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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 1-25) in the reply filed on 12/05/2025 is acknowledged.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19 and 25 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.
Regarding claim 19, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 19 requires additional elements, which also lists Mo. Mo is already required in the independent claim 1. Therefore, the scope of the term additional elements is indefinite, because it is not clear if any of the three required elements in the independent claim 1 are also considered as additional elements, which would contradict the customary meaning of the term “additional”.
Claim 25 recites the limitation "the substrate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 15 and 23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 is fails to further limit the subject matter of claim 14, because the limitations are not positively recited and are merely optional. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 23 is dependent of claims 22, 21 and 1. Claim 1 requires Ir, Ru and Mo, claim 22 states that the catalyst is a catalytic layer and claim 23 require only Ir, and at least one of Ru or Mo, thus broadening the scope of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 13-18 and 20-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takasu et al. (JP 2007265936 A, machine translation).
Considering claims 1, 2 and 18, Takasu discloses a catalyst comprising Ru: Mo: Ir = 1: 1: 1 (molar ratio) [0057].
Considering claim 13, the metallics of Takasu inherently comprise a single or mixed phase.
Considering claims 14-16, Takasu discloses one or more metallics within the catalyst are oxidized [0057].
Considering claims 17 and 21, the method limitations are product-by-process limitations, which do not require any particular structure or composition of the claimed catalyst. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Considering claim 20, Takasu discloses a surface of the catalyst is nanostructured, because the particles are nanosized [0037].
Considering claim 22, with respect to the limitation reciting the catalyst is a catalytic layer in an electrode suitable for oxygen evolution in electrolytic processes, the limitation is merely intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the catalyst of Takasu is used in an oxygen electrode, and has the same composition as claimed therefore will inherently have the claimed capability of generating oxygen.
Considering claim 23, Takasu discloses a catalyst comprising Ru: Mo: Ir = 1: 1: 1 (molar ratio) [0057].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3-12, 19, 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takasu et al. (JP 2007265936 A, machine translation).
Considering claims 3-12, Takasu teaches in the case of two components, the metal composition ratio contained in the electrode catalyst of the present invention is preferably in the range of 1: 9 to 9: 1 by molar ratio. In the range other than this ratio, high activity and mechanical and chemical stability of the catalyst due to the combination of components cannot be obtained [0029].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the amount of each element at not less than 10 at% with respect to the remaining metals in the catalyst of Takasu, because Takasu teaches in the composition ratio in the electrode catalyst of the present invention is preferably in the range of 1: 9 to 9: 1 by molar ratio, because when the range other than this ratio is used, high activity and mechanical and chemical stability of the catalyst due to the combination of components cannot be obtained. Even though the teaches only explicitly recites two components, it would be obvious that the same logic would apply to three element catalyst, where not less than 10 at% with respect to the remaining metals in the catalyst is used as lower amount would not have the desired effect of high activity and mechanical and chemical stability of the catalyst due to the combination of components. Therefore, for three metal system the concentrations of each element would be from 10 at% to 80 at%, which overlap the claimed ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Considering claim 19, Takasu discloses catalyst comprises two or more metals [0024].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an additional metal in the catalyst of Takasu, because Takasu teaches that two or metals can be selected from the group of metals, therefore one would have known to combine an additional metal into the catalyst.
Considering claim 24, Takasu discloses the typical dimension of the catalyst (90% or more of all particles) is 1 to 100 nm [0031]. Therefore, the average crystalline size will be at most 1 to 100 nm, which falls within the claimed range of lower than 50 nm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Considering claim 25, with respect to the limitation reciting how the catalyst is used, what is interposed between the catalyst and a substrate, the claim is to a catalyst and the claimed protective layer does not further limit the catalyst, but merely recites how the catalyst is used. Therefore, the limitation is merely intended use.
Claim(s) 1 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (NATURE COMMUNICATIONS | ‘2021’ 12 : 5676) in view of Hrabek et al. (International Journal of Hydrogen Energy 47 ‘2022’ 21033-21043).
Considering claims 1 and 18, Liu discloses a catalyst comprising Ir (Rh, Au, Ru)-MoO3, where (Rh, Au, Ru) are alternative metals to Ir (abstract).
However, Hrabek discloses Ir-Ru metals at 1:3 ratio offers surprisingly low degradation, stable low-iridium loading catalyst (page 21042, Conclusions).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace Ir in the Ir-MoO3, in the catalyst of Liu, with Ir-Ru at 1:3 ratio, because Hrabek discloses Ir-Ru metals at 1:3 ratio offers surprisingly low degradation, stable low-iridium loading catalyst (page 21042, Conclusions).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794