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 10/21/2025.
Status of Rejections
The rejection(s) of claim(s) 5-6 is/are obviated by applicant’s cancellation.
The previous rejection of claim 25 is withdrawn in view of applicant’s amendments.
New grounds of rejection are necessitated by applicant’s amendments.
All other previous rejections are maintained and modified only in response to the amendments to the claims.
Claims 1-4, 8-10, 12, 14-19 and 21-35 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.
Claims 1-2, 4, 9-10, 17, 26-27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hinden et al. (U.S. Patent No. 4,454,169) in view of Hatton et al. (U.S. 2016/0138174).
Regarding claims 1-2 and 26-27, Hinden teaches an electrode comprising a catalyst (see e.g. Col. 1, lines 7-9, and Col. 3, lines 60-65) obtained by sintering a homogenous mixture comprising a metal derivative, a nitrogen-containing derivative and a carbon compound at 300°C to 400°C (see e.g. Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23, 35-36 and 44-46, heat treatment, i.e. sintering, at 300-400°C of catalyst precursors including metal catalyst, support particles such as graphite, and organic precursor polymer such as polyvinyl pyridine, the metal catalyst uniformly distributed within a matrix of the polymer and on the support particles, thereby forming a homogenous mixture),
wherein the nitrogen-containing derivative is a pyridine derivative (see e.g. Col. 3, lines 35-36, polyvinyl pyridine),
wherein the pyridine derivative is at least a polymer having a plurality of pyridine rings (see e.g. Col. 3, lines 35-36, polyvinyl pyridine polymer which comprises a plurality of pyridine units),
and wherein a metal element of the metal derivative is at least one selected from the group consisting of Co and Ni (see e.g. Col. 2, lines 13-16).
Hinden does not explicitly teach the pyridine derivative polymer having a weight-average molecular weight of 10,000 or more, but does teach it being a conducting polymer (see e.g. Abstract).
Hatton teaches a composition useful as a catalyst in electrochemical cell (see e.g. Abstract and Paragraph 0005) comprising a conductive matrix and an electrochemically active polymer such as a conducting polymer (see e.g. Paragraphs 0061 and 0074), wherein the electrochemically active polymer may have a molecular weight of 10,000 to 500,000 g/mol (see e.g. Paragraph 0077, lines 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pyridine derivative polymer of Hinden to have a molecular weight of 10,000 to 500,000 g/mol as taught by Hatton as a suitable molecular weight for a conductive polymer used in a catalyst composition for an electrochemical cell.
The limitation of “the electrode [being] a cathode” is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Hinden teaches all the structural limitations of the claimed electrode as stated above. Hinden further teaches the electrode generally being used for electrocatalytic processes (see e.g. Col. 1, lines 7-9, and Col. 3, lines 60-65). The electrode of modified Hinden would therefore be capable of use as a cathode.
Regarding claim 4, modified Hinden teaches a content the metal element derived from the metal derivative in the homogeneous mixture being less than 10 mass% (see e.g. Hinden Col. 2, lines 34-38, small amount of platinum group metal incorporated with support preferably forming more than 90 wt%), encompassing the claimed range of the present invention.
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.”
Regarding claim 9, the limitation of the catalyst being a catalyst “for carbon dioxide reduction” is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Hinden teaches all the structural elements of the claimed catalyst as stated above, and further teaches the catalyst generally being used in an electrode for electrocatalytic processes (see e.g. Hinden Col. 3, lines 60-65). The catalyst of modified Hinden would therefore be capable of use for carbon dioxide reduction.
