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 .
Response to Amendment
Upon entry of the amendment filed on 03 December 2025, Claim(s) 1, 9 and 13-20 is/are amended; Claim(s) 16-20 is/are withdrawn; and Claim(s) 12 is/are cancelled. The currently pending claims are Claims 1-11 and 13-20.
Based on applicants’ remarks and amendments (e.g. the specific continuously mixing and steps order), the 112 rejections and the rejections based on Marzullo as a primary reference are withdrawn. However, they are not found persuasive regarding the Periyasamy references and the rejections are maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-11 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Periyasamy (US-20100304266-A1).
Claims 1, 11, 13-15: Periyasamy discloses a process of dispersing a catalyst ink via high sheer mixing, ultrasonicating and coating/drying onto a substrate to form a membrane (abs, ¶18-21, 46-52, 71-85, examples and claims 1-26). Further, Periyasamy discloses a continuous mixing for 15 minutes, a stoppage, passing the previously continuously mixed ink (for 15 minutes) into a sonication cell, coating and repeating the cycles – thus reading on the continuous limitation under BRI. The Periyasamy reference discloses the claimed invention with the claimed processing steps but does not disclose the method with the claimed steps with enough specificity to anticipate the claimed invention. Nevertheless, given that Periyasamy discloses the claimed steps, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize and optimize any of the taught steps since Periyasamy teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many steps are disclosed would not have made any of them, such as the passing a portion of the catalyst ink via the different units, less obvious. Here, Periyasamy discloses similar steps and there is no evidence nor teaching that the selection and optimization of the claimed steps would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 2-7: Periyasamy discloses the claimed ionomer, catalyst, solvent and/or additive (¶18-35, 46-48 and examples).
Claims 8-10: Periyasamy discloses monitoring the temperature and cooling the catalyst ink through the various steps (¶71-84, examples and claims 20-26).
Response to Arguments
Applicant’s arguments, see pg. 9-12, filed 03 December 2025, with respect to Marzullo have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 03 December 2025 regarding the Periyasamy reference have been fully considered but they are not persuasive.
Applicant argues that Periyasamy discloses mixing then stopping prior to the sonication step – thus the teaching away from the continuous feature (pg. 8 and 9).
The examiner respectfully disagrees and notes the instant limitation permits additional steps such as the stoppage step based on the “comprising” transitional phrase. Periyasamy discloses a continuous mixing for 15 minutes, a stoppage, passing the previously continuously mixed ink (for 15 minutes) into a sonication cell, coating and repeating the cycles – thus reading on the continuous limitation under BRI. Applicant seems to argue that the mixing is still continuous while the ink is being sonicated and applied onto a substrate; however, the instant claims do not reflect such steps since the instant claims only require a continuous mixing (which could be for any length of time) and does not preclude a stoppage.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Uensal discloses the process of making a catalyst ink via a continuous apparatus.
THIS ACTION IS MADE FINAL. 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.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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