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 Amendment
The amendment filed on 9/16/2025 has been entered into the prosecution for the application. Currently claims 121-145 are pending with claims 143-145 withdrawn from consideration. Claims 121-142 are pending examination.
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.
Claims 121-128, 132, 135, 136, 138, 139, and 140-142 are rejected under 35 U.S.C. 103 as being unpatentable over Fernández et al. (WO 2017/207220; references are made to the English equivalent US 11193213 B2), and further in view Berlinguette (WO 2019051609 A1).
Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
For claim 121, Fernández teaches a cathodic and anodic compartment comprising or a cathode and anode respectively (Fernández abstract and Fig. 1), where water is fed into the anodic compartment, application of voltage (Fernández Column 6 lines 33-38) to generate protons which are can react with the carbonate at the BPM interface forming water and CO2 (Fernández Column 6 lines 53-64), electrolytically converting CO2 into a carbon-based product at the cathode (Fernández Column 4 lines 39-41)
Fernández does not teach separating the carbon-based product from the carbonate depleted solution.
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette teaches separation of desired products via the hydrated support layer that also behaves as a water reservoir, and also teaches withdrawn processes for separating products (Berlinguette Fig 1, Fig. 2 [0062] and [0080]).
It would have been obvious to one of ordinally skill skilled in the art before the effective filing of
the claimed invention to apply the teachings of Berlinguette for electroreduction of CO2 at the cathode for the production of a carbon-based product methanol, to those of Fernández, to provide a reservoir of water that is available to maintain hydration of the cathode side of membrane while providing a pathway for protons to pass from membrane to cathode and facilitate stable operation at higher current densities. (Berlinguette abstract and [0080]).
For claim 122, Fernández and Berlinguette teach all the limitations of claim 121.
Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further bipolar membrane separating an anode from the cathode(abstract, [0010], [0012], and Fig. 1B), and at the bipolar membrane, water is dissociated into protons and hydroxide The protons migrate toward the cathode and the hydroxide migrates towards the anode (Berlinguette [011, 0053 and 0076]).
It would have been obvious to one of ordinally skill skilled in the art before the effective filing of
the claimed invention to apply the teachings of Berlinguette for electroreduction of CO2 at the cathode for the production of a carbon-based product methanol, to those of Fernández, to provide a reservoir of water that is available to maintain hydration of the cathode side of membrane while providing a pathway for protons to pass from membrane to cathode and facilitate stable operation at higher current densities. (Berlinguette abstract and [0080]).
For claim 123, Fernández and Berlinguette teach all the limitations of claim 122.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches bipolar membrane separating an anode from the cathode(abstract, [0010], [0012], and Fig. 1B), and at the bipolar membrane, water is dissociated into protons and hydroxide The protons migrate toward the cathode and the hydroxide migrates towards the anode (Berlinguette [011, 0053 and 0076]).
It would have been obvious to one of ordinally skill skilled in the art before the effective filing of
the claimed invention to apply the teachings of Berlinguette for electroreduction of CO2 at the cathode for the production of a carbon-based product methanol, to those of Fernández, to provide a reservoir of water that is available to maintain hydration of the cathode side of membrane while providing a pathway for protons to pass from membrane to cathode and facilitate stable operation at higher current densities (Berlinguette abstract and [0080]).
For claim 124, Fernández and Berlinguette teach all the limitations of claim 122.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette teaches the bipolar membrane comprises an anion exchange layer facing the anode and a cation exchange layer facing the cathode, maintaining an electrical potential difference between the cathode and the anode of the membrane electrode assembly; delivering water or an aqueous electrolyte solution to the support layer so that the support layer contains liquid water (which may be, for example in the form of pure water or an aqueous solution) and allowing the liquid water of the support layer to hydrate the cation exchange layer and to carry cations from the bipolar membrane toward the cathode (Berlinguette [0012]). Berlinguette further teaches a bipolar membrane separating an anode from the cathode(abstract, [0010], [0012], and Fig. 1B), and at the bipolar membrane, where water is dissociated into protons and hydroxide The protons migrate toward the cathode and the hydroxide migrates towards the anode (Berlinguette [011, 0053 and 0076]), bipolar membrane Fumasep FBM available from FUMATECH BWT GmbH (Berlinguette [0053]), which can contain the anion exchange layer comprising of imidazolium based compounds, quaternary ammonium based compounds and/or phosphonium based compounds or any derivatives or polymers thereof; and the cation exchange layer comprises a perfluorosulfonic acid polymer.
