DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 -9) in the paper filed July 14, 2026 is acknowledged. Claims 10 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 7 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (other than the 112(a) and (b) rejections of claim 1, noted below).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 1 (and be dependency, claims 4 – 9) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for specific classes of metallic catalytic particles, does not reasonably provide enablement for catalytic particles that are oxides, nitrides, etc., which some prior art discuss as being suitable as catalysts for fuel cell applications. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims..
The test of enablement is whether one skilled in the art could make and use the claimed invention coupled with information known in the art without undue experimentation (See United States v. Theketronic Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based upon a single factor but rather a conclusion reached by weighing many factors (See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 and MPEP 2164.01.)
(A) The breadth of the claims;
The pending claims (at least the independent claims) are broad. There are millions of possible materials (including alloys) that would potentially read on the claimed breadth, given the lack of specific material compositions.
(B) The nature of the invention;
A fuel cell is not a very complex type of invention, per se, as a fuel cell has been known for many years. However, there are many different formulations for catalysts for fuel cell use and the Examiner acknowledges that chemical variations do not always yield predictable results.
(C) The state of the prior art;
Catalytic art, both for fuel cells and other applications, is a relatively crowded art since catalysts and fuel cells have been made for many years.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art is probably a research chemist or engineer having a minimum of two or three years of experience.
(E) The level of predictability in the art;
The art is relatively predictable – a good catalyst will exhibit good performance and durability, for example. However, it is unclear in the art whether all oxides, nitrides, carbide, etc. materials could qualify as a ‘catalyst’ in the claimed regard, and the present specification does not provide any illumination to this question.
(F) The amount of direction provided by the inventor;
As noted above, there is almost no direction provided by the inventor as to what materials constitute proper catalyst versus improper catalyst except for the listing of suitable metallic metals or alloys in the PGPUB:
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. The Examiner notes that amendment to capture these materials, even broadly, would overcome this rejection.
(G) The existence of working examples; and
The specification provides working examples, but every example uses PtRu as the catalyst.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Millions of experiments are required in order to determine what will and will not work. It is the Examiner's contention that the interaction of the various components are likely within the skill level of a POSITA, so the interactions among the components may, or may not, present an undue burden. However, without specific limitations on exact which classes of materials or what additional components may (or may not) be necessary, the Examiner notes that the breadth of the claim scope is immense relative to what is taught in the as-filed specification. As noted above, Paragraph 0041 of the PGPUB provides sufficient guidance for these metallic catalyst materials and amendment to incorporate these materials into claim 1 would obviate this rejection.
Given the above analysis of the factors, which courts have determined, are critical in asserting whether a claimed invention is enabled, it must be considered that a skilled artisan would have to conduct undue and excessive experimentation in order to practice the claimed invention. Applicant is advised to positively set forth specific comparative shielding structures with definite structural limitations or to present specific arguments on the record as to why a POSITA would view the claimed limitations as enabling.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 (and by dependency, claims 4 – 9) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
The term “catalytic” in claim 1 is a relative term which renders the claim indefinite. The term “catalytic” 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. The term ‘catalytic’ requires some degree of improvement in the fuel cell process, but the magnitude of what one artisan might consider crosses the threshold from ‘inert’ to ‘weakly catalytic’ is not defined and would be subject to each artisan’s subjective interpretation. As such, the Examiner deems that the term, absent amendment to capture the class of materials as discussed above (e.g. Paragraph 0041 of the PGPUB), is indefinite because what constitutes something being ‘catalytic’ is relative to each artisan’s personal interpretation.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) The claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1, 2, 4 and 9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Haas et al. (WO 2015/140712 A1).
Regarding claim 1, Haas et al. disclose an electrochemical catalyst suitable for use in fuel cell applications (Title; Abstract; page 1), the catalyst comprising: a carbon-containing support (page 3, process step (a)); a transition metal oxide shell coated onto at least a surface of the carbon-containing support (ibid and page 4, lines 19 – 21); and a plurality of discrete catalytic nanoparticles disposed in and/or on at least a portion of the transition metal oxide shell (page 3, process step (b) and pages 7 – 8).
Regarding claim 2, Haas et al. disclose PtRu catalyst particles (see citations above; e.g. page 8, lines 22 - 33).
Regarding claim 4, Haas et al. disclose particle sizes meeting the claimed limitations (page 9, line 37 bridging page 10, line 6 and page 12, lines 23 – 29).
Regarding claim 9, Haas et al. disclose carbon materials meeting the claimed limitations (page 5, lines 10 – 19).
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 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.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Haas et al. as applied above, and further in view of Martinez Bonastre et al. (U.S. Patent App. No. 2020/0313201 A1).
Haas et al. is relied upon as described above.
Haas et al. fail to disclose using also Ru particles with the PtRu nanoparticles.
However, Martinez Bonastre et al. teach a mixture of particles including Ru particles and Pt alloy particles (albeit not PtRu) for improved performance and durability in fuel cell catalyst design (Title; Abstract; and at least Paragraphs 0018 – 0024). The Examiner notes that Haas et al. provides teaching that PtRu and the other Pt alloys are functional equivalent Pt based catalyst materials (see Haas et al., col. 8, lines 22 – 33).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Haas et al. to utilize catalytic nanoparticles comprising PtRu nanoparticles and Ru nanoparticles as taught by Martinez Bonastre et al. as such a combination allows for improved performance and durability of the catalyst.
Claims 5 and 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Haas et al. as applied above.
Haas et al. is relied upon as described above.
Regarding claim 5, Haas et al. fails to disclose the thickness of the transition metal oxide shell layer, though clearly teaches that this layer exists in the structural location as claimed. Regarding claim 6, Haas et al. teaches metal oxides meeting the claimed material limitations (see citations above; e.g. page 4, lines 19 – 21), as well as teaching that both amorphous and crystalline forms of the metal oxides are usable (page 5, lines 35 – 37 and page 16, lines 1 – 2). However, Haas et al. fails to teach wherein the transition metal oxide shell comprises both crystalline and amorphous portions.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to determine a thickness value for the metal oxide coating/shell layer meeting applicants’ claimed range limitation by optimizing the results effective variable through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In addition, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the whether the metal oxide is crystalline, amorphous or a mixture of both through routine experimentation, especially given the teaching in Haas et al. regarding the fact that both crystalline and amorphous metal oxide coating/shell layers are deemed suitable. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, it is noted that substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, crystalline, amorphous, or mixtures of crystalline and amorphous are deemed functional equivalents in the field of suitable crystallographic forms for the transition metal oxide coating/shell layer. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Haas et al. to meet the limitations of claims 5 and 6 as taught by Haas et al. above, since the transition metal oxide layer clearly is taught to exist and a skilled artisan would have been well versed in optimizing both its thickness value and its crystallographic nature.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 7 and 8 are deemed allowable over the prior art of record (other than the 112 rejections set forth above) since the prior art of record fails to teach or render obvious the totality of the claimed limitations. With regard to claim 7, while Haas et al. briefly mentions hydrogenated metal oxides, there is no teaching or specificity to ‘pick and choose’ such an embodiment while also choosing an oxygenated carbon-containing support, as required by the claim. With regard to claim 8, while Haas et al. teach carbon-containing supports that can include carbon nanotubes (see page 5 citation above), claim 8 requires a specific type of carbon nanotube with specific dimensions that is deemed neither taught nor rendered obvious by the prior art of record when taken in combination with the requirements of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 9, 2026
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