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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
07/16/2026.
Status of Rejections
The rejection of claim 13 under 35 USC 112(b) is withdrawn in view of the Applicant’s amendment.
The rejections of claims 15-20 have been updated in view of the Applicant’s amendments.
All other previous rejections are maintained.
Claims 1-20 are pending and under consideration for this Office Action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 8-12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei et al (US 20120251915 A1).
Claim 1: Mei discloses an electrode for an electrochemical reaction device (see e.g. abstract) comprising:
a substrate (see e.g. #11 on Fig 5C); and
a stack provided on the substrate (see e.g. #10 on Fig 5C),
wherein the stack includes catalyst layers and gap layers (see e.g. #12 and #14 on Fig 5C, respectively), and each catalyst layer and each gap layer are alternately stacked (see e.g. #12 and #14 on Fig 5C), one of the gap layers has a first region and a second region, the first region having a first thickness, which is the average thickness of the first region, and the second region being a first gap, and where each gap layer has a second thickness (see e.g. the different regions of #3 on Fig 1 and Fig 4).
Mei does not explicitly teach that the second thickness is 3 times or more and 10 times or less the first thickness. However, it would be apparent to a person having ordinary skill in the art before the effective filing date of the instant invention that the first and second thicknesses have different thicknesses (see e.g. the varied gap sizes in the regions of #3 on Fig 1 and Fig 4). Furthermore, Mei teaches that the average thickness of the layer can range from 7-500 nm and that thickness affects the supply of fuel, the removed of product, and cost (see e.g. [0039]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the second thickness can be 3 times or more and 10 times or less the first thickness based on the average range of Mei. Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of the gap layer to get the desired supply of fuel, the removed of product, and cost.
The limitation of the preamble claiming the electrode is “for a water electrolysis device” is an intended use for the electrode. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)’. The preamble is not considered to add additional unclaimed structure and is not considered a limitation.
The limitation claiming “the first gap allows an anode solution and oxygen gas to flow, the anode solution including water” are directed to intended uses/functions of the electrode. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Mei renders all of the positively recited structure obvious and thus renders this limitation obvious. Additionally, Mei teaches that the first gap is capable of flowing liquids and gases (see e.g. [0033]: “the pore layers 3 in the catalyst layer 1 allow substances such as the reactant and the product to smoothly move”; [0004]: “fuel cell is a system in which a fuel such as hydrogen is electrochemically reacted with an oxidant such as oxygen to generate electric power. Among them, a polymer electrolyte fuel cell (PEFC) can operate at low temperatures as compared with other fuel cells and its reaction product is water”).
Claim 2: Mei discloses that the first thickness is 7-500 nm (see e.g. [0039]), which overlaps the limitation claiming that the “first thickness is 1 nm or more and 50 nm or less”. MPEP § 2144.05 I states ‘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)’.
Claim 3: Mei discloses that the first thickness is 7-500 nm (see e.g. [0039]), which overlaps the limitation claiming that the “first thickness is 5 nm or more and 50 nm or less”, the first gap is a continuous region having the second thickness (see e.g. the different regions of #3 on Fig 1 and Fig 4), the second thickness is 7-500 nm (see e.g. [0039]), which overlaps the limitation claiming “30 nm or more and 50 nm or less”. MPEP § 2144.05 I states ‘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)’.
Mei does not explicitly teach that a width of the first gap is 1/500 times or more and 1/10 times or less a width of the first region. However, Mei teaches that the first gap and the first region have different widths (see e.g. the varied gap sizes in the regions of #3 on Fig 1 and Fig 4). Furthermore, Mei teaches that size of the gap layer affects the supply of fuel, the removed of product, and cost (see e.g. [0039]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative widths of the gap layer to get the desired supply of fuel, the removed of product, and cost.
Claim 8: Mei teaches that each catalyst layer contains at least one metal selected from the group consisting of platinum, palladium, iridium, ruthenium, rhodium, osmium, and gold (see e.g. [0051]). If Pt is selected, other materials such as tantalum can also be used (see e.g. [0052]).
