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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/07/2025 has been entered.
Response to Amendment
The amendment filed on 10/07/2025 has been entered into the prosecution of the application. The applicant has canceled claim(s) 11 and 38. The applicant has amended claims 1, 3-4, 6-9, 12-14, 18, and 26-27.
Rejection under 35 U.S.C. 112(b) has been withdrawn for claims 1 and 26 in regards to the term “ a related form thereof” because the applicant has overcome the rejection by amendment.
Currently, claim(s) 1, 3-4, 6-9, 12-14, 18, and 26-27 is/are pending examination.
Claim Objections
Claim 1 is objected to because of the following informalities:
As to claim 1, the term “isopropranol” in line 9 should read “isopropanol”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a means for extracting one or more small organic compounds produced by exposure of the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor to the radioactive catalyst in claim 26 (the instant specification, paragraph [00105], teaches corresponding structure for the means; the means for extracting small organic molecules comprises a distillation means, condensation means, or differential adsorption means).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1, 3-4, 6-9, 12-14, 18, and 26-27 is/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.
The term “direct coupling” in claim 1 is a relative term which renders the claim indefinite. The term “direct coupling” 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.
For examination purposes, the term “direct coupling” is replaced with “combination” because so long as a radionuclide delivers beta particles to a high band-gap semiconductor for electronic excitation (i.e., activation), the radioactive catalyst operates to convert CO2 to one or more small organic compounds.
Claims 3-4, 6-9, 12-14, 18, and 26-27 are rejected for dependency.
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.
Claim(s) 1, 6-9, 12-14, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ronald L. Cook of US 5,022,970 A (hereinafter referred to as Cook) in view of Jae Wan Kwon of US 2015/0364781 A1 (hereinafter referred to as Kwon).
As to claim 1, Cook pertains to the instant invention because Cook teaches to a method of converting CO2 to one or more small organic compounds (Cook, col. 1, ln. 8-11, teaches photoelectrochemical reduction for converting carbon dioxide to hydrocarbon products).
Cook does not explicitly teach “exposing the CO2 to a radioactive catalyst … wherein the radioactive catalyst comprises a beta particle-activated high band-gap semiconductor, which is provided by direct coupling of a high band-gap semiconductor and a radionuclide” because Cook does not teach a radionuclide.
Cook, however, does teach exposing the CO2 to a catalyst (Cook, col. 2, ln. 56-58, teaches that reducing carbon dioxide in presence of SiC powders is known, wherein SiC is a high band-gap semiconductor and is known to be capable of acting as a catalyst for an electrochemical reaction when ionized by radiation) in macroscopic form (Cook, col. 2, ln. 58, teaches SiC is in a powder form), thereby converting the CO2 to one or more small organic compounds (Cook, col. 1, ln. 8-11, teaches converting carbon dioxide to hydrocarbon products) wherein
(i) the one or more small organic compounds comprises one or more of carbon monoxide, formaldehyde, methane, methanol, formic acid, ethanol, acetaldehyde, acetic acid, propanol, and isopropranol (Cook, col. 3, ln 11-19, teaches methane as a product among others), and
(ii) the method is carried out in solution (Cook, col. 3, ln. 11-19 and col. 6, ln. 58, teaches using dispersed particulate semiconductors in a liquid aqueous containing electrolyte, CO2 saturated KHCO3 solution).
Kwon pertains to the instant invention because Kwon relates to generating electron-hole pairs in semiconductor (Kwon, paragraph [0002]).
Kwon teaches exposing the reactants to a radioactive catalysts, “wherein the radioactive catalyst comprises a beta particle-activated high band-gap semiconductor, which is provided by direct coupling of a high band-gap semiconductor and a radionuclide” (paragraph [0057] of Kwon teaches radionuclides that emit beta particles for generating electron-hole pairs in semiconductors through coupling, thereby providing a beta particle-activated high band-gap semiconductor).
