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All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment. New grounds of rejection under 35 U.S.C. § under 35 U.S.C. § 103 are made as outlined below.
Claim Objection
Claim 1 is objected to because of the following informalities:
A semicolon is missing at the end of the line before the limitation “a metal phthalocyanine…” in line 28. In addition, it appears that the alternative molecular catalyst starting with “a metal phthalocyanine…” is within the same indent as the wherein clause which makes it appear that the alternative molecular catalysts as well as the additional components are all part of the wherein clause. It is suggested that the applicant change the indent so that the wherein clause do not include all the additional components after line 27 in claim 1.
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.
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, 5, 6, 9-15, 20, 21, 32, and 33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 20, limitation “the tetra phenyl iron porphyrin” is indefinite because there is insufficient antecedent basis for this limitation. In addition, the tetra phenyl iron porphyrin Formula I appears to be limiting the metal tetra phenyl porphyrin with iron. However, since the metal could also be cobalt, it is not clear whether Formula I with iron as the moiety is required as the molecular catalyst in claim 1.
Regarding claim 10, the claim recites a molecular catalyst having the formula recited in the claim. However, it is not clear whether this is further limiting a particular species in the molecular catalyst in claim 1. If so, it is suggested that the claim be amended to further specify which molecular catalyst it is further limiting.
Dependent claims 2, 3, 5, 6, 9, 11-15, 20, 21, 32, and 33 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 2, 5, 6, 9, 14, 15, 20, 21, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Costentin et al. (US 20180023204) in view of Jeanty et al. (US 20190233957) and Ono et al. (20190085477).
Regarding claim 1, Costentin et al. teaches an electrolysis cell to electrochemically reduce CO2 into gaseous CO (Abstract) the electrolysis cell comprising:
an anodic compartment comprising: an anode (paragraph 79, 107; the anode can be made of iridium oxide and cobalt oxide which is deemed to be a catalyst capable of electrochemically oxidize water to oxygen); an anodic electrolyte solution comprising: a first solvent, and an anodic electrolyte, the first solvent being water (paragraph 81);
a cathodic compartment comprising: a cathodic electrolyte solution comprising: a second solvent, and a cathodic electrolyte, the second solvent being water (paragraph 77, 78);
a molecular catalyst being tetra phenyl iron porphyrin formed on the cathode (paragraph 72, 141 and 144):
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a power supply providing energy necessary to trigger the electrochemical reactions involving the CO2 gas (paragraph 76).
Costentin et al. discloses an electrochemical cell but does not explicitly teach following:
electrochemical cell is a flow cell thus omitting the disclosure of an inlet/outlet for the respective anodic and cathodic compartments adapted to circulate the electrolyte solution; a channel for flowing of CO2; and pumping means to circulate and control the flow rates of the electrolyte solution and CO2 gas; and
a gas diffusion porous current cathode collector.
Jeanty et al. teaches a continuous, flow by mode system for carbon dioxide electrolysis (paragraph 29) comprising: an anode 13 (Figure Drawing); a cathode 15 including a gas diffusion electrode (paragraph 50) adjoined by a gas space 16 (reads on channel for flowing CO2) and a cathode space 14. Jeanty et al. teaches an anodic compartment 12 and cathodic compartment 14 each having their respective inlets and outlets connected to the top and bottom of electrolysis cell 11 shown in the Figure.
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Additionally, Jeanty et al. teaches a pump circuit comprising pumps 18, 27 for supplying carbon dioxide and electrolyte through the electrolysis cell.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention modified the electrolysis cell of Costentin et al. with the continuous flow cell of Jeanty et al., thus incorporating the inlet/outlet, channel for flowing the carbon dioxide, and the pump apparatus as taught by Jeanty et al., because it would be able to reduce carbon dioxide in the continuous, flow by process, thus improving the conversion of carbon dioxide (paragraph 29, 45 of Jeanty et al.). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified the electrode of Costentin et al. with the gas diffusion porous electrode of Jeanty et al. as a base for applying a catalyst, because the gas diffusion electrode enables mutual contacting of solid catalyst, liquid electrolyte, and gaseous electrolysis reactant (paragraph 50 of Jeanty et al.).
Costentin et al. further does not explicitly teach following:
a current collector associated with the anode; and
an anion exchange membrane between the anodic compartment and a cathodic compartment (instead Costentin et al. teaches a proton exchange membrane; paragraph 77).
