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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 30, 2026 has been entered.
This is in response to the Amendment dated April 30, 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 Rejections - 35 USC § 102/103
Claim(s) 1, 4 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 Manabe (US Patent Application Publication No. 2018/0334751 A1).
The rejection of claims 1, 4 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under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Manabe has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Claim(s) 2 and 6 have been 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).
The rejection of claims 2 and 6 under 35 U.S.C. 103 as being unpatentable over Manabe as applied to claims 1, 4 and 11-13 above, and further in view of GB 2129829 (‘829) has been withdrawn in view of Applicant’s amendment.
Continued Response
Claim Objections
Claims 22-24 are objected to because of the following informalities:
Claim 22
line 1, please amend “B)” to -- (B) --.
Claim 23
line 4, please amend the word “or” to the word -- and --.
A Markush-type claim recites alternatives in a format such as “selected from the group consisting of A, B and C”. See MPEP § 2173.05(h).
Claim 24
line 14, please amend the word “or” to the word -- and --.
A Markush-type claim recites alternatives in a format such as “selected from the group consisting of A, B and C”. See MPEP § 2173.05(h).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-2, 4, 6, 11-13 and 21-24 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
line 6, “the resulting mixture” lacks antecedent basis.
Claim 1, lines 3-6, recites “to form a suspension of electrocatalyst particles in the electrolyte”. Please amend the words “resulting mixture” to the word -- suspension --.
Claim 2
line 3, please amend the word “a” to the word -- the --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Step (A) needs the current recited in claim 1, line 7, to deposit the electrocatalyst.
Claim 4
line 2, “the resulting mixture” lacks antecedent basis.
Claim 1, lines 5-6, recites “to form a suspension of electrocatalyst particles in the
electrolyte”. Please amend the words “resulting mixture” to the word -- suspension --.
Claim 21
line 3, please amend the word “comprises” to the word -- having --.
The separator is further limiting “the alkaline electrolyzer has an electrolyte comprising
OH- and one or more electrodes” recited in claim 21, lines 2-3.
This is an instance where the article should be changed to ensure the further limitation of the claim terminology.
line 5, please amend the word “a” to the word -- the --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Step (A) needs the current recited in claim 1, line 7, to deposit the electrocatalyst.
Claim 22
line 2, “the resulting mixture” lacks antecedent basis.
Claim 1, lines 5-6, recites “to form a suspension of electrocatalyst particles in the electrolyte”. Please amend the words “resulting mixture” to the word -- suspension --.
line 3, please amend the word “a” to the word -- the --.
This is an instance where the article should be changed to ensure proper antecedent
basis for the claim terminology.
line 4, “the resulting mixture” lacks antecedent basis.
Claim 1, lines 5-6, recites “to form a suspension of electrocatalyst particles in the electrolyte”. Please amend the words “resulting mixture” to the word -- suspension --.
Claim 23
line 5, please amend the word “comprises” to the words -- further has --.
Claim 1, lines 2-3, recite “wherein the alkaline electrolyzer has an electrolyte comprising OH- and one or more electrodes”.
This is an instance where the article should be changed to ensure the further limitation of the claim terminology.
line 6, “metal ions” (plural) lack antecedent basis.
Claim 23, line 2, recites “a metal ion”.
Claim 24
line 8, “the resulting mixture” lacks antecedent basis.
Claim 24, lines 7-8, recites “to form a suspension of electrocatalyst particles in the electrolyte”. Please amend the words “resulting mixture” to the word -- suspension --.
line 15, please amend the word “comprises” to the words -- further has --.
Claim 24, lines 2-5, recite “wherein the alkaline electrolyzer has an electrolyte comprising OH- and one or more electrodes … and a separator”.
This is an instance where the article should be changed to ensure the further limitation of the claim terminology.
line 15, “metal ions” (plural) lack antecedent basis.
Claim 24, line 12, recites “a metal ion”.
Continued Response
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.
I. Claim(s) 1, 4, 6, 11-13 and 23 is/are 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 in the
electrolyte (= because the electrochemical reactions are heterogeneous) [page 11590, bridging sentence]; and
• contacting2 the resulting mixture 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 resulting mixture 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),, 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 a metal ion 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, or any combinations thereof (= [Ni(en)3]Cl2۰2H2O) [page
11589, right column, lines 2-3]; and wherein the alkaline electrolyzer comprises 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 is/are 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 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 resulting mixture 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 a metal ion 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, or any combinations thereof (= [Ni(en)3]Cl2۰2H2O) [page 11589, right column, lines 2-3]; and
۰ wherein the alkaline electrolyzer comprises 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 is/are 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).5
Regarding claim 21, 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)) further comprises: 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 applying a current 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-.
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-. 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
Tasic does not explicitly teach 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 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).
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
resulting mixture 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] further comprises: contacting the resulting mixture 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).
Response to Amendment
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.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 114836798 is cited to teach a method for preparing cobalt-molybdenum coatings, electrodes using this method, water electrolysis devices, and household appliances (ρ [n0001]). Electrodepositing a cobalt-molybdenum coating on a substrate by an electrodeposition method (ρ [0006]). The molybdenum salt includes at least one of molybdenum sulfate and its hydrate, sodium molybdate (Na2MoO4) and its hydrate, potassium molybdate and its hydrate, and ammonium molybdate and its hydrate (ρ [n0018]).
WO 2018/127536 is cited to teach pre-synthesised catalytic particles are directly added into the electrolyte reservoirs of an electrolyser forming catalyst/electrolyte suspensions. Pumping the suspensions through the running electrolyser leads to the formation of self- assembling catalyst films driven by electrostatics based immobilization of particles (page 3, lines 7-11).
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.
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, 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 The Examiner is not reading that the contacting step is attached to step (B) alone or in the alternative because otherwise step (A) would be an electroless step, and electrolessly depositing the electrocatalyst is not supported by Applicant’s specification.
3 Ni(en)3]Cl2۰2H2O is (tris(ethylenediamine)nickel(II) chloride dihydrate).
4 Limitation (A) is recited in the alternative.
5 i.e., using the cell as the container to combine the nickel complex and the molybdenum salt with the KOH electrolyte in a sequence.
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.
Prosecution Insights