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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 has been entered.
Response to Amendment
The amendment filed on 03/03/2026 has been entered into the prosecution of the application.
Claim objection to claim 31 remains from the Office Action mailed 12/05/2025.
Claim 32 is canceled. Claims 31 and 52 have been amended.
Currently, claim(s) 31, 33-37, 41, and 51-53 is/are pending.
Claim Objections
Claim(s) 31 is/are objected to because of the following informalities:
As to claim 31, the term “the catalyst” at the end of claim 31 should read “the catalyst layer”.
Appropriate correction is required.
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) 31, 33, 35-36, and 53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umesh Mishra of US 2008/0296173 A1 (hereinafter, Mishra) in view of Rakesh K. Lal of US 2008/0116080 A1 (hereinafter, Lal).
As to claim 31, Mishra teaches to a system configured to catalyze a chemical reaction, the system comprising:
a back gate device (Mishra, Fig. 8, teaches to a back gate device, as Mishra teaches to a cell 70) comprising:
a dielectric material (Mishra, Fig. 8, teaches to a dielectric material, as Mishra teaches to insulator); and
a gate material in contact with the dielectric material (Mishra, Fig. 8, teaches to a gate material in contact with the dielectric material, as Mishra teaches to insulated gate 72 in contact with the insulator); and
a catalyst layer (Mishra, paragraph [0051], [0079], Figs. 3 and 8, teaches to a catalyst layer, as Mishra teaches to a nano-textured GaN cathode 74 acting as a substrate, wherein all substrates are coated with an appropriate electrocatalytic material; hence, cathode 74 comprises electrocatalytic materials reading into as a catalyst; the fact that the electrocatalytic material is coated on the electrode necessarily teaches to a catalyst layer), wherein the catalyst layer comprises an exposed surface configured to be exposed to a reactant, and a second surface facing opposite to the exposed surface (Mishra, paragraph [0051], Fig. 8, teaches to wherein the catalyst layer comprises an exposed surface configured to be exposed to a reactant, and a second surface facing opposite to the exposed surface, as Mishra teaches to the nano-textured cathode 74 comprises a surface that is necessarily exposed to reactants in the electrolyte, thereby comprising an exposed surface configured to be exposed to a reactant; the nano-textured cathode 74 comprises a second surface facing opposite to the exposed surface because the nano-textured cathode 74 comprises a substrate),
wherein the back gate device is configured to apply a back gate voltage to the catalyst (Mishra, paragraph [0051], Fig. 8, wherein the back gate device is configured to apply a back gate voltage to the catalyst, as Mishra teaches to an active electrode or the cathode 74, read as the gate material in contact with the dielectric material; the back gate device is configured to apply a back gate voltage to the catalyst, because cathode 74 applies voltage to electrocatalytic materials for operating electrochemical processes).
Mishra does not explicitly teach wherein the dielectric material is in contact with the second surface of the catalyst layer.
In an analogous art, Lal teaches to wherein the dielectric material is in contact with the second surface of the catalyst layer (Lal, paragraph [0078], Figs. 7(a) and 7(b), teaches to wherein the dielectric material is in contact with the second surface of the catalyst layer, as Lal teaches to the substrate metal electrode acting as a gate (700) at the back, or second surface of the sandwiched insulating layer or dielectric (705) for enhancing the electric field).
Both Mishra and Lal relate to gated electrodes (Lal, paragraph [0043]). Mishra does not explicitly teach a configuration in which the dielectric material is in contact with the second surface of the catalyst layer. Mishra does teach a configuration in which the dielectric material is in contact with an exposed surface opposite to the second surface of the catalyst layer. Lal teaches to a configuration in which the dielectric material is in contact with the second surface opposite to the exposed surface.
Therefore, 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 apparatus of Mishra with the configuration of Lal for enhancing the electric field, thereby providing an efficient electrochemical system.