Both Cook and Kwon relate to generating electron-hole pairs in semiconductors for electrochemical reduction. Cook does not explicitly teach a radionuclide. Cook does teach converting CO2 to one or more small organic compounds (Cook, col. 1, ln. 8-11, teaches converting carbon dioxide to hydrocarbon products) by generating electron-hole pairs in semiconductors for electrochemical reduction, wherein Cook teaches that the same principle is applied at the interface of semiconductor (Cook, col. 5, ln. 8-10) for both water splitting and CO2 reduction reactions. Kwon teaches water splitting using the radioactive catalyst comprising a beta particle-activated high band-gap semiconductor (Kwon, paragraph [0111], teaches coupling of 90Sr/90Y to nanoporous TiO2 structure, delivering beta particles as a reliable energy source for electricity generation via water splitting), which is provided by coupling of a high band-gap semiconductor and a radionuclide.
Cook establishes that the same principle is applied at the interface of semiconductor (Cook, col. 5, ln. 8-10) for both water splitting and CO2 reduction reactions. Kwon above teaches that the high band-gap semiconductor can be activated by ionizing radiation instead of illumination for generating electron-hole pairs in semiconductors. Kwon in paragraph [00146] teaches that electrical energy generated by radiocatalytic chemical cell is greater than the one generated by a photocatalytic chemical cell.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to have modified the CO-2 conversion method of Cook with the method comprising a beta particle-activated high band-gap semiconductor of Kwon for providing large electrical energy.
As to claim 6, Cook in view of Kwon teaches to the method of claim 1, wherein the high band-gap semiconductor comprises at least titanate (Cook, col. 5, ln. 22, teaches TiO2).
As to claim 7, Cook in view of Kwon teaches to the method of claim 1, wherein the beta particle activated-high band-gap semiconductor comprises beta particle activation via continuous excitation by beta particles emitted from the radionuclide (Kwon, paragraph [0048], teaches continuous generation of free radicals in liquid; Kwon, paragraph [0003], teaches a beta particle emitting radioisotopes for the generated free radicals that participate in redox reactions).
As to claim 8, Cook in view of Kwon teaches to the method of claim 1, wherein the beta particle-activated semiconductor comprises beta particle activation via emission from the radionuclide (Kwon, paragraph [0109], teaches using 90Sr/90Y for emitting the beta radiation).
As to claim 9, Cook in view of Kwon teaches to the method of claim 1, wherein the radionuclide comprises at least 90Sr (Kwon, paragraph [0109], teaches using 90Sr/90Y for emitting the beta radiation).
As to claim 12, Cook in view of Kwon teaches to the method of claim 1, wherein the radioactive catalyst is formed by (i) physically admixing the radionuclide with the high band-gap semiconductor, (ii) chemically incorporating the radionuclide into the high band-gap semiconductor, (iii) loading the radionuclide into the high band-gap semiconductor, and/or coating the high band-gap semiconductor with the radionuclide (Kwon, paragraph [0004], step (c), teaches that semiconductor is in contact with the aqueous electrolyte solution, wherein Kwon, paragraph [0004], step (d), also teaches that beta particle emitting radioisotope is placed no greater than about the distance the beta particles can travel in the aqueous electrolyte solution; since Kwon teaches that it is important to place the ionizing radiation source close to semiconductors that participate in chemical reaction, one of ordinary skill in the art would have known to either mix the two, chemically incorporate, load, or coat one of the other; please see MPEP §2144.04.V.B.).
As to claim 13, Cook in view of Kwon teaches to the method of claim 1, wherein the radioactive catalyst is porous (Kwon, paragraph [0103], teaches a nanoporous TiO2)
As to claim 14, Cook in view of Kwon teaches to the method of claim 1, wherein the radioactive catalyst is in the form of a particle, a granule, a bead, a powder, a pellet or a frit (Cook, col. 2, ln. 58, teaches SiC is in a powder form).
As to claim 18, Cook in view of Kwon teaches to the method of claim 1 (see above) for a method of producing one or more small organic compounds (Cook, col. 1, ln. 8-11, teaches converting carbon dioxide to hydrocarbon products).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable Ronald L. Cook of US 5,022,970 A (hereinafter, Cook) in view of Jae Wan Kwon of US 2015/0364781 A1 (hereinafter, Kwon), as applied to claim 1 above, relying on Linsebigler, et al. "Photocatalysis on TiO2 surfaces: principles, mechanisms, and selected results." Chemical reviews 95.3 (1995): 735-758 (hereinafter, Linsebigler) as an evidentiary support for claim 3.
As to claim 3, Cook in view of Kwon teaches to the method of claim 1, wherein the high band-gap semiconductor has a band-gap of at least 2.6 eV (Kwon, paragraph [0013], teaches using TiO2, among others, are known to possess at least a value of 2.6 eV).
