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 .
Election/Restrictions
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 10.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS)’s submitted on 08/18/2023, 09/20/2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 6-9 and 18 rejected are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "after " in Lines 3-7. There is insufficient antecedent basis for these limitations in the claim. Claim 1 recites that “content of the second metal and/or the second starting material on a surface (48) of the catalytically active nanoparticles (47) is reduced” but does not describe that “proportions” are reduced as suggested by Claim 6. Claim 1 also does not describe a thermal treatment of the intermediate material. Appropriate correction is required.
The term “substantially” in claim 6 is a relative term which renders the claim indefinite. The term “substantially” 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. Claim 6 recites “substantially constant levels” in Line 7. Said term “substantially” is a relative term and the specification does not provide a definite standard for measuring that degree. Applicant attempts to define the term in the specification:
[0010] . . . The phrase "maintained at substantially constant levels" preferably means that the volume or mass or material amount of the portion of the second metal and/or the second starting material inside the nanoparticles changes by less than 20%, 10%, 5%, or 3%.
However, the term “preferably” implies that the disclosed standard for ascertaining the term of degree is favored, but other meanings can also be used. Therefore, a skilled artisan cannot clearly define the scope of the claim. Therefore, the claim limitation is rendered indefinite. Appropriate correction is required.
Claim 7 recites the limitation "after proportions of the second metal and/or the second starting material on the surface (48) of the catalytically active nanoparticles (47) have been reduced" in Lines 3-5. There is insufficient antecedent basis for this limitation in the claim. The claim language suggests that said step was previously introduced. However, Claim 7 nor dependent Claim 1 describe that “proportions” are reduced. Appropriate correction is required.
Claims 8-9 and 18 are rejected as being dependent upon a rejected base claim.
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 1-2, 4-5, 7-10, 12, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (U.S. Pat. No. 20190237772 A1) in view of Arihara et al. (U.S. Pat. No. 20160013494 A1), and further in view of Ito et al. (EP Pat. No. 3020476A1 equivalent to U.S. Pat. No. 20160149225 A1) as further evidenced by Miller et al. (U.S. Pat. No. 5932184 A).
Regarding Claim 1, Tabata et al. teaches a method for producing a catalyst material comprising catalytically active nanoparticles (noble metal nanoparticles) ([0007]), the method comprising:
providing a first starting material comprising a first metal (noble metal) ([0011]),
providing a second starting material comprising a second metal (metal oxide) ([0009]),
mixing the first starting material and the second starting material forming a reactant material ([0015] teaches forming a mixture containing the noble metal and titanium suboxide carrier as the metal oxide),
thermally treating the reactant material (subjecting the reactant material of the titanium suboxide carrier and noble metal to multiple heat treatments) so that catalytically active nanoparticles are produced from the first starting material and the second starting material, and the first and second metal are connected together in order to at least partly form an alloy of the first and second metals in the catalytically active nanoparticles (an x-ray diffraction pattern showed the presence of an alloy of the titanium of the second starting material and platinum of the first starting material) ([0094], Example 1).
Tabata et al. does not teach the catalytically active nanoparticles (comprising the alloy of the first and second metals) as an intermediate material, wherein in the intermediate material, content of the second metal and/or the second starting material is reduced so that a product material is produced from the intermediate material as the catalyst material (47).
In the same field of endeavor, Arihara et al. teaches analogous art of catalyst particles for fuel cells comprising a noble metal layer (e.g., platinum) formed on a surface of a metal particle (other than the noble metal) providing enhanced activity as platinum is excellent in catalytic activity and is less soluble in an acidic medium ([0017]-[0019]).
Further, in the same field of endeavor, Ito et al. teaches analogous art of an alloy catalyst for a fuel cell wherein the catalyst is washed with an acid such as sodium hydroxide to remove impurities ([0121]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method for producing a catalyst material of Tabata et al. wherein the catalytically active nanoparticles comprising an alloy of the first and second metals further contains a platinum coating on the surface as taught by Arihara et al.; and wherein the catalytically active nanoparticles are an intermediate material that is further washed with an acid such as sodium hydroxide (acidic medium) as taught by Ito et al. One of ordinary skill in the art would have been motivated to perform the described modification to provide enhanced catalytic activity as taught by Arihara et al. and to further remove impurities as taught by Ito et al.
The prior art does not teach the wherein clause of “wherein in the intermediate material, content of the second metal and/or the second starting material is reduced so that a product material is produced from the intermediate material as the catalyst material.” However, the courts have held the following:
“The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003))”(see MPEP 2111.04.I.).
