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 I (claims 1-27) in the reply filed on 12/10/2025 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 21, 25 and 27 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 21, 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 21 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 catalyst layer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the substrate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 17 and 25 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 17 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 25 is dependent of claims 21 and 1. Claim 1 requires Ir, Ru and Pd, and claim 25 require only Ir, and at least one of Ru or Pd, 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) 1-3, 6, 7, 9, 11 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohn (IL 73536 A).
Considering claims 1-3, 6, 7, 9, 11, Cohn discloses a catalyst comprising 50-90% ruthenium, 5-25% palladium, and 5-25% iridium, all by weight of the metals (page 10, lines 18-21). The atomic masses of Ru, Pd and Ir are 101, 106 and 192 respectively. The molar percentages are therefore 50-90% ruthenium corresponds to 61-94 at%; 5-25% palladium corresponds to 4.1-31 at% and 5-25% iridium corresponds to 2.4-17 at%.
In particular example Cohn discloses the catalyst comprises Ru/Pd/Ir (4g of Ru, 0.5g of Pd and 0.5g of Ir) (page 22, table 3, Ref. #24). Corresponds to Ru: 84 at%, Pd: 10 at% and Ir: 6 at%.
Considering claim 15, the metallics of Cohn inherently comprise a single or mixed phase.
Claim(s) 1-3, 6, 7, 11, 12, 15-20 and 22-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitagawa et al. (US 20200001370 A1).
Considering claims 1-3, 6, 7, 11 and 12, Kitagawa discloses a catalyst comprising Pd:Ru:Ir = 1:1:1 [0092].
Considering claim 15, the metallics of Kitagawa inherently comprise a single or mixed phase.
Considering claims 16-18, Kitagawa discloses one or more metallics within the catalyst are oxidized [0039].
Considering claims 19 and 23, 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, Kitagawa discloses the catalyst is unsupported or supported or carbon or an oxide [0060].
Considering claim 22, Kitagawa discloses a surface of the catalyst is nanostructured, because the particles are nanosized [0042].
Considering claim 24, 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 Kitagawa 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 25, Takasu discloses a catalyst comprising Pd:Ru:Ir = 1: 1: 1 (molar ratio) [0092].
Considering claim 26, Kitagawa discloses the mean particle size is 1 to 30 nm [0064]. Therefore, the average crystalline size will be at most 1 to 30 nm, which falls within the claimed range of lower than 50 nm.
Considering claim 27, 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 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) 4, 9, 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cohn (IL 73536 A).
Considering claims 4, 9, 10 and 12, Cohn discloses a catalyst comprising 50-90% ruthenium, 5-25% palladium, and 5-25% iridium, all by weight of the metals (page 10, lines 18-21). The atomic masses of Ru, Pd and Ir are 101, 106 and 192 respectively. The molar percentages are therefore 50-90% ruthenium corresponds to 61-94 at%; 5-25% palladium corresponds to 4.1-31 at% and 5-25% iridium corresponds to 2.4-17 at%.
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.
Claim(s) 4, 8-10, 13, 14 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa et al. (US 20200001370 A1).
Considering claims 4, 8-10, 13, 14, Kitagawa discloses a catalyst comprising PdxRuyMz, where M is Ir, z is 10%-90% molar ratio, x+y is 10% to 90% and x+y+z=1 [0052].
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 21, Kitagawa discloses when M=M1p2M2q2 , p2=0.01 to 0.99, q2=0.99 to 0.01, and p2+q2=1 [0055], where Ir and Pt is preferred [0054].
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art (Kitagawa et al. US 20200001370 A1) discloses a catalyst comprising Pd:Ru:Ir = 1: 1: 1 (molar ratio).
Wang et al. (US 20190280310 A1) discloses IrzPdxRuy catalyst, where and 0≤x≤20, 10≤y≤90, and, 10≤z≤90 (abstract and [0011]), and less than 2 at% or additional element [0040] such as Cr [0045].
However, claim 5 requires the catalyst further include Cr, and wherein the concentrations of Ir, Ru, Pd and Cr relative to each other are on average Ir (16-33 at%), Ru (25- 49 at%), Pd (14-49 at%), and Cr (7-9 at%).
The prior art of record does not disclose nor suggest the instantly claimed invention as a whole.
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