Regarding claim 10, Hinden teaches a method for producing an electrode comprising a catalyst (see e.g. Col. 1, lines 7-10, and Col. 3, lines 60-65), comprising sintering a homogeneous mixture comprising a metal derivative, a nitrogen-containing derivative and a caron compound at 300°C to 400°C to obtain the catalyst (see e.g. Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23, 35-36 and 44-46, heat treatment, i.e. sintering, at 300-400°C of catalyst precursors including metal catalyst, support particles such as graphite, and organic precursor polymer such as polyvinyl pyridine, the metal catalyst uniformly distributed within a matrix of the polymer and on the support particles, thereby forming a homogenous mixture), and
attaching the catalyst to an electrode base material (see e.g. Col. 3, lines 60-65, catalyst particles fixed to electrode base),
wherein the nitrogen-containing derivative is a pyridine derivative (see e.g. Col. 3, lines 35-36, polyvinyl pyridine),
wherein the pyridine derivative is at least a polymer having a plurality of pyridine rings (see e.g. Col. 3, lines 35-36, polyvinyl pyridine polymer which comprises a plurality of pyridine units), and
wherein a metal element of the metal derivative is at least one selected from the group consisting of Co and Ni (see e.g. Col. 2, lines 13-16).
Hinden does not explicitly teach the pyridine derivative polymer having a weight-average molecular weight of 10,000 or more, but does teach it being a conducting polymer (see e.g. Abstract).
Hatton teaches a composition useful as a catalyst in electrochemical cell (see e.g. Abstract and Paragraph 0005) comprising a conductive matrix and an electrochemically active polymer such as a conducting polymer (see e.g. Paragraphs 0061 and 0074), wherein the electrochemically active polymer may have a molecular weight of 10,000 to 500,000 g/mol (see e.g. Paragraph 0077, lines 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pyridine derivative polymer of Hinden to have a molecular weight of 10,000 to 500,000 g/mol as taught by Hatton as a suitable molecular weight for a conductive polymer used in a catalyst composition for an electrochemical cell.
The limitation of “the electrode [being] a cathode” is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Hinden teaches all the structural limitations of the claimed electrode as stated above. Hinden further teaches the electrode generally being used for electrocatalytic processes (see e.g. Col. 1, lines 7-9, and Col. 3, lines 60-65). The electrode of modified Hinden would therefore be capable of use as a cathode.
Regarding claim 17, modified Hinden teaches an electrode base material attached to the catalyst (see e.g. Hinden Col. 3, lines 60-65, catalyst particles fixed to electrode base).
Regarding claim 31, Hinden as modified by Hatton teaches the nitrogen containing derivative being the pyridine derivative, and the pyridine derivative being a polymer having a weight-average molecular weight of about 50,000 g/mol up to about 500,000 g/mol and having a plurality of pyridine rings (see e.g. Hinden Col. 3, lines 35-36, polyvinyl pyridine polymer which comprises a plurality of pyridine units; see e.g. Hatton Paragraph 0077, lines 4-14).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hinden in view of Hatton, as applied to claim 1 above, and further in view of Tsou et al. (U.S. Patent No. 5,171,644).
Regarding claim 3, modified Hinden teaches all the elements of the electrode of claim 1 as stated above. Modified Hinden does not explicitly teach a molar ratio (nitrogen-containing aromatic ring/metal element) of a nitrogen-containing aromatic ring of the nitrogen containing derivative to the metal element of the metal derivative in the homogenous mixture being 2 or more and 20 or less.
Tsou teaches a catalyst for use in electrochemical cells (see e.g. Abstract) formed by heating a mixture of a metal salt, a carbon support and a polymer such as poly(4-vinylpyridine) (see e.g. Col. 3, lines 39-46, and Col. 5, lines 54-63), wherein molar ratio of one of the pyridine repeating units in the polyvinylpyridine to the metal salt is preferably 4 to 20 (see e.g. Col. 3, lines 31-34, atomic ratio of metal to pyridine unit preferably 0.05 to 0.25, equal to a pyridine to metal ratio of 4 to 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of modified Hinden to have a pyridine ring to metal element ratio of 4 to 20 as taught by Tsou as a suitable preferable ratio for a catalyst comprising metal, a carbon support and a pyridine polymer for use in electrochemical cells. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claims 8 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Hinden in view of Hatton, as applied to claim 1 above, and further in view of Uensal et al. (U.S. 2012/0094210).
