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 04/01/2026 has been entered into the prosecution of the application.
Claim rejection under 35 U.S.C. §112 for claims 8-13 and 15-16 is withdrawn in response to the amendment.
Currently, claim(s) 8-13 and 15-16 is/are pending.
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.
Claim(s) 8-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ziyang Huo of US 2023/0155153 A1 (hereinafter, Huo) in view of Thomas Michaud of FR 3101881 A1 (hereinafter, Michaud) and Monteiro, Mariana CO, et al. "Efficiency and selectivity of CO2 reduction to CO on gold gas diffusion electrodes in acidic media." Nature communications 12.1 (2021): 4943 (hereinafter, Monteiro).
As to claim 8, Huo teaches to an electrode (Huo, paragraph [0028], teaches to an electrode, as Huo teaches to a cathode layer and an anode layer in a Membrane Electrode Assembly for carbon oxide electrolyzers), comprising:
an electrically conductive substrate (Huo, paragraph [0059], teaches to an electrically conductive substrate, as Huo teaches to a non-amorphous carbon support on which metal particles can be supported); and
amine-functionalized (Huo, paragraph [0080], teaches to capping agents, including dodecylamine) silver nanoparticles (Huo, paragraph [0011], teaches that the metal catalyst particles comprise silver) on a surface of the electrically conductive substrate (Huo, paragraph [0006], teaches to sintered amine-functionalized silver nanoparticles on a surface of the electrically conductive substrate, as Huo teaches to metal catalyst particles attached to the electrically conductive support particles); wherein:
the electrode is deployed in a gas diffusion electrode to convert carbon dioxide into carbon monoxide (Huo, paragraphs [0038]-[0039] and [0077], teaches to a carbon oxide electrolyzer, converting carbon dioxide into carbon monoxide).
Huo does not explicitly teach sintered silver amine-functionalized silver nanoparticles.
Huo does not explicitly teach 95% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles.
In an analogous art, Michaud teaches to sintered silver amine-functionalized silver nanoparticles (Michaud, paragraph [0142], teaches to sintered silver amine-functionalized silver nanoparticles, as Michaud teaches to laser sintering of amine-functionalized silver nanoparticles). Michaud teaches to 95% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles (Michaud, paragraph [0006], teaches to 95% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles, as Michaud, paragraphs [0090] and [0106], teaches to having 5% of amine remains in the sintered amine-functionalized silver nanoparticles; Michaud teaches to inks based on metallic nanoparticles, wherein one or more dispersants used in conjunction comprises dodecylamine; see paragraph [0089] of Michaud).
Both Huo and Michaud relate to amine-functionalized silver nanoparticles configured for electrolyzers (Michaud, paragraph [0158]). Huo does not explicitly teach sintering and remnants of amine. Huo does teach to an electrode comprising amine-functionalized silver nanoparticles for electrocatalytic reduction of carbon dioxide to carbon monoxide. Michaud, paragraphs [0001] and [0174], teaches preparation of ink for providing electrically conductive tracks, wherein Michaud, paragraph [0158], teaches that the conductive ink can be used in preparation of active layers for electrolyzer applications. Utilizing electrically conductive inks to fabricate electrolyzer electrodes benefits performance by lowering electrical resistance, reducing the need for expensive precious metals, and enabling 3D printing of intricate, high-surface-area geometries.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Huo with the method of Michaud for improving performance of a prepared electrode through a printing technique, thereby resulting in more efficient and cost-effective electrode.
Huo in view of Michaud does not explicitly teach the electrode comprises an energetic efficiency of from about 20% to about 25% at a cell potential of from about 3.00 Volts to about 3.50 Volts.
In an analogous art, Monteiro teaches to the electrode comprises an energetic efficiency of from about 20% to about 25% at a cell potential of from about 3.00 Volts to about 3.50 Volts (Monteiro, Fig. 3, teaches to the electrode comprising energetic efficiency of from about 20% to about 25% at a cell potential of from about 3.00 Volts to about 3.50 Volts, as Monteiro teaches that CO2 electrolysis conditions can be optimized by varying pH and cation identity; the question as to what structural features enable the performance, rather than reciting the performance itself, may better elicit novelty and non-obvious elements of the claimed invention since the claimed invention is directed to an apparatus, or an article of manufacture).
