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 .
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Cintora-Juarez et al. (Applicant provided non-patent literature titled “The promoting role of tungsten oxides in the anodic oxidation of methanol on platinum-based catalysts) and with or without Ming et al. (Applicant provided translation of CN 103657648A) and Burton et al. (US 20170033369).
Regarding claim 1, Cintora-Juarez et al. discloses an electrode catalyst for fuel cell anodes (carbon supported Pt-WO3 catalysts as anode catalyst in a direct methanol fuel cell device (DMFC), Abstract). Insomuch as the DMFC disclosed by Cintora-Juarez et al. (Abstract) is not a hydrogen fuel cell, "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation" (See MPEP 2111.02).
Cintora-Juarez et al. discloses having Pt particles and WO3 particles supported on a carbon carrier (“carbon-supported”, Abstract), wherein the WO3 particles comprise a crystal structure of a monoclinic system (Abstract).
Assuming, arguendo, that the hydrogen fuel cell was a limitation and positively recited in the claim (which is not conceded); Ming et al. discloses a carbon-supported (XC-72 as carrier, para. [0002], XC-72 is understood to be carbon black) having Pt particles and WO3 particles (para. [0002]) used for an anode catalyst in a hydrogen fuel cell (proton exchange membrane fuel cell, para. [0002], where the fuel cell is a hydrogen fuel cell where hydrogen undergoes oxidation, para. [0049]).
Likewise, Burton et al. also teaches a hydrogen fuel cell (PEMFC, pars. [0003]-[0004] and [0077]) using hydrogen as a fuel (pars. [0011] and [0030]) where platinum is used as a catalyst (para. [0030]).
Therefore, 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 teachings of Cintora-Juarez et al. wherein the catalyst material disclosed by Cintora-Juarez et al. is used in a hydrogen fuel cell.
The person of ordinary skill in the art would have found it obvious to use a carbon supported Pt/WO3 catalyst, such as the catalyst disclosed by Cintora-Juarez et al. (Cintora-Juarez et al., the carbon supported Pt/WO3 catalyst, Abstract), in a hydrogen fuel cell in order to provide for enhanced electrocatalytic activity due to the tungsten oxide and platinum (Ming et al., para. [0005]) or otherwise to achieve the predictable result of providing a Pt catalyst for hydrogen oxidation.
Regarding claim 2, Cintora-Juarez et al. discloses wherein a ratio (WO3/Pt) of a molar amount of WO3 relative to a molar amount of Pt in the electrode catalyst is 0.05 or greater and 5.0 or less (the inverse ratio, page 263, Table 1, 4th column, corresponds to 0.25-1.0).
Regarding claim 3, Cintora-Juarez et al. discloses wherein a ratio (WO3/Pt) of a molar amount of WO3 relative to a molar amount of Pt in the electrode catalyst is 0.1 or greater and 3.0 or less (the inverse ratio, page 263, Table 1, 4th column, corresponds to 0.25-1.0).
Claims 4-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cintora-Juarez et al. (Applicant provided non-patent literature titled “The promoting role of tungsten oxides in the anodic oxidation of methanol on platinum-based catalysts) and with or without Ming et al. (Applicant provided translation of CN 103657648A) and Burton et al. (US 20170033369) as applied to claim 1 or claim 2 above and in further view of Choi et al. (US 20090042089).
Regarding claims 4 and 9, Cintora-Juarez et al. is silent as to an average particle size of the WO3 particles.
However, Choi et al. discloses a carbon supported catalyst (para. [0010]) having Pt (para. [0055]) and which may include WO3 (para. [0044]) and Choi et al. further teaches wherein an average particle size of the WO3 particles is 0.1 nm or more and 5.0 nm or less in that Choi et al. teaches an overlapping range (para. [0047]).
Therefore, 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 teachings of Cintora-Juarez et al. wherein an average particle size of the WO3 particles is 0.1 nm or more and 5.0 nm or less in order to provide for adequate reaction area while being supported in a well-distributed state (Choi et al., para. [0047]).
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the proportions taught by Choi et al. overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, 65 USPQ2d 1379 (CAFC 2003) and MPEP 2144.05.
Further, the examiner has found that the specification contains no disclosure of any unexpected results arising therefrom, and that as such the parameters are arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, because where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen parameters/variables are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitation of the WO3 particle size, it would have been obvious to one of ordinary skill in the art at the time of invention to have provided the catalyst of Cintora-Juarez et al. with the dimensions recited in the instant claims, which are now considered at most an optimum choice, lacking any disclosed criticality.
Regarding claims 5 and 10-11, Cintora-Juarez et al. reasonably discloses wherein an average particle size of the Pt particles is 2.0 nm or more and 10.0 nm or less (the mean particle size falls within the claimed range, page 264, Table 2, 2nd and 3rd columns).
Otherwise, Choi et al. discloses a carbon supported catalyst (para. [0010]) having Pt (para. [0055]) and which may include WO3 (para. [0044]) and Choi et al. further teaches an average particle size of the Pt particles is 2.0 nm or more and 10.0 nm or less (para. [0041]).
Therefore, 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 teachings of Cintora-Juarez et al. wherein an average particle size of the Pt particles is 2.0 nm or more and 10.0 nm or less.
