Applicant also argued that Kamiuchi does not teach a selective reduction catalyst, a selective oxidation catalyst, or semiconductor-type-dependent catalytic selectivity. Applicant also argued that Kamiuchi does not disclose or teach the claimed semiconductor-type-dependent catalytic selectivity framework required both selective reduction catalysis for n-type semiconductors and selective oxidation catalysis for p-type semiconductors.
Since Kamiuchi and the claimed catalyst employ substantially similar materials, it is reasonable to believe that the claimed properties (the electrochemical catalyst functions as a selective reduction catalyst such that substantially only a reduction reaction occurs and an oxidation reaction is suppressed) would have naturally flowed following the teachings of Kamiuchi. Applicant has not provided any evidence that the product of Kamiuchi cannot perform the claimed functions. In addition, n-type and p-type semiconductors are mutually exclusive and claims are written and optional format. The examiner is addressing when semiconductor is n-type.
See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP 2112- 2112.02.
On page 7, regarding claim 1, applicant argued that Kamiuchi is not directed to using Pt/SnO2 and a catalyst. Applicant also argued that Kamiuchi does not report any measurement of selective oxidation or reduction catalysis, and therefore cannot establish that the claimed unction is necessarily present.
A catalyst is intended use or inherent property of Pt/SnO2, and Kamiuchi teaches all the claimed components. Applicant has not provided any evidence that the product of Kamiuchi cannot be used as a catalyst.
On page 8, regarding claim 1, applicant argued that Kamiuchi performs heat treatment that form PtSn or Pt-3Sn intermetallic compounds, which is different from the claimed metallic Pt and semiconductor SnO2.
The examiner is not relying on the final product of Kamiuchi, but precursor of Kamiuchi, which reads on claimed Pt/SnO2.
On page 9, regarding claim 1, applicant argued that Kaneko expressly defines its catalyst as an oxidation catalyst. Applicant also argued that n-type semiconductor of Kaneko does not function as a reduction catalyst.
Kaneko employ n-type semiconductor in a fuel cell, not in a water electrolyzer as applicant disclosed. The catalyst of Kaneko would function as a reduction catalyst, if it is used in a water electrolyzer, as it has the same material as the claimed catalyst. In addition, it is well-known that water electrolysis and fuel cell are reverse process of the same electrochemical technology.
On page 10, regarding claim 1, applicant argued that Kaneko does not teach any p-type.
n-type and p-type semiconductors are mutually exclusive and claims are written and optional format. The examiner is addressing when semiconductor is n-type.
Applicant also argued that Kaneko is silent as to the claimed work-function relationship and discloses a different junction concept.
The examiner disagrees with this because Kaneko explicitly discloses work-function relationship between Pt and SnO2 in Figure 1. The catalyst of Kaneko is an oxidation catalyst because it’s being used in a fuel cell, not a water electrolyzer.
Conclusion
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.
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN E YOON/Primary Examiner, Art Unit 1735
7/9/2026
Prosecution Insights