Regarding claim 8, modified Hinden teaches all the elements of the electrode of claim 1 as stated above. Modified Hinden does not teach the carbon compound being carbon black, instead only exemplifying it as graphite (see e.g. Hinden Col. 2, lines 67-68). Hinden does however teach the carbon compound being a support for the metal catalyst (see e.g. Hinden Col. 2, lines 30-34).
Uensal teaches a catalyst ink for forming an electrode (see e.g. Abstract) wherein the catalyst material is preferably supported by electrically conductive carbon materials such as carbon blacks and graphite (see e.g. Paragraph 0019)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon compound of modified Hinden to comprise carbon black instead of graphite as taught by Uensal as an alternate suitable electrically conductive carbon support for catalyst materials. MPEP § 2143(I)(B) states that “simple substitution of one known element for another to obtain predictable results” may be obvious. 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)”.
Regarding claim 33, modified Hinden teaches the nitrogen-containing derivative being a pyridine derivative (see e.g. Hinden Col. 3, lines 35-36, polyvinyl pyridine).
Claims 18-19 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hinden in view of Hatton, as applied to claim 17 above, and further in view of Ma et al. (U.S. 2020/0220185).
Regarding claim 18, modified Hinden teaches the electrode comprising the catalyst according to claim 17 as a first electrode (see e.g. Hinden Col. 3, lines 60-65, catalyst particles fixed to electrode base to function as electrocatalyst). Modified Hinden does not teach a laminated assembly comprising the first electrode, an ion exchange membrane and a second electrode in this order, but does teach the first electrode being used in electrocatalytic processes (see e.g. Hinden Col. 3, lines 60-65).
Ma teaches a carbon dioxide reduction apparatus (see e.g. Abstract) comprising a sandwiched, i.e. laminated, membrane electrode assembly having a cathode layer with a reduction catalyst, an anode layer with an oxidation catalyst for oxygen evolution, and a polymer electrolyte membrane therebetween, this assembly enabling ionic communication between the anode layer and cathode layer while preventing electronic communication, which would produce a short circuit (see e.g. Paragraphs 0112 and 0239, and Paragraph 0106, lines 7-9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first electrode of modified Hinden to be provided in a laminated assembly with a second electrode on the other side of a polymer electrolyte membrane as taught by Ma as a suitable apparatus for an electrocatalytic process that enables ionic communication between the two electrodes while preventing electronic communication, which would produce a short circuit. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 19, Hinden as modified by Ma teaches the first electrode further comprising a catalyst additive (see e.g. Hinden Col. 3, lines 63-65, catalyst with binder for fixing to electrode base);
the ion exchange membrane being a cation exchange membrane, or the ion exchange membrane being an anion exchange membrane (see e.g. Ma Paragraph 0112, line 13, and Paragraph 0115, lines 1-4, PEM including ion-conducting polymer such as anion-conductor or cation-conductor).
Hinden as modified by Ma above does not explicitly teach the catalyst additive being a cation conducting compound when the membrane is a cation exchange membrane or an anion conducting compound when the membrane is an anion exchange membrane. Hinden does however teach it being an organic or inorganic binder (see e.g. Hinden Col. 3, lines 63-65).
Ma further teaches that an anode layer may include an oxidation catalyst and an ion-conducting polymer such as a cation-conductor or anion-conductor (see e.g. Ma Paragraph 0112, lines 10-11, and Paragraph 0115, lines 1-4), with examples of the ion-conducting polymer being a cation-conductor when the membrane is a cation exchange membrane (see e.g. Ma Paragraph 0132, lines 4-9) and being an anion-conductor when the membrane is an anion exchange membrane (see e.g. Ma Paragraph 0142)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the laminate assembly of modified Hinden to comprise a cation conductor as the catalyst additive when the membrane is a cation exchange membrane or an anion conductor as the catalyst additive when the membrane is an anion exchange membrane as taught by Ma as a suitable organic polymer/binder material for the anode layer, i.e. first electrode, of the laminate assembly. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 21, Hinden as modified by Ma teaches the second electrode comprising a second catalyst and a catalyst additive (see e.g. Ma Paragraph 0112, lines 7-8, cathode layer including reduction catalyst and ion-conducting polymer), and
the ion exchange membrane being an anion exchange membrane and the catalyst additive in the second electrode being an anion conducting compound (see e.g. Ma Paragraph 0142).
