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 Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant has argued that Burke fails to teach the tie coat having a thickness in the range of 0.1 mm - 0.2 mm.
In response, it is noted that Burke teaches the tie coat being up to 1000 Å, which is equal to 0.1 mm. Thus, the range taught by the prior art overlaps with (i.e. touches) the claimed range at 0.1 mm. See MPEP § 2131.03. Note also the argued limitation is not supported by the originally filed application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification as filed teaches (see paragraphs [0010] and [0028]) that the thickness of the tie coat layer was in the range from 0.05 to 0.1 mm. Those paragraphs do recite a range of 0.1 to 0.2 mm, but this thickness was the thickness of the catalytic layer, not the tie coat layer.
Claim Rejections - 35 USC § 103
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.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (“Fast Electrodeposited Nickel-Iron Hydroxide Nanosheets on Sintered Stainless Steel Felt as Bifunctional Electrocatalysts for Overall Water Splitting”) in view of Burke et al (US 2009/0050362) and Li et al (“Electrodeposited ternary iron-cobalt-nickel catalyst on nickel foam for efficient water electrolysis at high current density”), with evidence from Zhu et al (“Modification of stainless steel fiber felt via in situ self-growth by electrochemical induction as a robust catalysis electrode for oxygen evolution reaction”, henceforth referred to as “evidence Zhu”).
Zhu et al teach (see abstract, “Synthesis of SSF@NiFe” section and “Electrochemical Measurements” section) an electrolysis cell set up to electrolytically split water having an electrode of a nonwoven stainless steel felt (i.e. a non-woven comprising stainless steel fibers) wherein the fibers of the stainless steel felt were coated with a NiFe electrocatalyst. The stainless steel was an austenitic 316L, which meets the nickel content requirement of “Ni of at least 1% by mass … and not more than 40% by mass of Ni”. 316L stainless steel is known to have a nickel content of 10-12% by mass.
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Zhu et al fail to teach the diameter of the fibers of the stainless steel felt. However, Zhu et al teach (see “Chemical Reagents and Materials” section on page 9886) that the stainless steel felt was purchased and the felt was designated as BZ20D. Evidence Zhu teaches (see “Chemical Reagents and Materials” section on page 1811) using the same BZ20D stainless steel felt and (see fig. 1, reproduced at larger scale at right) the felt possessed fibers having diameters of about 40 micrometers. Therefore, the evidence of record shows that the diameter of the fibers of the stainless steel felt taught by Zhu et al were inherently within the claimed range.
Zhu et al fail to teach (1) a tie coat layer between the stainless steel fiber and the catalytic layer and (2) the electrocatalyst falling within the range one of the first alloy (6 ≤ Ni:Fe ≤ 12), second alloy (5/3 ≤ Ni:Co ≤ 9/3), or third alloy (0.2 ≤ Ni:Co ≤ 3 & 1 ≤ Fe:CO ≤ 12).
Regarding (1), Burke et al teach (see abstract, fig. 1, paragraphs [0019] and [0027]) when coating stainless steel fiber with a metal by electrodeposition, adhesion between the metal layer and the stainless steel fiber is increased by inclusion of a nickel strike layer (i.e. a “tie coat” as claimed) on the stainless steel surface prior to deposition of the metal layer. Burke et al teach that the thickness of the nickel strike layer was 1000 Å or less. This range touches the instantly claimed range at the endpoint (1000 Å = 0.1 mm).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a nickel strike layer as taught by Burke et al to the stainless steel fiber of Zhu et al for the purpose of increasing the adhesion of the subsequent metal layer to the stainless steel fiber.
Regarding (2), Zhu et al teach the metal catalyst layer comprising a mixture of nickel and iron at mole ratios in the range of 1:3 to 2:1 which is outside the claimed range of the first alloy. Li et al teaches (see abstract, sections 2.1 and 2.2 and Table S2 of the Supplementary data) providing a mixed Ni-Co-Fe catalyst for the oxygen evolution reaction of water electrolysis, wherein the ratios of Ni-Co-Fe falls within the scope of the third alloy as claimed. The catalyst of Li et al exhibited high activity and good stability as anode for water electrolysis at high current density.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted one of the Ni-Co-Fe catalyst compositions taught by Li et al for the Ni-Fe catalyst composition of Zhu et al because Li et al teach that certain ratios of the Ni, Co, and Fe produced excellent results that possessed high activity, good stability and high current density.
