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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/03/2026 has been entered.
Status of the Claims
This is a non-final Office action in response to Applicant’s declaration and remarks filed 04/03/2026. No claims were amended by Applicant.
Status of the Rejection
The rejections of claims 121-142 under 35 U.S.C. § 103 are withdrawn.
New grounds of rejection for claims 121-142 are established.
Response to Amendment
The declaration under 37 CFR 1.132 filed 04/03/2026 regarding the inability to combine the prior art references in the manner suggested in the Office action dated 11/05/2025 is moot, because the new grounds of rejection do not rely on any of the prior art references cited in the previous Office action.
Claim Objections
Claims 136 and 139 are objected to because of the following informalities:
Claim 136 line 2 reads “1e-6 to 5e-6”, but should read “1e-6 to 5e-6” or “1*10-6 to 5*10-6” to correct the scientific notation;
Claim 139 line 4 reads “to increase hydrophilicity thereof”, but should read “to increase the hydrophilicity thereof” to be grammatically correct.
Appropriate correction is required.
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.
Claim 130 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 130, The term “approximately” in claim 3 is a relative term which renders the claim indefinite. The term “approximately” 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.
Specifically, neither the claim nor the specification provide any guidance as to what deviation from the “2:1 to 4:1” ratio recited in claim 130 would be considered “approximately” within this range.
Claim 130 is therefore indefinite.
Examiner recommends amending the claim to remove the term “approximately”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 121 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kaczur (US Pat. Pub. 2013/0105304 A1).
Regarding claim 121, Kaczur teaches a process for converting carbonate into a carbon based product in an electrolysis cell (abstract), comprising:
feeding a carbonate loaded solution comprising carbonate ions (CO32-) into a cathodic compartment of the electrolysis cell (“the pH of the electrolyzer 102 may be controlled or maintained through use of an alkali metal bicarbonate and/or carbonate in combination with water to control the pH of the catholyte” para. 41, “potassium carbonate may be used as a feed for pH control. Potassium carbonate has a much higher solubility in water than potassium bicarbonate, and is preferably used in a concentration range of 5 to 1,500 gm/L” para. 42 and Fig. 1), the cathodic compartment comprising a cathode (“cathode 118” para. 38 and Fig. 1);
feeding an electrolyte into an anodic compartment of the electrolysis cell (“anode feed stream 122” para. 39 and Fig. 1), the anodic compartment comprising an anode (“anode 114” Id.);
applying a voltage across the anode and the cathode (“The reaction in the cathode compartment 110 may reduce carbon dioxide to formate at an applied current and voltage potential.” para. 40 and Fig. 1);
generating protons in situ within the electrolytic cell and supplying the protons within the cathodic compartment to react with the carbonate to form CO2 and water (“reaction in the anode compartment 108 may include deriving oxygen (O2, i.e., gaseous oxygen) and hydrogen ions (H+) or protons from the oxidation of water at an applied current and voltage potential. The hydrogen ions or protons are generally available for the reactions within the cathode compartment 110 via the cation exchange membrane 112” para. 39 and Fig. 1);
electrocatalytically converting the CO2 into the carbon based product at the cathode by electroreduction and producing a carbonate depleted solution (“The reaction in the cathode compartment 110 may reduce carbon dioxide to formate at an applied current and voltage potential.” para. 40 and Fig. 1); and
withdrawing the carbonate depleted solution and the carbon based product from the cathodic compartment and separating the carbon based product from the carbonate depleted solution (“The cathode exit stream 146 … may flow to a catholyte disengager 150 … The catholyte disengager 150 may process the cathode exit stream 146 into a hydrogen stream 152, a product stream 154, and a catholyte recycle stream 156 … The product stream 154 preferably includes an alkali metal formate…” para. 40 and Fig. 1).
Claims 121-123, 125, 129, 133-134, 137, and 140-141 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Berlinguette (WO 2019/204938 A1) as evidenced by, in the case of claim 125, FuelCell Store (“Technical Data Sheet fumasep® FBM” 2020).