Regarding claim 22, Hinden as modified by Ma teaches the ion exchange membrane being a cation exchange membrane (see e.g. Ma Paragraph 0132, lines 6-9, membrane layer including cation-conducting polymer), and
the catalyst additive being a compound having a sulfonyl group (see e.g. Ma Paragraph 0132, lines 4-6, and Table on Pg. 13, Class C, anode layer including cation conducting polymer such as perfluorosulfonic acid polytetrafluoroethylene co-polymer, sulfonated poly(ether ether ketone), and poly(styrene sulfonic acid- co-maleic acid)).
Regarding claim 23, Hinden as modified by Ma teaches the ion exchange membrane being an anion exchange membrane (see e.g. Ma Paragraph 0142, lines 1-2, anion-exchange polymer electrolyte membrane), and
the catalyst additive having at least one functional group selected from the group consisting of an amino group and an ammonium group (see e.g. Ma Paragraph 0142, lines 3-5, and Table on Pg. 13, Class A, anode electrocatalyst layer with anion-exchange polymer electrolyte such as aminated tetramethyl polyphenylene and poly(ethylene-co-tetrafluoroethylene)-based quaternary ammonium polymer).
Regarding claim 24, Hinden as modified by Ma teaches a catalyst composition comprising the catalyst and the catalyst additive is held by the electrode base material in the first electrode (see e.g. Hinden Col. 3, lines 63-65, catalyst with binder for fixing to electrode base; see e.g. Ma Paragraph 0112, lines 10-11, anode layer including oxidation catalyst and ion-conducting polymer), and
a content of the catalyst additive in the catalyst composition being between 5 and 20 mass% or approximately 50 wt% (see e.g. Ma Paragraph 0216, lines 7-10).
Claims 12, 14-16, 29-30 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Kaczur et al. (U.S. 2017/0037522), and further in view of Hinden and Hatton.
Regarding claim 12, Ma teaches a carbon dioxide reduction apparatus (see e.g. Paragraph 0018, lines 1-3, and Paragraph 0299, lines 6-9, COx, e.g. CO2, reduction reactor including MEAs) comprising an electrode comprising a catalyst (see e.g. Paragraph 0018, lines 4-5, cathode including COx reduction catalyst), the catalyst comprising cobalt (see e.g. Paragraph 0160, lines 1-3) and a carbon-support part (see e.g. Paragraph 0162, lines 1-2),
wherein the cobalt is supported on the carbon support part (see e.g. Paragraph 0159, lines 2-4, support particles providing support for catalyst particles), and
wherein the cobalt is formed in a particulate cobalt, and the particulate cobalt has an average particle size of 0.2 nm to 10 nm (see e.g. Paragraph 0161, lines 1-3), and
wherein the electrode is a cathode (see e.g. Paragraph 0018, line 4).
Ma does not explicitly teach the cobalt being in the form of cobalt oxide, but does generally teach that any suitable reduction catalyst materials can be used (see e.g. Paragraph 0160, lines 1-6).
Kaczur teaches an electrochemical device for converting carbon dioxide (see e.g. Abstract) comprising a cathode electrocatalyst including transition metals, their oxides and combinations thereof deposited on a conductive carrier such as carbon (see e.g. Paragraph 0236, lines 1-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of Ma to alternately or additionally comprise the oxide of the cobalt transition metal as taught by Kaczur as a suitable cathode, i.e. reduction, catalyst for electrochemical conversion of carbon dioxide. 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)”.