Claim 9: Mei teaches that the catalyst layer can be iridium amongst a list of other suitable materials (see e.g. [0051]). KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select iridium for the catalyst layer.
Claim 10: Mei discloses that each catalyst layer is porous (see e.g. [0033]: “Hence the catalyst layer is preferably made to be porous”).
Claim 11: Mei discloses that the catalyst layers have an average thickness of 4-30 nm (see e.g. [0034]) and that the gap layers have an average thickness is 7-500 nm (see e.g. [0039]), which overlaps with the limitation claiming that “the stack has a first average thickness of 10 nm or more and 900 nm or less”. MPEP § 2144.05 I states ‘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)’.
Claim 12: Mei discloses the average thickness is 7-500 nm (see e.g. [0039]), which overlaps the limitation claiming that “each gap layer has a second average thickness of 1 nm or more and 100 nm or less”. MPEP § 2144.05 I states ‘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)’.
Claim 14: Mei discloses a membrane electrode assembly (see e.g. [0089]) comprising:
a first electrode (see e.g. #21 on Fig 7) including the electrode according to claim 1 (see rejection of claim 1 above);
a second electrode (see e.g. #23 on Fig 7); and
an electrolyte membrane provided between the first electrode and the second electrode (see e.g. #22 on Fig 7).
Claim(s) 4-7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei as applied to claim 1 above, and in further view of Erman et al (US 20220178034 A1).
Claim 4: Mei does not explicitly teach that the stack further includes a second gap penetrating at least two of the catalyst layers in order from the surface of the stack and communicating with the first gap.
Erman discloses an electrode an electrode for an electrochemical reaction device (see e.g. abstract) comprising: a substrate (see e.g. #2 on Fig 5D); and a stack provided on the substrate (see e.g. #4 on Fig 5D), wherein the stack includes catalyst layers and gap layers (see e.g. #41 and #42 on Fig 5D, respectively), and each catalyst layer and each gap layer are alternately stacked (see e.g. #41 and #42 on Fig 5D), making it analogous art (see MPEP § 2141.01(a) I). The electrode of Erman further includes a second gap penetrating at least two of the catalyst layers in order from the surface of the stack and communicating with the first gap (“recess”, see e.g. #5 on Fig 5D), that exposes the lower layers of the catalyst which helps them contribute to electrolysis (see e.g. [0064]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Mei to further include a second gap penetrating at least two of the catalyst layers in order from the surface of the stack and communicating with the first gap as taught in Erman to provide more exposed surface area of the catalyst layers.
Claim 5: Mei in view of Erman teaches a thickness of the second gap is between the thickness of one catalyst layer and one gap layer (“L1”, see e.g. Erman - Fig 1) and the total thickness of the stack (“L2”, see e.g. Erman - Fig 1) (see e.g. Erman - [0037]). This range overlaps with the claimed range of “equal to or more than 1/3 of a thickness of the stack and equal to or less than the thickness of the stack”. MPEP § 2144.05 I states ‘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)’.
Claim 6: Mei in view of Erman teaches a width of the second gap is 300-3000 nm (“0.3 μm to 3 μm”, see e.g. Erman - [0038]), which overlaps the claimed range of 25 nm or more and 900 nm or less. MPEP § 2144.05 I states ‘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)’.
Claim 7: Mei in view of Erman teaches that the second gap is provided on the surface of the substrate (see e.g. Erman - #5 on Fig 5D which penetrates the entirety of the stack down to the layer below it. Mei teaches the stack is deposited directly onto the substrate and thus the second gap would extend to the substrate in Mei in view of Erman.
Mei does not explicitly teach that the surface of the substrate has an uneven surface having a difference in height of the uneven surface is 10 nm or more and 100 nm or less. Erman teaches using a roughened uneven surface for the substrate to improve adhesion (see e.g. [0029]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Mei by roughening the surface of the substrate to generated an uneven surface as taught in Erman to improve adhesion to the substrate. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the difference in height of the uneven surface because a person having ordinary skill in the art before the effective filing date of the instant invention would recognize that the degree of roughness would affect the resulting improved adhesion.
