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 Objections
Claims 12, 14-17, and 19 are objected to because of the following informalities. Appropriate correction is required.
12, 17, and 19. These claims are objected to since “the fibers includes [sic: include]” has subject-verb disagree since the verb uses the third person singular inflection rather than the third person plural inflection.
14-17 and 19. These claims are objected to for missing articles for “rear side”: “to [sic: the] rear side.”
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 14-17 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
14-17 & 19. The “gradually decreased to [the] rear side of the fibers” catalyst layer thickness is not in the original disclosure. The Examiner could not find literal support for this limitation. The seeming only source of support for this is fig. 3 showing a shaded area between fiber 1A and catalyst layer 2. However, this shaded area could also be a sharp cutoff, making what shape this shaded area could be ambiguous. 35 U.S.C. § 112(a) requires that any amendment be based on “clear” terms from the written description. But when the shaded area is ambiguous, it is not clear thus making the “gradually decreased” limitation new matter.
Claims 14-17 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
14-17 and 20. It is unclear how one can determine what is the “rear” as opposed to the “front” of a fiber. Thus these claims are indefinite.
20. The length ratio has no upper bound and can go to infinity, thus this ratio is unenabled.
When a range has no upper bound, then the range would go to infinity and the specification must enable up to infinity, otherwise the claim is unenabled. See MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 1381-84 (Fed. Cir. 2012); see also MPEP § 2164.06(a) (describing the MagSil case). The Federal Circuit found that the claim language of “a change in the resistance by at least 10%” was interpreted as covering up to infinite percent when the Federal Circuit stated “[t]he invention claims resistive changes from at least 10% up to infinity.” Id. at 1381-82. The court concluded that the record showed that the knowledge at the time would not enable achievement without undue experimentation of values above 600% - which obviously falls short of infinity – and thus the claim was unenabled. Id. at 1384.
The degree of experimentation is undue because: (A) the breadth of the claim goes to infinite, (B) the state of the prior art does not show how to show an infinite length ratio, (F) the written description does not show how to achieve infinity, and (G) there are no working examples of infinity.
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 3-20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
1. The limitation “a ratio of the cracks or/and the holes to a surface area of the catalyst layer” is unclear on what exactly what metric of the cracks or/and the holes is supposed to be used. Thus this claim is indefinite.
For the purposes of examination, this limitation will be interpreted as the area of the cracks or/and the holes.
14-17 & 19. The term "gradually" is a relative term which renders the claim indefinite. This term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. MPEP § 2173.05(b).
3-13, 18, & 20. These claims are rejected for being dependent upon a rejected claim.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1 and 3-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Mei et al., U.S. Patent App. Pub. No. 2019/0296362 A1 [hereinafter Mei] and alternatively in view of Fukazawa et al., U.S. Patent App. Pub. No. 2019/0088967 A1 [hereinafter Fukazawa].
The body of the claim is generally written with parentheses following the limitations indicating the prior art's teachings and/or examiner notes.
1. The following references teach the claim.
I. Mei
An electrode (anode; Mei title, [0002], fig. 5) comprising:
a support (substrate 12; Mei [0037], fig. 5); and
a catalyst layer (catalyst 100; Mei [0018], figs. 1-2) including a sheet layer (porous structure 10; Mei [0018]-[0019], figs. 1-2 & 3B) and a gap layer stacked alternately (void 11 alternatively laminated; Mei [0029]-[0030], figs. 2 & 3B),
wherein cracks or/and holes exist in the catalyst layer (pores/holes in the catalyst layer; Mei [0019], [0023], fig. 3A),
the catalyst layer includes the Ir oxide or/and the complex oxide of Ir and Ru (Ir oxides (Mei [0017], [0020]),
wherein the support includes fibers (Ti fibers; Mei [0046]),
the catalyst layer is provided on the fibers (porous structure 10 on substrate 12; Mei [0037], fig. 5)… .
Mei is silent on a ratio of the cracks or/and the holes to a surface area of the catalyst layer provided on the fibers is 0.3 % or more and 60 % or less.
However, this is an obvious recitation of relative dimension. See MPEP § 2144.04(IV)(A).
II. Ratio – alternatively Fukazawa
Alternatively to the previous rejection of the limitation “a ratio of the cracks or/and the holes to a surface area of the catalyst layer provided on the fibers is 0.3 % or more and 60 % or less,” Fukazawa teaches an apparatus for use for water electrolysis. Fukazawa [0062]. Fukazawa teaches that the area ratio of the pores is 20-60% to get a preferred reaction efficiency and to keep water out of the catalyst layer 10. Fukazawa [0045].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s electrode with Fukazawa’s 20-60% area ratio to get a preferred reaction efficiency and to keep water out of the catalyst layer 10.
