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 .
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of clams 1-12 in the reply filed on 06/25/2026 is acknowledged. Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species/inventions, there being no allowable generic or linking claim.
Claims 1-12 are under consideration in this Office action.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qin et al. (“An oxidation-nitridation-denitridation approach to transform metal solids into foams with adjustable pore sizes for energy applications” and Supporting Information, Science Bulletin, 2021).
Regarding claim 1, Qin discloses a nickel foam which has a peak at 397.4 eV in a spectrum by X-ray photoelectron spectroscopy (see e.g. Fig. 2h, Page 1528, Col. 1, lines 5-11, and Page 1529, Col. 2, lines 22-30, hierarchical porous Ni foam with Ni3N in the resultant structure, which exhibits a metal-N XPS peak at 397.4 eV as similarly exhibited with the Cu3N in the Cu foam and as described in paragraphs 0071 and 00159 of the instant specification) and has a hierarchical pore structure including two or more discontinuous pore distributions peaks in a pore size distribution measured by mercury intrusion porosimetry (see e.g. Page 1526, Col. 1, lines 16-25, and Page 1529, Col. 2, lines 22-25 and 20-33, hierarchical porous Ni foam structure with macropores and mesopores).
It should be noted that the pore size distribution being “measured by mercury intrusion porosimetry” is not a positively recited element of the claimed nickel foam, but instead an evaluation method used to determine a property of the nickel foam. Qin discloses the structural limitations of the pore size distribution, as stated above, regardless of the specific determination method.
Regarding claim 6, Qin discloses the nickel foam having pores generated on a skeleton (see e.g. Fig. S5c, secondary meso-pores formed on walls of pristine macropores, i.e. skeleton, of Ni foam; Page 1529, Col. 2, lines 30-33), which have an average diameter more than 40 times smaller than an average diameter of inherent macropores of the nickel foam (see e.g. Fig. S5c, Ni foam macropores of 200µm with mesopores shown at least smaller than the 5µm scale bar).
Regarding claim 7, Qin discloses the pores generated on the skeleton of the nickel foam including open pores (see e.g. Figs. 4e/f and S5b/c, at least some generated pores on the foam walls connecting to each other, i.e. being open; Page 1529, Col. 1, line 18-20).
Regarding claim 8, Qin discloses a catalyst comprising the nickel foam of claim 1; and a transition metal supported on a surface of the nickel foam (see e.g. Page 1530, connecting paragraph of Col. 1-2, lines 1-16, MnO2 nanosheets active material grown on porous Ni foam).
Regarding claim 9, Qin discloses the catalyst having a use in an oxygen evolution reaction (OER) or a use in a hydrogen evolution reaction (HER) (see e.g. Page 1530, Col. 1, lines 13-16, porous Ni foam being dual-functional for HER and OER).
It should be noted that this limitation is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…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.”. Qin discloses all the structural limitations of the claimed catalyst as stated above.
Regarding claim 10, Qin discloses the transition metal being one metals elected from the group consisting of group 4 to 12 metals (see e.g. Page 1530, Col. 2, lines 3-6, MnO2, Mn being a group 7 metal).
Claims 2-3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Qin; claim 3 evidenced by Shore et al. (U.S. 2006/0276332).
Regarding claim 2, though Qin does not explicitly measure a water contact angle on a surface of the nickel foam, the limitation of the nickel foam having a water contact angle of less than 80° is described in paragraphs 0071, 00107-00108 and 00159 of the instant specification as resulting from the presence of nitrogen, as Ni3N, doped on its surface after treatment with ammonia gas. Qin similarly discloses nitrogen, in the form of Ni3N, remaining on the surface of the nickel foam after thermal treatment in an ammonia atmosphere (see e.g. Page 1529, Col. 2, lines 22-30), and would therefore be expected to exhibit the same or a very similar hydrophilicity and contact angle.
MPEP §2112.01 I states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”
Alternatively, even if the exact contact angle is not within the claimed range, the contact angle of the nickel foam of Qin would nevertheless be very close to the claimed range for the reasons described above. MPEP § 2144.05 I states “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”.
Regarding claim 3, though Qin does not explicitly provide the specific surface area of the nickel foam in terms of m2/g, Qin does disclose the hierarchical porous nickel foam having a specific surface area 12 times that of commercial nickel foam (see e.g. Page 1530, Col. 1, lines 21-23), which is evidenced by Shore as having a specific surface area of approximately 0.01 to 0.1 m2/g (see e.g. Shore Paragraphs 0031 and 0033). The nickel foam of Qin would therefore be expected to exhibit a specific surface area on the order of 0.12 to 1.2 m2/g.
Alternatively, even if the specific surface area is not completely within the claimed range due to this approximation, the specific surface area of the nickel foam of Qin would nevertheless overlap and/or be very close to the claimed range for the reasons described above. 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” and further states “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”.
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.
Claims 4-5 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Qin in view of Peugeot et al. (U.S. 2024/0328005).
