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 .
This is in response to the Amendment dated December 15, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 3, 5, 7, 9-10 (species) and 14-20 (apparatus) drawn to an invention nonelected with traverse in the reply filed on August 13, 2025.
Claim Rejections - 35 USC § 112
Claim 4 has been 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.
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 102/103
I. Claim(s) 1, 4, 6 and 11-12 have been rejected under 35 U.S.C. 102(a)(1) as anticipated by
or, in the alternative, under 35 U.S.C. 103 as obvious over Soloveichik (US Patent Application
Publication No. 2008/0128275 A1).
The rejection of claims 1, 4, 6 and 11-12 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Soloveichik has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 1-2, 4, 8 and 11-13 have been rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 115874193 (‘193).
The rejection of claims 1-2, 4, 8 and 11-13 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 115874193 (‘193) has been withdrawn in view of Applicant’s amendment.
Claim Rejections -35 USC § 103
Claim(s) 6 has been rejected under 35 U.S.C. 103 as being unpatentable over CN 115874193 (‘193) as applied to claims 1-2, 4, 8 and 11-13 above, and further in view of KR 20180009041 (‘041).
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over CN 115874193 (‘193) as applied to claims 1-2, 4, 8 and 11-13 above, and further in view of KR 20180009041 (‘041) has been withdrawn in view of Applicant’s amendment.
Continued Response
Claim Rejections - 35 USC § 102/103
Claim(s) 1, 4 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Manabe (US Patent Application Publication No. 2018/0334751 A1).
Regarding claim 1, Manabe teaches a method for depositing electrocatalysts (= wherein in the electrolysis step, a metal component in the catalyst activation material is deposited on a surface of the cathode) [page 3, [0045]], the method comprising:
(A) introducing into an alkaline electrolyzer an electrocatalyst precursor, wherein the alkaline electrolyzer has an electrolyte comprising OH- and one or more electrodes, or
(B) mixing an electrocatalyst precursor (= a step of adding a catalyst activation material formed of a metal salt soluble in the electrolytic solution prior to starting of the electrolysis step) [page 3, [0044]] with an electrolyte comprising OH- (= the alkali is preferably a caustic alkali, such as caustic potash or caustic soda1) [page 5, [0074]] and contacting the resulting mixture (= feeding the electrolytic solution stored in the circulation tank to the anode chamber and to the cathode chamber) [page 3, [0044]] with one or more electrodes (= an anode chamber housing an anode, a cathode chamber housing a cathode) [page 3, [0044]] having a current applied thereto (= the system and/or load current of the electrolysis process) [page 5, [0082]],
wherein the electrocatalyst precursor in each of (A) and (B) is in solution (= addition of
the catalyst activation material to the electrolytic solution) [page 4, [0058]].
If not anticipated, then the invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Regarding claim 4, Manabe teaches (B) mixing the electrocatalyst precursor (= a step of
adding a catalyst activation material formed of a metal salt soluble in the electrolytic solution
prior to starting of the electrolysis step) [page 3, [0044]] with the electrolyte comprising OH- (= the alkali is preferably a caustic alkali, such as caustic potash or caustic soda) [page 5, [0074]] and contacting the resulting mixture (= feeding the electrolytic solution stored in the circulation tank to the anode chamber and to the cathode chamber) [page 3, [0044]] with the one or more electrodes (= an anode chamber housing an anode, a cathode chamber housing a cathode) [page 3, [0044]] having the current applied thereto (= the system and/or load current of the electrolysis process) [page 5, [0082]].
Regarding claim 11, Manabe teaches wherein the electrolyte comprises KOH or NaOH (= the alkali is preferably a caustic alkali, such as caustic potash or caustic soda) [page 5, [0074]].
Regarding claim 12, Manabe teaches wherein the electrocatalyst precursor prepares an electrocatalyst (= wherein in the electrolysis step, a metal component in the catalyst activation material is deposited on a surface of the cathode) [page 3, [0045]] selected from a hydrogen
evolution catalyst, oxygen evolution electrocatalyst, bifunctional hydrogen/oxygen evolution electrocatalyst, or any combination thereof (= oxygen gas is generated in the anode chamber 2, while hydrogen gas is generated in the cathode chamber 3) [page 5, [0079]].
Regarding claim 13, Manabe teaches wherein the electrocatalyst is deposited (= the metal component in the catalyst activation material to be deposited on a cathode surface during the electrolysis step) [page 4, [0058]] simultaneously (= a continuous long-term operation) [page 4, [[0059]] with a hydrogen evolution reaction or oxygen evolution reaction (= oxygen gas is generated in the anode chamber 2, while hydrogen gas is generated in the
cathode chamber 3) [page 5, [0079]].
Claim Rejections - 35 USC § 103
Claim(s) 2 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manabe (US Patent Application Publication No. 2018/0334751 A1) as applied to claims 1, 4 and 11-13 above, and further in view of GB 2129829 (‘829).