Regarding claim 121, Berlinguette teaches a process for converting carbonate into a carbon based product in an electrolysis cell (e.g., abstract) comprising:
feeding a carbonate loaded solution comprising carbonate ions (CO32-) into a cathodic compartment of the electrolysis cell (“An aqueous feed 217 comprising CO32- and/or HCO3- is supplied from a carbon capture process 215 to cathode 161.” para. 65 and Figs. 2 and 3A, see also paras. 26-27 and 62), the cathodic compartment comprising a cathode (“a cathode 161” para. 63 and Figs. 2 and 3A);
feeding an electrolyte into an anodic compartment of the electrolysis cell (“A suitable anolyte is supplied at the anode side of the flow cell.” Para. 60 and Figs. 2 and 3A), the anodic compartment comprising an anode (“anode 160” para. 63 and Figs. 2 and 3A);
applying a voltage across the anode and the cathode (“An electrical potential is applied between cathode 161 and anode 160 from a power supply 212” para. 64 and Fig. 2);
generating protons in situ within the electrolytic cell and supplying the protons within the cathodic compartment to react with the carbonate to form CO2 and water (“protons react with dissolved HCO3- or CO32- in the catholyte to yield CO2.” para. 79, Fig. 3A and Eq. 3);
electrocatalytically converting the CO2 into the carbon based product at the cathode by electroreduction (“At least some of the resulting CO2 undergoes catalyzed electrochemical reactions at cathode 161 to yield CO” para. 79, Fig. 3A and Eqs. 5-6) and producing a carbonate depleted solution (as the reaction(s) consume carbonate, the product solution is necessarily depleted in carbonate); and
withdrawing the carbonate depleted solution and the carbon based product from the cathodic compartment and separating the carbon based product from the carbonate depleted solution (“Feed 217 now carrying the desired product is carried to a separation stage 218 where the product is taken off or used.” para. 67 and Fig. 2).
Regarding claim 122, Berlinguette further teaches the protons are generated using a bipolar membrane located in the electrolysis cell (“a BPM 162” para. 63, “Application of electrical potential between anode 160 and cathode 161 causes electrolysis of water at BPM 162. Protons (H+) travel toward cathode 161.” para. 79, and Figs. 2 and 3A).
Regarding claim 123, Berlinguette further teaches the bipolar membrane is positioned to provide fluid separation between the cathodic compartment from the anodic compartment (“an anode 160 and a cathode 161 separated by a BPM 162.” Para. 63 and Fig. 3A), and
wherein the bipolar membrane is configured to dissociate water to generate the protons and hydroxide ions (“Application of electrical potential between anode 160 and cathode 161 causes electrolysis of water at BPM 162.” para. 79 and Fig. 3A), wherein the protons move into the cathodic compartment to react with carbonate (“Protons (H+) travel toward cathode 161. The protons react with dissolved HCO3- or CO32- in the catholyte to yield CO2.” para. 79 and Fig. 3A) and the hydroxide ions move into the anodic compartment (see Fig. 3A).
Regarding claim 125, Berlinguette anticipates the limitations of claim 122, as described above.
Berlinguette further teaches the bipolar membrane is mechanically reinforced with a woven polymeric material which is PEEK (“The BPMs (FuMA-tech; Fumasep FBM)” para. 119)1.
Regarding claim 129, Berlinguette anticipates the limitations of claim 121, as described above.
Berlinguette further teaches the carbon based product comprises CO (“At least some of the resulting CO2 undergoes catalyzed electrochemical reactions at cathode 161 to yield CO.” para. 79, Fig. 3A, and Eq. 4-6) and syngas is produced (“the useful chemicals include syngas” para. 50 and Eq. 7-8, see also para. 11).
Regarding claim 133, Bernlinguette anticipates the limitations of claim 121, as described above.
Berlinguette further teaches at least a portion of the carbonate depleted solution removed from the cathodic compartment is used as at least part of an absorption solution that is supplied to a CO2 absorber (“Filters/separators 218 may operate to … recirculate the output stream from cathode 161 … back to a carbon capture process (not shown in Fig. 2A)” para. 73 and Fig. 2, see also para. 80) that receives a CO2-containing gas and produces a CO2-depleted gas and an absorber loaded solution (para. 47 and Fig. 1).