As to claim 33, Mishra in view of Lal teaches to the apparatus of claim 31, wherein the catalyst layer comprises one or more metal monolayers, bimetallic layers, metal oxide layers, single metal atoms, metal clusters comprising two or more atoms, metal oxide clusters, or a combination thereof (Mishra, paragraph [0075], teaches to wherein the catalyst layer comprises one or more metal monolayers, bimetallic layers, metal oxide layers, single metal atoms, metal clusters comprising two or more atoms, metal oxide clusters, or a combination thereof, as Mishra teaches that the catalyst layer comprises a metal oxide layer, such as zinc oxide).
As to claim 35, Mishra in view of Lal teaches to the apparatus of claim 31, wherein the back gate voltage is a waveform (Mishra, paragraph [0054], Fig. 10, teaches to wherein the back gate voltage is a waveform, as Mishra teaches to a sinusoidal waveform).
As to claim 36, Mishra in view of Lal teaches to the apparatus of claim 35, wherein the waveform is a square wave, a sinusoidal wave, a sawtooth wave, a triangular wave, or a combination thereof (Mishra, paragraph [0054], Fig. 10, teaches to wherein the waveform is a square wave, a sinusoidal wave, a sawtooth wave, a triangular wave, or a combination thereof, as Mishra teaches to a sinusoidal waveform).
As to claim 53, Mishra in view of Lal teaches to the apparatus of claim 31, wherein the back gate device is configured to vary a binding energy of a chemical species to the catalyst layer (Mishra, Fig. 5, teaches to wherein the back gate device is configured to vary a binding energy of a chemical species to the catalyst layer, as Mishra teaches that wherein the gate voltage increases efficiency for water electrolysis, which discloses the back gate device of Mishra is capable of changing the binding energy of the product H2 to the electrode, or, any other reactant delivered to Mishra’s system).
Claim(s) 34 and 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umesh Mishra of US 2008/0296173 A1 (hereinafter, Mishra) in view of Rakesh K. Lal of US 2008/0116080 A1 (hereinafter, Lal), as applied to claims 31, and in further view of Jun Tamura of US 20160076158 A1 (hereinafter, Tamura).
As to claim 34, Mishra in view of Lal does not explicitly teach wherein the catalyst layer has a thickness of less than 100 nm.
In an analogous art, Tamura teaches to the apparatus of claim 31, wherein the catalyst layer has a thickness of less than 100 nm (Tamura, paragraph [0041], Fig. 1, teaches to wherein the catalyst layer has a thickness of less than 100 nm, as Tamura teaches that a film thickness of the oxide layer is preferably not more than 10 nm and more preferably not more than 5 nm by using an atomic layer deposition technique; Tamura, paragraph [0039], teaches to zinc oxide layer for the surface layer 102).
Both Mishra in view of Lal and Tamura relate to an electrocatalytic material (Tamura, paragraph [0103]) for electrolysis (Tamura, paragraph [0091]). Mishra in view of Lal does not explicitly teach a thickness of the catalyst layer. Mishra in view of Lal does teach the catalyst layer. Tamura teaches to a thickness of the catalyst layer.
Therefore, 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 apparatus of Mishra in view of Lal with the thickness of the catalyst layer of Tamura for making the catalyst layer operable in securing conduction, thereby providing a high reaction efficiency for an electrochemical reaction.
As to claim 51, Mishra in view of Lal does not explicitly teach
In an analogous art, Tamura teaches to the apparatus of claim 34, wherein the thickness of the catalyst layer is less than 10 nm (Tamura, paragraph [0041], Fig. 1, teaches to wherein the thickness of the catalyst layer is less than 10 nm, as Tamura teaches that a film thickness of the oxide layer is preferably not more than 10 nm and more preferably not more than 5 nm by using an atomic layer deposition technique; Tamura, paragraph [0039], teaches to zinc oxide layer for the surface layer 102).
