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 with traverse of Group I, claims 1-12, with respect to Group II, claims 13-18, and without traverse with respect to Group III, claims 19 and 20, in the reply filed on June 26, 2026, is acknowledged. The traversal is on the ground(s) that “searching Group II, claims 13-18, which are directed to M being a single element, i.e., Cr, would not require a serious search and/or examination burden when searching and examining elected Group I, claims 1-12.”
The Examiner agrees with Applicants; therefore, Group II, claims 13-18, are under consideration by the Examiner, along with elected Group I, claims 1-12.
Claims 19 and 20 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected water electrolysis cell, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 26, 2026.
Claims 1-18 are presently under consideration by the Examiner.
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, 2, and 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-14 of copending Application No. 18/227,114 (reference application; also known as U. S. Patent Publication No. 2025/0034730).
Although the claims at issue are not identical, they are not patentably distinct from each other because the respective sets of claims are directed to electrocatalysts comprising a pyrochlore compound, wherein in the copending ‘114 application, the pyrochlore compound is selected from, inter alia, the formula RE2(Ru)2xM2-2xO7, where RE is selected from, inter alia, Sm, and M is selected from, inter alia, Sc and Fe, and wherein x is less than 1.0 and greater than 0.0. The pyrochlore compound recited in the copending ‘114 application encompasses the instantly claimed pyrochlore compound with formula Sm2Ru2xM2-2xO7, where x is (a) less than 1.0 and greater than or equal to 0.5, (b) between about 0.5 and about 0.9, (c) between about 0.6 and about 0.9, or (d) between about 0.7 and about 0.9, and where M is selected from, inter alia, Sc and Fe.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim Rejections - 35 USC § 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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (U. S. Patent Publication No. 2016/0340791).
Regarding claim 1, Yang et al. teach electrocatalysts having a metal oxide structure comprising a pyrochlore phase having a chemical formula A2B2On, where A comprises one or more A-site metals, B comprises one or more B-site metals, and 6.0 ≤ n ≤ 7.3. Yang et al. further teach a porous metal oxide structure where the A-site metal of the pyrochlore phase may be selected from, inter alia, Sm, and the B-site metal may be selected from between Ru and Ir, where, typically, 6 ≤ n ≤ 7. See paragraphs [0019] and [0021] of Yang et al.
Yang et al. do not explicitly teach the limitations of Applicants’ claim 1 regarding the formula recited therein, i.e., Sm2Ru2xM2-2xO7. However, because Yang et al. teach Sm, Ru, and Ir as exemplary metals for the metal oxide structure comprising a pyrochlore phase, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to select Sm as an A-site metal, and Ru and Ir as exemplary B-site metals, motivated by the teachings of Yang et al., as a matter of obvious design choice.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kajiwara et al. (U. S. Patent Publication No. 2020/0144616).
Regarding claims 1-4 and 13, Kajiwara et al. teach an air electrode comprising a pyrochlore-type composite oxide, said composite oxide having a composition represented by the formula A2-xB2-yO7-z, wherein x, y, and z each represent a numerical value of 0 or more and 1 or less (0 ≤ x ≤ 1; 0 ≤ y ≤ 1; 0 ≤ z ≤ 1), A represents at least one element selected from, inter alia, Sm, and B represents at least one element selected from, inter alia, Ru, Ir, Rh, Cr, Sc, and Fe. See paragraphs [0012] and [0033] of Kajiwara et al.
For example, the formula disclosed in Kajiwara et al., A2-xB2-yO7-z, corresponds to Applicants’ formula Sm2Ru2xM2-2xO7, when (a) A is Sm and x is 0, (b) B is Ru and any one of Ir, Rh, Cr, Sc, Cu, and Fe and y is 0, meaning 2-y equals 2, which corresponds to Applicants’ “Ru2xM2-2x” equaling 2, when x in Applicants’ claimed formulae is 0.5, and (c) z is 0.
Regarding claims 5, 6, 14, and 15, it is considered that because “B2-y” in Kajiwara et al. corresponds to Applicants’ “Ru2xM2-2x”, and y represents a numerical value of 0 or more and 1 or less (0 ≤ y ≤ 1), the range of 2-y in “B2-y” is considered to encompass the ranges of x as recited in Applicants’ claims 5, 6, 14, and 15 for “Ru2xM2-2x”.