In this case, providing a platinum coating as suggested by Arihara et al. requires the reduction of the metal oxide at the surface of the catalytic nanoparticles. Arihara et al. recognizes that platinum is less soluble in an acidic medium and a skilled artisan recognizes that washing with a metal oxide in an acid such as sodium hydroxide as taught by Ito et al. can also dissolve the metal oxide under specific conditions. As further evidence, in the same field of endeavor, Miller et al. teaches analogous art of a catalyst comprising tungsten oxide wherein the tungsten oxide is recovered by dissolving with sodium hydroxide (Abstract). (It is a reasonable for one of ordinary skill in the art to consider a method of recovering a catalyst material in determining a method of forming said catalyst through reverse engineering/processing.) One of ordinary skill in the art would find the teachings of Miller useful in reducing the platinum content at the surface level to obtain the benefits of Arihara et al. wherein a platinum coating is disposed on the surface. Therefore, the proposed modification expresses an inherent result (i.e., reduction of the second metal (metal oxide)) of the positively recited steps taught by the prior art (i.e., forming a platinum coating as taught by Arihara et al., washing with sodium hydroxide as taught by Ito et al.).
Regarding Claim 2, as applied to Claim 1, the method for producing a catalyst material of Tabata et al. is modified wherein the catalytically active nanoparticles comprising an alloy of the first and second metals contains a platinum coating on the surface as taught by Arihara et al.; and wherein the catalytically active nanoparticles are an intermediate material that is further washed with an acid (acidic medium such as sodium hydroxide) as taught by Ito et al. Miller is cited to provide further evidence that metal oxides such as tungsten oxide can be dissolved by sodium hydroxide under certain conditions. Therefore, a skilled artisan recognizes that washing the catalytically active nanoparticles (intermediate material) with the acid such as sodium hydroxide can dissolve the metal oxide (second metal) as a result of the flow of the sodium hydroxide under specific conditions, increasing the presence of platinum on a surface of the catalytic particles. "Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)." Further, the recited limitations of removing the second metal as a result of a flow of the fluid is a necessarily present result of washing with an acid such as sodium hydroxide as taught by Ito et al. (see MPEP 2111.04.I.).
Regarding Claim 4, as applied above, the fluid comprises sodium hydroxide. Therefore, all claim limitations are met.
Regarding Claim 5, as applied above, the catalytically active nanoparticles of Tabata et al. are modified wherein platinum (noble metal) is primarily coated on the surface as taught by Arihara et al., requiring a skilled artisan to explore methods of reducing the metal oxide on a surface thereof. Ito et al. as evidenced by Miller et al. further proves that washing with an acid such as sodium hydroxide is a known technique that can remove/reduce the amount of the metal oxide within the particles or on a surface thereof. However, the amount in which the proportion of the second metal (metal oxide) is reduced can be optimized by routine experimentation, providing predictable results of enhancing the catalytic activity (Arihara et al., [0004]). As described above, the prior art (Arihara et al.) recognizes that providing a platinum coating layer provides said catalytic enhancement, implying that platinum exists primarily over the entire surface of the particles and the proportion of the second metal is minimal and is reduced by as close to 100% as possible. Therefore, reducing the second metal on the surface by at least 90% as claimed provides predictable results of enhancing the catalytic activity.
Further, “In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (‘It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.’)” (See MPEP 2144.05.II.A).
Regarding Claim 7, Tabata et al. teaches the importance of removing moisture and by products to obtain a powder as a final product by heating ([0086], [0089]). In view of the creative steps employed by a skilled artisan, it would be obvious to subject the reduced catalytically active nanoparticles (wherein proportions of the second metal and/or second starting material on the surface have been reduced) to the heat treatment disclosed by Tabata et al. as an additional thermal treatment to provide a dried powder as a final product; “office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ" Id. at 418, 82 USPQ2d at 1396” (see MPEP 2141.03.I). Further, "applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)."
Regarding Claim 8, Tabata et al. teaches firing a powder of the mixture at a temperature of preferably 500 to 900 °C ([0080]), lying inside the claimed range of 100°C and 1200°C. "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)" (see MPEP 2144.05.I). The firing time is preferably 20 minutes to 24 hours; therefore, a skilled artisan would expect the product to have reached the firing temperature well before 24 hours of exposure, typically within minutes or hours. A skilled artisan would employ the firing step as an additional heat treatment to provide a dried powder as a final product as desired by Tabata et al. Therefore, all claim limitations are met.
Regarding Claim 9, Tabata et al. teaches that during the step of firing the product material having the catalytically active nanoparticles, the dried powder is exposed to a process gas (hydrogen atmosphere) ([0088]). A skilled artisan would employ the firing step as an additional heat treatment to provide a dried powder as a final product as desired by Tabata et al. Therefore, all claim limitations are met.
Regarding Claim 10, as applied to Claim 1, Tabata et al. teaches wherein the first starting material comprises a chemical compound (noble metal compound) as a precursor with the first metal (noble metal) and at least one chemical element (chlorine from chloride or nitrogen from nitrate) ([0080]). Therefore, all claim limitations are met.
Regarding Claim 12, as applied to Claim 1, Tabata et al. teaches that the first metal is a noble metal, platinum; and the second metal is a transition metal, titanium ([0009]). Therefore, all claim limitations are met.
Regarding Claim 16, Tabata et al. teaches wherein the catalyst material comprising catalytically active nanoparticles is for electrodes for a fuel cell ([0090]). Further, catalyst layers are core components of fuel cells to facilitate and accelerate electrochemical reactions.
