`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`15/500,382
`
`01/30/2017
`
`Kazuhide KAMIYA
`
`MIYOP0132WOUS
`
`3583
`
`05/09/2018 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`NGUYEN, KHANH TUAN
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
`
`CLEVELAND, OH 44115
`
`1761
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/09/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 15/500,382 KAMIYA ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1761KHANH T. NGUYEN $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 01/30/2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`1) E Notice of References Cited (PTO-892)
`3) I] Interview Summary (PTO-413)
`.
`.
`Paper No(s)/Mai| Date.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 01/30/17 and 09/27/17. 4) D Other: —-
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180430
`
`Disposition of Claims*
`5)|XI Claim(s) wis/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s fl? is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PF"eredback©uspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 01/30/2017is/are: a)IXI accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`33.le Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attach ment(s)
`
`
`
`

`

`Application/Control Number:
`
`15/500,382
`
`Page 2
`
`Art Unit: 1761
`
`
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present applica
`
`is being examined under
`
`
`the AIA.
`
`:ion,
`
` ,he
`
`
`jirst inventor
`
`
`filed on or a
`
` 30
`
`‘ter March 16, 2013,
`
`W
`
`I]
`
`le provisions 0;
`
`Response to Amendment
`
`The preliminary amendment
`
`
`filed on 01/30/2017 is entered
`
`and acknowledged by the
`
` Examiner.
`
`Claims 3,
`
`4,
`
`6, 8, 10,
`
`ll,
`
`13, and 14 have been amended.
`
`in the instant application.
`
`Claims 1—19 are current'y pending
`
`
`
`
`This application is a 371 of PCT/JP2015/004423 (filed on
`
`Priority
`
`
`
` "l
`
`
`
`.01,
` app'
`
`icant’s c'aim
`08/31/2015). Acknowledgment is made 0'
`
`
`
`foreign priority based on an application
`ed in Japan on
`
`08/28/2004.
`
`Information Disclosure Statement
`
`
`The in‘ormation disclosure statements
`
`
` (" DS) ‘iled on
`
`01/30/2017 and 09/27/2017 are in compliance with the provisions
`
`
`0: 37 CFR 1.97 and have been considered by the examiner.
`
`
`
`
`”ice Action.
`initialed copy accompanies this 0
`
`An
`
`
`The drawings filed on 01/30/2017 have been considered.
`
`Drawings
`
`Claim Rejections - 35 USC § 102
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
`
`
`
`Page 3
`
`
`
`
`The following is a quOtation of
`
`the appropriate paragraphs
`
`
`
`
`
`
`
`
`of 35 U.S.C. 102 that form the basis for the rejeCtions under
`
`
`
`”ice action:
`this section made in this 0
`
`A person shall be entitled to a patent unless —
`
`the claimed invention was patented, described in a printed
`(a)(1)
`publication, or in public use, on sale or otherwise available to the
`public before the effective filing date of the claimed invention.
`
`Claims 1—6, 8—15, 17 and 19 are rejected under 35
`
`U.S.C. 102(a)(1) as being anticipated by JP 2006—202688
`
`(hereinafter Noguchi).
`
`
`
`
`
`Initially, it should be noted that the Noguchi reference is
`
`
`
`
`
`
`cited in the "DS filed on 09/27/2017 and cited in the
`
`
`international search report as an "X" filed on 09/27/2017.
`
`Regarding claim 1, Noguchi discloses an electrode catalyst
`
`comprises a mesh-like heterocyclic macrocyclic compound having
`
`void parts (pores)
`
