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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
06/12/2025.
Status of Rejections
All other previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claim(s) 1 and 6-13 is/are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 and 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mignani et al (FR 2988405 A1, Google Patents translation used for citations) in view of Krawiec et al (US 6,225,003 B1).
Claim 1: Mignani discloses a composite material (see e.g. abstract) comprising:
a metal-containing cluster catalyst (“metal particles”, see e.g. abstract),
a binder (see e.g. page 5, paragraph starting with “According to one) and
a carrier (“electroconductive support”. see e.g. abstract), wherein:
the metal-containing cluster catalyst is supported on the carrier (see e.g. abstract),
the metal-containing cluster catalyst comprises a cluster (“agglomerated”, see e.g. page 6, paragraph starting with “The composite”) including at least one metal atom (M), (M) being selected from the group including copper (See e.g. page 7, paragraph starting with “The metal particles” and page 8, paragraph starting with “Typically, the”),
the carrier is selected from the group consisting of carbon and a polymer (see e.g. page 5, paragraph starting with “According to”),
the metal-containing cluster catalyst is used for reducing carbon dioxide (see e.g. page 3, paragraph starting with “The present”), and
the composite material is a cathode electrode of the carbon dioxide reduction apparatus (see e.g. page 3, paragraph starting with “The present”).
Mignani discloses a primary particle diameter of the cluster is 1-100 nm (see e.g. page 8, paragraph starting with “It is also”), which overlaps with the claimed range of 0.95 to 1.20 nm. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani discloses that the cluster is composed of a metal oxide represented by the following general formula (1):
MnOm ... (1) (see e.g. page 7, paragraph starting with “The metal particles”), where:
M represents the metal atom (M) (see e.g. page 7, paragraph starting with “The metal particles”);
n and m are integers (see e.g. page 7, paragraph starting with “The metal particles”);
n is 1 to 20 (see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed range of 12 or more and 30 or less;
m is 1 to 20 see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed ranges of when n is 12, m is 8; and when n is 13 or more and 30 or less, m is, with respect to n, such that a ratio m/n is 0.55 to 0.77. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani does not explicitly teach the metal-containing cluster catalyst is bound to the carrier via a binder. Krawiec teaches an electrode comprising clusters of an electrode active material (see e.g. abstract of Krawiec) of a metal oxide (see e.g. col 5, lines 58-65 of Krawiec), wherein the cluster is bound to a carrier using a binder (see e.g. abstract of Krawiec). The binder “increases, among other things, electrical conductivity and adhesion of the electrode material clusters to the current collector, as well as enhances mechanical properties” (see e.g. col 1, lines 9-15 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the material of Mignani to use a binder to bind the clusters to the carrier as taught in Krawiec because the binder of Krawiec increases electrical conductivity, adhesion, and enhances mechanical properties.
Claim 6: Mignani discloses a cathode electrode of a carbon dioxide reduction apparatus (see e.g. page 3, paragraph starting with “The present”) comprising: a composite material (see e.g. abstract) comprising
a metal-containing cluster catalyst (“metal particles”, see e.g. abstract),
a binder (see e.g. page 5, paragraph starting with “According to one) and
a carrier (“electroconductive support”. see e.g. abstract), wherein:
the metal-containing cluster catalyst is supported on the carrier (see e.g. abstract),
the metal-containing cluster catalyst comprises a cluster (“agglomerated”, see e.g. page 6, paragraph starting with “The composite”) including at least one metal atom (M), (M) being selected from the group including copper (See e.g. page 7, paragraph starting with “The metal particles” and page 8, paragraph starting with “Typically, the”),
the carrier is selected from the group consisting of carbon and a polymer (see e.g. page 5, paragraph starting with “According to”),
the metal-containing cluster catalyst is used for reducing carbon dioxide (see e.g. page 3, paragraph starting with “The present”), and
the composite material is a cathode electrode of the carbon dioxide reduction apparatus (see e.g. page 3, paragraph starting with “The present”).
Mignani discloses a primary particle diameter of the cluster is 1-100 nm (see e.g. page 8, paragraph starting with “It is also”), which overlaps with the claimed range of 0.95 to 1.20 nm. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani discloses that the cluster is composed of a metal oxide represented by the following general formula (1):
MnOm ... (1) (see e.g. page 7, paragraph starting with “The metal particles”), where:
M represents the metal atom (M) (see e.g. page 7, paragraph starting with “The metal particles”);
n and m are integers (see e.g. page 7, paragraph starting with “The metal particles”);
n is 1 to 20 (see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed range of 12 or more and 30 or less;
m is 1 to 20 see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed ranges of when n is 12, m is 8; and when n is 13 or more and 30 or less, m is, with respect to n, such that a ratio m/n is 0.55 to 0.77. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani does not explicitly teach the metal-containing cluster catalyst is bound to the carrier via a binder. Krawiec teaches an electrode comprising clusters of an electrode active material (see e.g. abstract of Krawiec) of a metal oxide (see e.g. col 5, lines 58-65 of Krawiec), wherein the cluster is bound to a carrier using a binder (see e.g. abstract of Krawiec). The binder “increases, among other things, electrical conductivity and adhesion of the electrode material clusters to the current collector, as well as enhances mechanical properties” (see e.g. col 1, lines 9-15 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the material of Mignani to include a binder for binding the clusters to the carrier as taught in Krawiec because the binder of Krawiec increases electrical conductivity, adhesion, and enhances mechanical properties.