Regarding claim 134, Berlinguette further teaches at least a portion of the absorber loaded solution is used as at least a portion of the loaded carbonate solution that is fed into the cathodic compartment (“In contactor 14 CO2 is contacted with a circulating solution with which it reacts to form carbonate and/or bicarbonate ions in the circulating solution.” para. 47 and “The circulating solution is carried by an outlet line 15 to a flow through electrochemical reactor 16.” Para. 48 and Fig. 1, see also para. 65).
Regarding claim 137, Berlinguette anticipates the limitations of claim 129, as described above.
Berlinguette further teaches 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 (“Feed 217 now carrying the desired product is carried to a separation stage 218 where the product is taken off or used.” para. 67 and Fig. 2).
Regarding claim 140, Berlinguette anticipates the limitations of claim 121, as described above.
Berlinguette further teaches the carbonate ions in the carbonate loaded solution are fully derived from CO2 extracted from a flue gas or air (“Flue gas 12 or another gas containing CO2 to be captured (e.g. air, exhaust gas etc.) is carried in a duct 13 to a contactor 14. In contactor 14 CO2 is contacted with a circulating solution with which it reacts to form carbonate and/or bicarbonate ions in the circulating solution.” para. 47 and Fig. 1, see also para. 54).
Regarding claim 141, Berlinguette anticipates the limitations of claim 121, as described above.
Berlinguette further teaches the carbon based product comprises CO (“At least some of the resulting CO2 undergoes catalyzed electrochemical reactions at cathode 161 to yield CO.” para. 79, Fig. 3A, and Eq. 4-6), wherein the cathode comprises a catalytic metal comprising Ag (“Cathode catalyst 161B [sic] may, for example, be provided in the form of an electrocatalyst ink. The electrocatalyst ink may optionally comprise a dispersion of silver nanoparticles …” para. 97 and Fig. 3, see also para. 96).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 126-128 are rejected under 35 U.S.C. 103 as being unpatentable over Kaczur (US Pat. Pub. 2013/0105304 A1).
Regarding claim 126, Kaczur anticipates the limitations of claim 121, as described in the above rejection under 35 U.S.C. § 102(a)(1) and 102(a)(2), incorporated herein by reference.
Kaczur further teaches the carbonate loaded solution comprises potassium carbonate (“potassium carbonate may be used as a feed for pH control.” para. 42), and the carbonate loaded solution has a CO32- concentration between 0.04 and 11 M, a range encompassing the claimed range (“Potassium carbonate has a much higher solubility in water than potassium bicarbonate, and is preferably used in a concentration range of 5 to 1,500 gm/L” para. 42)2.
A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 127, Kaczur anticipates the limitations of claim 121, as described in the above rejection under 35 U.S.C. § 102(a)(1) and 102(a)(2), incorporated herein by reference.
Kaczur further teaches the carbonate loaded solution has a pH between 3 and 12, a range overlapping the claimed range (“Depending on the chemistry of the electrochemical systems described herein, the pH of the catholyte preferably ranges from 3 to 12” para. 80). A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 128, Kaczur further teaches 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 (Fig. 20 shows that between days 5 and 8 of operation, the pH of the catholyte is 0.2 to 0.4 pH units lower than the starting pH).
Claims 126-127, 130-132, 135-136, and 138 are rejected under 35 U.S.C. 103 as being unpatentable over Berlinguette (WO 2019/204938 A1).
Regarding claim 126, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette further teaches the carbonate loaded solution comprises potassium carbonate (“a 3.0-M K2CO3 solution” para. 133).
Berlinguette does not teach the carbonate loaded solution has a CO32- concentration of at least 0.7 M and below 2.2 M.
Berlinguette instead teaches the carbonate loaded solution may have a CO32- concentration between 0.5 and 3 M, a range encompassing the claimed range (“The concentration of carbonate and/or bicarbonate ions in the aqueous solution may, for example, be in the range of 0.5M to 3M.” para. 15).
A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 127, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not teach the carbonate loaded solution has a pH above 10.
Berlinguette instead teaches the carbonate loaded solution has a pH between 8 and 10, a range touching the claimed range (“Some embodiments prefer catholyte pH in the range of 8-10.” para. 91, see also paras. 14 and 56).