`in the compound (See Abstract). Noguchi
`
`discloses that the heterocyclic macrocyclic compound being a
`
`polymer having a structure in which a hetero atom comprises two
`
`or more elements 0: Group 13-16 element are introduce to
`
`
`
`
`
`triazine ring, pyrazine ring, and pyrimide ring (See [0008]
`
`to
`
`[0010]; Fig.
`
`2 — poly(2,5,8—triamino—tris—s—triazine)).
`
`
`
`heterocyclic macrocyclic compound of Noguchi
`"ul”i11s the
`
`
`The
`
`
`claimed covalent organic framework. Noguchi
`
`urther disc'oses
`
`
`
`
`
`that the heterocyclic macrocyclic compound (platinum catalyst)
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
`
`
`
`is supported on conductive aCtivated carbon (See [0012]).
`
`
`
` u]"i]'s the claimed
`conduCtive activated carbon 0: Noguchi
`
`
`
`
`
`
`
`
`conduCtor material and a support for the covalent organic
`
`
`
`Page 4
`
`The
`
`
`framework as required in the instant claim.
`
`Regarding claims 2-4, Noguchi discloses that the
`
`I]
`
`heterocyclic macrocyclic compound having repeated units or
`
`triazine rings in a molecule and can be covalent bonded to
`
`hetero atoms
`
`(See Figs. 1-3 and [0008]-[0010]).
`
`Regarding claims 5-6,
`
`the instant claim require the claimed
`
`covalent organic framework compound to be obtained by a
`
`
`condensation reaCtion O" dicyanobenzene as recited in claim 5 or
`
`
`
`dicyanopyridine or obtain by an in—situ reaction 0" polymerizing
`
`monomers on the conductor materia' as recited in c'aim 6.
`
`These
`
`claims are a product-by-process claim and are not limited to the
`
`
`
`
`manipulations of the recited steps, only the structure limited
`
`by the steps.
`
`
`
`Th r for ,
`th pat ntabiliuy of
`
`the product
`
`
`(covalent organic framework compound) does nOt depend on its
`
`
`method 0: production (condensation reaction or reaction 0'
`
`polymerizing monomers) and the claimed steps were not given
`
`patentable weight.
`
`Furthermore, Noguchi discloses the compound
`
`having condensed rings including pyridine and cyano groups
`
`(See
`
`[0008] and [0009]) and the compound is supported on conductive
`
`carbon material,
`
`
`the compound 0: Noguchi would be structurally
`
`
`
`
`
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
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`
`
`Page 5
`
`same or substantially similar to the compound produced by
`
`
`condensation reaction 0" dicyanobenzene or dicyanopyridine.
`
`Regarding claims 8-9, Noguchi discloses a conduCtive
`
`activated carbon (See [0012]).
`
`The conductive activated carbon
`
`
`0: Noguchi encompass the instant claimed carbon material.
`
`Regarding claim 10, Noguchi discloses conductive activated
`
`carbon (See [0012]), which encompass nanoparticle materials.
`
`
`
`Regarding c'aims 11—12, Noguchi discloses including
`
`
`
`platinum group element or copper is coordinated to the covalent
`
`
`organic framework (See Figs. 1-3;
`
`[0011]).
`
`Regarding claims 13—14, Noguchi discloses the compound is
`
`
`
`
`useful as an electrode as electrode catalyst
`or
`uel cell
`
`(See
`
` Abstract).
`
`Regarding claim 15, Noguchi discloses that the compound
`
`
`
`(complex metal
`
`[0013]).
`
`- catalyst) can adsorb and generate hydrogen (See
`
`
`
`
`
`Regarding claim 17, Noguchi discloses the compound includes
`
`platinum group element is coordinated to the covalent organic
`
`
`framework (See Figs. 1-3;
`
`[0011]).
`
`
`
`Regarding claim 19, Noguchi discloses that the catalyst has
`
`oxygen reduction ability (See [0002]).
`
`