For claim 125, Fernández and Berlinguette teach all the limitations of claim 122.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches that the bipolar membrane is Fumasep FBM available from FUMATECH BWT GmbH (Berlinguette [0053]), this membrane is often reinforced by woven polymeric materials PEEK hence the claim limitations of the bipolar membrane is mechanically reinforced with a woven polymeric material which is PEEK, polyester, polypropylene, and/or perfluoroalkoxy have been met.
For claim 126, Fernández and Berlinguette teach all of the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette teaches that an aqueous solution of potassium hydroxide (KOH), sodium hydroxide (NaOH), suitable carbonates, suitable bicarbonates or the like can be used at a concentration of approximately (1 M) (Berlinguette [0074] and [0078]) and that the cathode feed was 0.5 M NaHC03.( Berlinguette [0116]).
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed concentration ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 127, Fernández and Berlinguette teach all of the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette teaches that cathode operates under conditions that are near to neutral pH (pH 7). If pH at the cathode is too low (too acidic) then the relative rate of reduction of C02 to hydrogen evolution is reduced (thereby reducing Faradaic efficiency). On the other hand, if pH at the cathode is too high then undesired reactions producing carbonates CO32- become more favored. These reactions can undesirably yield solids which can impair operation of the cathode and reduce the overall single pass conversion efficiency of the desired product (e.g. CO) (Berlinguette [0069]), and that the anode operates under basic conditions (i.e. pH in the range of 7 to 14) (Berlinguette [0072]).
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed pH ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 128, Olah and Berlinguette teach all the limitations of claim 127.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Neither Fernández nor Berlinguette specifically teach that the pH of the carbonate depleted solution upon exiting the cathodic compartment is between 0.2 to 0.4 lower than the carbonate loaded solution.
Berlinguette however teaches that from cathode, feed combines with water and electrons to yield CO and hydroxide ions. The CO is carried out of cell in the flow of cathode feed through cathode feed channel by way of cathode outlet. The hydroxide ions liberated at cathode combine with protons from the water dissociation reaction that occurs in to yield water ([0096]). From this, it would be inherent that the pH of the carbonate depleted solution upon exiting the cathodic compartment would be lower than the carbonate loaded solution.
With respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any order of the claimed steps is an obvious variant of the steps of the cited prior art.
It also is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed pH ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 138, Fernández and Berlinguette teach all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Fernández teaches that the cathode typically takes the form of a gas diffusion electrode. A gas diffusion electrode is understood to mean a porous catalyst structure of good electron conductivity that has been partly wetted with the adjacent membrane material.
Fernández further teaches a silver (Fernández Fig. 1 and column 6 line 36)
Furthermore, Berlinguette teaches the support layer comprises a mat of glass fibers, hydrophilic polytetrafluoroethylene (PTFE), expanded PTFE, porous PTFE, silica beads, ceramic beads or porous sheets ([0031] and [0081] hence the claim limitations of a hydrophilic porous substrate have been met .
For claim 140, Fernández and Berlinguette teach all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches delivering a gas comprising carbon dioxide to a cathode of a membrane electrode assembly and that the gas may be air, pure carbon dioxide gas, flue gas, combustion products or the like (Berlinguette [0012]).
For claim 132, Fernández and Berlinguette teach all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches that a power supply connected to supply a potential difference between the anode and the cathode wherein the potential difference is sufficient to maintain a current density at the cathode of at least 100 mA/cm2 (Berlinguette [0035] and [0125]), which falls within the claimed range.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed current density ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 135, Fernández and Berlinguette teach all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches that an adequate hydration during sustained electrolysis can be achieved by simply supplying the flow cell with humidified C02 and a measured stable C02 to CO electrolysis at 65% FE and 100 mA/cm.sup.2 (Berlinguette [0120] and Fig. 6F).
For claim 136, Fernández and Berlinguette teaches all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Neither Fernández nor Berlinguette specifically teach that the protons are generated in an amount of le-6 to 5e-6 mole/sec per 1 cm2 of electrode area.
Berlinguette however that the cathode and anode had dimensions of 2.5 cm x 2.5 cm of which a 2 cmx 2 cm area was exposed for an active area of 4 cm2, since current density is the rate of protons produced or transported per unit area (Berlinguette [0098]), the number of protons are generated would also vary based on the surface area. Berlinguette further teaches that the specific examples of systems, methods and apparatus have been described herein for purposes of illustration. These are only examples. The technology provided herein can be applied to systems other than the example systems described above. Many alterations, modifications, additions, omissions, and permutations are possible within the practice of this invention (Berlinguette [0132]).