Modified Ma does not teach the catalyst including a nitrogen-containing part, wherein the nitrogen containing part is in a homogenous mixture with the cobalt oxide and also supported on the carbon-support part, the nitrogen containing part is derived from at least one selected from the group consisting of a pyridine derivative, an imidazole derivative, a pyrazole derivative and a triazole derivative, and wherein the pyridine derivative is at least one selected from the group consisting of an aminopyridine consisting of one pyridine and at least one amino, a pyridine oligomer having four or more pyridine rings and having a weight-average molecular weight of less than 10,000, and a polymer having a weight-average molecular weight of 10,000 or more and having a plurality of pyridine rings.
Hinden teaches a catalyst for electrocatalytic processes (see e.g. Col. 3, lines 60-65) comprising a metal catalyst such as a cobalt oxide uniformly distributed within a matrix of a polymer such as nitrogen-containing polyvinyl pyridine and on support particles such as graphite, thereby forming a homogenous mixture (see e.g. Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23 and 35-36), this catalyst structure providing a large catalytically active surface area (see e.g. Col. 1, lines 59-62).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of modified Ma to comprise the cobalt oxide uniformly distributed within a polymer such as nitrogen-containing polyvinyl pyridine and on the support as taught by Hinden to provide the catalyst with a large catalytically active surface area.
Modified Ma does not explicitly teach the pyridine derivative polymer having a weight-average molecular weight of 10,000 or more. Hinden does however teach it being a conducting polymer (see e.g. Hinden Abstract).
Hatton teaches a composition useful as a catalyst in electrochemical cell (see e.g. Abstract and Paragraph 0005) comprising a conductive matrix and an electrochemically active polymer such as a conducting polymer (see e.g. Paragraphs 0061 and 0074), wherein the electrochemically active polymer may have a molecular weight of 10,000 to 500,000 g/mol (see e.g. Paragraph 0077, lines 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pyridine derivative polymer of modified Ma to have a molecular weight of 10,000 to 500,000 g/mol as taught by Hatton as a suitable molecular weight for a conductive polymer used in a catalyst composition for an electrochemical cell.
Regarding claim 14, Ma as modified by Hinden teaches the nitrogen-containing part being a pyridine ring structure (see e.g. Hinden Col. 3, lines 35-36, polyvinyl pyridine).
Regarding claim 15, Ma as modified by Hinden teaches the catalyst being obtained by heat-treating a homogeneous mixture comprising a cobalt salt, a nitrogen-containing derivative and a carbon compound (see e.g. Hinden Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23, 35-36 and 44-46, heat treatment, i.e. sintering, at 300-400°C of catalyst precursors including metal catalyst, support particles such as graphite, and organic precursor polymer such as polyvinyl pyridine, the metal catalyst uniformly distributed within a matrix of the polymer and on the support particles, thereby forming a homogenous mixture).
Regarding claim 16, Ma as modified by Hinden teaches the catalyst being obtained by heat-treating the homogeneous mixture at 300°C to 400°C (see e.g. Hinden Col. 3, lines 44-46).
Regarding claim 29, modified Ma teaches an anode (see e.g. Ma Paragraph 0018, line 6) and a power source connected to the anode and the cathode, wherein a voltage is applied between the anode and the cathode (see e.g. Ma Fig. 1D, power source and controller 133 applied voltage to the electrodes, i.e. anode and cathode, of the reactor Paragraph 0018, lines 8-10, and Paragraph 0091), and an introduction port that introduces carbon dioxide into the apparatus so as to reduce the carbon dioxide by the catalyst on the first electrode (see e.g. Ma Paragraph 0006, lines 3-6, Paragraph 0096, lines 5-6, and Paragraph 0299, lines 6-9, cathode inlet to which COx, e.g. CO2, gas reactant is delivered to be reduced at the cathode).
Regarding claim 30, modified Ma teaches a method of reducing carbon dioxide (see e.g. Ma Paragraph 0006, lines 1-3, and Paragraph 0299, lines 6-9, method of operating MEA for COx, e.g. CO2, reduction), comprising reducing carbon dioxide by the catalyst in the carbon dioxide reduction apparatus of according to claim 12 (see e.g. Paragraph 0006, lines 3-6, and Paragraph 0158, COx, e.g. CO2, gas reduced at cathode comprising reduction catalysts).