`

`Application/Control Number:
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`15/500,382
`
`Page 6
`
`Art Unit: 1761
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`
`
`
`
`
`The reference speci
`fically or inherently meets each of the
`
`
`claimed limitations
`in their broadest interpretations.
`
`The
`
`re
`
`
`ference is anticipatory.
`
`Claim Rejections - 35 USC § 103
`
`
`The
`following is a quotation of 35 U.S.C. 103(a) which
`
` forms the basis
`
`
`
`for all obviousness rejections set forth in this
`
`
`
`O ”ice action:
`
`
`(a) A patent
`though the invention is not identically
`may not be obtained
`disclosed or
`described as set for
`:h in section 102 of this title,
`if the
`
`n th
`diff r nc s b tw
`subj ct matter sought
`to be patented and the prior
`art are such
`:er as a whole would have been obvious at
`that the subject mat
`the time the
`invention was made t
`art to which
`
`negatived by
`
`said subject matter
`the manner
`in which
`
`o a person having ordinary skill in the
`pertains. Patentability shall not be
`the invention was made.
`
`The
`factual inquiries set
`
`CO., 383 U.S.
`
`1,
`
`148 USPQ 459 (
`
`forth in Graham v.
`
`JOhn Deere
`
`1966),
`
`that are applied
`
`:OI
`
`
`establishing a background
`
`
`for determining obviousness under 35
`
` follows:
`
`U.S.C. 103(a) are summarized as
`
`
`
`
`Determining the scope
`
`
`Ascertaining the di""
`the claims at issue.
`
`
`
`Qesolving the level 0"_ ordinary skill
`in the pertinent
`art.
`
`
`and contents 0:
`
`the prior art.
`
`r nc s b tw
`
`n th prior art and
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`
`Considering obj ctiv
`vid nc pr s nt
`ication
`app
`
`indicating obviousness or nonobviousness.
`
`in the
`
`This application currently
`
`
`
`
`
`
`
`considering patentability 0'
`
`the examiner presimes that
`
`claims was commonly owned at
`
`names joint inventors.
`
`in
`
`the claims under 35 U.S.C. 103(a),
`
`the time any inventions covered
`
`the various
`
`
`
` the subject matter 0
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
`
`
`
`Page 7
`
`
`th r in w r mad
`abs nt any evidence to the contrary.
`
`
`Applicant is advised o:
`
`
`
`point out
`
`the obligation inder 37 CFR l.56 to
`
`
`the inventor and invention daues ol each claim that
`
`
`
`
`
`was nOt commonly owned at the time a later invention was made in
`
`
`
`
`
`
`
`
`order for the examiner to consider the applicability of 35
`
`U.S.C.
`
`lO3(c) and potential 35 U.S.C. 102(e),
`
`
`(f) or
`
`(g) prior
`
`art under 35 U.S.C.
`
`lO3(a).
`
`Claims 16 and 18 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Noguchi
`
`(JP 2006—202688).
`
`Regarding claims l6 and 18, Noguchi discloses an elemental
`
`composition (a metal element) containing covalent organic
`
`
`
`
`
`
`framework (heterocyclic macrocyclic compound) and conductor
`
`material
`
`(conductive activated carbon support)
`
`(See [0011]-
`
`[0012]), but does not disclose a ratio 0:
`
`
`
`the an elemental
`
`
`
`to covalent organic framework
`
`composition (a metal element)
`
`
`
`(heterocyclic macrocyclic compound)
`
`is 0.005 to l as required in
`
`the instant claim. Given the board range ol
`
`,he ratio, i.e.,
`
`a person skilled in the art at the time the
`
`
`
`
`
`
`from 0.005 to l,
`
`
`
`
`invention was filed would have formulate a catalyst having a
`
`
`ratio 0: elemental composition (a metal element)
`
`to covalent
`
`organic framework (heterocyclic macrocyclic compoand) with
`
`
`
`
`,o
`
`respec,
`
`
`
`
`support) within the board range 0: 0.005 to l.
`
`conductor material
`
`(conductive activated carbon
`
`
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
`
`
`
`Page 8
`
`Claim 7 is rejected under 35 U.S.C. 103 as being
`
`unpatentable over Noguchi
`
`(JP 2006—202688) as applied to the
`
`claims above, and further in view of US 2010/0280216 A1
`
`(hereinafter Antonietti).
`
`
`Noguchi is relied upon as set forth above.
`
`Regarding claim 7, Noguchi discloses a triazine-containing
`
`
`compound useful as electrode catalyst
`
`(See [OOO8]-[OO;O]), but
`
`
`does not disclose the :riazine-containing compound selected from
`
`
`
`a group as recited in the instant claim.
`
`
`
`
`
`
`
`Antonietti discloses (See [0001] and [1008]) electrode
`
`
`catalys: comprises a condensation reaction 0" triazine rings,
`
`in
`
`particular 1,3,5—triazine rings, with 1,4-dicyanobenzene to
`
`yield:
`
`
`
`
`
`
`
`The triazine—containing compound of Antonieuti ul"ills the
`
`
`claimed covalent organic framework. AnconieLLi further
`
`
`
`
`

`

`Application/Control Number: 15/500,382
`
`Art Unit: 1761
`
`
`
`Page 9
`
`discloses that the catalyst electrode material contains carbon
`
`(See [0107]).
`
`
`Noguchi and Antonietti are combin d b caus
`th y ar
`
`drawn
`
`to a catalyst electrode material containing triazine—containing
`
`
`
`compound and carbon. Therefore, it would have been obvious lOI
`
`a skilled artisan at the time the invention was made to
`
`incorporate a triazine-containing compoand of Antonieuti
`
`(the
`
`
`claimed covalent organic framework)
`
`in the eleCtrode catalyst
`
`
`material 0: Noguchi
`
`in order to provide stability and have a
`
`
`
`
`
`
`persistent pore structure as suggested by Antonietti
`
`(See [0017]
`
`
`o: Antonietti).
`
`
`
`
`"n view 0
`the foregoing,
`
`
`
`patentably distinguish over the applied art.
`
`
`the above claims have failed to
`
`Conclusion
`
`Any inquiry concerning this communication or earlier
`
`commJnications from the examiner should be directed to KHANH T.
`
`
`
`
`
`NGUYEN whose telephone number is (571)272—8082.
`
`The examiner
`
`
`can normally be reached on M-F 9:00-6:00 EST PM.
`
` 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
`
`
`
`
`(AIR) at
`
`
`encouraged to Jse the USPTO Automated Interview Request
`
`http://www.uspto.gov/interviewpraCtice.
`
`
`
`
`
`