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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 8-9, and 18 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.
Regarding claim 8, the claim reads “…composition of claim 1 comprising from 1 to 50 phr, relative to the carbonaceous compound” it is unclear what is being compared, the instant specification states is can be the carbonaceous compound, the membrane ionomer, or a combination thereof [0030]. For the purposes of this action this is being interpreted as a mass ratio of the carbonaceous compound.
Regarding claim 9, the claim reads “…composition of claim 1 comprising from 5 to 34 phr, relative to the carbonaceous compound” it is unclear what is being compared, the instant specification states is can be the carbonaceous compound, the membrane ionomer, or a combination thereof [0030]. For the purposes of this action this is being interpreted as a mass ratio of the carbonaceous compound.
Regarding claim 18, the claim reads “…composition of claim 1, wherein the catalyst comprises an alloy of any of the foregoing” it is unclear what “any of the foregoing” refers to. For the purposes of this action this is being interpreted as an alloy of any of the metals included in claims 13 – 17.
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.
Claim(s) 1, 3-4, 10, 12-18, and 21-23 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim et al (US20240030460A1, hereinafter Kim).
Regarding claim 1, Kim discloses a mixture (Kim, Abstract, “…first composite…”) of carbonaceous compound (Kim, [0087], “the support may be a carbon-based support…”) ion conducting polymer (Kim, claim 1, “…a first ionomer…”) and a reversible organic inhibitor (Kim, [0079], “…the organic peroxide decomposition accelerator may be one or more selected from…protocatechuic acid…”) that is regenerated by electrochemical reduction and that has a reversible oxidation/reduction potential on a carbon electrode in the range of 0.5 to 1.4V vs RHE. The instant specification describes in paragraph [0055] “Examples of currently known reversible organic inhibitors meeting the foregoing criteria include many hydroqui- nones/quinones, such as, for example, potassium 1,4-hydroqui- nonesulfonate; methyl 2,5-dihydroxybenzoate; 2,5-dihydroxyben- zoic acid; 2,5-dihydroxybenzoic acid; 2,5-dimethoxybenzonitrile; 3,6-dihydroxyphthalonitrile; 3,4-dihydroxybenzoic acid”. Protocatechuic acid’s preferred IUPAC name is 3,4-dihydroxybenzoic acid. And since 3,4-dihydroxybenzoic acid is used as an example in the specification it would necessarily have the same reversibility and oxidation/reduction potential.
Regarding claim 3, Kim discloses all of claim 1 as shown above. Kim also discloses the ionomer comprises a polymer comprising sulfonic acid moieties (Kim, [0056] “…Examples of the fluorine-based ionomer include...(perfluorosulfonic acid)…”).
Regarding claim 4, Kim discloses all of claim 1 as shown above. Kim also discloses the ionomer comprises a perflourosulfonic acid polymer (Kim, [0056] “…Examples of the fluorine-based ionomer include...(perfluorosulfonic acid)…”).
Regarding claim 10, Kim discloses all of claim 1 as shown above. Kim also discloses the composition further comprising a catalyst (Kim, Abstract, “…the first composite contains a first catalyst…”)
Regarding claim 12, Kim discloses all of claim 1 as shown above. Kim also discloses the composition further comprising a solvent (Kim, [0125], “…mixing the mixture of the step (S4) with a solvent.”).
Regarding claim 13, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises a noble metal (Kim, [0082], “…the oxygen evolution reaction catalyst may contain an active substance of the following platinum-based metal…”).
Regarding claim 14, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises platinum (Kim, [0082], “…the oxygen evolution reaction catalyst may contain an active substance of the following platinum-based metal…”).
Regarding claim 15, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises a transitional metal (Kim, [0085], “…as the non-platinum metal, one or more selected from the group consisting of palladium (Pd)…as the non-platinum alloy, Ir-Fe”).
Regarding claim 16, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises iron (Kim, [0085], “…as the non-platinum metal, one or more selected from the group consisting of palladium (Pd)…as the non-platinum alloy, Ir-Fe”).