Regarding Claim 17, as applied to Claim 2, the fluid is sodium hydroxide, a liquid, as modified by Ito et al. Further, Miller is cited to provide further evidence that metal oxides (second metal) such as tungsten oxide can be dissolved by sodium hydroxide under certain conditions. Therefore, a skilled artisan recognizes that washing the catalytically active nanoparticles (intermediate material) with the acid such as sodium hydroxide can dissolve the metal oxide (second metal) as a result of the flow of the sodium hydroxide under specific conditions, increasing the presence of platinum on a surface of the catalytic particles. "Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)."
Regarding Claim 18, Tabata et al. teaches firing a powder of the mixture at a temperature of preferably 500 to 900 °C ([0080]), lying inside the claimed range of 200°C and 800°C. "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)" (see MPEP 2144.05.I). The firing time is preferably 20 minutes to 24 hours; therefore, a skilled artisan would expect the product to have reached the firing temperature well before 24 hours of exposure, typically within minutes or hours.
Regarding Claim 19, as applied to Claim 10, the chemical element can include nitrogen or chlorine ([0080]). Therefore, all claim limitations are met.
Regarding Claim 20, Tabata et al. teaches that the first metal is platinum ([0007]). Therefore, all claim limitations are met.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (U.S. Pat. No. 20190237772 A1) in view of Arihara et al. (U.S. Pat. No. 20160013494 A1) and Ito et al. (EP Pat. No. 3020476A1 equivalent to U.S. Pat. No. 20160149225 A1), and further in view of Hou et al. (CN Pat. No. 103657648 A).
Regarding Claim 3, Tabata et al. does not teach wherein the pH level of the fluid is greater than 7, 9, or 11.
In the same field of endeavor, Hou et al. teaches analogous art of a noble metal/metal oxide catalyst in which an acidic medium (sodium hydroxide/ethylene glycol solution) was added dropwise to reach a pH of 10 ([0064]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Tabata et al. wherein the pH of the acidic medium is 10, in which is greater than 9 as claimed. One of ordinary skill in the art would have been motivated to perform the described modification to determine a suitable pH of an acidic sodium hydroxide solution used in the preparation of fuel cell catalyst comprising a noble metal and metal oxide. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05.II.A). A desire for skilled artisans to provide a solution capable of removing the impurities and reducing the metal/metal oxide content on a surface thereof provides motivation in optimizing the pH.
Regarding Claim 6, as applied to Claim 1, Tabata et al. is modified by Arihara et al. and Ito et al. wherein the proportions of the second metal and/or of the second starting material on the surface of the catalytically active nanoparticles are reduced, while the second metal/starting material is provided on an interior of the catalyst particles.
Tabata et al. does not teach wherein after the thermal treatment of the intermediate material, following the production of the catalytically active nanoparticles, and while proportions of the second metal and/or of the second starting material on the surface of the catalytically active nanoparticles are reduced, the proportion of the second metal and/or of the second starting material is maintained at substantially constant levels in an interior of the catalytically active nanoparticles (47).
In the same field of endeavor, Hou et al. teaches a noble metal/metal oxide catalyst in which an acidic medium (sodium hydroxide/ethylene glycol solution) was added dropwise to a pH of 10. The final product was obtained after heat treatment (vacuum drying) ([0064]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the method of Tabata et al. to include thermal treatment of the intermediate material to provide a dried a product as taught by Hou et al. "Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)." Further, a skilled artisan would arrive at the claimed invention wherein the proportion of the second metal (metal oxide) and/or the second starting material is maintained at constant levels based on routine optimization. Tabata et al. recognizes that the metal oxide (second metal) has high conductivity and excellent electrochemical properties; one of ordinary skill in the art would have been motivated to maintain the second metal in an interior of the catalyst materials to also maintain said beneficial effects (see MPEP 2144.05.II.A).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (U.S. Pat. No. 20190237772 A1) in view of Arihara et al. (U.S. Pat. No. 20160013494 A1) and Ito et al. (EP Pat. No. 3020476A1 equivalent to U.S. Pat. No. 20160149225 A1), and further in view of Kwon et al. (U.S. Pat. No. 20100248076 A1).
Regarding Claim 11, as applied to Claim 1, Tabata et al. teaches wherein the second starting material includes metal oxide nanoparticles from a compound between a second metal and oxygen (titanium oxide).
Tabata et al. does not teach the second starting material as a solution with the metal oxide nanoparticles and/or as a solution with the second metal, and/or as a solution configured as a complex with the second metal.
In the same field of endeavor, Kwon et al. teaches analogous art of a catalyst for a fuel cell in which the metal oxide precursor is dissolved in a solution ([0015]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Tabata et al. wherein the second starting material is a solution as taught by Kwon et al. One of ordinary skill in the art would have been motivated to perform the described modification to maximize dispersion and exposed surface area of the nanoparticles, exposing the active sites of the nanoparticles leading to high catalytic activity. Further, "applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)."
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In the same field of endeavor, Martinez et al. (U.S. Pat. No. 20190036128 A1) teaches analogous art of a catalyst material for a fuel cell comprising a first metal alloyed with a second metal and a production method thereof ([0001]).
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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