Both Huo in view of Michaud and Monteiro relate to diffusion electrodes used for electrocatalytic reduction of CO2 to CO (Monteiro, title). Huo in view of Michaud does not explicitly teach the recited performance metric of the electrode. Huo in view of Michaud does teach gas diffusion electrode used for electrocatalytic reduction of CO2 to CO using sintered amin-functionalized silver nanoparticles. Monteiro teaches to the effect of pH and cationic identity on CO2 electrolysis, wherein the efficiencies are optimized. Monteiro, pg. 5, teaches that it is crucial that the energy efficiency is optimized in order to make the technology industrially viable, as the electricity is the main operating cost of CO2 electrolysis.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Huo in view of Michaud with the conditions of Monteiro for optimizing CO2 electrolysis in using an electrode, thereby resulting in an efficient electrode.
As to claim 9, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 8, wherein the electrically conductive substrate comprises a carbon substrate (Huo, paragraph [0059], teaches to an electrically conductive substrate comprising a carbon substrate, as Huo teaches to a non-amorphous carbon support on which metal particles can be supported).
As to claim 10, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 10, wherein 10% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles (Michaud, paragraph [0006], teaches to wherein 10% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles, as Michaud, paragraphs [0090] and [0106], teaches to having 5% of amine remains in the sintered amine-functionalized silver nanoparticles; Michaud teaches to inks based on metallic nanoparticles, wherein one or more dispersants used in conjunction comprises dodecylamine; see paragraph [0089] of Michaud).
As to claim 11, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 10, wherein the deposition composition of amine-functionalized silver nanoparticles is prepared in a jettable ink form (Michaud, paragraph [0012], teaches to wherein the deposition composition of amine-functionalized silver nanoparticles is prepared in a jettable ink form, as Michaud teaches to an ink formulation).
As to claim 12, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 8, wherein the sintered amine-functionalized silver nanoparticles comprise an amine functional group (Huo, paragraph [0080], teaches to wherein the sintered amine-functionalized silver nanoparticles comprise an amine functional group, as Huo teaches to using dodecylamine).
As to claim 13, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 12, wherein the amine functional group comprises at least one of: butylamine, pentylamine, hexylamine, heptylamine, octylamine, nonylamine, decylamine, hexadecylamine, undecylamine, dodecylamine, tridecylamine, tetradecylamine, diaminopentane, diaminohexane, diaminoheptane, diaminooctane, diaminononane, diaminodecane, diaminooctane, dipropylamine, dibutylamine, dipentylamine, dihexylamine, diheptylamine, dioctylamine, dinonylamine, didecylamine, methylpropylamine, ethylpropylamine, propylbutylamine, ethylbutylamine, ethylpentylamine, propylpentylamine, butylpentylamine, tributylamine, or trihexylamine (Huo, paragraph [0080], teaches to wherein the amine functional group comprises at least one of dodecylamine).
As to claim 15, Huo in view of Michaud and Monteiro teaches to the apparatus of claim 8, wherein the electrode has a Faradic efficiency of greater than 60% at an overpotential of less than 3.5 Volts (Monteiro, Fig. 3, teaches to wherein the electrode has a Faradaic efficiency of greater than 60% at an overpotential of less than 3.5 Volts, as Monteiro teaches to conditions that lead to FE of greater than 60% at corresponding current densities).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ziyang Huo of US 2023/0155153 A1 (hereinafter, Huo) in view of Thomas Michaud of FR 3101881 A1 (hereinafter, Michaud) and Monteiro, Mariana CO, et al. "Efficiency and selectivity of CO2 reduction to CO on gold gas diffusion electrodes in acidic media." Nature communications 12.1 (2021): 4943 (hereinafter, Monteiro), as applied to claim 1 above, and in further view of Jerry J. Kaczur US 2017/0037522 A1 (hereinafter referred to as Kaczur).