A range in the prior art touching a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 130, Berlinguette anticipates the limitations of claim 129 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not teach the syngas has an H2-to-CO ratio of 2:1 to 4:1.
Berlinguette instead teaches the syngas has an H2-to-CO ratio between 1:3 and 4:1, a range encompassing the claimed range (“electrical operating conditions 151 is tuned in synchrony with other flow cell specifications to reduce HCO3- and/or CO32- to yield CO2:CO:H2 at molar ratios ranging from 4:3:1 to 5:1:4.” para. 88).
A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 131, Berlinguette anticipates the limitations of claim 129 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not, in a single embodiment, teach supplying at least a portion of the syngas to a Fischer-Tropsch reaction unit to produce hydrocarbons therefrom.
However, Berlinguette suggests using the produced syngas in a Fischer-Tropsch reactor to produce hydrocarbons therefrom (“For example, collector 218A may provide processing stages for converting collected syngas to: … synthetic diesel fuel via Fischer-Tropsch…” para. 74 and Fig. 2).
As Berlinguette teaches a method for the electrochemical reduction of CO2 to syngas using a bipolar membrane electrolyzer, Berlinguette is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Berlinguette, such that at least a portion of the syngas is supplied to a Fischer-Tropsch reaction unit to produce hydrocarbons therefrom. A person having ordinary skill in the art would have been motivated to make this modification because Berlinguette explicitly suggests making this modification.
Regarding claim 132, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not teach the electrolytic cell is operated with a current density between 100 and 500 mA/cm2.
Berlinguette instead teaches the electrolytic cell is operated with a current density of at least 100 mA/cm2, a range encompassing the claimed range (“current flowing in the electrochemical reactor as a result of the applied potential may have a current density at the cathode of at least 100 mA/cm2” para. 12).
A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Regarding claim 135, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not explicitly teach the protons are generated in a controlled manner in accordance with the CO32- concentration of the carbonate loaded solution to convert at least 50% of the carbonate into CO2 in situ within the cathodic compartment.
However, the instant specification indicates that application of a current between 100 and 300 mA/cm2 (paras. 7 and 64) to a solution comprising 1 M K2CO3 catholyte (para. 63) in an electrolytic cell comprising a silver cathode catalyst (para. 64) using a fumasep® FBM bipolar membrane (para. 79), results in the claimed in situ carbonate conversions.
Berlinguette teaches application of a current greater than 100 mA/cm2 (para. 12), to a solution comprising 0.5 to 3 M K2CO3 catholyte (paras. 15 and 133), in an electrolytic cell comprising a silver cathode catalyst (para. 97) and a fumasep® FBM bipolar membrane (para. 119). I.e., Berlinguette teaches conditions overlapping those the instant specification indicates result in the conversion of “at least 50% of the carbonate into CO2 in situ within the cathodic compartment”.
Berlinguette is therefore considered, based on the available evidence to render the limitation “the protons are generated in a controlled manner in accordance with the CO32- concentration of the carbonate loaded solution to convert at least 50% of the carbonate into CO2 in situ within the cathodic compartment” obvious. A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)). However, this determination may be reconsidered upon Applicant’s provision of additional evidence (MPEP § 2144.05 and 2112.02).
Regarding claim 136, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not explicitly teach the protons are generated in an amount of 1e-6 to 5e-6 mole/sec per 1 cm2 of electrode area.
However, the instant specification indicates that the amount of protons generated is linearly dependent on the applied current density (para. 7), and that a current density of 100 mA/cm2 to 300 mA/cm2 results in proton generation in the claimed range (para. 64).
Berlinguette teaches an applied current density of 100 mA/cm2 or greater (para. 12), a range encompassing the range the instant specification indicates is sufficient to generate protons at a rate of 1e-6 to 5e-6 mole/sec per 1 cm2 of electrode area.
Because the method of Berlinguette uses a current density range encompassing the current density range the instant specification indicates results in the generation of protons in the claimed range, it is considered that the method of Berlinguette necessarily generates protons in a range encompassing the claimed range (MPEP § 2112). Berlinguette is therefore considered to render the limitation “the protons are generated in an amount of 1e-6 to 5e-6 mole/sec per 1 cm2 of electrode area” obvious, because a range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I).
