DETAILED ACTION
Claims 1-20 are pending
Claims 11-20 are withdrawn after consideration
Claims 1-10 are rejected
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 .
Examiner’s Note
2. It is noted that there is inadvertent typographic error in item #8 in the previous Office action mailed 11/20/2025. " Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (WO-2021/108461 A1) (Li) in view of evidence by Abbot, Daniel F., et al., Iridium Oxide for the Oxygen Evolution Reaction: Correlation between Particle Size, Morphology, and the Surface Hydroxo Layer from Operando XAS. Chem. Mater. (2016) (Abbot)." should have read as " Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (WO-2021/108461 A1) (Li) in view of Abbot, Daniel F., et al., Iridium Oxide for the Oxygen Evolution Reaction: Correlation between Particle Size, Morphology, and the Surface Hydroxo Layer from Operando XAS. Chem. Mater. (2016) (Abbot).", given that Abbot is clearly a teaching reference as set forth in item #8 in the Office action mailed 11/20/2025. Corrected heading is provided as set forth below
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 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.
5. 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.
6. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (WO-2021/108461 A1) (Li) in view of evidence by Abbot, Daniel F., et al., Iridium Oxide for the Oxygen Evolution Reaction: Correlation between Particle Size, Morphology, and the Surface Hydroxo Layer from Operando XAS. Chem. Mater. (2016) (Abbot).
7. Regarding claims 1-6, Li teaches a method of fabricating catalyst material to form catalyst particles comprising iridium oxide (i.e., a catalytic particle comprising particles comprising iridium) (Li, Abstract), wherein the catalyst fabrication process tunes catalyst particle size, physical properties (such as shape, or porosity), and composition to improve catalytic utilization as well as stability during electrolysis (Li, [0041]), such as a catalyst suitable for high-efficiency and robust performance in the oxygen evolution reaction (OER) (Li, [0006]),
Li further teaches the catalyst particles with relatively high porosity and relatively high surface area, which allows for the higher OER activity exhibited by the Ir-based catalyst produced by the fabrication process 100. In an example, the Ir-based catalyst particles produced by the processes 100 can have a surface area of from about 100 square meters per gram (m2/g) to about 350 m2/g (Li, [0075]), wherein the surface area is measured in Brunauer-Emmett-Teller (BET) method (Li, [0086]) such as 195.9, 164.0, 83.4, and 173.0 m2/g that falls within the claimed BET surface area of 30 m2/g or more (Li, Table 1, [0089])
wherein examples of the catalyst material having porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g that falls within the porous volume 0.10 cc/g or more (Li, Table 1, [0089]),
Li further teaches the size of the catalyst particles ranging from about 1 to about 200 nm, which overlaps with the claimed range (Li, [0074]).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Li teaches the formation and aggregation of the micelles can attach to the nanoparticle matrix of the Ir-based compounds that are to form the catalyst particles, which can allow for the formation of Ir-based catalyst particles with well-defined shapes, size, physical state, and surface properties (Li, [0053]), i.e., the nanoparticle including iridium oxide are attached to form the aggregate/catalyst particle, which corresponds to the claimed interconnected network of nanoparticles.
Furthermore, Li teaches in Fig. 6 (p. 52), wherein transition metal is etched away, the catalyst particle is formed by Ir oxide particles, which clearly shows that the catalyst comprises interconnected network Ir oxide (reading upon interconnected network of nanoparticles).
However, Li does not explicitly teach the nanoparticles having a size in a range of 2 nm to 15 nm.
With respect to the difference, Abbot teaches iridium oxide nanoparticles for the oxygen
evolution reaction (OER), wherein examples of the nanoparticles consist of 1.7
±
0.4 nm (i.e. 1.3 – 2.1 nm) in size (Abbot, Abstract), which corresponds to an average or median particle size. According to Fig. 1a of Abbot (Abbot, p. 3), the particle size ranges from 1.3 – 4.5 nm (Abbot, see annotated Fig 1a below), which overlaps with the claimed range.
PNG
media_image1.png
600
599
media_image1.png
Greyscale
Annotated Fig 1a (Abbot)
As set forth in MPEP 2144.05, in the case where the claimed range “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).
As Abbot expressly teaches, OER mass-based activity generally increases with decreasing particle size, that is, increasing surface area (Abbot, p. 11, Conclusion). Therefore, it is clear why one would want to control the particle size of Iridium oxide within the agglomerate, such as the particle size in the examples above would provide desirable catalytic activity of the catalyst for the OER.
Li and Abbot are analogous art as they are both drawn to iridium-based catalyst for chemical reaction such as oxidation reaction.
In light of the motivation for having control of the particle size in the catalyst materials comprising iridium oxide as disclosed by Abbot, as described above, it would therefore have been obvious to one of ordinary skill in the art to modify the iridium oxide nanoparticles in the agglomerate of Li to have a low particle size (i.e. 1.3 – 4.5 nm), in order to provide desirable catalytic activity of the catalyst for chemical reaction such as oxidation reaction, and thereby arrived at the claimed invention.
8. Regarding claim 7, Li teaches examples of the catalyst material having porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g that falls within the porous volume 0.20 cc/g or more (Li, Table 1, [0089]).
9. Regarding claim 8, Li teaches examples of the catalyst material having porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g, that falls within the porous volume range of 0.10 cc/g to 0.70 cc/g (Li, Table 1, [0089]).
