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Claims 4-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 6, 2026.
Applicant's election with traverse of Group I (claim 1-3) in the reply filed on August 6, 2026 is acknowledged. The traversal is on the ground(s) that that “Mayousse” (cited in the restriction requirement and provided by Applicant on and IDS) was misunderstood as the characterization is of Ir-Ru oxides which have a lattice parameter of 4.500 Å, which is below the claimed threshold.
This is not found persuasive because the recitation of Ir-xRuyTazO2 is within Mayousse and thus can be relied upon. Additionally, regarding the lattice constant, similar mateirals (i.e. Ir-Ru-oxides and Ir-Ru-Ta-oxides) have similar lattice parameters, and thus should be approximately the same. In fact the teaching of Mayousse et al., teaches that the placement of material within the lattice increases the lattice parameter, and thus Ir-Ru-Ta-oxides should have a lattice larger than 4.500 Å (placement of Sn, instead of Ta) (fig. 3). At the very least, it has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I). Thus, lack of unity is present.
Additionally, “Performance of a PEM water electrolysis cell using IrxRuyTazO2 electrocatalysts for the oxygen evolution electrode” (Marshall et al.) (relied upon below; see the rejection to claim 1), further shows lack of unity, as it shows the claimed material, and confirms that the lattice a has close values to similar oxides, yielding values close to the claimed value (such that lack of unity is still present) (see section 3.2 on p 2322).
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed December 1, 2023 and June 11, 2026 have been placed in the application file and the information referred to therein has been considered as to the merits.
Drawings
The drawings received December 1, 2023 are acceptable.
Claim Objections
Claim 2 is objected to because of the following informalities: having “in an amount in the range of and including 1 to 15 atomic %” (line 2); this language is awkward. Appropriate correction is required.
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 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the rutile crystal structure" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Since claims 2-3 are dependent upon claim 1, they are rejected for the same reason.
Claim 2 recites the limitation "the range" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Performance of a PEM water electrolysis cell using IrxRuyTazO2 electrocatalysts for the oxygen evolution electrode” (Marshall et al.).
As to claim 1, Marshall et al. each an oxygen evolution reaction catalyst, wherein the oxygen evolution reaction catalyst is an oxide material comprising iridium, tantalum and ruthenium (title):
wherein the oxygen evolution catalyst comprises a crystalline oxide phase having the rutile crystal structure (section 3.2 on p 2322);
wherein the crystalline oxide phase has a lattice parameter a is close to those for IrO-2 or RuO2 (0.4498 nm (4.498 Å) and 0.4491 nm (4.491 Å), respectively) (section 3.2 on p 2322).
Marshall et al do not teach that the lattice a parameter is greater than 4.510 Å.
However, the values set forth above (and values close to those) are close to that of the claimed invention. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I).
As to claim 2, Marshall et al. teaches of IrxRuyTazO2 wherein (x + y + z = 1) (section 2.1 on p 2321). Thus, Marshall et al. overlaps that ruthenium is present in an amount in the range of and including 1 to 15 atomic % based on the total atomic percent of iridium, tantalum and ruthenium species in the oxygen evolution reaction catalyst. “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” See MPEP §2144.05(I). (Note: An alternative rejection is set forth below, demarked by *).
*Alternatively, claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall et al., as applied to claim 1 above, further in view of US 2019/0330059 (Takanabe et al.).
As to claim 2, Marshall et al. teaches of IrxRuyTazO2 wherein (x + y + z = 1) (section2.1 on p 2321), wherein at the very least Ru at 0.2 mol % (20 atomic % based on the total atomic percent of iridium, tantalum, and ruthenium) is exemplified (fig. 2).
In this alternative rejection, this teaching does not render obvious the claimed amount of ruthenium (1-15 atomic %).
However, Takanabe et al. teach the use of Ru have high costs and limited availability (para 0031). Therefore, the motivation for using as little Ru as possible is to reduce cost of the catalyst. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to minimize the amount of Ru used is minimized (i.e. 1-15 atomic %) in order to reduce cost of the catalyst.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall et al., as applied to claim 1 above, in view of US 2017/0244109 (O’Malley et al.).
As to claim 3, Marshall et al. teach of wanting an optimum regarding active surface area (abs).
However, Marshall et al. do not teach the oxygen evolution reaction catalyst has a BET surface area of at least 30 m2/g.
However, O’Malley et al, in a similar filed of invention (iridium oxide for oxygen evolution reaction catalyst) (abs), teaches the catalyst has a BET surface area of ≥ 50 m2/g facilitates the oxygen evolution reaction (para 0018-0019). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have an oxygen evolution reaction catalyst with a BET surface area of ≥ 50 m2/g facilitates the oxygen evolution reaction.
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 and 3 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/566372 in view of Marshall et al.
The pertinent copending claim is provided below.
PNG
media_image1.png
254
804
media_image1.png
Greyscale
Copending claim 1 reads on currently pending claims 1 and 3, the only difference being the presence of ruthenium. However, Marshall et al. teaches that the addition of Ru (with Ir and Ta in an oxide) allows for more activity (introduction on p 2320, right column).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Note: No other prior art is considered pertinent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EUGENIA WANG/Primary Examiner, Art Unit 1759
Prosecution Insights