The person of ordinary skill in the art would have found it obvious to use the claimed particle size in order to prevent a decrease in performance and deterioration (Choi et al., para. [0041]).
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the proportions taught by Choi et al. overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, supra.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cintora-Juarez et al. (Applicant provided non-patent literature titled “The promoting role of tungsten oxides in the anodic oxidation of methanol on platinum-based catalysts) as applied to claim 1 above and with or without Ming et al. (Applicant provided translation of CN 103657648A) and Burton et al. (US 20170033369) as applied to claim 1 above and with or without Marucchi-Soos et al. (US 5922488).
Regarding claim 12, Cintora-Juarez et al. discloses a method for manufacturing the electrode catalyst for fuel cell anodes according to claim 1 (see comments for claim 1 above), comprising
supporting Pt particles on a carbon carrier to obtain a Pt-supporting carbon carrier (Abstract). Insomuch as the DMFC disclosed by Cintora-Juarez et al. (Abstract) is not a hydrogen fuel cell, the purpose or intended use recited in the preamble would not result in a manipulative difference in the process. See MPEP 2111.02.
Insomuch as Cintora-Juarez et al. does not explicitly disclose supporting a WO3 precursor on the Pt-supporting carbon carrier, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Further, the selection of any order of mixing ingredients is prima facie obvious. See In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Thus, it would have been obvious to modify Cintora-Juarez et al. by adding the Pt before WO3 wherein the method includes supporting a WO3 precursor on the Pt-supporting carbon carrier to thereby achieve the predictable result of producing an electrode catalyst having Pt and WO3 particles supported on a carbon carrier (Cintora-Juarez et al., Abstract).
Cintora-Juarez et al. discloses obtaining an unbaked catalyst (the components are combined in a reflux system which is filtered and washed before heat treatment [baking], page 262, Catalysis Synthesis section).
Cintora-Juarez et al. further discloses baking the unbaked catalyst (heat treated, page 262, Catalysis Synthesis section) in an inert atmosphere (nitrogen, page 262, Catalysis Synthesis section) to convert the WO3 precursor to WO3 particles comprising a crystal structure of a monoclinic system (Abstract, page 266, Fig. 4 caption) to obtain a baked catalyst (heat treated).
Cintora-Juarez et al. does not explicitly disclose a temperature of higher than 400° C and 650° C or lower. However, the person of ordinary skill in the art would have found it obvious to optimize the baking temperature, such as by using a temperature above 400° C, in order to remove solvent residues, reduce resistivity, and promote the generation of oxygen vacancies (page 262, Catalysis Synthesis section) as: "[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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, Cintora-Juarez et al. explicitly discloses 400° C (page 262, Catalysis Synthesis section) which is so close to the claimed range that the baked catalyst would be expected to have the same properties resulting from baking and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
Otherwise, Marucchi-Soos et al. discloses a catalyst for a hydrogen (col. 4, line 49) fuel cell (Abstract) having Pt and WO3 particles supported on a carbon carrier (col. 3, lines 23-29) and Marucchi-Soos et al. teaches supporting Pt particles on a carbon carrier (col. 4, Protocol I, step 1) and then supporting WO3 particles on the Pt-supporting carbon carrier.
Therefore, 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 teachings of Cintora-Juarez et al. wherein the method includes a step of supporting WO3 particles on the Pt-supporting carbon carrier.
The person of ordinary skill in the art would have found it obvious to first support Pt particles on a carbon carrier followed by supporting WO3 particles on the Pt-supporting carbon carrier to achieve the equivalent result of providing a carbon-supported Pt-WO3 catalyst.
Allowable Subject Matter
Claims 13-15 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record discloses electrode catalysts having Pt particles and WO3 particles supported on a carbon-carrier wherein the WO3 particles comprise a crystal structure of a monoclinic system.
However, the prior art of record did not reasonably disclose, teach or otherwise suggest a method for manufacturing an electrode catalyst having Pt particles and WO3 particles supported on a carbon-carrier wherein the WO3 particles comprise a crystal structure of a monoclinic system and wherein the method comprises supporting Pt particles on a carbon carrier to obtain a Pt-supporting carbon carrier and supporting WO3 particles on the Pt-supporting carbon carrier to obtain an unbaked catalyst and then baking the unbaked catalyst at a temperature greater than 400° C and less than or equal to 650°C in an inert atmosphere to obtain a baked catalyst which is then brought into contact with an acid to undergo an acid treatment.
Likewise, the prior art of record did not reasonably disclose, teach or otherwise suggest a method for manufacturing an electrode catalyst having Pt particles and WO3 particles supported on a carbon-carrier wherein the WO3 particles comprise a crystal structure of a monoclinic system and wherein the method comprises supporting Pt particles on a carbon carrier to obtain a Pt-supporting carbon carrier and supporting WO3 particles on the Pt-supporting carbon carrier to obtain an unbaked catalyst and then baking the unbaked catalyst at a temperature of 450° C - 650° C in an inert atmosphere.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK M MCCARTY whose telephone number is (571)272-4398. The examiner can normally be reached Monday - Thursday 9:00 AM - 5:00 PM.
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/P.M.M./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
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