Both Mishra in view of Lal and Tamura relate to an electrocatalytic material (Tamura, paragraph [0103]) for electrolysis (Tamura, paragraph [0091]). Mishra in view of Lal does not explicitly teach a thickness of the catalyst layer. Mishra in view of Lal does teach the catalyst layer. Tamura teaches to a thickness of the catalyst layer.
Therefore, 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 apparatus of Mishra in view of Lal with the thickness of the catalyst layer of Tamura for making the catalyst layer operable in securing conduction, thereby providing an apparatus that enables high reaction efficiency for an electrochemical reaction.
Claim(s) 37, 41, and 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umesh Mishra of US 2008/0296173 A1 (hereinafter, Mishra) in view of Rakesh K. Lal of US 2008/0116080 A1 (hereinafter, Lal), as applied to claims 31, and in further view of Huifang Xu of US 2010/0012479 A1 (hereinafter, Xu).
As to claim 37, Mishra in view of Lal does not explicitly teach wherein a frequency of the waveform is in a range of 0.1 Hz to 107 Hz.
In an analogous art, Xu teaches to the apparatus of claim 35, wherein a frequency of the waveform is in a range of 0.1 Hz to 107 Hz (Xu, paragraph [0164], Fig. 1, teaches to wherein a frequency of the waveform is in a range of 0.1 Hz to 107 Hz, as Xu teaches to 1 Hz to about 20 kHz; Xu, paragraph [0164], teaches to mechanical vibration that is sufficient to mechanically stress or deflect the fibers to generate the electrical potential to drive the redox reaction; Xu, paragraph [0011], teaches to a piezoelectrochemical effect for the zinc oxide, an electrocatalytic material).
Both Mishra in view of Lal and Xu relate to an electrocatalytic materials (Xu, paragraph [0111]). Mishra in view of Lal does not explicitly teach a frequency range. Mishra in view of Lal does teach waveform. Xu teaches the frequency of the waveform.
Therefore, 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 apparatus of Mishra in view of Lal with the frequency of Xu for driving an electrochemical reaction, thereby providing an apparatus that enables high reaction efficiency for an electrochemical reaction.
As to claim 41, Mishra in view of Lal does not explicitly teach wherein the frequency of the waveform is in a range of 100 Hz to 10,000 Hz.
In an analogous art, Xu teaches to the apparatus of claim 37, wherein the frequency of the waveform is in a range of 100 Hz to 10,000 Hz (Xu, paragraph [0164], Fig. 1, teaches to wherein a frequency of the waveform is in a range of 100 Hz to 10,000 Hz, as Xu teaches to 1 Hz to about 20 kHz; Xu, paragraph [0164], teaches to mechanical vibration that is sufficient to mechanically stress or deflect the fibers to generate the electrical potential to drive the redox reaction; Xu, paragraph [0011], teaches to a piezoelectrochemical effect for the zinc oxide, an electrocatalytic material).
Both Mishra in view of Lal and Xu relate to an electrocatalytic materials (Xu, paragraph [0111]). Mishra in view of Lal does not explicitly teach a frequency range. Mishra in view of Lal does teach waveform. Xu teaches the frequency of the waveform.
Therefore, 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 apparatus of Mishra in view of Lal with the frequency of Xu for driving an electrochemical reaction, thereby providing an apparatus that enables high reaction efficiency for an electrochemical reaction.
As to claim 52, Mishra in view of Lal does not explicitly teach wherein the system is configured to transfer variable strain to the catalyst layer based on changes in the back gate voltage.