Claim 13: Mei in view of Erman teaches that the second gap includes a crack (see e.g. Erman - #5 on Fig 5D).
Claim(s) 15-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei as applied to claim 1 above, and in further view of Mei et al (US 20190296362 A1, referred to as Iida herein).
Claim 15: Mei discloses an electrochemical reaction device (see e.g. [0096]) comprising the membrane electrode assembly according to claim 14 (see rejection of claim 14 above).
Mei discloses that the device is drawn to an electrochemical cell (see e.g. [0002]) but focuses on it being a fuel cell (see e.g. [0090]) wherein hydrogen and oxygen are reacted together to form energy (see e.g. [0090]).
Iida discloses an electrolytic device (see e.g. Fig 11) comprising an electrode comprising: a substrate (see e.g. #12 on Fig 5); and a stack provided on the substrate (see e.g. #10 on Fig 5), wherein the stack includes catalyst layers and gap layers (see e.g. Fig 3B), making it analogous art (see MPEP § 2141.01(a) I). The device of Iida is a regenerative fuel cell that can do both water electrolysis by applying voltages of 1.72-1.77 V (see e.g. Table 1) and power generation (see e.g. [0063]). The electrode materials of Iida overlap with those used in Mei (see e.g. [0018] and [0020]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the device of Mei so that is also includes a power supply configured to supply a voltage between the first electrode and the second electrode, the voltage being 1.72-1.77 V as taught in Iida when it is desired to operate the device as a regenerative fuel cell capable of splitting water to create fuel and combining the fuel to generate electricity.
Claim 16: Mei in view of Iida discloses an anode flow path plate having an anode flow path (“fuel supply groove”, see e.g. Mei - [0096]) through which an anode solution containing water flows (see e.g. Mei - [0097]), the anode flow path facing on the first electrode (“fuel supply groove for supplying hydrogen or the like as a fuel to an anode” see e.g. Mei - [0096]); a cathode flow path plate having a cathode flow path facing on the second electrode (“an oxidant-gas supply groove for supplying air (oxygen) from a supplying body for supplying an oxidant to a cathode”, see e.g. Mei - [0096]); an anode supply flow path connected to an inlet of the anode flow path (“means for supplying a fuel”, see e.g. Mei - [0096]). Although Mei does not explicitly describe an anode discharge flow path connected to an outlet of the anode flow path and a circulation flow path connecting the anode supply flow path and the anode discharge flow path, there features would be inherent to the device of Mei so that the reaction products and/or byproducts can be removed from the cell.
Claim 17: Mei in view of Iida discloses that the first electrode, the second electrode, the electrolyte membrane, the anode flow path plate, the cathode flow path plate are stacked to form at least one electrolysis cell (see e.g. Mei - [0096]).
Claim 18: Mei discloses that the device is drawn to an electrochemical cell (see e.g. [0002]) but focuses on it being a fuel cell (see e.g. [0090]) wherein hydrogen and oxygen are reacted together to form energy (see e.g. [0090]). Therefore, Mei does not explicitly teach a power supply configured to supply a voltage between the first electrode and the second electrode, the voltage being 1.23 V or more and 1.85 V or less.
Iida discloses an electrolytic device (see e.g. Fig 11) comprising an electrode comprising: a substrate (see e.g. #12 on Fig 5); and a stack provided on the substrate (see e.g. #10 on Fig 5), wherein the stack includes catalyst layers and gap layers (see e.g. Fig 3B), making it analogous art (see MPEP § 2141.01(a) I). The device of Iida is a regenerative fuel cell that can do both water electrolysis by applying voltages of 1.72-1.77 V (see e.g. Table 1) and power generation (see e.g. [0063]). The electrode materials of Iida overlap with those used in Mei (see e.g. [0018] and [0020]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the device of Mei so that is also includes a power supply configured to supply a voltage between the first electrode and the second electrode, the voltage being 1.72-1.77 V as taught in Iida when it is desired to operate the device as a regenerative fuel cell capable of splitting water to create fuel and combining the fuel to generate electricity.
