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 .
Summary
The Applicant’s arguments and claim amendments received August 7, 2026 have been entered into the file. Currently, claims 1 and 10 are amended; claims 2-3, 6, and 11 are cancelled; and claims 9 and 12-20 are withdrawn; resulting in claims 1, 4-5, 7-8, and 10 pending for examination.
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.
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.
Claims 1, 4-5, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Parrondo, et al. Pyrochlore electrocatalysts for efficient alkaline water electrolysis. Journal of Materials Chemistry A, 2015, 3 (April 21, 2015), pp. 10819-10828) in view of Wang, et al. A review on unitized regenerative fuel cell technologies, part B: Unitized regenerative alkaline fuel cell, solid oxide fuel cell, and microfluidic fuel cell. Renewable and Sustainable Energy Reviews, 2017, 75 (Nov. 17, 2016), pp. 775-795.
Regarding claims 1, 7-8, and 10, Parrondo teaches the use of lead ruthenate pyrochlore catalysts in a solid-state alkaline water electrolyzer (pp. 10819, Abstract, Ln. 19-21). Parrondo teaches a solid-state alkaline water electrolyzer including an anion exchange membrane sandwiched between two gas diffusion electrodes (pp. 10822, Col. 1, Ln. 8-10). The cathode side electrode includes a platinum black catalyst on a carbon substrate and the anode side electrode includes a pyrochlore on a porous corrosion-resistant metal substrate (pp. 10822, Col. 1, Ln. 16-26). Parrondo further teaches that water electrolysis technology is used in fuel cells, water electrolyzers, and unitized fuel cells (pp. 10819, Col. 1, Ln. 1-6). Parrondo does not expressly teach that the solid-state alkaline water electrolyzer is used as a fuel cell, more specifically as a fixed-gas unitized regenerative fuel cell.
Wang teaches the growing popularity of unitized regenerative fuel cells including the unitized regenerative alkaline fuel cell, unitized regenerative solid oxide fuel cell, and the unitized regenerative microfluidic fuel cell (pp. 776, Col. 1, Ln. 26-32). Wang teaches that the unitized regenerative alkaline fuel cell (UR-AFC) combines an alkaline fuel cell and alkaline electrolyzer into a single unit, teaching that the structure is simpler and it has improved reaction kinetics in alkaline medium (pp. 776, Col. 2, Ln. 14-16, 21-24, 31-35). Wang further teaches that Pt can be used as the bifunctional hydrogen catalyst because of its high activity towards both hydrogen oxidation reaction (HOR) and hydrogen evolution reaction (HER) (pp. 776, Col. 2, Ln. 40-45) and that the oxide used in the bifunctional oxygen catalyst is involved in the oxygen reduction reaction (ORR) and oxygen evolution reaction (OER) (pp. 777, Col. 1, Ln. 1-4). Thus, as Wang teaches HOR and HER at one electrode and ORR and OER at the other electrode, Wang teaches a fixed-gas unitized regenerative fuel cell. Overall, Wang teaches that unitized regenerative fuel cells benefit from high energy density, deep cycling ability, and decoupled energy storage capacity and rated power, providing significant advantages in terms of long-term energy storage and power output (pp. 790, Col. 2, Ln. 38-42).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the alkaline water electrolyzer taught by Parrondo in a fixed-gas unitized regenerative fuel cell as taught by Wang. Based on the teaching of Parrondo that the water electrolysis technology can be used unitized fuel cells, one of ordinary skill in the art would find it obvious to consider using the electrolyzer including a pyrochlore-based anode catalyst in a unitized regenerative fuel cell. Additionally, based on the teachings of Wang that a unitized regenerative alkaline fuel cell (UR-AFC) has a simpler structure and improved reaction kinetics in alkaline medium, one of ordinary skill in the art would be motivated to use the alkaline water electrolyzer taught by Parrondo in a UR-AFC, specifically a fixed-gas UR-AFC. One of ordinary skill in the art would be motivated to use a unitized regenerative fuel cells because of its high energy density, deep cycling ability, and decoupled energy storage capacity and rated power.
