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 August 13, 2026. 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 14-17 (apparatus) drawn to an invention nonelected without traverse in the reply filed on August 13, 2025.
Claim Objections
Claims 22-24 have been objected to because of minor informalities.
The objection of claims 22-24 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 1-2, 4, 6, 11-13 and 21-24 have 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of claims 1-2, 4, 6, 11-13 and 21-24 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.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
I. Claim(s) 1, 4, 6, 11-13 and 23 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tasic et al. (“Characterization of the Ni-Mo Catalyst Formed In Situ During Hydrogen Generation from Alkaline Water Electrolysis,” International Journal of Hydrogen Energy (2011 Sep 1), Vol. 36, No. 18, pp. 11588-11595).
Regarding claim 1, Tasic teaches a method for depositing electrocatalysts (= the Ni-Mo catalysts obtained by in situ electrodeposition) [page 11588, abstract], 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 to form a
suspension of electrocatalyst particles in the electrolyte,1 or
• (B) mixing an electrocatalyst precursor with an electrolyte comprising OH- (= small amounts of nickel (Ni) complex and molybdenum (Mo) salt, added directly into KOH electrolyte) [page 11589, left column, lines 50-52] to form a suspension of electrocatalyst particles (= the electrochemical reactions are heterogeneous) [page 11590, bridging paragraph]2 in the electrolyte (= KOH electrolyte) [page 11589, lines 3-4]; and contacting the suspension with one
or more electrodes (= the working electrode (WE) [page 11589, right column, lines 6-7]; the counter electrode (page 11589, right column, lines 12-13); and the reference electrode (page 11589, right column, line 14)) having a current applied thereto (= current density of 50 mA cm-2) [page 11590, Table 1],
۰ wherein the electrocatalyst precursor in each of (A) and (B) is in solution (= the concentration of the Ni complex was 5 x 10-2 M [Ni(en)3]Cl2۰2H2O while Mo salt was from 1 x 10-2 M Na2MoO4 in 6 M KOH solution (prepared from spectrograde KOH (Merck) and deionised water with resistivity of 18 MΩ cm)) [page 11589, right column, lines 1-5].
Regarding claim 4, Tasic teaches (B) mixing the electrocatalyst precursor with the electrolyte comprising OH- (= small amounts of nickel (Ni) complex and molybdenum (Mo) salt, added directly into KOH electrolyte) [page 11589, left column, lines 50-52] and contacting the suspension with the one or more electrodes (= the working electrode (WE)) [page 11589, right column, lines 6-7]; the counter electrode (page 11589, right column, lines 12-13); and the reference electrode (page 11589, right column, line 14)) having the current applied thereto (= current density of 50 mA cm-2) [page 11590, Table 1].
Regarding claim 6, Tasic 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 (= Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3].3
Regarding claim 11, Tasic teaches wherein the electrolyte comprises KOH or NaOH (= KOH electrolyte) [page 11589, left column, lines 51-52].
Regarding claim 12, Tasic teaches wherein the electrocatalyst precursor prepares an electrocatalyst selected from a hydrogen evolution catalyst, oxygen evolution electrocatalyst, bifunctional hydrogen/oxygen evolution electrocatalyst, or any combination thereof (=
hydrogen evolved) [Title; and page 11590, Table 1].
Regarding claim 13, Tasic teaches wherein the electrocatalyst is deposited simultaneously with a hydrogen evolution reaction or oxygen evolution reaction (= the Ni-Mo catalyst formed in situ during hydrogen generation from alkaline water electrolysis) [= Title].
Regarding claim 23, Tasic teaches wherein the electrocatalyst precursor in each of (A) and (B) comprises one or more metal ions and a counterion (= [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3]; wherein the counterion is selected from the group consisting of nitrate, sulfate, acetate, chloride, sulfamate, and any combinations thereof (= [Ni(en)3]Cl2۰2H2O) [page
11589, right column, lines 2-3]; and wherein the alkaline electrolyzer further has at least about
0.004 Molar metal, based on the total moles of the total metal ions of the electrocatalyst precursor in the electrolyte (= 5 x 10-2 M [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3].
II. Claim(s) 24 stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tasic et al. (“Characterization of the Ni-Mo Catalyst Formed In Situ During Hydrogen Generation from Alkaline Water Electrolysis,” International Journal of Hydrogen Energy (2011 Sep 1), Vol. 36, No. 18, pp. 11588-11595).
