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 .
Status of the Rejection
All 35 U.S.C. § 102 rejections from the previous office action are withdrawn in view of the Applicant’s amendment. New grounds of rejection under under 35 U.S.C. § 103 are necessitated by the amendments as outlined below.
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.
Claims 1-3, 10, and 18 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.
Regarding claim 1, line 5, the limitation “locally present” is indefinite because it is not clear what is encompassed by the term “locally” present. This term is not a term of art and it is not clear how this is different from the previous recitation of being provided on a surface and what scope is required to be locally present.
Claims 2, 3, 10, and 18 are rejected for their dependency on the rejected base claim.
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.
Claims 1-3, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hawn (JP2018171611A) in view of Wang et al. (US 20130146470 A1).
.
Regarding claim 1, Hawn discloses an electrochemical cell for converting carbon dioxide into useful products having an electrode made of core shell nanoparticles (Hawn abstract). Hawn teaches an electrode comprising:
a catalyst suitable to produce at least carbon monoxide by a reduction reaction of gaseous carbon dioxide (i.e., first catalyst 11 suitable to produce carbon monoxide since it is capable of reducing carbon dioxide; Fig. 1b; paragraph 15);
an electrode material (cathode 31) supporting the catalyst; and
a solid base additive (i.e., second catalytic material 12 or the outer shell 21) locally present on a surface of the electrode material (second catalytic material 12 or the outer shell 21 is broadly interpreted to be locally present or on/near the surface of the electrode material).
Hawn does not explicitly teach wherein the catalyst is formed as a thin film on the surface of the electrode material.
Wang et al. teaches a method and device for electrochemically converting carbon dioxide gas. Wang et al. teaches cathode 240 (Fig. 1 and 3) having a porous conductive layer 2202 (which can be also considered an electrode material supporting a catalyst) with catalyst particles 2204 disposed on the surface of the porous conductive layer 2202 (Fig. 3 and paragraph 17). The catalyst particles are dispersed throughout the porous conductive layer, thus reading on the catalyst particles having a thin film on the surface of the electrode material. (This is consistent with the applicant’s disclosure that carbon paper with Ag catalyst forms a thin film; see Specification, paragraph 35). Wang et al. teaches that this electrode increases the catalytic efficiency with the cathode catalyst particles and conversion efficiency of the carbon dioxide gas (paragraph 17, line 26-28).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the porous conductive layer and catalyst as a thin film, as taught by Wang et al., in the electrode of Hawn, because the modified electrode would have increased catalytic efficiency and conversion efficiency of carbon dioxide gas (paragraph 17, line 26-28 of Wang et al.).
Regarding claim 2, Hawn further teaches that the electrode is a cathode (Hawn Pg. 11 Lns. 35-36, Pg. 12 Lns. 3-5, and Fig. 3)
Regarding claim 3, Hawn further teaches that solid base additive is an oxide of an alkaline earth metal (core shell materials that can be used include CaO and MgO (Hawn Pg.10 Lns. 8-11) which are oxides of alkaline earth metals).
Regarding claim 10, Hawn further teaches that solid base additive is an oxide of an alkaline earth metal (core shell materials that can be used include CaO and MgO (Hawn Pg.10 Lns. 8-11) which are oxides of alkaline earth metals).
Regarding claim 18, Hawn does not explicitly teach the electrode material of the instant claim. However, Wang et al. teaches that cathode catalyst particles can be located on surfaces of graphene sheets (paragraph 17). Wang et al. also teaches that the porous conductive layer 2202 can be made of a metal or alloy resistant to corrosion such as titanium or stainless steel (paragraph 17). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified or incorporated the electrode material of Wang et al. such as titanium, stainless steel, or graphene sheets in the electrode of Hawn, because such electrode materials are resistant to corrosion and are suitable as conductive materials for an electrode.
Response to Arguments
Applicant's arguments in Remarks, filed December 12, 2025, have been fully considered but are moot in view of the new grounds of rejection. Wang et al. is now relied on to teach the amended limitations. The rejection using Hawn has been modified to improve clarity.
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 LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Patricia Mallari can be reached at (571) 272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LUAN V. VAN
Supervisory Patent Examiner
Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
Prosecution Insights