In an analogous art, Xu teaches to the apparatus of claim 31, wherein the system is configured to transfer variable strain to the catalyst layer (Xu, paragraphs [0011], [0065], [0107], [0111], Fig. 1, teaches to wherein the system is configured to transfer variable strain to the catalyst layer, as Xu teaches that a material having the piezoelectric property becomes electrically polarized when they are strained when placed in an electric field; zinc oxide electrode is used as an electrocatalytic and piezoelectric material for driving an electrochemical reaction, such as water splitting reaction; vibration energy is converted into chemical energy to initiate the reaction) based on changes in the back gate voltage (Xu, paragraph [0069], teaches to based on changes in the back gate voltage, as Xu teaches to converse piezoelectric effect; Xu, paragraph [0069], teaches that converse piezoelectric effect is an intrinsic property of piezoelectric materials wherein a strain results as the electric field is applied).
Xu, paragraph [0011], teaches that, “[W]hen a mechanical force is applied to materials having these properties, the materials generate an electrical response in the form of positive and negative charges being generated at the surface of the material. This electrical charge can then interact with the surrounding the chemical species in the environment surrounding the material, which can take various forms in the present invention, such as an aqueous environment. This interaction takes the form of catalyzing an oxidation/reduction reaction, such as a water-splitting reaction with the water molecules in the aqueous environment in which the mechanically-stressed piezoelectric material is placed.”
Both Mishra in view of Lal and Xu relate to an electrocatalytic material (Xu, paragraph [0111]). Mishra in view of Lal does not explicitly teach transferring variable strain due to absence of electrocatalytic material being not piezoelectric material. Mishra in view of Lal does teach to using zinc oxide as an electrode. Xu teaches using a piezoelectric material acting as an electrocatalytic material, including zinc oxide electrode .
Therefore, 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 apparatus of Mishra in view of Lal with the frequency of Xu for driving an electrochemical reaction, thereby providing an apparatus that enables high reaction efficiency for an electrochemical reaction.
Response to Arguments
Applicant’s arguments, see pg. 5 of 7, filed 03/03/2026, with respect to the rejection(s) of claim(s) 31 under 35 U.S.C. 102(a)(1) 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.
On pg. 5 of 7, the Applicant asserts that claim 31, as amended, overcomes the prior art because configuration is not taught by the prior art. Claim(s) 31, 33, 35-36, and 53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umesh Mishra of US 2008/0296173 A1 (hereinafter, Mishra) in view of Rakesh K. Lal of US 2008/0116080 A1 (hereinafter, Lal). Please refer to the rejection above.
On pg. 6 of 7, the Applicant asserts that Xu is limited to mechanical transmission of vibration and Mishra is limited to electrical control. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Further, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Xu, paragraph [0011], teaches that, “[W]hen a mechanical force is applied to materials having these properties, the materials generate an electrical response in the form of positive and negative charges being generated at the surface of the material. This electrical charge can then interact with the surrounding the chemical species in the environment surrounding the material, which can take various forms in the present invention, such as an aqueous environment. This interaction takes the form of catalyzing an oxidation/reduction reaction, such as a water-splitting reaction with the water molecules in the aqueous environment in which the mechanically-stressed piezoelectric material is placed.”
Both Mishra in view of Lal and Xu relate to an electrocatalytic material (Xu, paragraph [0111]). Mishra in view of Lal does not explicitly teach transferring variable strain due to absence of electrocatalytic material being not piezoelectric material. Mishra in view of Lal does teach to using zinc oxide as an electrode. Xu teaches using a piezoelectric material acting as an electrocatalytic material, including zinc oxide electrode .
Therefore, 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 apparatus of Mishra in view of Lal with the frequency of Xu for driving an electrochemical reaction, thereby providing an apparatus that enables high reaction efficiency for an electrochemical reaction.
On pg. 6 of 7, the Applicant asserts that, claim 52, as amended, overcomes the prior art.
The Examiner disagrees because Xu teaches to converse piezoelectric effect, read into the term “based on changes in the back gate voltage.” Xu, paragraph [0069], teaches that converse piezoelectric effect is an intrinsic property of piezoelectric materials wherein a strain results as the electric field is applied.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN LEE whose telephone number is (703)756-1254. The examiner can normally be reached M-F, 7:00-16:00.
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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