Parrondo does not expressly teach that the metal substrate includes a metal selected from the group consisting of Ru, Ir, Rh, Re, Sn, Ti, Pt, Os, Zr, and Pd.
Wang teaches that while carbon is commonly used as the supporting substrate for electrodes in conventional alkaline fuel cells, a carbon-free substrate is preferred for unitized regenerative alkaline fuel cells (UR-AFC) that is corrosion-resistant. As examples, Wang teaches that nickel foam, Au-coated titanium mesh, and stainless steel are commonly used for oxygen electrode fabrication (pp. 779, Col. 2, Ln. 3-12).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Au-coated titanium mesh as the corrosion-resistant metal substrate of the anode side electrode of Parrondo, based on the teachings of Wang. One of ordinary skill in the art would find it obvious to select a substrate taught by Wang for the oxygen electrode in an alkaline electrolytic cell, specifically a unitized regenerative alkaline fuel cell. One of ordinary skill in the art would be motivated to select Au-coated titanium mesh due to its corrosion-resistance.
Regarding claims 4-5, Parrondo in view of Wang teaches all of the limitations of claim 1 above and Parrondo further teaches that the pyrochlore compounds are represented by the general formula [A2O’][B2O6] (pp. 10820, Col. 1, Ln. 9-12), specifically teaching Pb2Ru2O6.5 as one of the pyrochlores used (pp. 10822, Table 1). Pb2Ru2O6.5 meets the limitation of claimed Formula 1, wherein A is Pb, B is Ru, x is 0, y is 0, and z is 0.5, and Pb2Ru2O6.5 is essentially free of Bi.
Response to Arguments
Response-Claim Rejections – 35 U.S.C. 102 and 103
In light of the amendments to claim 1 to incorporate limitations of dependent claims 3 and 6, the previous rejections of claims 1, 4-5, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parrondo, et al. Pyrochlore electrocatalysts for efficient alkaline water electrolysis. Journal of Materials Chemistry A, 2015, 3 (April 21, 2015), pp. 10819-10828) have been withdrawn, however, upon further consideration, the reference is applicable under 35 U.S.C. 103 and used in combination with Wang, et al. A review on unitized regenerative fuel cell technologies, part B: Unitized regenerative alkaline fuel cell, solid oxide fuel cell, and microfluidic fuel cell. Renewable and Sustainable Energy Reviews, 2017, 75 (Nov. 17, 2016), pp. 775-795 in the rejections above. Any arguments with respect to the reference that are still deemed valid will be addressed herein.
The declaration under 37 CFR 1.130(a) filed on August 7, 2026 is sufficient to overcome the rejection of claims 2-3, 6, and 10-11 under 35 U.S.C. 103 over Parrondo, et al. Pyrochlore electrocatalysts for efficient alkaline water electrolysis. Journal of Materials Chemistry A, 2015, 3 (April 21, 2015), pp. 10819-10828) in view of Gayen, et al. High-performance AEM unitized regenerative fuel cell using Pt-pyrochlore as bifunctional oxygen electrocatalyst. Proceedings of the National Academy of Sciences of the USA, Vol. 118, No. 40 (Sept. 30, 2021), pp. 1-8). The declaration provides evidence of reliance on the exception provision of 35 U.S.C. 102(b)(1)(A), as the disclosure was made by a joint inventor within one year of the effective filing date of the claimed invention.
Applicant's arguments filed August 7, 2026 with respect to amended claim 1 and the previous rejections of claim 1 over Parrondo and claims 3 and 6 over Parrondo in view of Wang have been fully considered but they are not persuasive. The Applicant argues that Parrondo teaches a pyrochlore disposed on a porous corrosion-resistant metal substrate, which is physically and functionally distinct from the claimed invention; that one of ordinary skill in the art would not be motivated to use the Au-coated titanium mesh of Wang and that the mesh does not meet the limitation of the claim; and that Wang does not teach or suggest a fixed-gas URFC nor would one of ordinary skill in the art be motivated to use the electrolyzer of Parrondo in a fixed-gas URFC.