Regarding claim 24, Tasic teaches a method for depositing electrocatalysts (= the Ni-Mo
catalysts obtained by in situ electrodeposition) [page 11588, abstract], 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 to form a
suspension of electrocatalyst particles in the electrolyte, and a separator; and applying a current to the one or more electrodes during introduction of the electrocatalyst precursor to produce a deposited electrocatalyst,4 or
• (B) mixing an electrocatalyst precursor with an electrolyte comprising OH- to form a suspension of electrocatalyst particles (= the electrochemical reactions are heterogeneous) [page 11590, bridging paragraph]5 in the electrolyte (= small amounts of nickel (Ni) complex and molybdenum (Mo) salt, added directly into KOH electrolyte) [page 11589, left column, lines 50-52]; and contacting the suspension with a separator (= the working electrode (WE) compartment was separated by fritted glass discs from the other two compartments) [page 11589, right column, lines 6-8] and one or more electrodes (= the working electrode (WE) [page 11589, right column, lines 6-7]; the counter electrode (page 11589, right column, lines 12-13); and the reference electrode (page 11589, right column, line 14)), having a current applied thereto (= current density of 50 mA cm-2) [page 11590, Table 1] to produce a deposited electrocatalyst (= the Ni-Mo catalysts obtained by in situ electrodeposition) [page 11588, abstract],
۰ wherein the electrocatalyst precursor in each of (A) and (B) is in solution (= the concentration of the Ni complex was 5 x 10-2 M [Ni(en)3]Cl2۰2H2O while Mo salt was from 1 x 10-2 M Na2MoO4 in 6 M KOH solution (prepared from spectrograde KOH (Merck) and deionised water with resistivity of 18 MΩ cm)) [page 11589, right column, lines 1-5];
۰ wherein the electrocatalyst precursor in each of (A) and (B) comprises one or more metal ions and a counterion (= [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3];
۰ wherein the counterion is selected from the group consisting of nitrate, sulfate, acetate, chloride, sulfamate, and any combinations thereof (= [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3]; and
۰ wherein the alkaline electrolyzer further has at least about 0.004 Molar metal, based on the total moles of the total metal ions of the electrocatalyst precursor in the electrolyte (= 5 x 10-2 M [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3].
Claim Rejections - 35 USC § 103
Claim(s) 2 and 21-22 stand rejected under 35 U.S.C. 103 as being unpatentable over
Tasic et al. (“Characterization of the Ni–Mo Catalyst Formed In Situ During Hydrogen Generation from Alkaline Water Electrolysis,” International Journal of Hydrogen Energy (2011 Sep 1), Vol. 36, No. 18, pp. 11588-11595) as applied to claims 1, 4, 6, 11-13 and 23 above.
Regarding claim 2, Tasic teaches the method of at least claims 1, 4, 6, 11-13 and 23 as
applied above. Tasic also teaches that small amounts of nickel (Ni) complex and molybdenum
(Mo) salt are added directly into KOH electrolyte (page 11589, left column, lines 50-52); and an
alkaline electrolyzer (= a conventional three-compartment cell was used) [page 11589, right column, line 6], wherein the alkaline electrolyzer has one or more electrodes (= the working electrode (WE) [page 11589, right column, lines 6-7]; the counter electrode (page 11589, right column, lines 12-13); and the reference electrode (page 11589, right column, line 14)), and
wherein a current is applied to the one or more electrodes (= current density of 50 mA cm-2) [page 11590, Table 1].
Tasic does not explicitly teach comprising (A) introducing into the alkaline electrolyzer the electrocatalyst precursor, wherein the alkaline electrolyzer has the electrolyte comprising OH-, and wherein a current is applied to the one or more electrodes during introduction of the electrocatalyst precursor.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Tasic by introducing into the alkaline electrolyzer the electrocatalyst precursor, wherein the alkaline electrolyzer has the electrolyte comprising OH-, and wherein a current is applied to the one or more electrodes during introduction of the electrocatalyst precursor. The person with ordinary skill in the art would have been motivated to make this modification because the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP § 2144.04(IV)(C).6
Regarding claim 21, Tasic teaches the method of at least claims 1, 4, 6, 11-13 and 23 as
applied above. Tasic does not explicitly teach wherein the method is performed according to (A), wherein the alkaline electrolyzer further comprises: a separator; and applying a current to the one or more electrodes during introduction of the electrocatalyst precursor to produce a deposited electrocatalyst bridging at least one of the one or more electrodes and the separator.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Tasic wherein the method is performed according to (A), wherein the alkaline electrolyzer further comprises: a separator; and applying a current to the one or more electrodes during introduction of the electrocatalyst precursor to produce a deposited electrocatalyst bridging at least one of the one or more electrodes and the separator. The person with ordinary skill in the art would have been motivated to make this modification because:
(i) The selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP § 2144.04(IV)(C).7
(ii) A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 22, Tasic teaches the method of at least claims 1, 4, 6, 11-13 and 23 as applied above. Tasic also teaches wherein (B) mixing an electrocatalyst precursor with an
electrolyte comprising OH- (= small amounts of nickel (Ni) complex and molybdenum (Mo) salt,
added directly into KOH electrolyte) [page 11589, left column, lines 50-52]; and contacting the
suspension with one or more electrodes (= the working electrode (WE) [page 11589, right column, lines 6-7]; the counter electrode (page 11589, right column, lines 12-13); and the
reference electrode (page 11589, right column, line 14)) having the current applied thereto (= current density of 50 mA cm-2) [page 11590, Table 1] further comprises: contacting the suspension with a separator (= the working electrode (WE) compartment was separated by fritted glass discs from the other two compartments) [page 11589, right column, lines 6-8].