10. Regarding claim 9, Li teaches examples of the catalyst material having porous volume of 0.389, 0.339, and 0.245 cc/g, that falls within the porous volume range of 0.10 cc/g to 0.40 cc/g (Li, Table 1, [0089]).
11. Regarding claim 10, Li teaches the size of the catalyst particles ranging from about 1 to about 200 nm, which overlaps with the claimed range (Li, [0074]).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Li in further view of Abbot teaches nanoparticles with a size 1.3 – 4.5 nm (Abbot, Abstract) (Abbot, see annotated Fig 1a below), which overlaps with the claimed range.
PNG
media_image1.png
600
599
media_image1.png
Greyscale
Annotated Fig 1a (Abbot)
As set forth in MPEP 2144.05, in the case where the claimed range “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).
wherein examples of the catalyst material having porous volume of 0.418, 0.389, 0.339, and 0.245 cc/g that falls within the porous volume 0.10 cc/g or more (Li, Table 1, [0089]).
Response to Arguments
12. Applicants primarily argue:
“Li does not teach or suggest "a catalytic material comprising particles comprising iridium or a mixture of iridium and iridium oxide," as recited in claim 1.”
Remarks, p. 6
The examiner respectively traverses as follows:
While Li is not used to teach a catalytic material comprising particles comprising a mixture of iridium and iridium oxide, Li is used to teach a catalytic material comprising particles comprising iridium, which would encompass an iridium compound such as iridium oxide, given that the present claims do not require “iridium” being iridium in a metallic form. Therefore, given Li teaches a catalyst material to form catalyst particles comprising iridium oxide, it is examiner’s position that Li teaches a catalytic material comprising particles comprising iridium, as presently claimed, absent evidence to the contrary. See item #7 of Office action set forth above.
13. Applicants primarily argue:
“Abbot does not remedy the deficiencies of Li. Abbot relates to chlorine-free, nanoscale IrO2 particles for enhanced oxygen-evolution activity with long-term stability. As in Li, the nanoparticles in Abbot do not comprise a catalytic material comprising particles comprising iridium or a mixture of iridium and iridium oxide. Abbot teaches the use of a modified Adams fusion method to convert chlorine-free iridium (III) acetyl acetonate precursor to Iridium Oxide (Results and Discussion section of Abbot).”
Remarks p. 7
Examiner respectively traverses as follows:
Firstly, Li already teaches a catalytic material comprising particles comprising iridium. See item #7 of Office action set forth above.
Secondly, it is noted that while Abbot does not disclose all the features of the present claimed invention, Abbot is used as teaching reference, namely nanoparticles having a size in a range of 2 nm to 15 nm, in order to provide desirable catalytic activity of the catalyst for the OER, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
14. Applicants primarily argue:
“Examples 2 and 3 of Applicants' specification demonstrate that the catalyst of the claimed invention exhibits superior properties over commercially used IrO2 catalysts. Particularly, linear sweep voltammetry revealed that the current invention displayed significantly higher intrinsic oxygen evolution at all values of applied voltage. It is believed that this is due to the oxidation of Ir species during the process which leads to significant improvements in current density. Further, the water electrolysis performance of the claimed catalyst was compared to a commercially used IrO2 based species. A CCM made using the high surface area, high porosity, high activity Ir/IrO2 as the OER catalyst had comparable performance to a commercial IrO2 catalyst at a lower IrO2 loading, resulting in a significant reduction in the cost associated with the catalytic material (Examples 2-3 and paragraph [0013] of the specification).
Remarks, p. 7
Examiner respectively traverses as follows:
While applicant points to Examples 2 and 3 to support the position. The data is unpersuasive as set forth below.
Firstly, the data is not commensurate in the scope with the scope of the claims. Specifically, the data only show using an iridium-based catalyst comprising a specific catalytic material comprising particles comprising specific iridium (i.e., Ir-Oleylamine catalyst), while the claims broadly recite an iridium-based catalyst comprising: catalytic material comprising particles comprising any type of iridium or a mixture of iridium and iridium oxide and having a BET surface area of 30 m2/g or more and a pore volume of 0.10 cc/g or more, the particles having a size in a range of 50 nm to 1 nm, and wherein the particles comprise an interconnected network of nanoparticles having a size in a range of 2 nm to 15 nm.
Further, there is no disclosure of BET surface area, a pore volume, a size of the particles, and a size of nanoparticles in the interconnected network of nanoparticles. Therefore, it is unclear if the iridium-based catalyst in the data would be commensurate in the scope with the scope of the claims.
Additionally, the data does not show using the upper and lower ends of the claimed ranges of the BET surface area, a pore volume, a size of the particles, and a size of nanoparticles in the interconnected network of nanoparticles. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of BET surface area of 30 m2/g or more, a pore volume of 0.10 cc/g or more, a size of the particles of 50 nm to 1 µm, and a size of nanoparticles in the interconnected network of nanoparticles in a range of 2 nm to 15 nm.
Secondly, there is no proper side by side comparison, given there is no disclosure of BET surface area, a pore volume, a size of the particles, and a size of nanoparticles in the interconnected network of nanoparticles in the commercial IrO2 and the working examples, it is unclear what factor contributes the superior properties of present invention, e.g., the material, the BET surface area, a pore volume, a size of the particles comprising an interconnected network of nanoparticles, and a size of nanoparticles.
Therefore, the data to show the catalyst of the claimed invention exhibiting superior properties is unpersuasive.
Conclusion
15. THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
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, Ching-Yiu Fung can be reached at (571)270-5713. 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.
/R.F.L./Examiner, Art Unit 1732 /CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732