Regarding claim 138, Berlinguette anticipates the limitations of claim 121 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette further teaches the cathode comprises a porous substrate and a catalytic metal provided thereon (“Ag spray-coated on carbon paper as the cathode” para. 118).
Berlinguette does not explicitly teach the porous substrate is hydrophilic.
However, Berlinguette teaches that a hydrophilic porous substrate selects for a higher CO content in the produced gas, while a hydrophobic porous substrate selects for increased CO2 content in the produced gas (para. 81).
As Berlinguette teaches a method for the electrochemical conversion of carbonate to CO using a bipolar membrane cell, Berlinguette is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Berlinguette, such that the porous substrate is a hydrophilic porous substrate. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of increasing the conversion of CO2 to CO, as taught by Berlinguette.
Claim 124 is rejected under 35 U.S.C. 103 as being obvious over Berlinguette (WO 2019/204938 A1) in view of Fontecave (WO 2020/104569 A1) and as evidenced by FuelCell Store (“Technical Data Sheet fumasep® FBM” 2020) and Gao et al. (“Rotational Isomeric State Theory Applied to the Stiffness Prediction of an Anion Polymer Electrolyte Membrane” Proc. of SPIE Vol. 6929, 69290M, (2008)).
Regarding claim 124, Berlinguette anticipates the limitations of claim 122 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette further teaches the bipolar membrane comprises an anion exchange layer defining a side of the anodic compartment and a cation exchange layer defining a side of the cathodic compartment (“FuMA-tech; Fumasep FBM” para. 119 and see Fig. 3A)3, and wherein the bipolar membrane is configured such that water is dissociated into the protons and the hydroxide ions when a given potential difference is exceeded (para. 79).
Berlinguette does not teach the anion exchange layer comprises 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.
However, Fontecave teaches a method for reducing carbonate to carbon monoxide (abstract and p. 19 lines 13-21) in a bipolar membrane electrolyzer (“The membrane separating the anodic compartment and the cathodic compartment can be … a bipolar membrane…” p. 16 lines 26-28), wherein the bipolar membrane comprises an anion exchange layer and a cation exchange layer (“The bipolar membrane is a layered ion exchange membrane comprising a first layer which is permeable to the anions and a second layer which is permeable to the cations” p. 17 lines 1-3), wherein the anion exchange layer comprises quaternary ammonium based compounds (“a Selemion™ AEM” p. 16 lines 29-30)4 and the cation exchange layer comprises a perfluorosulfonic acid polymer (“The cation exchange membrane can be in particular a proton exchange membrane (PEM) useful for the circulation of H+ cation. It can be a Nafion® membrane. Nafion® is a copolymer of tetrafluoroethylene (Teflon®) and perfluoro-3,6-dioxa-4-methyl-7-octene-sulfonic acid.” p. 16 lines 31-34).
As Berlinguette and Fontecave each teach methods of electrochemically reducing carbonate to carbon monoxide in bipolar membrane cells, Berlinguette and Fontecave are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the bipolar membrane used in the method of Berlinguette, such that the anion exchange layer comprises quaternary ammonium based compounds and the cation exchange layer comprises a perfluorosulfonic acid polymer, as taught by Fontecave. A person having ordinary skill in the art would have been motivated to make this modification because Fontecave a BPM comprising these materials is suitable for electrochemically reducing carbonate to carbon monoxide. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claim 139 is rejected under 35 U.S.C. 103 as being unpatentable over Berlinguette (WO 2019/204938 A1), as applied to claim 138, and further in view of Suzuki (WO 2018/139610 A1).
Regarding claim 139, Berlinguette renders the limitations of claim 138 obvious, as described above.
Berlinguette further teaches the porous substrate is in the form of a sheet (“carbon paper” para. 118).
Berlinguette does not suggest the porous substrate should specifically have a hydrophilicity defined by a contact angle less than 40°, or teach the porous substrate is composed of graphite, Ni, Fe, Cu, Ti, stainless steel, or carbon paper pre-treated with ultraviolet (UV) radiation to increase the hydrophilicity thereof.
