DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-15 are pending in the instant application.
Priority
This application is a U.S. National Stage of International Application No. PCT/KR2022/006941 filed on May 13, 2022, claiming foreign priority based on claims the benefit of Korean Patent Application No. 10-2021-0064669 filed on May 20, 2021.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 11/17/2023, 09/12/2024, 04/10/2025, 08/14/2025, and 10/28/2025 have been considered. Please refer to Applicants’ copies of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicants’ election without traverse of Group I (i.e. claims 1-9) in the reply filed by Applicant’s representative Sunhee Lee on 08/21/2026 is acknowledged.
Status of the Claims
Claims 10-15 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) due to the restriction requirement. Claims 1-9 are under examination on the merits.
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 1-9 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.
Specifically, claim 1 contains a term “polydopamine (PDA)”, which is not defined in Applicant’s disclosure. By definition, dopamine is a chemical compound of 3,4-dihydroxyphenethylamine
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. Applicant’s specification [0073-0074] discloses a method for preparing dopamine by reacting tris aminomethane with 0.5 M HCl solution. However, it seems that the specification does not disclose a method of preparing polydopamine (PDA), nor defines the term “polydopamine (PDA)”. Therefore, claim 1 is indefinite. Claims 2-9 depending on claim 1 are also rejected.
The term “polydopamine (PDA)” is interpreted as a dopamine prepared according to the process of Applicant’s specification [0073-0074] and the process disclosed in the `802 publication [0062-0063].
In addition, claim 3 is rejected for containing the phrase “wherein: the first metal or the second metal is each independently selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu” because the phrase is subject to a different interpretations: 1) the first metal or the second metal is selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu”; and 2) the first metal and the second metal are each independently selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu. Therefore, claim 3 is indefinite.
Claim 3 is interpreted according to definition 2) the first metal and the second metal are each independently selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu, in light of Applicant’s specification.
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 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.
Claims 1-2, 4-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2015/255802 A1 (“the `802 publication”) to Kim Hansung.
Applicant’s claim 1 is drawn to a method for preparing a reduction catalyst for water electrolysis, the method comprising the steps of: forming a first metal-carbon catalyst precursor in which the first metal is supported on a carbon support; coating the first metal-carbon catalyst precursor with polydopamine (PDA); further supporting a second metal on the coated first metal-carbon catalyst precursor to form a first metal-second metal-carbon precursor; and heat-treating the first metal-second metal-carbon precursor to obtain a reduction catalyst for water electrolysis containing a carbon-supported first metal-second metal alloy, wherein the first metal and the second metal are mutually different transition metals.
The `802 publication (FIG. 1) discloses a method for preparing an alloy catalyst for fuel cells having excellent catalytic activity and high durability, illustrated as follows:
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. Specifically, the `802 publication [0058-0066] discloses a preparation method of Example 1 comprising forming a first metal-carbon catalyst precursor (PtCl4) in which the first metal (platinum) is supported on a carbon support (carbon nanocage_CNC); coating the first metal-carbon catalyst precursor with polydopamine (dopamine_tris-buffer solution); further supporting a second metal (nickel) on the coated first metal-carbon catalyst precursor to form a first metal-second metal-carbon precursor (Pt-Ni/CNC); and heat-treating the first metal-second metal-carbon precursor at 900 °C for 1 hour under 90% Ar (inert gas) and 10% H2 (reducing gas), to obtain a reduction catalyst.
In terms of the intend-to-use of the catalyst for water electrolysis according to claim 1, the `802 publication teaches an alloy reduction catalyst heat-treated by H2 is used for fuel cells having excellent catalytic activity, which reads on the catalyst for water electrolysis. In addition, [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017). Therefore, the `802 publication anticipates claims 1, 5-7, and 9.