The Office notes that, as a known knowledge in the art, high band-gap or wide-bandgap semiconductors are materials that exhibit semiconducting properties and have a bandgap in the range above 2 eV, in contrast to the conventional bandgap values in the range between 0.7 eV and 1.5 eV. TiO2, for instance, in its anatase phase is well-known to be one of the high-bandgap semiconductors and has a bandgap of 3.2 eV (the band gap is large (Eg=3.2 eV); see page 754 of Linsebigler).
The Office notes that the semiconductor used in electrochemical reduction of CO2 in Cook is materially equivalent to the list of semiconductors of Kwon that are beta particle activated (TiO2 are among the semiconductors listed by Kwon in paragraph [0013]). Cook in view of Kwon, relying on Linsebigler as an evidentiary support, inherently teaches to the method of claim, wherein the high band-gap semiconductor has a band-gap of at least 2.6 eV.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable Ronald L. Cook of US 5,022,970 A (hereinafter, Cook) in view of Jae Wan Kwon of US 2015/0364781 A1 (hereinafter, Kwon), as applied to claim 1 above, and further relying on Xu, Yong, and Martin AA Schoonen. "The absolute energy positions of conduction and valence bands of selected semiconducting minerals." American mineralogist 85.3-4 (2000): 543-556 (hereinafter, Xu) as an evidentiary support.
As to claim 4, Cook in view of Kwon teaches to the method of claim 1, wherein the semiconductor has a conduction band edge energy of less than -0.15 volts (Kwon, paragraph [0013], teaches using TiO2, among others, is known to has a conduction band edge energy of less than -0.15 volts; Xu, relied on as an evidentiary support, pg. 548, Table 1, teaches conduction band edge energy, ECB, as -4.21 volts, less than -0.15 volts).
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Emily Barton Cole of US 2011/0114502 A1 (hereinafter, Cole) in view of Jae Wan Kwon of WO 2014/121121 A1 (hereinafter, Kwon) and Yousef, Ahmed M., et al. "New approach for biogas purification using cryogenic separation and distillation process for CO2 capture." Energy 156 (2018): 328-351 (hereinafter, Yousef).
As to claim 26, Cole pertains to the instant invention because Cole relates to electrochemical reduction of carbon dioxide, thus a system for converting CO2 (Cole, paragraph [0002], teaches an apparatus for implementing reducing carbon dioxide to products).
Cole teaches to a system for converting CO2, a bicarbonate, a carbonate, a carbonate ore, and/or a gaseous CO2 mixed with water vapor to one or more small organic compounds, the system comprising (system 100 of Cole, paragraph [0034], teaches converting CO2 to one or more organic and/or inorganic products):
a solution-based source of the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor (Cole, paragraph [0020], teaches that carbon dioxide may be continuously bubbled through the cathode electrolyte solution to saturate the solution);
a reaction container (Cole, paragraph [0035], teaches a cell 102 as a reactor) comprising a catalyst (Cole, paragraphs [0020] – [0021], teaches semiconductors acting as catalysts for electrochemical reduction reaction of CO2) for exposure to the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor; and
wherein the one or more small organic compounds comprises one or more of carbon monoxide, formaldehyde, methane, methanol, formic acid, ethanol, acetaldehyde acetic acid, propanol, and isopropanol (system 100 of Cole, paragraph [0034], teaches converting CO2 to one or more organic and/or inorganic products, wherein Cole, paragraph [0042], teaches carbon monoxide as a product).
Cole does not explicitly teach a means for extracting the one or more small organic compounds produced by exposure of the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor to the radioactive catalyst.
Cole does not explicitly teach comprising a catalyst in macroscopic form, wherein the radioactive catalyst comprises a high band-gap semiconductor that is directly coupled to a beta particle-emitting radionuclide.
In an analogous art, Kwon teaches a system comprising a catalyst (Kwon, paragraph [0127], teaches semiconductor TiO2 acting as a catalyst for redox reactions of water splitting) in macroscopic form (Kwon, paragraph [0146], teaches TiO2 exists as a film), wherein the radioactive catalyst comprises a high band-gap semiconductor that is directly coupled to a beta particle-emitting radionuclide (Kwon, paragraph [0057], teaches radionuclides that emit beta particles for generating electron-hole pairs in semiconductors through coupling, thereby providing a beta particle-activated high band-gap semiconductor).