Ono et al. a carbon dioxide electrolytic device comprises: an anode current collector 13 and a cathode current collector 24 connected to power controller 40 which makes a current flow through the anode 11 and the cathode 22 (Fig. 2; paragraph 24). Ono et al. further teaches an anion exchange membrane to separate the gas generated in the anode compartment while allowing ions to move between the anode and the cathode (paragraph 26, 40).
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 the electrolysis cell of Costentin et al. by incorporating the current collector of Ono et al., because it would improve the current flow to the electrode. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the exchange membrane of Costentin et al. with the anionic exchange membrane of Ono et al. to separate the gas generated in the anode compartment while allowing ions to move between the anode and the cathode (paragraph 26 of Ono et al.).
Regarding claim 2, Costentin et al. teaches wherein the anodic and/or cathodic electrolyte solution has a neutral or basic pH (i.e., a pH of 6.5-7.5, paragraph 85).
Regarding claim 5, Costentin et al. teaches wherein the CO2 gas flow is at atmospheric pressure (paragraph 86).
Regarding claim 6, Costentin et al. teaches wherein the anodic and the cathodic electrolyte solutions are at ambient temperature (paragraph 83).
Regarding claim 9, Costentin et al. teaches that the metal tetra phenyl porphyrin catalyst comprising +N(C1-C4 alkyl)3 groups in the para or ortho position since the compound is the same as that of the instant claim.
Regarding claim 14, Costentin et al. teaches a phosphate buffer (paragraph 87).
Regarding claim 15, Costentin et al. teaches an electrolyte solution comprising an alkali metal hydroxide (paragraph 96). Alkali metal includes cesium thus one having ordinary skill in the art would recognize that cesium hydroxide would be suitable electrolyte for electrochemical reduction of carbon dioxide.
Regarding claim 20, Costentin et al. teaches immobilizing the catalyst using a binder (paragraph 72) wherein the binder consists of conductive polymers (paragraph 74).
Regarding claim 21, modified Costentin et al. teaches wherein pumping means are configured to recirculate the anodic electrolyte solution and the cathodic electrolyte solution (see Figure in Jeanty et al.).
Regarding claim 32, Costentin et al. teaches using an electrode made of carbon paper (paragraph 109, 203).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Costentin et al. (US 20180023204) in view of Jeanty et al. (US 20190233957), Ono et al. (20190085477), and further in view of Goetheer et al. (US 20210047743).
Costentin et al. teaches the electrolysis cell of claim 1. However, Costentin et al. does not explicitly teach electrolyte solution having a pH from 9-14.
Goetheer et al. teaches a method for electrochemically reducing carbon oxide in a basic environment using a pH between 7-14 (paragraph 58).
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 the electrolyte solution of Costentin et al. by using the pH of Goetheer et al., because Goetheer et al. teaches that a pH of 7-14 would be suitable for electrochemically reducing carbon oxide. According to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). Similarly, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Furthermore, the instant claim is dependent on an apparatus claim, therefore the pH of the electrolyte solution is directed to a material worked upon by the apparatus and would not further structurally limit the apparatus since the apparatus of Costentin et al. would be capable of being used with a solution having a basic pH.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Costentin et al. (US 20180023204) in view of Jeanty et al. (US 20190233957), Ono et al. (20190085477), and further in view of Yamada et al. (US 20180066370).
Costentin et al., Jeanty et al., and Ono et al. teach the electrolysis cell as applied to claim 1. The references do not explicitly teach the Rs in the tetraphenyl iron porphyrin catalyst being all H (claim 33).
Yamada et al. teaches a tetraphenyl iron porphyrin catalyst have all the R moieties as H (paragraph 12, 26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the tetraphenyl iron porphyrin catalyst of Costentin et al. with the tetraphenyl iron porphyrin catalyst with the Rs being H, as taught by Yamada et al., because Yamada et al. teaches that such catalyst would be suitable for promoting carbon dioxide reduction (paragraph 25 of Yamada et al.).
Claims 1, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jeanty et al. (US 20190233957) in view of Ono et al. (20190085477) and Magdesieva et al. (Magdesieva, T. V., et al. "Electrochemical reduction of CO 2 with transition metal phthalocyanine and porphyrin complexes supported on activated carbon fibers." Journal of The Electrochemical Society 149.6 (2002): D89. Cited in IDS 1/21/22).
Regarding claims 1 and 10, Jeanty et al. teaches a continuous, flow by mode system for carbon dioxide electrolysis (paragraph 29) comprising: an anode 13 (Figure Drawing); a cathode 15 including a gas diffusion electrode (paragraph 50) adjoined by a gas space 16 (reads on channel for flowing CO2) and a cathode space 14. Jeanty et al. teaches an anodic compartment 12 in cathodic compartment 14 each having their respective inlets and outlets connected to the top and bottom of electrolysis cell 11 shown in the Figure.
