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 claims 1-14, the method, in the reply filed on 4/20/26 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/20/26.
Claim Interpretation
Claim 1: Claim 1 recites “a highly active oxygen evolution electrode for water electrolysis” which is intended use and does not further limit the claim beyond the structure required by the body of the claim.
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.
Claims 1-14 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.
Claim 1: The term “highly” in claim 1 is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. If the structure is met then the prior art will be considered to read on the limitation.
Claims 2-14: Claims 2-14 are rejected for being indefinite because they depend from claim 1 and do not remedy the issues in claim 1.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-3, 6, 10, 11, & 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gutjahr et al. (US Patent 3,926,671; hereafter ‘671).
Claim 1: ‘671 discloses a method of manufacturing a nickel hydroxide electrode (title), comprising:
exposing a surface of a nickel electrode to water vapor (see Example 1, col. 4, line 35 – col. 5, line 45), and
heat-treating the electrode exposed to water vapor (see Example 1, col. 4, line 35 – col. 5, line 45).
Claim 2: The exposure to water vapor is exposure to a mixture of a carrier gas with the water vapor (see Example 1, col. 4, line 35 – col. 5, line 45).
Claim 3: The carrier gas is hydrogen gas (see Example 1, col. 4, line 35 – col. 5, line 45).
Claim 6: The exposure of water vapor forms a hydroxide layer on the surface of the nickel electrode (see Example 1, col. 4, line 35 – col. 5, line 45).
Claim 10: The nickel electrode is a porous nickel electrode (see Example 1, col. 4, line 35 – col. 5, line 45).
Claim 11: The porosity of the porous nickel electrode is 90% (col. 5, lines 6-7).
Claim 13: ‘671 further teaches depositing a catalyst on the electrode after the heat-treating of the electrode exposed to the water vapor (col. 5, lines 9-25).
Claims 1, 2, 6, 7, 10, & 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feng et al. (Feng et al., Applied Surface Science 622 (2023) 156934; hereafter Feng).
Claim 1: Feng discloses a method of manufacturing a highly active oxygen evolution electrode for water electrolysis (see title & abstract), comprising:
exposing a surface of a nickel electrode to water vapor (§§ 2.2-2.3, pg 2); and
heat-treating the electrode exposed to water vapor (the reaction cell was heated during formation, §2.2, pg 2).
Claim 2: The exposure to water vapor is exposure to a mixture of a carrier gas with the water vapor (§§ 2.2-2.3, pg 2),
Claim 6: The exposure to water vapor forms a hydroxide layer on the surface of the nickel electrode (title).
Claim 7: The hydroxide layer includes NiOOH and Ni(OH)2 (see pg 4).
Claim 10: The nickel electrode is a porous nickel electrode (see §2.1, pg 2).
Claim 12: Feng further teaches removing impurities on the surface of the nickel electrode prior to the exposure to water vapor (see §2.3, pg 2).
Claims 13-14: NiFe LDH is formed on the surface (see §3.2, pgs 6-7).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 & 5 are rejected under 35 U.S.C. 103 as being unpatentable over ‘671.
Claim 4: The treatment system is saturated at 25ºC with water vapor (see Example 1, col. 4, line 35 – col. 5, line 45).
Though ‘671 does not explicitly teach using a concentration greater than 40% it would have been obvious to optimize the concentration to obtain the desired results because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 5: The exposure to water vapor is performed at 980ºC (see Example 1, col. 4, line 35 – col. 5, line 45).
Though ‘671 does not explicitly teach using a temperature of 250-300ºC it would have been obvious to optimize the temperature to obtain the desired results because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 4, 5, 8, 9, & 11 are rejected under 35 U.S.C. 103 as being unpatentable over Feng.
Claim 4: Though Feng does not explicitly teach using a concentration greater than 40% it would have been obvious to optimize the concentration to obtain the desired results because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 5: Feng teaches heating the reaction chamber but does not teach that the exposure to water vapor is performed at 250-300ºC.
Though Feng does not explicitly teach using a temperature of 250-300ºC it would have been obvious to optimize the temperature to obtain the desired results because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 8-9: Feng teaches that the OER performance is related with the active sites and that the ratio of NiOOH to Ni(OH)2 is related to the performance (see §3.1 pgs 3-6).
Though Feng does not explicitly teach that percentage of each species it would have been obvious to optimize the concentration to obtain the desired results because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 11: Though Feng does not explicitly teach degree of porosity it would have been obvious to optimize the porosity to obtain the desired results because differences in concentration of the pores will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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