Both Cole and Kwon relate to generating electron-hole pairs in semiconductors for redox reactions, such as electrochemical reduction (see above). Cole does not explicitly teach a radionuclide. Cole does teach converting CO2 to one or more small organic compounds (Cole, paragraph [0020], teaches that carbon dioxide may be continuously bubbled through the cathode electrolyte solution to saturate the solution) by generating electron-hole pairs in semiconductors for photoelectrochemical reduction (Cole, paragraph [0080], teaches a hybrid photoelectrochemical system). Kwon teaches water splitting using the radioactive catalyst comprising a beta particle-activated high band-gap semiconductor (Kwon, paragraph [0057]), which is provided by coupling of a high band-gap semiconductor and a radionuclide.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the system of Cole with the beta particle activated high-bandgap semiconductor of Kwon for promoting the CO2 conversion.
Cole in view of Kwon does not explicitly teach a means for extracting the one or more small organic compounds produced by exposure of the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor to the radioactive catalyst.
In an analogous art, Yousef teaches a means for extracting the one or more small organic compounds produced by exposure of the CO2, the bicarbonate, the carbonate, the carbonate ore, and/or the gaseous CO2 mixed with water vapor to the radioactive catalyst (Yousef, pg. 330, Fig. 1, teaches a distillation means for extracting the one or more small organic compounds; please refer to the claim interpretation under 35 U.S.C. 112(f) above).
Both Cole in view of Kwon Yousef relate to CO2 capturing (Cole, paragraph [0031]; Yousef, title) and reduction of greenhouse gas emission (Cole, paragraph [0024]; Yousef, pg. 328). Cole in view of Kwon does not explicitly teach a means for extracting the one or more small organic compounds. Cole in view of Kwon does teach the one or more small organic compounds produced by exposure of the CO2. Yousef teaches a distillation means, such as cryogenic distillation, to separate methane and carbon dioxide for extracting the one or more small organic compounds.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified the system of Cole in view of Kwon with the means for extraction of Yousef for reducing greenhouse gas emission through CO2 capturing and for reaching high purity of small organic compounds.
As to claim 27, Cole in view of Kwon and Yousef teaches to the apparatus of claim 26, wherein the source of CO-2 comprises one or more of waste CO2, atmospheric CO2, liquid CO2, sequestered CO2, a bicarbonate, a carbonate, or a carbonate ore (Cole, paragraph [0031], teaches that the source of CO2 comprises flue gases of fossil fuel (e.g., coal, natural gas, oil, etc.), burning power plants, wherein the capture and use of existing atmospheric carbon dioxide generally allow the carbon dioxide to be a renewable and unlimited source of carbon).
The instant claim, directed to an apparatus, recites a functional limitation, rather than a structural limitation. The functional limitation in the instant claim is interpreted under the broadest reasonable interpretation, as long as the invention of prior art is capable of performing the recited function. In this instance, the prior art reads into the claim limitation under the broadest reasonable interpretation of the instant claim because the functional limitation, as recited, does not require a structural difference between the claimed invention and the prior art (see CO2 INPUT of Fig. 1 of Cole).
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive.
On pg. 6 of 10, the applicant asserts that claim 1, as amended, is non-obvious over the cited prior art because modification of Cook would require changing the entire principle of operation of Cook for one of ordinary skill in the art to modify Cook’s activated semiconductor with Kwon’s beta particle activated semiconductor.
The Examiner respectfully disagrees the applicant’s assertion that modification of Cook would require changing the entire principal operation of Cook. Both Cook and Kwon teach to high-bandgap semiconductors, wherein the operational nature of high-bandgap semiconductors in aiding reactions lies in a common, fundamental principle that electron-hole pairs are generated in response to excitation of an electron from the valence band to the conduction band (please refer to Cook, col. 4 , ln. 11-24; Kwon, paragraph [0090]).
The perceived inventive concept, as conceived by Kwon, of exposing a reactant to a beta particle activated high-bandgap semiconductor was known to the public in converting H2O to H2 by facilitating electrochemical reduction reaction prior to the effective filing date of the instant invention, wherein Kwon teaches a list of semiconductor materials, including SiC taught by Cook (Kwon, paragraph [0043]).