For claim 139, Fernández and Berlinguette teach all the limitations of claim 138.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Berlinguette further teaches the support layer comprises a mat of glass fibers, hydrophilic polytetrafluoroethylene (PTFE), expanded PTFE, porous PTFE, silica beads, ceramic beads or porous sheets (Berlinguette [0031] and [0081]). Hydrophilic substrate can have any contact angle below 90° and since the claimed is below 90°, the claim limitations of the porous substrate having a contact angle that is less than 40 degrees in term of hydrophilicity have been met. Also teaches that Support layer may optionally be formed of the same or similar material as cathode(Berlinguette [0083]) the cathode the cathode catalyst comprises one or more metals selected from the group consisting of Ag, Au, Cu, Co, Zn, Co, Cd, Pb, Pd, Fe, Mn, W, and Sn (Berlinguette [0018)].
With respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any order of the claimed steps is an obvious variant of the steps of the cited prior art.
It also is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed contact angle ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 141, Fernández and Berlinguette teach all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Fernández and Berlinguette both teach a carbon-based product comprises CO, (Fernández Column 4 lines 39-41 and Berlinguette [0004]).
Fernández and Berlinguette also both teach the cathode catalyst comprises one or more metals selected from the group consisting of Ag, Au, Cu, Co, Zn, Co, Cd, Pb, Pd, Fe, Mn, W, and Sn. (Fernández Fig. 1 and column 6 line 36, Column 3 lines 1-2, and Berlinguette [0018])
For claim 142, Fernández and Berlinguette teaches all the limitations of claim 121.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Fernández and Berlinguette also both teach the cathode catalyst comprises one or more metals selected from the group consisting of Ag, Au, Cu, Co, Zn, Co, Cd, Pb, Pd, Fe, Mn, W, and Sn. (Fernández Fig. 1 and column 6 line 36, Column 3 lines 1-2, and Berlinguette [0018])
Fernández emphasizes that the selection of the cathode material depends especially on the desired product of value from the carbon dioxide decomposition. In some embodiments, carbon monoxide is produced by the use of a silver cathode, ethylene is produced by the use of a copper cathode, and formic acid by the use of a lead cathode.
Berlinguette further teaches that the cathode catalyst may, for example, comprise any late first (or second) row transition metal catalyst, post-transition metals (e.g. bismuth), alloys of suitable metals, suitable metal oxides, bi and tri-metal mixed metal materials as catalysts such as cathode catalyst silver (Ag)( Berlinguette [0070]).
Claims 129-131, and 133-134 are rejected under 35 U.S.C. 103 as being unpatentable over Fernández et al. (US 11193213 B2), and further in view of Berlinguette (WO 2019051609 A1) and Olah et al (US20090014336 A1).
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Also as mentioned above, Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
For claim 129, Fernández and Berlinguette teach all the limitations of claim 121.
Fernández teaches a CO product (Fernández Column 3 lines 34-35).
Fernández and Berlinguette do not teach that syngas is produced by the process
Olah discloses a method for the electrochemical production of syngas and methanol via CO2 reduction in a divided electrochemical cell that includes an anodic and cathodic compartment (Olah abstract and [0046]) thus being analogous to Fernández and Berlinguette.
Olah further discloses a method a method for reducing CO2 in a carbonate electrolyte to produce syngas (CO +H2) and methanol (Olah [0046-0047]).
It would have been obvious to one of ordinally skill skilled in the art before the effective filing of
the claimed invention to apply the teachings of Olah for electrochemical production of syngas and methanol via CO2 reduction, to those of Fernández, to provide a significant reduction of carbon dioxide, a major greenhouse gas, in the atmosphere thus mitigating global warming (Olah [0055]).
For claim 130, Fernández, Berlinguette and Olah teach all the limitations of claim 129.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Also as mentioned above, Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Olah discloses a method for the electrochemical production of syngas and methanol via CO2 reduction in a divided electrochemical cell that includes an anodic and cathodic compartment (Olah abstract and [0046]) thus being analogous to Fernández and Berlinguette.
Olah further teaches that the use of electrochemical reduction of carbon dioxide (C02), tailored over certain cathode electrocatalysts produces carbon monoxide (CO) and hydrogen gas (H2) in a high yielding ratio of approximately 1:2. The ratio can be between 1:2 and 1:2.1, (Olah [0059]), which falls within the claimed range.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have further found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ratio ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
For claim 131, Fernández, Berlinguette, and Olah teach all the limitations of claim 129.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Also as mentioned above, Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Olah discloses a method for the electrochemical production of syngas and methanol via CO2 reduction in a divided electrochemical cell that includes an anodic and cathodic compartment (Olah abstract and [0046]) thus being analogous to Fernández and Berlinguette.
Olah further teaches that the product methanol may be utilized to produce other products such as hydrocarbons (Olah [0055] and [0057]).
For claim 133, Fernández and Berlinguette teach all the limitations of claim 121.