However, Suzuki teaches a method for the electrolytic production of gaseous products from an aqueous solution in a membrane cell (abstract), wherein a porous electrode substrate (“the porous electrode may be the substrate itself, or it may be a substrate with a highly reactive catalyst layer on its surface,” para. 52) comprising graphite, Ni, Fe, Cu, or stainless steel (“The material of the substrate is not particularly limited, but examples include conductive substrates made of at least one selected from the group consisting of nickel, iron, mild steel, stainless steel, vanadium, molybdenum, copper, silver, manganese, platinum group metals, graphite, and chromium” para. 54),
having a hydrophilic contact angle between 0° and 30°, a range within the claimed range (“the water contact angle of the porous electrode is … greater than 0° and 30° or less, more preferably greater than 0° and 25° or less, and even more preferably greater than 0° and 20° or less” para. 51),
which provides the predictable benefits of improving contact between the electrolyte and electrode and enhancing the removal of the generated gaseous products, thereby increasing the efficiency of the electrolysis (“When the water contact angle is within this range, the wettability of the electrode surface is improved, gases generated during electrolysis can be removed from the electrode surface more efficiently, and the electrolysis efficiency can be further increased” para. 51).
As Berlinguette teaches a method of electrochemically reducing carbonate ions in a bipolar membrane cell, Berlinguette is analogous art to the instant invention. As Suzuki teaches a method of improving membrane electrolysis cells designed to form a gaseous product from an aqueous solution, Suzuki is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Berlinguette, such that the porous cathode substrate comprises graphite, Ni, Fe, Cu, or stainless steel having a contact angle that is between 0 and 30 degrees in term of hydrophilicity, as taught by Suzuki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of increasing the efficiency of the system by improving the reaction with the aqueous solution and enhancing the removal of the gaseous products from the cell, as taught by Suzuki. A person having ordinary skill in the art would have had a reasonable expectation for success making this modification because Berlinguette teaches formation of gaseous CO2, CO, and H2 products from an aqueous solution in a membrane electrolysis cell. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Claim 142 is rejected under 35 U.S.C. 103 as being obvious over Berlinguette (WO 2019/204938 A1) in view of Higgins et al. (“Guiding Electrochemical Carbon Dioxide Reduction toward Carbonyls Using Copper Silver Thin Films with Interphase Miscibility” ACS Energy Lett. 2018, 3, 2947−2955).
Regarding claim 142, Berlinguette anticipates the limitations of claim 141 as described in the above rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Berlinguette does not teach the catalytic metal comprises Cu doped with Ag.
However, Higgins teaches that Cu doped with Ag (“CuAg thin films with nonequilibrium Cu/Ag alloying” abstract) provides the predictable benefit of favoring the production of acetaldehyde and acetate relative to other products (“In comparison to pure Cu, the CuAg thin films showed significantly higher activity and selectivity toward liquid carbonyl products, including acetaldehyde and acetate” abstract) during the electrochemical reduction of carbon dioxide (title).
As Berlinguette teaches a method of electrochemically reducing carbonate ions in a bipolar membrane cell, Berlinguette is analogous art to the instant invention. As Higgins teaches catalysts for the electrochemical reduction of carbon dioxide, Higgins is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Berlinguette, such that the catalyst metal is Cu doped with Ag, as taught by Higgins. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of favoring the production of acetaldehyde and acetate as products, as taught by Higgins. Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 121-142 under 35 U.S.C. § 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Qiu (CN 106868535 A) teaches a method of electrochemically reducing bicarbonate (para. 41) in an electrochemical cell (abstract), wherein the cathode substrate is hydrophilic carbon felt with a water contact angle of 60° (para. 111).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
1 As evidenced by FuelCell Store “This composite membrane is chemically stable and mechanically reinforced with woven PEEK.” p. 1 para. 2.
2 Calculated using a molar mass of 138.2 g/mol for potassium carbonate.
3 As evidence by FuelCell Store, fumasep® FBM comprises an anion and cation exchange layer (“The fumasep® FBM single film Bipolar Membrane consists of an anion exchange layer and a cation exchange
layer manufactured using a patented multilayer-coating production technology.” p. 1 para. 1).
4 As evidenced by Gao, Selmion™ AEMs comprise quaternary ammonium groups as the anion exchange groups (see Fig. 2 and § 2.1).
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