Prosecution Insights
Last updated: October 02, 2026
Application No. 18/910,065

METHOD OF COATING A CATALYST ON FLAT OR TEXTURED SUBSTRATES

Final Rejection §103§112
Filed
Oct 09, 2024
Priority
Oct 10, 2023 — provisional 63/589,028
Examiner
TALBOT, BRIAN K
Art Unit
1712
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Johnson Matthey plc
OA Round
2 (Final)
59%
Grant Probability
Moderate
3-4
OA Rounds
1y 4m
Est. Remaining
90%
With Interview

Examiner Intelligence

Grants 59% of resolved cases
59%
Career Allowance Rate
699 granted / 1182 resolved
-5.9% vs TC avg
Strong +31% interview lift
Without
With
+30.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
45 currently pending
Career history
1240
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
64.3%
+24.3% vs TC avg
§102
10.7%
-29.3% vs TC avg
§112
21.1%
-18.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1182 resolved cases

Office Action

§103 §112
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 . The amendment filed 6/10/26 has been considered and entered. Claims 4 and 9 have been canceled. Claims 1-3,5-8 and 10-20 remain in the application with claims 19-20 having been withdrawn from consideration as being directed toward a non-elected invention as detailed in paper filed 12/2/25. Therefore, claims 1-3,5-8 and 10-18 remain in the application for prosecution thereof. The newly submitted drawing filed 6/10/26 have been submitted and accepted. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Considering the amendment filed 6/10/26, the 35 USC 103 rejection has bene withdrawn. However, the following rejection has been necessitated by the amendment. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claim 15 is 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. Regarding claim 15, the claim is confusing as it recites the acceptor substrate is flat while claim 1 from which it depends upon recites that the substrate is non-flat. The Examiner suggests deletion of claim 15 to overcome the rejection. Clarification is requested. Claim Rejections - 35 USC § 103 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. Claims 1-3,5-8 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kotler et al. (2018/0090314) in combination with Kearl (2004/0191594). Kotler et al. (2018/0090314) teaches a method of depositing material by positioning a donor film including a donor material at a predefined distance from an acceptor substrate, the donor film facing toward the acceptor substrate. One or more pulses of laser radiation are directed to impinge on the donor film at given locations so as to induce formation of a protrusion made from the donor material. A distal tip of the protrusion touches the acceptor substrate and dispose thereon the acceptor substrate (abstract). The LIFT process (laser-induced forward transfer) technique is taught as the depositing process for coating acceptor substrate [0003],[0018]. The LIFT process can be used to print lines or other elongated patterns [0027]. The coating can include metal pastes [0032]. Kotler et al. (2018/0090314) fails to teach the acceptor substrate to be a plate for solid oxide fuel cell which is a non-flat surface. Kearl (2004/0191594) teaches bipolar plates for fuel cells whereby the coating of the bipolar plates with a reforming catalyst is performed (abstract and [0045]). Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Kotler et al. (2018/0090314) process to include coating non-flat surface such as bipolar plates of a fuel cell as evidenced by Kearl (2004/0191594) or to have modified Kearl (2004/0191594) catalyst coated bipolar plate to be formed using a LIFT coating process as evidenced by Kotler et al. (2018/0090314) with the expectation of similar success in forming a catalyst coated bipolar plate. Regarding claim 2, regarding the drying of the ink, the Examiner takes the position that it is well known in the art after applying a coating to dry the coating removing solvent or carrier utilized in the coating material. Regarding claim 3, Kearl (2004/0191594) teaches bipolar plates for fuel cells whereby the coating of the bipolar plates with a reforming catalyst is performed (abstract and [0045]). Regarding claims 5-8, Kearl (2004/0191594) teaches bipolar plates for fuel cells whereby the coating of the bipolar plates with a reforming catalyst is performed and the bipolar plates are known to be non-flat surfaces which would be inclusive of the claimed textures surface, raised/depressed section, dimples (abstract and [0045]). Regarding claim 10, Kotler et al. (2018/0090314) teaches the LIFT process can be used to print lines or other elongated patterns [0027]. Regarding claims 11,13 and 14, Lal et al. (2016/0176756) teaches raised and recessed features, and the Examiner takes the position that it would have been obvious for one skill in the art before the effective filing date of the claimed invention to have coated just the raised portions, just the recessed portions or both dependent upon the desired product. This coating would be “corresponding to the texture” of the substrate and hence meets the claimed limitation. Regarding claim 12, Kotler et al. (2018/0090314) teaches a non-uniform catalyst transfer as it teaches patterns which would infer some area not coated therefore making a coating of differing thickness as well as overlapping patterns which also have differing thicknesses [0027]. Regarding claim 15, Kotler et al. (2018/0090314) teaches the receiver substrate to be a flat panel display [0031] therefore the acceptor substrate is a flat surface. Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kotler et al. (2018/0090314) in combination with Kearl (2004/0191594) in combination with Ramaswamy et al. (2018/0366738). Features detailed above concerning the teachings of Kotler et al. (2018/0090314) in combination with Kearl (2004/0191594) are incorporated here. Kotler et al. (2018/0090314) in combination with Kearl (2004/0191594) fail to teach the carrier fluid to have the claimed boiling point and be of the claimed materials. Ramaswamy et al. (2018/0366738) teaches catalyst inks typically include a solvent including water and/or alcohols and drying to remove [0004],[0015],[0050]. Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Gao et al. (2009/0104557) in combination with Phillips (5,841,464) catalyst ink to include the claimed solvents of water and/or alcohol as evidenced by Ramaswamy et al. (2018/0366738) with the expectation of producing the claimed catalyst layer. Regarding claim 18, the Examiner takes the position that the claimed solvent boiling point would be met as the solvents are the same as those claimed and hence would possess the claimed boiling points as both teach water and alcohols. Response to Amendment Applicants’ arguments with respect to claims 1-3,5-8 and 10-18have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicants argued the prior art failed to teach the LIFT process on a non-flat plate of a SOFC. Kotler et al. (2018/0090314) in combination with Kearl (2004/0191594) teaches coating catalysts on a bipolar plate for SOFC and the LIFT process for coating metal pastes. 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 BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM. 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, MICHAEL CLEVELAND can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRIAN K TALBOT/Primary Examiner, Art Unit 1712
Read full office action

Prosecution Timeline

Oct 09, 2024
Application Filed
Mar 17, 2026
Non-Final Rejection mailed — §103, §112
Jun 10, 2026
Response Filed
Sep 03, 2026
Final Rejection mailed — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
59%
Grant Probability
90%
With Interview (+30.9%)
3y 3m (~1y 4m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1182 resolved cases by this examiner. Grant probability derived from career allowance rate.

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