Regarding claim 32, Ma as modified by Hinden and Hatton teaches the nitrogen-containing derivative being a pyridine derivative, and the pyridine derivative being a polymer having a weight-average molecular weight of about 50,000 g/mol up to about 500,000 g/mol and having a plurality of pyridine rings (see e.g. Hinden Col. 3, lines 35-36, polyvinyl pyridine polymer which comprises a plurality of pyridine units; see e.g. Hatton Paragraph 0077, lines 4-14).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Ma, Kaczur, Hinden and Hatton, as applied to claim 12 above, and further in view of Chou et al. (U.S. 2018/0214945).
Regarding claim 28, Modified Ma teaches all the elements of the apparatus of claim 12 as stated above. Ma as modified by Kaczur further teaches the apparatus comprising a cobalt metal in the catalyst (see e.g. Ma Paragraph 0160, lines 1-3, Co as catalyst particle; see e.g. Kaczur Paragraph 0236, lines 6-8, electrocatalyst comprising combination of metals and oxides). Modified Ma does not teach the catalyst having a core-shell structure in which the cobalt metal serves as a core and the cobalt oxide is disposed around the core and covers the cobalt metal.
Chou teaches core@shell nanoparticles for use as electrocatalysts in electrochemical cells such as those for converting carbon dioxide (see e.g. Abstract), wherein the nanoparticles may comprise a catalytic core component including a metal such as cobalt in a solid core with an oxide of the metal coating the solid core (see e.g. Paragraphs 0039-0041 and 0100), the formation of the metal oxide layer on the outer surface of the metal core improving selectivity and catalytic activity of the core-shell catalyst in an electrochemical cell for conversion of carbon dioxide to an organic feedstock (see e.g. Paragraph 0101).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of modified Ma to comprise a core-shell structure with the cobalt metal as a core covered by a layer of the cobalt oxide as taught by Chou to improve selectivity and activity of the catalyst in electrochemical conversion of carbon dioxide.
Claims 25 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Hinden, and further in view of Hatton.
Regarding claim 25, Ma teaches a carbon dioxide reduction apparatus (see e.g. Paragraph 0018, lines 1-3, and Paragraph 0299, lines 6-9, COx, e.g. CO2, reduction reactor including MEA) comprising an electrode comprising a catalyst (see e.g. Paragraph 0018, lines 4-5, cathode including COx reduction catalyst), wherein the catalyst comprises a metal part (see e.g. Paragraph 0160, lines 1-10) and a carbon compound (see e.g. Paragraph 0162, lines 1-2),
wherein a metal element of the metal part is at least one selected from the group consisting of Co, Fe and Ni (see e.g. Paragraph 0160, lines 1-3), and
wherein the electrode is a cathode (see e.g. Paragraph 0018, line 4).
Ma does not teach the catalyst being obtained by sintering a homogenous mixture comprising a metal derivative which forms the metal part, a nitrogen-containing derivative and the carbon compound which forms the carbon part at 250°C or more and 470°C or less, wherein the nitrogen containing part is derived from at least one selected from the group consisting of a pyridine derivative, an imidazole derivative, a pyrazole derivative and a triazole derivative, and wherein the pyridine derivative is at least one selected from the group consisting of an aminopyridine consisting of one pyridine and at least one amino, a pyridine oligomer having four or more pyridine rings and having a weight-average molecular weight of less than 10,000, and a polymer having a weight-average molecular weight of 10,000 or more and having a plurality of pyridine rings.
Hinden teaches a catalyst for electrocatalytic processes (see e.g. Col. 3, lines 60-65) comprising a metal catalyst such as a cobalt or nickel uniformly distributed within a matrix of a polymer such as nitrogen-containing polyvinyl pyridine and on support particles such as graphite, thereby forming a homogenous mixture (see e.g. Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23 and 35-36), this catalyst structure providing a large catalytically active surface area (see e.g. Col. 1, lines 59-62), wherein the catalyst is obtained by heat treatment, i.e. sintering, at 300-400°C of catalyst precursors, i.e. derivatives, including the metal catalyst, support particles and precursor polymer in the homogenous mixture (see e.g. Claim 1, Col. 1, lines 59-62, Col. 2, lines 67-68, and Col. 3, lines 5-23, 35-36 and 44-46).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the catalyst of Ma to comprise the metal part, carbon compound and a nitrogen-containing polyvinyl pyridine obtained by sintering a homogeneous mixture of precursors thereof at 300-400°C as taught by Hinden to enable formation of a catalyst with a large catalytically active surface area.