Lastly, Zhu et al teach (see “Synthesis of SSF@NiFe”, “Material Characterization”, “Electrocatalytic Performance for OER” sections on pages 9886-9890 and figs. 2, 3, 5, and 6) that the thickness of the catalyst layer increased with electrodeposition time, and that several different electrodeposition time (30 seconds, 120 seconds, 360 seconds) were produced and evaluated. The different electrodeposition time samples, each having an increasing thickness as compared to the previous time amount, produced somewhat different electrocatalytic results, including different oxygen evolution reaction overpotentials (figs. 5b and 5c) and electrochemical impedances (fig. 6d). Therefore, Zhu et al recognized the electrodeposition time, and thus proportional catalyst layer thickness, as a result effective variable. Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to have conducted routine experimentation in order to determine an optimal electrodeposition time, that time being directly proportional to the catalyst layer thickness. See MPEP 2144.05.
Regarding claim 10, Zhu et al teach the stainless steel fiber felt being the anode of the electrolysis cell.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (“Fast Electrodeposited Nickel-Iron Hydroxide Nanosheets on Sintered Stainless Steel Felt as Bifunctional Electrocatalysts for Overall Water Splitting”) in view of Burke et al (US 2009/0050362) and Li et al (“Electrodeposited ternary iron-cobalt-nickel catalyst on nickel foam for efficient water electrolysis at high current density”) as applied to claim 8 above, and further in view of Cossar et al (“The Performance of Nickel and Nickel-Iron Catalysts Evaluated As Anodes in Anion Exchange Membrane Water Electrolysis”).
Zhu et al fail to teach the presence of a hydroxide ion conductive membrane between the anode and cathode of the electrolysis cell.
Cossar et al teach (see abstract, fig. 9, section 3.4.1) utilizing a Ni-Fe anode for alkaline water electrolysis, wherein an anion exchange membrane (inherently having hydroxide anion permeability) was provided between the anode and cathode. One of ordinary skill in the art was aware that the membrane permitted separate recovery of the oxygen gas produced at the anode and the hydrogen gas produced at the cathode.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a membrane to allow hydroxide ions to pass through as taught by Cossar et al to the electrolysis cell of Zhu et al to permit separate recovery of the hydrogen gas and the oxygen gas.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (“Fast Electrodeposited Nickel-Iron Hydroxide Nanosheets on Sintered Stainless Steel Felt as Bifunctional Electrocatalysts for Overall Water Splitting”) in view of Burke et al (US 2009/0050362) and Cossar et al (“The Performance of Nickel and Nickel-Iron Catalysts Evaluated As Anodes in Anion Exchange Membrane Water Electrolysis”) with evidence from Zhu et al (“Modification of stainless steel fiber felt via in situ self-growth by electrochemical induction as a robust catalysis electrode for oxygen evolution reaction”, henceforth referred to as “evidence Zhu”).
Zhu et al teach (see abstract, “Synthesis of SSF@NiFe” section and “Electrochemical Measurements” section) an electrolysis cell set up to electrolytically split water having an electrode of a nonwoven stainless steel felt (i.e. a non-woven comprising stainless steel fibers) wherein the fibers of the stainless steel felt were coated with a NiFe electrocatalyst. The stainless steel was an austenitic 316L, which meets the nickel content requirement of “Ni of at least 1% by mass … and not more than 40% by mass of Ni”. 316L stainless steel is known to have a nickel content of 10-12% by mass.