With respect to the argument, see pages 7-8 of the remarks, that Parrondo teaches a pyrochlore disposed on a porous corrosion-resistant metal substrate, which is physically and functionally distinct from the claimed invention, this argument is not persuasive. As noted above, Parrondo teaches that the anode side electrode includes a pyrochlore on a porous corrosion-resistant metal substrate (pp. 10822, Col. 1, Ln. 16-26). In this case, the claim limitation “a pyrochlore comprising a metal deposited thereon” is considered a product-by-process limitation. As the anode side electrode of Parrondo includes a metal substrate with a pyrochlore layer, it is considered to meet the claim limitation. The application of the pyrochlore catalyst onto the metal substrate does not make the layered metal/pyrochlore electrode physically and functionally distinct from the claimed “pyrochlore comprising a metal deposited thereon.” In response to the Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the metal (Pt) deposited possesses high ORR activity and catalytic activity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to the argument, see page 8 of the remarks, that one of ordinary skill in the art would not be motivated to use the Au-coated titanium mesh of Wang and that the mesh does not meet the limitation of the claim, this argument is not persuasive. As noted above, the metal substrate with a pyrochlore layer is considered to meet the product-by-process claim limitation. Further, Wang specifically teaches that while carbon is commonly used as the supporting substrate for electrodes in conventional alkaline fuel cells, a carbon-free substrate is preferred for unitized regenerative alkaline fuel cells (UR-AFC) that is corrosion-resistant, providing nickel foam, Au-coated titanium mesh, and stainless steel as examples. As Parrondo teaches an alkaline electrolytic cell and the use of a corrosion-resistant metal substrate, it would be obvious to one of ordinary skill in the art to look to the disclosure of Wang. Thus, one of ordinary skill in the art would be motivated to select Au-coated titanium mesh due to its corrosion-resistance.
With respect to the argument, see page 8 of the remarks, Wang does not teach or suggest a fixed-gas URFC nor would one of ordinary skill in the art be motivated to use the electrolyzer of Parrondo in a fixed-gas URFC, this argument is not persuasive. The Applicant argues that Wang does not expressly teach or suggest a fixed-gas URFC, as the teachings of Wang merely disclose that HOR and HER occur at one electrode and ORR and OER occur at the other electrode. However, paragraph [0011] of the published application discloses that a URFC can have two configurations: a fixed-gas URFC or a fixed-polarity URFC, and further defines a FG-URFC as a URFC where oxygen evolution reaction (OER) and oxygen reduction reaction (ORR) happen at one electrode (oxygen electrode) whereas hydrogen evolution reaction (HER) and hydrogen oxidation reaction (HOR) occur on the other electrode (hydrogen electrode) under water electrolyzer (WE) and fuel cell (FC) mode, respectively. Thus, the unitized regenerative alkaline fuel cell taught by Wang meets the definition of a fixed-gas URFC as defined by the instant specification. Further, Wang teaches that combining an alkaline fuel cell and alkaline electrolyzer into a single unit has a simpler structure and improved reaction kinetics in alkaline medium (pp. 776, Col. 2, Ln. 14-16, 21-24, 31-35), further teaching that unitized regenerative fuel cells benefit from high energy density, deep cycling ability, and decoupled energy storage capacity and rated power, providing significant advantages in terms of long-term energy storage and power output (pp. 790, Col. 2, Ln. 38-42). Parrondo teaches an alkaline water electrolyzer and further teaches that water electrolysis technology is used in fuel cells, water electrolyzers, and unitized fuel cells (pp. 10819, Col. 1, Ln. 1-6). Based on the teaching of Parrondo that the water electrolysis technology can be used unitized fuel cells, and based on the teachings of Wang that a unitized regenerative alkaline fuel cell (UR-AFC) has a simpler structure and improved reaction kinetics in alkaline medium, one of ordinary skill in the art would be motivated to use the alkaline water electrolyzer taught by Parrondo in a UR-AFC, specifically a fixed-gas UR-AFC. One of ordinary skill in the art would be motivated to use a unitized regenerative fuel cells because of its high energy density, deep cycling ability, and decoupled energy storage capacity and rated power.
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 SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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