Claim 20: Mei in view of Iida discloses that the second electrode can contain platinum (see e.g. Mei - [0051] and [0096]). KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select platinum for the catalyst layer.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei as applied to claim 1 above, and in further view of Iida and Chen et al (“Separating hydrogen and oxygen evolution in alkaline water electrolysis using nickel hydroxide”, Nat Commun, 2016 May 20;7:11741).
Claim 19: Mei discloses that the device is drawn to an electrochemical cell (see e.g. [0002]) but focuses on it being a fuel cell (see e.g. [0090]) wherein hydrogen and oxygen are reacted together to form energy (see e.g. [0090]). Iida discloses an electrolytic device (see e.g. Fig 11) comprising an electrode comprising: a substrate (see e.g. #12 on Fig 5); and a stack provided on the substrate (see e.g. #10 on Fig 5), wherein the stack includes catalyst layers and gap layers (see e.g. Fig 3B), making it analogous art (see MPEP § 2141.01(a) I). The device of Iida is a regenerative fuel cell that can do both water electrolysis and power generation (see e.g. [0063]). The electrode materials of Iida overlap with those used in Mei (see e.g. [0018] and [0020]). The anode solution is discharged and stored (see e.g. [0064]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the device of Mei so that can operate as a regenerative fuel cell capable of splitting water to create fuel and combining the fuel to generate electricity.
Mei in view of Iida does not explicitly teach that the anode solution containing nickel. Chen teaches that inclusion of nickel in the electrolyte as a redox mediator “decouple[s] the hydrogen and oxygen production in alkaline water electrolysis, which overcomes the gas-mixing issue and may increase the use of renewable energy” (see e.g. abstract of Chen). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the regenerative fuel cell of Mei of Iida to include nickel in the anode solution as taught in Chen to decouple the hydrogen and oxygen production in alkaline water electrolysis.
Relevant Prior Art
Wu et al (US 20100021787 A1): Discloses an electrode having catalyst layers and gap layers (Fig 4A).
Mei et al (US 20170130348 A1): Discloses an electrode having catalyst layers and gap layers (Fig 2A).
Nakano et al (US 20180277871 A1): Discloses an electrode having catalyst layers and gap layers (Fig 2B).
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
On page(s) 8-9, the Applicant argues that Mei does not disclose an electrode for a water electrolysis device wherein the first gap functions as a flow path for water and oxygen. This is not considered persuasive. As stated in the rejection above, the limitation of the preamble claiming the electrode is “for a water electrolysis device” is an intended use for the electrode. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)’. The preamble is not considered to add additional unclaimed structure and is not considered a limitation. The limitation claiming “the first gap allows an anode solution and oxygen gas to flow, the anode solution including water” are directed to intended uses/functions of the electrode. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Mei renders all of the positively recited structure obvious and thus renders this limitation obvious. Additionally, Mei teaches that the first gap is capable of flowing liquids and gases (see e.g. [0033]: “the pore layers 3 in the catalyst layer 1 allow substances such as the reactant and the product to smoothly move”; [0004]: “fuel cell is a system in which a fuel such as hydrogen is electrochemically reacted with an oxidant such as oxygen to generate electric power. Among them, a polymer electrolyte fuel cell (PEFC) can operate at low temperatures as compared with other fuel cells and its reaction product is water”).
On page(s) 9-10, the Applicant argues that the ratio of claim 3 is non-obvious because of the unexpected results in the specification. This is not considered persuasive. These supposed unexpected results are that if the gap is too small, the movement of chemicals through the gap is insufficient and if it’s too large there are performance concerns. These results are also discussed in Mei (see e.g. [0039]) and are not considered to be unexpected.
Conclusion
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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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