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Zhu et al fail to teach the diameter of the fibers of the stainless steel felt. However, Zhu et al teach (see “Chemical Reagents and Materials” section on page 9886) that the stainless steel felt was purchased and the felt was designated as BZ20D. Evidence Zhu teaches (see “Chemical Reagents and Materials” section on page 1811) using the same BZ20D stainless steel felt and (see fig. 1, reproduced at larger scale at right) the felt possessed fibers having diameters of about 40 micrometers. Therefore, the evidence of record shows that the diameter of the fibers of the stainless steel felt taught by Zhu et al were inherently within the claimed range.
Zhu et al fail to teach (1) a tie coat layer between the stainless steel fiber and the catalytic layer and (2) the electrocatalyst falling within the range one of the first alloy (6 ≤ Ni:Fe ≤ 12), second alloy (5/3 ≤ Ni:Co ≤ 9/3), or third alloy (0.2 ≤ Ni:Co ≤ 3 & 1 ≤ Fe:CO ≤ 12).
Regarding (1), Burke et al teach (see abstract, fig. 1, paragraphs [0019] and [0027]) when coating stainless steel fiber with a metal by electrodeposition, adhesion between the metal layer and the stainless steel fiber is increased by inclusion of a nickel strike layer (i.e. a “tie coat” as claimed) on the stainless steel surface prior to deposition of the metal layer. Burke et al teach that the thickness of the nickel strike layer was 1000 Å or less. This range touches the instantly claimed range at the endpoint (1000 Å = 0.1 mm).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a nickel strike layer as taught by Burke et al to the stainless steel fiber of Zhu et al for the purpose of increasing the adhesion of the subsequent metal layer to the stainless steel fiber.
Regarding (2), Zhu et al teach the metal catalyst layer comprising a mixture of nickel and iron at mole ratios in the range of 1:3 to 2:1 which is outside the claimed range of the first alloy. Cossar et al teaches (see abstract, Conclusions section) providing a mixed Ni-Fe catalyst for the oxygen evolution reaction of water electrolysis, wherein the ratios of Ni-Fe was 9:1. The Ni90Fe catalyst of Cossar et al exhibited high activity and low onset potentials for the oxygen evolution reaction.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted one of the Ni90Fe catalyst composition taught by Cossar et al for the Ni-Fe catalyst composition of Zhu et al because Cossar et al teach that Ni:Fe ratio being 9 produced an anode electrocatalyst that possessed high activity with low onset potentials for the oxygen evolution reaction.
Lastly, Zhu et al teach (see “Synthesis of SSF@NiFe”, “Material Characterization”, “Electrocatalytic Performance for OER” sections on pages 9886-9890 and figs. 2, 3, 5, and 6) that the thickness of the catalyst layer increased with electrodeposition time, and that several different electrodeposition time (30 seconds, 120 seconds, 360 seconds) were produced and evaluated. The different electrodeposition time samples, each having an increasing thickness as compared to the previous time amount, produced somewhat different electrocatalytic results, including different oxygen evolution reaction overpotentials (figs. 5b and 5c) and electrochemical impedances (fig. 6d). Therefore, Zhu et al recognized the electrodeposition time, and thus proportional catalyst layer thickness, as a result effective variable. Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to have conducted routine experimentation in order to determine an optimal electrodeposition time, that time being directly proportional to the catalyst layer thickness. See MPEP 2144.05.
Regarding claim 9, Zhu et al fail to teach the presence of a hydroxide ion conductive membrane between the anode and cathode of the electrolysis cell.
Cossar et al teach (see abstract, fig. 9, section 3.4.1) utilizing a Ni-Fe anode for alkaline water electrolysis, wherein an anion exchange membrane (inherently having hydroxide anion permeability) was provided between the anode and cathode. One of ordinary skill in the art was aware that the membrane permitted separate recovery of the oxygen gas produced at the anode and the hydrogen gas produced at the cathode.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a membrane to allow hydroxide ions to pass through as taught by Cossar et al to the electrolysis cell of Zhu et al to permit separate recovery of the hydrogen gas and the oxygen gas.
Regarding claim 10, Zhu et al teach the stainless steel fiber felt being the anode of the electrolysis cell.
Conclusion
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 HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794
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