Modified Ma does not explicitly teach the pyridine derivative polymer having a weight-average molecular weight of 10,000 or more. Hinden does however teach it being a conducting polymer (see e.g. Hinden Abstract).
Hatton teaches a composition useful as a catalyst in electrochemical cell (see e.g. Abstract and Paragraph 0005) comprising a conductive matrix and an electrochemically active polymer such as a conducting polymer (see e.g. Paragraphs 0061 and 0074), wherein the electrochemically active polymer may have a molecular weight of 10,000 to 500,000 g/mol (see e.g. Paragraph 0077, lines 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pyridine derivative polymer of modified Ma to have a molecular weight of 10,000 to 500,000 g/mol as taught by Hatton as a suitable molecular weight for a conductive polymer used in a catalyst composition for an electrochemical cell.
Regarding claim 34, modified Ma teaches the carbon dioxide reduction apparatus further comprising an anode (see e.g. Ma Paragraph 0018, line 6) and a power source connected to the anode and the cathode, wherein a voltage is applied between the anode and the cathode (see e.g. Ma Fig. 1D, power source and controller 133 applied voltage to the electrodes, i.e. anode and cathode, of the reactor Paragraph 0018, lines 8-10, and Paragraph 0091), and
an introduction port that introduces carbon dioxide into the apparatus so as to reduce the carbon dioxide by the catalyst on the cathode (see e.g. Ma Paragraph 0006, lines 3-6, Paragraph 0096, lines 5-6, and Paragraph 0299, lines 6-9, cathode inlet to which COx, e.g. CO2, gas reactant is delivered to be reduced at the cathode).
Regarding claim 35, Ma as modified by Hinden teaches the nitrogen-containing derivative being a pyridine derivative (see e.g. Hinden Col. 3, lines 35-36, polyvinyl pyridine), and the carbon compound being carbon black (see e.g. Ma Paragraphs 0204 and 0207-210).
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not all persuasive.
On pages 10-11, Applicant argues that Hinden teaches the electrode being an anode for evolving oxygen and would therefore be unsatisfactory for use as a cathode as claimed. This is not considered persuasive. Regarding claims 1 and 10, the limitation of the electrode being “a cathode” is simply a statement of intended use. Hinden as modified by MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Hinden teaches all the structural limitations of the claimed electrode as stated above. Though use as an anode for oxygen evolution is provided as an example, Hinden further teaches the electrode generally being used for electrocatalytic processes (see e.g. Col. 1, lines 7-9, and Col. 3, lines 60-65). The electrode of modified Hinden would therefore be capable of use as a cathode. Regarding claim 12, Ma already teaches the electrode being a cathode (see e.g. Paragraph 0018, line 4).
On page 11, Applicant argues that the cited references do not teach the specified metals (Co, Fe, Ni) being used with the specified nitrogen-containing derivatives and carbon compound in Hinden’s catalyst. This is not considered persuasive. Hinden teaches the catalyst comprising a metal such as Co or Ni (see e.g. Hinden Col. 2, lines 13-16), a polymer such as the nitrogen-containing polyvinyl pyridine (see e.g. Hinden Col. 3, lines 35-36), and support particles such as graphite, i.e. a carbon compound (see e.g. Hinden Col. 2, lines 67-68).
Applicant’s arguments, see page 10, filed 10/21/2025, with respect to the rejection(s) of amended claim(s) 25 under 35 USC 103 over Hinden in view of Hatton, particularly regarding the described electrode of the claimed apparatus being a cathode, 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 in view of Ma, Hinden and Hatton.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795