Tasic does not explicitly teach producing a deposited electrocatalyst bridging at least one
of the one or more electrodes and the separator.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because Tasic teaches the method of at least claims 1, 4, 6, 11-13 and 23 as applied above. Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant
claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Continued Response
Claim Objections
Claim 22 is objected to because of the following informalities:
Claim 22
Line 3, please insert the word -- the -- before the word “one”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1 and 12-13 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
Lines 1-4 and 8, recite:
“A method for depositing electrocatalysts, 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 to form a suspension of electrocatalyst particles in the electrolyte,
wherein the electrocatalyst precursor in each of (A) and (B) is in solution”.
It is unclear from the claim language how step (A) is a method for depositing electrocatalysts when step (A) only forms a suspension of electrocatalyst particles in the
electrolyte.
Claim 12
Lines 1-2, recite “the electrocatalyst precursor prepares an electrocatalyst”.
Claim 1, lines 3-4 and 5-6, recite “form a suspension of electrocatalyst particles”.
It is unclear from the claim language what the relationship is between the electrocatalyst and the electrocatalyst particles.
Claim 13
Line “the electrocatalyst” (singular) lacks antecedent basis. See claim 1, line 1 (preamble), where this limitation is detached from the body of the claim 1.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Response to Arguments
Applicant’s arguments filed August 13, 2026 have been fully considered but they are not
persuasive. The standing prior art rejections have been maintained for the following reasons:
• Applicant states that these precursors are dissolved molecular or ionic species in a homogeneous solution; they are not particulate matter forming a suspension.
• Applicant states that moreover, Tasic confirms that the precursors remain as dissolved species. Tasic describes its in situ activation process as: ”In situ activation is achieved by dissolving a substance directly into the electrolyte during electrolytic hydrogen production.”
In response, Tasic teaches that:
In this case, we have heterogeneous catalysts. Because the electrochemical reactions are heterogeneous, the rate depends on the area of the electrode (S) [page 11590, bridging paragraph].
The concentration of the Ni complex was 5x10-2M [Ni(en)3]Cl2 x 2H2O while Mo salt was from 1x10-2M Na2MoO4 in 6M KOH solution (prepared from spectrograde KOH (Merck) and deionised water with resistivity of 18 MΩ cm) [page 11589, right column, lines 1-5].
It is deemed that this mixture can form a heterogenous mixture (particle suspension). When [Ni(en)3]Cl2 x 2H2O and Na2MoO4 are combined in a highly alkaline 6M KOH solution, a chemical reaction occurs that breaks down the nickel complex and forms an insoluble solid precipitates as follows: [Ni(en)3]Cl2 + 2KOH → Ni(OH)2(s) + 3en + 2KCl, while the displaced bidentate organic ligands (en) are highly miscible and remain fully dissolved in water.
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 Limitation (A) is recited in the alternative.
2 It is deemed that this mixture can form a heterogenous mixture (particle suspension). When [Ni(en)3]Cl2 x 2H2O and Na2MoO4 are combined in a highly alkaline 6M KOH solution, a chemical reaction occurs that breaks down the nickel complex and forms an insoluble solid precipitates as follows: [Ni(en)3]Cl2 + 2KOH → Ni(OH)2(s) + 3en + 2KCl, while Na₂MoO₄ remains in solution.
3 Ni(en)3]Cl2۰2H2O is (tris(ethylenediamine)nickel(II) chloride dihydrate).
4 Limitation (A) is recited in the alternative.
5 It is deemed that this mixture can form a heterogenous mixture (particle suspension). When [Ni(en)3]Cl2 x 2H2O and Na2MoO4 are combined in a highly alkaline 6M KOH solution, a chemical reaction occurs that breaks down the nickel complex and forms an insoluble solid precipitates as follows: [Ni(en)3]Cl2 + 2KOH → Ni(OH)2(s) + 3en + 2KCl, while Na₂MoO₄ remains in solution.
6 i.e., using the cell as the container to combine the nickel complex and the molybdenum salt with the KOH electrolyte in a sequence.
7 i.e., using the cell as the container to combine the nickel complex and the molybdenum salt with the KOH electrolyte in a sequence.
Prosecution Insights