Regarding claim 17, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises nickel (Kim, [0083], “…the M may be any one or more selected from the group … , nickel (Ni), …”)
Regarding claim 18, Kim discloses all of claim 1 as shown above. Kim also discloses wherein the catalyst comprises an alloy of any of the foregoing (Kim, [0085], “…as the non-platinum metal, one or more selected from the group consisting of palladium (Pd)…as the non-platinum alloy, Ir-Fe”).
Regarding claim 21, Kim discloses all of claim 1 as shown above. Kim also discloses a composition with a reversible organic inhibitor having a reversible oxidation/reduction potential on a carbon electrode in the range of 0.9 to 1.2 V vs RHE (Kim, [0079], “…the organic peroxide decomposition accelerator may be one or more selected from…protocatechuic acid…”). The instant specification paragraph [0055] lists this compound as one fulfilling that criterion.
Regarding claim 22, Kim discloses all of claim 1 as shown above. Kim also discloses the inhibitor comprising a hydroquinone or a quinone (Kim, [0079], “…the organic peroxide decomposition accelerator may be one or more selected from…protocatechuic acid…”).. The instant specification describes in paragraph [0055] “Examples of currently known reversible organic inhibitors meeting the foregoing criteria include many hydroqui- nones/quinones, such as, for example, potassium 1,4-hydroqui- nonesulfonate; methyl 2,5-dihydroxybenzoate; 2,5-dihydroxyben- zoic acid; 2,5-dihydroxybenzoic acid; 2,5-dimethoxybenzonitrile; 3,6-dihydroxyphthalonitrile; 3,4-dihydroxybenzoic acid”. Protocatechuic acid’s preferred IUPAC name is 3,4-dihydroxybenzoic acid. And since 3,4-dihydroxybenzoic acid is used as an example in the specification it would necessarily be a hydroquinone/quinone as defined by the applicant.
Regarding claim 23, Kim discloses all of claim 1 as shown above. Kim also discloses the inhibitor comprising 3,4-dihydroxybenzoic acid. (Kim, [0079], “…the organic peroxide decomposition accelerator may be one or more selected from…protocatechuic acid…”). As described earlier in claim 1 protocatechuic acid reads on 3,4-dihydoxybenzoic acid.
Claim(s) 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al (JP2004247155A, hereinafter Endo).
Regarding claim 29, Endo discloses membrane electrode comprising an electrolyte membrane (Endo, [0009]) and a catalyst layer (Endo, [0009]), this catalyst layer can include a carbon material (Endo, [0019]) and a quinone compound (Endo, [0019]) which acts as a reversible organic inhibitor.
Claim(s) 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chaen et al (EP3075767A1, hereinafter Chaen).
Regarding claim 30, Chaen discloses a porous body containing PTFE (a binder) (Chaen, [0180]) and a number of carbon containing compounds one of which is carbon nanotubes (carbon substrate) (Chaen, [0180]) and a radical scavenger added during polymerization preferably hydroquinone (Chaen, [0129]).
Claim(s) 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (EP2654114A1).
Regarding claim 33, Ito discloses that generation of hydroxy radicals occurs in an environment where oxygen and platinum exist (Ito, [0013]), platinum being the catalyst supported by carbon (Ito, [0023]). With the presence of oxygen compounds start to oxidize and degrade (Ito, [0013]). Ito disloses that an antioxidant can be present to inactive active oxygen like in hydroxy radicals to prevent this (Ito, [0015]). An this occurs as power is generated from the fuel cell (Ito, [0040]).
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.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US20240030460A1, hereinafter Kim) in view of Shin et al (Sung-Hee Shin, Abdul Kodir, Dongwon Shin, Seok-Hee Park, Byungchan Bae, Perfluorinated composite membranes with organic antioxidants for chemically durable fuel cells, Electrochimica Acta, Volume 298, 2019, Pages 901-909, hereinafter Shin)
Regarding claim 5, Kim discloses all of claim 1 as shown above. Kim does not disclose the mol% of reversible organic inhibitor relative to the sulfonic acid moieties being 0.2 to 25 mol%. Shin discloses a perfluorinated composite membrane incorporating an organic antioxidant to improve the chemical durability of the PEMFC (Shin, Abstract). Shin also discloses that the content of the organic antioxidant is 2.5 mol% relative to the sulfonic acid group content (Shin, Pg.902, right column, first paragraph).