Kajiwara et al. do not explicitly teach, suggest, or define the aforementioned pyrochlore-type composite oxide as an electrocatalyst, as recited in Applicants’ claims. Kajiwara et al. also do not explicitly teach or suggest the limitations of Applicants’ claims 7-12 and 16-18 regarding the pyrochlore compound exhibiting the properties of (a) at a current density of 10.0 mA/cm2, exhibiting an overpotential at least 40 millivolts or 50 millivolts less than Sm2Ru2O7 at the 10.0 mA/cm2 current density (claims 7, 8, 16, and 17), (b) at an overpotential equal to 1.53 V relative to a reversible hydrogen electrode, exhibiting a current density at least 25 mA/mg2 or at least 35 mA/mg2 greater than a current density exhibited by Sm2Ru2O7 at the overpotential equal to 1.53 V relative to a reversible hydrogen electrode (claims 9 and 10), (c) wherein M is Cr, and the pyrochlore compound exhibits, at a 10.0 mA/cm2 current density, an overpotential less than an overpotential of the pyrochlore compounds with M being Rh, Sc, Pd, Ir, Cu, or Fe (claim 11), or (d) wherein M is Cr, and the pyrochlore compound exhibits, at an overpotential equal to 1.53 V relative to a reversible hydrogen electrode exhibits a current density greater than a current density of the pyrochlore compounds with M being Rh, Sc, Pd, Ir, Cu, or Fe (claim 12).
However, it is considered that because Kajiwara et al. teach a pyrochlore-type composite oxide structurally reading upon the pyrochlore compound recited in Applicants’ claims, the skilled artisan would reasonably expect the pyrochlore-type composite oxide here to successfully and effectively function as an electrocatalyst, absent the showing of convincing evidence to the contrary, since the composite oxide structurally reads upon Applicants' claimed formula Sm2Ru2xM2-2xO7.
Further, because Kajiwara et al. teach a formula comparable to that claimed, and further teach metal components for elements A and B in said formula that are recited in Applicants' claims, the skilled artisan would have been motivated to select Sm as element A and select Ru and any one of Ir, Rh, Cr, Sc, Cu, and Fe as element B, as a matter of obvious design choice.
Regarding claims 7-12 and 16-18, it is considered that because Kajiwara et al. teach pyrochlore-type composite oxide having a formula comparable to that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the pyrochlore-type composite oxide disclosed in Kajiwara et al. to exhibit the properties recited in claims 7-12 and 16-18, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Exemplary prior art includes:
Sato et al. (U. S. Patent Publication No. 2012/0053045), which teaches pyrochlore-type oxides represented by A2B2O7-Z, where Z is at least 0 and at most 1, A contains at least one element A1 selected from the group consisting of Pb, Sn, and Zn, and where B contains at least one element B1 selected from the group consisting of Ru, W, Mo, Ir, Rh, Mn, Cr, and Re (Abstract). Sato et al. teach that the aforementioned pyrochlore-type oxide may contain additional metals A2 and B2, which are different from A1 and B1, and my each independently represent at least one element selected from a group consisting of, inter alia, Sc, Fe, Cu, and Sm. See paragraphs [0016] and [0019]. Because the pyrochlore-type oxide disclosed in Sato et al. requires elements A1 and B1, this reference does not teach or suggest the chemical formula recited in Applicants’ claims 1 and 13; and
Thompsett et al. (U. S. Patent Publication No. 2019/0221857), which teaches a catalyst comprising an electrocatalyst and an oxygen evolution catalyst, wherein the oxygen evolution catalyst comprises a crystalline metal oxide (pyrochlore) comprising one or more first metals selected from the group consisting of, inter alia, samarium, and one or more second metals selected from the group consisting of Ru, Ir, Os, and Rh (Abstract; paragraphs [0023], [0031]-[0032]), and the electrocatalyst comprises a metal selected from platinum group metals, gold or silver, a base metal, or an oxide thereof (paragraphs [0045]-[0049]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) 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.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 July 30, 2026
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