Olah further discloses absorbing CO2 from the low concentration of atmospheric CO2 using absorbers, and that incorporating a carbon capture system on site, forming a carbonate solution which is fed to the cathode compartment of an electrochemical reactor after capture, CO2 is recovered from the absorbent by desorption, through heating, vacuum (or reduced pressure) or electrochemical treatment, and CO2 can be recycled CO2 can also be captured using basic absorbents such as calcium hydroxide (Ca(OH)2) and potassium hydroxide (KOH), which react with CO.sub.2 to form calcium carbonate (CaCO3) and potassium carbonate (K2CO3), respectively (Olah [0065]).
For claim 134, Fernández, Berlinguette, and Olah teach all the limitations of claim 133.
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Also as mentioned above, Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Olah discloses a method for the electrochemical production of syngas and methanol via CO2 reduction in a divided electrochemical cell that includes an anodic and cathodic compartment (Olah abstract and [0046]) thus being analogous to Fernández and Berlinguette.
Olah further discloses absorbing CO from the low concentration of atmospheric CO using absorbers, and that incorporating a carbon capture system on site, forming a carbonate solution which is fed to the cathode compartment of an electrochemical reactor (Olah [0065]).
Claim 137 is rejected under 35 U.S.C. 103 as being unpatentable over Fernández et al. (US 11193213 B2), and further in view of Berlinguette (WO 2019051609 A1), Olah et al (CA 2690980 A1), and Kirk et al. (CA 3033122 A1).
As mentioned above, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67).
Also as mentioned above, Berlinguette discloses a process for electrochemically reducing carbon dioxide to carbon-based products (Berlinguette abstract) thus being analogous to Fernández.
Olah discloses a method for the electrochemical production of syngas and methanol via CO2 reduction in a divided electrochemical cell that includes an anodic and cathodic compartment (Olah abstract and [0046]) thus being analogous to Fernández and Berlinguette.
For claim 137, Fernández, Berlinguette, and Olah teach all the limitations of claim 129.
Fernández, Berlinguette, and Olah do not specifically teach that the syngas and the carbonate depleted solution are removed from the cathodic compartment as a single stream and are separated in a downstream separation stage.
Kirk discloses a system for electrochemical reduction of CO2 to organic products( Kirk abstract) hence being analogous to Fernández, Berlinguette, and Olah .
Kirk teaches an integrated production system that includes a CO2 gas absorption reactor, an electrochemical reaction unit, and a product extraction unit to thereby generate reactant and product streams (Kirk pg. 22 lines 5-10).
It would have been obvious to one of ordinally skill skilled in the art before the effective filing of
the claimed invention to apply the teachings of Kirk for incorporating an integrated production system that includes a CO2 gas absorption reactor, to those of Fernández, Berlinguette, and Olah to facilitate reuse of certain components; and/or viscosity control techniques (Kirk pg.22 lines 10-14).
Response to Arguments
Applicant's arguments filed 09/16/2025 have been fully considered but they are not persuasive. The applicant argues that Fernández does not teach or suggest such a carbonate electrolysis process. Rather, Fernández relies on an entirely different electrochemical approach, in which the electrolysis cell operates with a gas-phase feed stream rather than a carbonate feed stream. The chemistry disclosed in Fernández is fundamentally distinct from the conversion of carbonate recited in present claim 121.
In response to applicant’s argument, Fernández discloses a method and apparatus for electrolytically reducing carbon dioxide to carbon-based products of value (Fernández column 1 lines 37-38), where, CO2 is introduced into the system, carbonate is generated at the interface of the BPM such that protons react with carbonate to produce CO2, which then is reintroduced into the cell for further reaction (Fernández column 4 lines 53-54 and column 4 lines 53-67). Fernández teaches a carbonate solution being formed and the CO2 when in contact with H2O, they generate a carbonate solution. The reactivity in Fernández generates the same reactivity as that of the applicant (see applicant remarks page 9).
Applicant further argues that the teachings of Fernández and Berlinguette are fundamentally at odds, as their devices, and the underlying electrochemistry, on which they rely, are incompatible. The positioning of the anion selective membrane and the cation-selective membrane taught in Fernández are the opposite of that taught in Berlinguette, and any attempt to combine the two teachings would result in an inoperable device. As such, the combination is improper. See In re Sponnoble, 405 F.2d 578, 587 (ССPA 1969) (references teach away from combination if combination produces seemingly inoperative device); see also In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983).
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, the Examiner is not utilizing the components of the combination as the Applicant is. It would have been possible to utilize Berlinguette for collection purposes, thus having motivation for combination thereof.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ABELLINE KATUSIIME FIONAH/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759