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Additionally, Jeanty et al. teaches a pump circuit comprising pumps 18, 27 for supplying carbon dioxide and electrolyte through the electrolysis cell.
Jeanty et al. does not explicitly teach:
a current collector associated with the anode;
the first and second solvent being water; and
an anion exchange membrane between the anodic compartment and a cathodic compartment (Jeanty et al. teaches a generic membrane; paragraph 48).
Ono et al. a carbon dioxide electrolytic device comprises: an anode current collector 13 and a cathode current collector 24 connected to power controller 40 which makes a current flow through the anode 11 and the cathode 22 (Fig. 2; paragraph 24). Ono et al. teaches the anode is mainly constituted of the catalyst material capable of oxidizing water to produce oxygen or hydrogen ions and reducing overvoltage in such reaction (paragraph 28). Ono et al. further teaches a device comprising an anion exchange membrane to separate the gas generated in the anode compartment while allowing ions to move between the anode and the cathode (paragraph 26, 40).
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 the electrolysis cell of Jeanty et al. by incorporating the current collector of Ono et al., because it would improve the current flow to the electrode. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention substitute the anode of Jeanty et al. with the anode constituted of the catalyst material of Ono et al. to oxidize water to produce oxygen or hydrogen ions and reducing overvoltage in such reaction (paragraph 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 substituted the exchange membrane of Jeanty et al. with the anionic exchange membrane of Ono et al. to separate the gas generated in the anode compartment while allowing ions to move between the anode and the cathode (paragraph 26 of Ono et al.).
Jeanty et al. does not explicitly teach the molecular catalyst recited in claim 1.
Magdesieva et al. teaches an electrochemical cell for CO2 reduction using a cobalt phthalocyanines loaded gas diffusion electrode made of activated carbon fibers (D89, left paragraph) as the molecular catalyst:
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Magdesieva et al. teaches that porphyrin and phthalocyanine both non-substituted and with tert-butyl groups complexes loaded on nanoporous activated carbon fiber supports are effective catalysts for CO2 electroreduction in the form of gas-diffusion electrodes, yielding carbon monoxide with current efficiencies up to 70% (D95, Conclusions).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the catalyst of Jeanty et al. with the catalyst of Magdesieva et al., because Magdesieva et al. teaches that cobalt phthalocyanine is an effective catalyst with high efficiency for CO2 reduction in gas diffusion electrodes.
Regarding claim 11, the unsubstituted cobalt phthalocyanine (Fig. 1 of Magdesieva et al.) reads on R1-16 being H.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jeanty et al. (US 20190233957) in view of Ono et al. (20190085477), Magdesieva et al. (Magdesieva, T. V., et al. "Electrochemical reduction of CO 2 with transition metal phthalocyanine and porphyrin complexes supported on activated carbon fibers." Journal of The Electrochemical Society 149.6 (2002): D89. Cited in IDS 1/21/22), and further in view of Wang et al. (Wang, Min, et al. "CO2 electrochemical catalytic reduction with a highly active cobalt phthalocyanine." Nature communications 10.1 (2019): 3602).
Jeanty et al., Ono et al., Magdesieva et al. teaches electrochemical device of claims 1 and 10 above. The references do not explicitly teach R1 to R16 being independently +N(C1-C4 alkyl)3.
Wang et al. teaches an electrolyzer for carbon dioxide electrochemical reduction using a cobalt phthalocyanine R1 to R16 being independently +N(C1-C4 alkyl)3.
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention substituted the catalyst of Jeanty et al. with the cobalt phthalocyanine having the trimethyl ammonium group, as taught by Wang et al., because Wang et al. teaches introducing a positively charged trimethyl ammonium group on the cobalt phthalocyanine forms a highly efficient and versatile catalyst for the CO2-to-CO electrochemical conversion in water (page 6, left column, last paragraph of Wang et al.).
Response to Arguments
Applicant’s arguments, see Remarks Pg. 9-22, filed October 3, 2025, with respect to the 35 U.S.C. § 103 rejection have been fully considered. All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment. However, applicant’s arguments are moot in view of the new grounds of rejection.
Conclusion
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.
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LUAN V. VAN
Supervisory Patent Examiner
Art Unit 1795
/LUAN V VAN/ Supervisory Patent Examiner, Art Unit 1795