Claim 7: Mignani discloses a carbon dioxide reduction apparatus (see e.g. page 9, paragraph starting with “The CO2 is”) comprising:
a cathode electrode for carbon dioxide reduction (see e.g. page 3, paragraph starting with “The present”),
the cathode electrode for carbon dioxide reduction including a composite material (see e.g. abstract) comprising
a metal-containing cluster catalyst (“metal particles”, see e.g. abstract),
a binder (see e.g. page 5, paragraph starting with “According to one) and
a carrier (“electroconductive support”. see e.g. abstract), wherein:
the metal-containing cluster catalyst is supported on the carrier (see e.g. abstract),
the metal-containing cluster catalyst comprises a cluster (“agglomerated”, see e.g. page 6, paragraph starting with “The composite”) including at least one metal atom (M), (M) being selected from the group including copper (See e.g. page 7, paragraph starting with “The metal particles” and page 8, paragraph starting with “Typically, the”),
the carrier is selected from the group consisting of carbon and a polymer (see e.g. page 5, paragraph starting with “According to”),
the metal-containing cluster catalyst is used for reducing carbon dioxide (see e.g. page 3, paragraph starting with “The present”), and
the composite material is a cathode electrode of the carbon dioxide reduction apparatus (see e.g. page 3, paragraph starting with “The present”).
Mignani discloses a primary particle diameter of the cluster is 1-100 nm (see e.g. page 8, paragraph starting with “It is also”), which overlaps with the claimed range of 0.95 to 1.20 nm. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani discloses that the cluster is composed of a metal oxide represented by the following general formula (1):
MnOm ... (1) (see e.g. page 7, paragraph starting with “The metal particles”), where:
M represents the metal atom (M) (see e.g. page 7, paragraph starting with “The metal particles”);
n and m are integers (see e.g. page 7, paragraph starting with “The metal particles”);
n is 1 to 20 (see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed range of 12 or more and 30 or less;
m is 1 to 20 see e.g. page 7, paragraph starting with “The metal particles”), which overlaps with the claimed ranges of when n is 12, m is 8; and when n is 13 or more and 30 or less, m is, with respect to n, such that a ratio m/n is 0.55 to 0.77. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)’.
Mignani does not explicitly teach the metal-containing cluster catalyst is bound to the carrier via a binder. Krawiec teaches an electrode comprising clusters of an electrode active material (see e.g. abstract of Krawiec) of a metal oxide (see e.g. col 5, lines 58-65 of Krawiec), wherein the cluster is bound to a carrier using a binder (see e.g. abstract of Krawiec). The binder “increases, among other things, electrical conductivity and adhesion of the electrode material clusters to the current collector, as well as enhances mechanical properties” (see e.g. col 1, lines 9-15 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the material of Mignani to include a binder for binding the clusters to the carrier as taught in Krawiec because the binder of Krawiec increases electrical conductivity, adhesion, and enhances mechanical properties.
Claim 8: Mignani in view of Krawiec teaches that the binder comprises a polymer (see e.g. page 5, paragraph starting with “According to one of Mignani and col 4, lines 44-64 of Krawiec).
Claim 9: Mignani in view of Krawiec teaches that the binder can be PTFE (see e.g. page 5, paragraph starting with “According to one of Mignani) or styrene butadiene copolymer (SBR), among other polymers (see e.g. col 4, lines 44-64 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the composite of Mignani in view of Krawiec by choosing one of the above polymers as the binder because KSR rationale E states it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 10: Mignani in view of Krawiec teaches that the binder comprises a polymer (see e.g. page 5, paragraph starting with “According to one of Mignani and col 4, lines 44-64 of Krawiec).
Claim 11: Mignani in view of Krawiec teaches that the binder can be PTFE (see e.g. page 5, paragraph starting with “According to one of Mignani) or styrene butadiene copolymer (SBR), among other polymers (see e.g. col 4, lines 44-64 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the cathode of Mignani in view of Krawiec by choosing one of the above polymers as the binder because KSR rationale E states it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 12: Mignani in view of Krawiec teaches that the binder comprises a polymer (see e.g. page 5, paragraph starting with “According to one of Mignani and col 4, lines 44-64 of Krawiec).
Claim 13: Mignani in view of Krawiec teaches that the binder can be PTFE (see e.g. page 5, paragraph starting with “According to one of Mignani) or styrene butadiene copolymer (SBR), among other polymers (see e.g. col 4, lines 44-64 of Krawiec). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the apparatus of Mignani in view of Krawiec by choosing one of the above polymers as the binder because KSR rationale E states it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Response to Arguments
Applicant’s arguments filed 06/12/2025 with respect to the rejection(s) of the claim(s) under 35 USC § 103 over Vajda in view of Le, Morita, Yin, and Krawiec have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC § 103 in view of Mignani.
Conclusion
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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 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 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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