The ways in which the electrons are excited may be optimized in how the resulting charge carriers (i.e., electrons and holes) facilitate chemical reactions and in how external sources of energies are supplied. However, both Cook and Kwon teaches to the use of activated semiconductors for water splitting reaction (Cook, col. 5, ln. 8-10; Kwon, paragraphs [0034], [0067], and [0068]). Cook primarily teaches a system for converting CO2 via electrochemical reduction (Cook, col. 1, ln. 7-11), whereas Kwon primarily teaches a system for converting H2O into H2 via electrochemical reduction (Kwon, paragraph [0009]). Cook teaches that the same basic water splitting and CO2 reduction reactions take place at the interface of a semiconductor (Cook, col. 5, ln. 8-10). As such, the beta particle activation method of Kwon can be readily applied by one of ordinary skill in the art to an electrochemical or photoelectrochemical reduction of carbon dioxide of Cook.
On pg. 6, the applicant asserts that Cook’s entire apparatus and set-up would need to be modified to omit its irradiation source and other device components that allow the photons to access the semiconductor. Cook’s teaching does not teach away from using Kwon because one of ordinary skill in the art could combine electrochemical and photoelectrochemical reaction setups, for example. Further, even if the Cook’s apparatus is suggested, one of ordinary skill in the art does not necessarily have to use Cook’s apparatus as is, for the electrochemical reduction of carbon dioxide. In other words, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
On pg. 7 of 10, the applicant points out that Kwon’s teaching that “the radiation source must be spaced from the anode a distance that is at least sufficient to prevent or limit lattice damage to the semiconductor component and no greater than about the distance the ionizing radiation can travel in the aqueous electrolyte solution.” However, the applicant is directed to Kwon’s teaching in paragraph [0033] that the use of a liquid-phase material is introduced to reduce or eliminate radiation damage because liquid-phase efficiently absorbs the kinetic energy of ionizing radiation such as beta particles in which water is very effective (Kwon, paragraphs [0033] – [0034]). Since the amended claim limitation does not address details as to the “coupling,” the applicant’s assertion that Kwon teaches away from the instant claim limitation is found unpersuasive.
For this reason, even if conceded to the fact that the Cook’s semiconductor is activated by light, as opposed to beta particle of Kwon, claim 1 as amended of the instant application does not place the application in allowance absent further showing and/or claim limitation that distinguishes the instant invention from the modifications suggested to one of ordinary skill in the prior art.
On pg. 8, the applicant asserts that Kwon does not teach or suggest a radioactive catalyst according to claim 1.
Cook in view of Kwon clearly teaches a method, wherein the beta particle activated semiconductor comprises beta particle activation via emission from a radionuclide (a beta particle emitting radioisotope from 63Ni, 90Sr, 35S, 204Tl, and 3H, 148Gd, and 137Cs; Kwon, paragraphs [0017]). In particular, Cook in view of Kwon discloses 90Y for emitting the beta radiation (Kwon, paragraph [0109]), wherein the beta particle activated semiconductor and the radionuclide are coupled to form a radioactive catalyst (a radioisotope source (90Sr/90Y, 15 mCi) sealed in stainless steel is coupled to the nanoporous semiconductor coated with a thin Pt film; Kwon, paragraph [0109]). The Office notes that Yttrium-90 is a radioactive isotope that is well-known to be a beta emitter. No external energizing radiation would have been required for this reason.
Further, on pgs. 8 and 9 of 10 of the response filed 06/06/2025, the applicant points out that Kwon’s teaching that “the radiation source must be spaced from the anode a distance that is at least sufficient to prevent or limit lattice damage to the semiconductor component and no greater than about the distance the ionizing radiation can travel in the aqueous electrolyte solution.” However, the applicant is directed to Kwon’s teaching in paragraph [0033] that the use of a liquid-phase material is introduced to reduce or eliminate radiation damage because liquid-phase efficiently absorbs the kinetic energy of ionizing radiation such as beta particles in which water is very effective (Kwon, paragraphs [0033] – [0034]). Kwon makes an explicit suggestion to one of ordinary skill in the art in utilizing beta particle to effect semiconductor Since the amended claim limitation does not address details as to the “coupling,” the applicant’s assertion that Kwon teaches away from the instant claim limitation is found unpersuasive.
Conclusion
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794