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
Applicant’s election without traverse of claims 1-12 in the reply filed on 04/29/2026 is acknowledged.
Claim Objections
Claim 4 is objected to because of the following informalities: “C12H28O4Ti” is repeated in the claim. Appropriate correction is required.
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 1, 5, 6, 8, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, and 11-14 of copending Application No. US20230387424 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US20230387424 discloses a method for producing a fuel cell catalyst comprising all the steps of claim 1 in the present application. The only difference is some language, for example, “alloying” which is interpreted as having the same function as “supporting” in the present application. Therefore, the steps of US20230387424 encompass those of claim 1 in the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (KR20210148735A).
Regarding claim 1, Jeon et al. discloses a method of manufacturing a polymer electrolyte membrane water electrolysis catalyst (paragraph 0001). The method comprises the steps of dispersing a support in a solvent; introducing platinum, scandium, and lanthanum metal precursors into the solvent in which the support is dispersed to prepare a precursor mixture; and irradiating the precursor mixture with an electron beam to reduce the metal precursors (paragraph 0030). The support can be selected from a carbon-based support and a metal oxide support (paragraph 0019).
Jeon et al. does not disclose sequential addition and electron beam irradiation of metal precursors, and rather teaches addition and irradiation of all metal in one step.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to try irradiating the metal precursors sequentially because there is a finite number of ways to add and irradiate metals to achieve a multi-metallic catalyst with a reasonable expectation of success.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to conduct the method of manufacturing in Jeon et al. by sequentially adding and irradiating the metal precursors. That is, dispersing a support in a solvent, adding scandium/lanthanum into the solvent to form a first metal precursor, irradiating the solution to support one of the metals, adding platinum to the first metal-supported mixture, and irradiating the platinum in the second metal mixed solution.
The examiner interprets the language of claim 1 not requiring a specific order of steps. The language does not preclude other sequences to obtain a catalyst with two metals through electron beam irradiation.
Regarding claim 2, Jeon et al. discloses the carbon-based support may include one or more of graphene, graphite, and carbon nanotubes (paragraph 0020).
Regarding claim 5, Jeon et al. discloses the pH of the metal precursor is controlled to a pH of 9-11 by adding an alkaline solution before reduction (paragraph 0066).
Regarding claim 6, Jeon et al. discloses the electron beam may be irradiated for 1 second to 60 minutes encompassing the entire claimed range (paragraph 0039).
The subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the prior art’s range which is within the range of the applicants’ claims because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Regarding claim 7, Jeon et al. discloses the size of the crystals in the ternary alloy catalyst was 1 nm to 2 nm (paragraph 0100). The alloy includes the first metal that is supported.
Regarding claim 8, Jeon et al. discloses introducing a platinum precursor in a solvent (paragraph 0030).
Regarding claim 9, Jeon et al. discloses the metal precursors are introduced into a solvent in which the support is dispersed to prepare a precursor mixture; and irradiating the precursor mixture with an electron beam to reduce the metal precursors (paragraph 0030). Since the reduction is done after the metal precursor is mixed with the support in solution it is an in-situ method.
Regarding claim 10, Jeon et al. discloses the pH of the metal precursor is controlled to a pH of 9-11 by adding an alkaline solution before reduction (paragraph 0066). Jeon et al. does not disclose sequential addition of metal precursors, so the pH is only adjusted once.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to try irradiating and adding the metal precursors sequentially because there is a finite number of ways to add and irradiate metals to achieve a multi-metallic catalyst with a reasonable expectation of success.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to adjust the pH again to be basic after the second metal precursor is added.
Regarding claim 11, Jeon et al. discloses the electron beam may be irradiated for 1 second to 60 minutes encompassing the entire claimed range (paragraph 0039).
The subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the prior art’s range which is within the range of the applicants’ claims because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Jeon et al. does not disclose sequential addition and irradiation of metal precursors, so there is only one irradiation of metal precursors.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to try irradiating and adding the metal precursors sequentially because there is a finite number of ways to add and irradiate metals to achieve a multi-metallic catalyst with a reasonable expectation of success.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to irradiate a second metal with an electron beam for 20 minutes or less because the range overlaps with the prior art.
Regarding claim 12, Jeon et al. discloses the catalyst produced through the metal irradiation reduction step may further include a filter step, a washing step, and a drying step (paragraph 0075).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. as applied to claims 1-2 and 5-12 above, and further in view of Merzougui et al. (US20060257719).
Regarding claim 3, Jeon et al. discloses a metal oxide support like TiO2, but does not disclose using it in combination with carbon.
Merzougui et al. discloses noble metal containing catalyst particles carried on catalyst support particles of titanium oxide (Abstract). The catalyst bearing titanium oxide particles are mixed with electrically conductive material such as carbon particles (Abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have the first metal precursor be a precursor of titanium dioxide because when combined with the electrically conductive carbon, the titanium dioxide support particles provide corrosion resistance in the acidic or alkaline environment of the fuel cell (paragraph 0007).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. as applied to claims 1-2 and 5-12 above, and further in view of Jiang et al. (“Electron transfer effect from Au to Pt in Au-Pt/TiO2 towards efficient catalytic activity in CO oxidation at low temperature”).
Regarding claim 4, Jeon et al. discloses a metal oxide support, but does not disclose a metal precursor for the support.
Jiang et al. discloses bimetallic Pt-Au nanoalloys that are loaded in situ on titanium dioxide in one step by flame spray pyrolysis (Abstract). In preparation of the bimetallic catalyst, the TiO2 precursor is titanium tetrabutoxide: Ti(OBu)4 (2.1 Materials preparation).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to use titanium tetrabutoxide as the TiO2 precursor because the Pt-Au alloy formation on the support precursor is a fast and in situ process (3.1 Mechanism and process for Pt-Au alloy formation).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A CALDERON whose telephone number is (571)272-9866. The examiner can normally be reached Monday-Friday 8-5PM.
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/DAVID ANDREW CALDERON/Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742
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