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to use the mixture of Kim including organic inhibitor and ionomer with the mol% of Shin to improve the chemical durability of the resultant PEMFC.
The value of 2.5 mol% now present in modified Kim reads upon the claimed range of 0.2 to 25 mol%.
Regarding claim 6, modified Kim discloses all of claim 1 as shown above. Modified Kim also discloses the mol% of reversible organic inhibitor relative to the sulfonic acid moieties being 0.2 to 10 mol% (Shin, Pg.902, right column, first paragraph).
Claim(s) 8-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US20240030460A1, hereinafter Kim) in view of Chaen et al (EP3075767A1, hereinafter Chaen).
Regarding claim 8, Kim discloses all of claim 1 as shown above. Kim does not disclose the composition comprising from 1 to 50 ph relative to the carbonaceous compound. Chaen discloses a porous body with an additive comprising carbon containing compounds (Chaen, [0180]). Chaen further discloses that this porous body preferably contains 40 mass % or less of the additive, a range of 0 – 40 % (Chaen, [0181]). 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).
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to use the disclosed mass ratio of Chaen with the composition comprising a carbonaceous compound of Kim.
Regarding claim 9, modified Kim discloses all of claim 1 as shown above. Modified Kim also discloses the composition comprising from 5 to 34 phr relative to the carbonaceous compound (Chaen, [0181]).
Regarding claim 11¸modified Kim discloses all of claim 1 as shown above. Modified Kim does not disclose the composition further comprising a non-ionically conductive material. Chaen discloses using a stabilizer for the aqueous dispersion during polymerization of the composition (Chaen, [0106]). Chaen discloses that this stabilizer may preferably be paraffin wax (Chaen, [0144]) in any form. Paraffin wax as just a hydrocarbon has no free ions, mobile charge carriers, or permanent dipole it is inherently non-ionically conductive.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to add the paraffin wax of Chaen to the polymer composition of modified Zimmerman to help disperse the composition during polymerization.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US20240030460A1, hereinafter Kim) in view of Hasna et al (Hasna PUTHEN PEEDIYAKKAL, Jie YU, Hirokazu MUNAKATA, Kiyoshi KANAMURA, Highly Durable Non-Platinum Catalyst for Protic Ionic Liquid Based Intermediate Temperature PEFCs, Electrochemistry, 2019, Volume 87, Issue 1, Pages 35-46, hereinafter Hasna)
Regarding claim 19, Kim discloses all of claim 1 as shown above. Kimdoes not disclose the catalyst comprising a non-metallic catalyst. Hasna discloses nitrogen doped graphene (NG) as a catalyst for PEFCs (Hasna, Abstract). Hasna discloses that NG shows a 14% drop in oxygen reduction current compared to a 56% drop in a more common Pt/C catalyst over the course of cycling (Hasna, Abstract).
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to substitute the metal of Kim with the non-metal NG catalyst of Hasna because the substituted component was known, their functions were known in the art, one of ordinary skill in the art could have substituted one known component for another and that the results of the substitution would have been predictable. See MPEP 2143 I (B).
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chaen et al (EP3075767A1, hereinafter Chaen) in view of Endo et al (JP2004247155A, hereinafter Endo).
Regarding claim 31, Chaen discloses a porous body containing PTFE (a binder) (Chaen, [0180]) and a number of carbon containing compounds one of which is carbon nanotubes (carbon substrate) (Chaen, [0180]) and a radical scavenger added during polymerization preferably hydroquinone (Chaen, [0129]). Chaen also disclose a catalyst layer (Chaen, [0297]). Chaen does not disclose that this catalyst layer may necessarily comprise a carbonaceous compound. Endo discloses a catalyst layer comprising a catalyst on a carbon material (Endo, [0019]).
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to substitute the catalyst layer of Chaen with the carbonaceous compound containing catalyst layer of Endo because the substituted component was known, their functions were known in the art, one of ordinary skill in the art could have substituted one known component for another and that the results of the substitution would have been predictable. See MPEP 2143 I (B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA P BISTANY-RIEBMAN whose telephone number is (571)272-9591. The examiner can normally be reached Mon-Fri. 7:30am-5pm.
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/JOSHUA P BISTANY-RIEBMAN/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