Regarding claim 4, Qin teaches all the elements of the nickel foam of claim 1 as stated above. Qin further teaches the two or more pore distribution peaks including a first peak having an average pore size of 200 µm (see e.g. Page 1526, Col. 1, under “2.1.3”, line 1). Qin does not explicitly teach a second peak having an average pore size between 400 and 4000 nm, but does teach secondary pores formed on the walls of the foam having tunable pore sizes from tens to hundreds of nanometers up to tens of micrometers (see .g. Page 1527, Col. 2, lines 1-12, and Page 1529, Col. 2, lines 30-33), as well as the nickel foam being used as an electrode for oxygen evolution (see e.g. Page 1530 Col. 1, lines 1-5, porous Ni foam for OER).
Peugeot teaches an oxygen evolution electrode catalyst assembly comprising an etched nickel foam (see e.g. Abstract), wherein the nickel foam may have multiple levels of porosity including a group of pores in the range of 100-1000 µm from the original nickel foam porous structure (see e.g. Paragraph 0119) and a group of pores formed by etching in a range of 1000 to 5000 nm, particularly 1800 to 4000 nm (see e.g. Paragraph 0040, lines 1-10, and Paragraph 0117), overlapping or falling within the claimed range of the present invention (see MPEP § 2144.05 I as cited above), these etched pores enhancing the activity of the nickel foam (see e.g. Paragraph 0085, lines 1-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nickel foam of Qin to have the secondary pores formed with an average pore size, and thereby distribution peak, of 1000 to 5000 nm, particularly 1800 to 4000 nm, as taught by Peugeot as a suitable dimension range of secondary pores formed on a nickel foam structure that provides enhanced activity for OER. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 5, modified Qin teaches all the elements of the nickel foam of claim 4 as stated above. Modified Qin does not explicitly teach the two or more peaks further including a third peak having an average pore size of 100-300 nm. Qin does however teach that additional second order pores can be formed on the walls of first order pores formed on the walls of pristine macropores of the foam by a further transformation (see e.g. Qin Page 1529, Col. 2, lines 4-11).
Peugeot further teaches the etched nickel foam comprising a group of pores in a range of 100 to 1000 nm, preferably 100 to 600 nm (see e.g. Peugeot Paragraphs 0040-0041), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above), these pores further improving the activity of the nickel foam (see e.g. Peugeot Paragraph 0017, lines 8-13, and Paragraph 0118).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nickel foam of modified Qin to further comprise a third average pore size peak in a range of 100 to 1000 nm, preferably 100 to 600 nm, as taught by Peugeot as an additional suitable dimensional range of pores to be added on the nickel foam structure to improve activity for OER. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 11, Qin teaches a water electrolysis system comprising a reaction unit where a water electrolysis reaction occurs (see e.g. Page 1526, Col. 2, paragraph starting “The measurements”, system/configuration for electrocatalytic water splitting),
wherein the reaction unit includes a negative electrode, a positive electrode, and an electrolyte (see e.g. Page 1526, Col. 2, paragraph starting “The measurements”, respective working electrode and counter electrode for HER and OER or anode and cathode, with KOH electrolyte), and
any one or more of the negative electrode and the positive electrode include a catalyst comprising the nickel foam of claim 1 (see e.g. Page 1526, Col. 2, paragraph starting “The measurements”, porous Ni foam as working electrode in individual HER and OER processes, or utilized as both anode and cathode in overall water splitting system).
Qin does not explicitly teach the catalyst of the electrodes of the water electrolysis system comprising a transition metal supported on a surface of the nickel foam. Qin does however teach a transition metal being supported on the nickel foam when used in a supercapacitor (see e.g. Page 1530, connecting paragraph of Col. 1-2, lines 1-16, MnO2 nanosheets active material grown on porous Ni foam), as well as Ni foam being suitable for use as a substrate hosting HER or OER electrocatalysts for efficient water splitting (see e.g. Page 1525, Col. 1, lines 11-14).
Peugeot teaches an oxygen evolution reaction electrode catalyst assembly comprising nickel foam (see e.g. Abstract), wherein the oxygen evolution reaction activity of the catalyst assembly can be improved by deposition of one or more transition metals on the surface of the nickel foam (see e.g. Paragraphs 0017 and 0046).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of Qin to comprise one or more transition metals supported on the nickel foam as taught by Peugeot to improve its activity for at least the oxygen evolution reaction.
Regarding claim 12, modified Qin teaches the electrolyte being an alkaline aqueous solution (see e.g. Qin Page 1526, Col. 2, paragraph starting “The measurements”, lines 1-2, 1 mol/L KOH electrolyte).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ouyang et al. (“Nitrogen-Plasma-Activated Hierarchical Nickel Nitride Nanocorals for Energy Applications”, Small, 2017) discloses an electrode for OER comprising a porous Ni3N nanostructure on a macroporous nickel foam, forming a hierarchical structure that exhibits an XPS peak at 397.5 eV.
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/MOFOLUWASO S JEBUTU/Examiner, Art Unit 1795
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