In terms of claim 2, wherein the molar ratio of the first metal to the second metal in the first metal- second metal alloy contained in the reduction catalyst for water electrolysis is 7:3 to 3:7, Example 1 of the `802 publication [0058-0066] discloses a method of preparing a reduction catalyst using 150 mg of the first metal PtCl4 (0.445 mmol) and 64 mg of the second metal Ni(NO3)2*6H2O (0.220 mmol). The molar ratio of the first metal to the second metal in the first metal- second metal alloy contained in the reduction catalyst for water electrolysis is 2:1, which reads on the range of 7:3 to 3:7.
In terms of claim 4, wherein a supported amount of the first metal or the second metal is 20 wt% or more with respect to the weight of the carbon support, Example 1 of the `802 publication [0058-0066] discloses a method of preparing a reduction catalyst using 110 mg of CNC (carbon support),150 mg of the first metal PtCl4 (0.445 mmol) and 64 mg of the second metal Ni(NO3)2*6H2O (0.220 mmol). The supported amount of the first metal (Pt=195) is 79%, and the second metal (Ni=58.7) is 20.2 wt% with respect to the weight of the carbon support.
In terms of claim 8, wherein the mixed atmosphere of hydrogen and inert gas is one in which hydrogen and inert gas are mixed at a volume ratio of 10:30 to 50.
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 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over the `802 publication in view of Wang et al., ACS Nano, (2016), v.10, p.10397-10403.
The `802 publication (FIG. 1) discloses a method for preparing an alloy catalyst for fuel cells having excellent catalytic activity and high durability. Specifically, the `802 publication [0058-0066] discloses a preparation method of Example 1 comprising forming a first metal-carbon catalyst precursor (PtCl4) in which the first metal (platinum) is supported on a carbon support (carbon nanocage_CNC); coating the first metal-carbon catalyst precursor with polydopamine (dopamine_tris-buffer solution); further supporting a second metal (nickel) on the coated first metal-carbon catalyst precursor to form a first metal-second metal-carbon precursor (Pt-Ni/CNC); and heat-treating the first metal-second metal-carbon precursor at 900 °C for 1 hour under 90% Ar (inert gas) and 10% H2 (reducing gas), to obtain a reduction catalyst.
In terms of claim 3, wherein the first metal or the second metal is each independently selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu, the `802 publication does not teach the first metal or the second metal is each independently selected from the group consisting of Ni, Co, Mo, Fe, Sn, and Cu. Instead, the `802 publication teaches the first metal is Pt, and the second metal is Ni.
However, the difference is further taught and/or suggested by Wang et al. Wang et al. teaches a Ni-Mo nano-catalyst on N-doped graphite nanotubes is used for highly efficient electrochemical hydrogen evolution in an acid, wherein the first metal is Ni, and the second metal is Mo, see “Preparation of the NiMo-NGT and CoMo-NGTs” at p.10401.
In terms of claim 8, wherein the mixed atmosphere of hydrogen and inert gas is one in which hydrogen and inert gas are mixed at a volume ratio of 10:30 to 50, the `802 publication does not teach the mixed atmosphere of hydrogen and inert gas is one in which hydrogen and inert gas are mixed at a volume ratio of 10:30 to 50. Instead, the `802 publication [0066] teaches the mixed atmosphere of hydrogen and inert gas is one in which hydrogen and inert gas are mixed at a volume ratio of 10:90.
However, the difference is further taught and/or suggested by Wang et al. Wang et al. teaches preparing the Ni-Mo nano-catalyst on N-doped graphite nanotubes at 600 C for 2 hours in a 5:2 Ar/H2 (v/v) atmosphere, which is in hydrogen and inert gas are mixed at a volume ratio of 10:25. A volume ratio of H2/Ar (v/v)=10:25 is very close to the claimed range of the volume ratio of H2/Ar (v/v)=10:30 to 50, which would have been an obvious variation. For one skilled in the art, optimization of the ratio of the mixing gas H2/Ar is a routine optimization, not an inventive step. Therefore, the `802 publication in view of Wang et al. would have rendered claim 8 obvious.
Conclusions
Claims 1-9 are rejected.
Claims 10-15 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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