3. The electrode according to claim 1, wherein
a ratio of the cracks or/and the holes to a surface area of the catalyst layer provided on the fibers is 1 % or more and 60 % or less (rejected for similar reasons stated in the claim 1 rejection).
4. The electrode according to claim 1, wherein
a ratio of the cracks or/and the holes to a surface area of the catalyst layer provided on the fibers is 5 % or more and 45 % or less (rejected for similar reasons stated in the claim 1 rejection).
5. A membrane electrolyte assembly (membrane electrode assembly 200, Mei [0038]-[0046], fig. 6) comprising:
the electrode according to claim 1 (see claim 1 rejection); and
an electrolyte membrane (electrolyte membrane 23; Mei [0039]-[0043], fig. 6).
6. The membrane electrolyte assembly according to claim 5 wherein the electrolyte membrane is invaded into the cracks or/and the holes (a person having ordinary skill in the art would have recognized that hot pressing would have some of the electrolyte membrane seep into the holes). Mei [0049], fig. 6.
7. An electrochemical cell (water electrolysis cell 300; [0052]-[0054], fig. 7) comprising: the membrane electrolyte assembly according to claim 5 (see claim 6 rejection).
8. A stack (stack; Mei [0055]-[0057], fig. 8) comprising: the membrane electrolyte assembly according to claim 5 (see claim 5 rejection).
9. A stack comprising: the electrochemical cell according to claim 7 (see claims 7-8 rejections).
10. An electrolyzer (water electrolysis cell 300; [0052]-[0054], fig. 7) comprising: the stack according to claim 8 (see claims 5 & 8 rejections).
11 An electrolyzer (water electrolysis cell 300; [0052]-[0054], fig. 7) comprising: the stack according to claim 9 (see claims 8 and 9 rejections).
12. The electrode according to claim 1, wherein the fibers include titanium (Ti fibers; Mei [0046]).
13. The electrode according to claim 1, wherein the catalyst layer partly surrounds the fibers (because the catalyst is sputtered and because sputtering is a line of sight application method, the catalyst would partly surround the fibers by being applied to the area of the fibers within the line of sight and mostly minimally opposite to the application side if not entirely absent). See Mei [0035]-[0036].
14. The electrode according to claim 1, wherein the catalyst layer partly surrounds the fibers (rejected for similar reasons as claim 13), and thickness of the catalyst layer is gradually decreased to rear side of the fibers (because Mei sputters catalyst like the claimed invention, Mei’s catalyst would inherently gradually decrease also). See Mei [0035]-[0036].
15. The electrode according to claim 1, wherein the catalyst layer partly surrounds the fibers (rejected for similar reasons as claim 13), and
the catalyst layer is provided along a surface of the fibers (sputtering would provide a catalyst layer along a surface of the fibers exposed to the sputtering line of sight). See Mei [0035]-[0036].
16. The electrode according to claim 1, wherein the catalyst layer partly surrounds the fibers (rejected for similar reasons as claim 13), the catalyst layer is provided along a surface of the fibers (rejected for similar reasons as claim 15), and thickness of the catalyst layer is gradually decreased to rear side of the fibers (rejected for similar reasons as claim 14).
17. The electrode according to claim 1, wherein the fibers includes titanium (rejected for similar reasons as claim 12), the catalyst layer partly surrounds the fibers (rejected for similar reasons as claim 13), the catalyst layer is provided along a surface of the fibers (rejected for similar reasons as claim 15), and thickness of the catalyst layer is gradually decreased to rear side of the fibers (rejected for similar reasons as claim 14).
18. The electrode according to claim 1, wherein the cracks and/or the holes expose a surface of the fibers (because the catalyst layer is porous, the surface of the fibers are exposed to water). See Mei figs. 1 & 3A-3B.
19. The electrode according to claim 1, wherein the fibers include titanium (rejected for similar reasons as claim 12), the catalyst layer partly surrounds the fibers (rejected for similar reasons as claim 13),
the catalyst layer is provided along a surface of the fibers (rejected for similar reasons as claim 15), thickness of the catalyst layer is gradually decreased to rear side of the fibers (rejected for similar reasons as claim 14), and the cracks and/or the holes expose a surface of the fibers (rejected for similar reasons as claim 18).
20. The electrode according to claim 1, wherein the cracks have a length of five times or more the diameter of the fiber (this is an obvious recitation of relative dimension). See MPEP § 2144.04(IV)(A).
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument A. Remarks pp. 8-9.
The Examiner respectfully submits that Mei’s pores and holes teach the claimed holes, Mei does not need to teach cracks due to the use of the claim’s “or.”
The Examiner has considered Applicant’s argument B.
The Examiner respectfully submits that this ratio is indefinite for being unclear on what metric of the cracks and holes are being used. Furthermore, a recitation of relative dimensions is obvious. See MPEP 2144.04(IV)(A).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794