Manabe is as applied above and incorporated herein.
Regarding claim 2, Manabe teaches wherein the alkaline electrolyzer (= an alkaline water electrolyzer) [page 3, [0044]] has the electrolyte comprising OH- (= the alkali is preferably a caustic alkali, such as caustic potash or caustic soda) [page 5, [0074]] and one or more electrodes (= an anode chamber housing an anode, a cathode chamber housing a cathode) [page 3, [0044]], and wherein a current is applied to the one or more electrodes during introduction of the electrocatalyst precursor (= the system and/or load current of the
electrolysis process) [page 5, [0082]].
The method of Manabe differs from the instant invention because Manabe does not disclose wherein the method comprises (A) introducing into the alkaline electrolyzer the
electrocatalyst precursor.
Manabe teaches that in this case, there is no limitation on the location of addition of the catalyst activation material as described above (page 7, [0101]).
GB ‘829, like Manabe, teaches alkaline water electrolysis (page 1, line 126).
As a result of the in-situ coating according to the invention, it is achieved that in accordance with the formation conditions, which substantially correspond to the working conditions of electrolysis, the electrocatalyst is deposited on the electrode in a form (chemical composition, modification, atomic, microscopic and macroscopic structure) in which it exhibits the greatest possible chemical and mechanical stability under the desired operating conditions (page 1, lines 84-94).
Simultaneous “in-situ” activation of anodes and cathodes for alkaline water electrolysis.
In a 4 cm2 microcell with a sandwich arrangement of anode, diaphragm and cathode, water was electrolysed in 50% by weight of KOH at 90oC. The nominal current density amounted to 1 A/cm2.
After 200 working hours the cathode had an over-voltage of - 350 millivolt and the anode had an overvoltage of + 350 mV.
Cobalt nitrate solution was added to the electrolyte (1 1, 50% by weight of KOH) in a quantity which corresponded to 65 mg of cobalt. The cobalt was immediately dissolved in the electrolyte in the form of a deep-blue coloured cobalt-ll-hydroxy complex, the colour of which disappeared within a few minutes.
After 40 minutes, the overvoltage had improved by 20 millivolt, whereas the improvement of the anode potential amounted to 50 millivolt. During the next 300 working hours no further increase of the anodic and cathodic overvoltage was observed (page 2, Example 1).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by Manabe by introducing into the alkaline electrolyzer the electrocatalyst precursor because adding a cobalt nitrate to the electrolyte results in the simultaneous “in-situ” activation of anodes and cathodes for alkaline water electrolysis where the electrocatalyst is deposited on the electrode in a form (chemical composition, modification, atomic, microscopic and macroscopic structure) in which it exhibits the greatest possible chemical and mechanical stability under the desired operating conditions.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
MPEP § 2144.04(IV)(C) states that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results in In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and the selection of any order of mixing ingredients is prima facie obvious in In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)”.
Regarding claim 6, Manabe teaches wherein the electrocatalyst precursor comprises a metal nitrate, a metal sulfate, a metal acetate, a metal chloride, a metal sulfamate, or any combination thereof (= note that chlorides of the aforementioned metals may dissociate to form
chlorine ions in the electrolytic solution to generate chlorine gas at the anode, and are thus less preferred) [page 6, [0086]].
Manabe also teaches that:
The catalyst activation material is formed of a metal salt soluble in an electrolytic solution. This catalyst activation material needs to be a metal compound deposited on the anode and on the cathode, and capable of activating the catalytic function of the anode and of the cathode. More specifically, the catalyst activation material used is a compound of at least one metal selected from the group consisting of ruthenium, palladium, iridium, platinum, nickel, and cobalt (page 6, [0086]).
GB ‘829 teaches that:
Cobalt nitrate solution was added to the electrolyte (1 1, 50% by weight of KOH) in a quantity which corresponded to 65 mg of cobalt. The cobalt was immediately dissolved in the electrolyte in the form of a deep-blue coloured cobalt-ll-hydroxy complex, the colour of which disappeared within a few minutes (page 2, lines 5-11).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrocatalyst precursor described by Manabe with wherein the electrocatalyst precursor comprises a metal nitrate, a metal sulfate, a
metal acetate, a metal chloride, a metal sulfamate, or any combination thereof because:
(i) Although a metal chloride is less preferred by Manabe (page 6, [0086]), all disclosures of the prior art, including non-preferred embodiment, must be considered, In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967). All disclosure in the prior art, not just specific examples, must be evaluated for what it fairly teaches those of ordinary skill in the art, In re Snow and Steinhards,176 USPQ, 328, 329 (CCPA 1973). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278 (CCPA 1976); In re Kohler, 177 USPQ 399.
(ii) Cobalt nitrate is capable of simultaneous “in-situ” activation of anodes and cathodes for alkaline water electrolysis.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known
methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically challenged in the argument.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a))
pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 Caustic potash is KOH and caustic soda is NaOH.