As to claim 16, Huo in view of Michaud and Monteiro does not explicitly teach wherein the electrode has a selectivity of greater than 98% at an overpotential of less than 3.5 Volts.
In an analogous art, Kaczur teaches to the apparatus of claim 8,wherein the electrode has a selectivity of greater than 98% at an overpotential of less than 3.5 Volts (Kaczur, paragraph [0061], teaches to wherein the electrode has a selectivity of greater than 98% at an overpotential of less than 3.5 Volts, as Kaczur teaches to CO selectivity of at least 50%).
Both Huo in view of Michaud and Monteiro and Kaczur relate to gas diffusion electrode for electrocatalytic reduction of carbon dioxide (Kaczur, paragraphs [0027] and [0009]). Huo in view of Michaud and Monteiro does not explicitly teach selectivity greater than 98%. Huo in view of Michaud and Monteiro does teach the electrode has a selectivity up to 90% (Monteiro, Fig. 5). Kaczur, paragraph [0051], teaches a selectivity greater than 98% at an overpotential of less than 3.5 Volts for producing carbon monoxide using cathode gas diffusion layer during electrolysis of carbon dioxide.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Huo in view of Michaud and Monteiro with the CO2 electrolyzer of Kaczur for improving CO2 conversion using a gas diffusion electrode.
Response to Arguments
Applicant's arguments filed 04/01/2026 have been fully considered but they are not persuasive.
On pg. 4 of 7, the applicant asserts that the prior art, combined or alone, fails to establish a prima facie case for obviousness because the prior art does not teach the terms “sintered amine-functionalized silver nanoparticles” and “95% to 5% of amine” recited in claim 8.
The Examiner disagrees, because as stated in Office Action 01/26/2026, in an analogous art, Michaud teaches to sintered silver amine-functionalized silver nanoparticles (Michaud, paragraph [0142], teaches to sintered silver amine-functionalized silver nanoparticles, as Michaud teaches to laser sintering of amine-functionalized silver nanoparticles). Michaud teaches to 95% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles (Michaud, paragraph [0006], teaches to 95% to 5% of amine remains in the sintered amine-functionalized silver nanoparticles from a deposition composition of amine-functionalized silver nanoparticles, as Michaud, paragraphs [0090] and [0106], teaches to having 5% of amine remains in the sintered amine-functionalized silver nanoparticles; Michaud teaches to inks based on metallic nanoparticles, wherein one or more dispersants used in conjunction comprises dodecylamine; see paragraph [0089] of Michaud).
On pg. 5 of 7, the applicant asserts that Michaud is nonanalogous art. In response to applicant's argument that Michaud is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Huo and Michaud relate to amine-functionalized silver nanoparticles configured for electrolyzers (Michaud, paragraph [0158]). Huo does not explicitly teach sintering and remnants of amine. Huo does teach to an electrode comprising amine-functionalized silver nanoparticles for electrocatalytic reduction of carbon dioxide to carbon monoxide. Michaud, paragraphs [0001] and [0174], teaches preparation of ink for providing electrically conductive tracks, wherein Michaud, paragraph [0158], teaches that the conductive ink can be used in preparation of active layers of electrolyzer applications. The electrodes of electrolyzers necessarily have active layers that are electrically conductive. For this reason, Michaud is not considered as nonanalogous art because the claimed invention is directed to an electrode.
On pg. 5 of 7, the Applicant allegedly points out that “Michaud’s inclusion of amines is in the context of optional ink dispersants or binders and their amounts in the ink formulation, not a characterization of the fraction of amine that “remains in” sintered Ag nanoparticles after sintering relative to a deposition composition”. However, Michaud, paragraphs [0090] and [0106], teaches to having 5% of amine remains in the sintered amine-functionalized silver nanoparticles.
Further, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Please refer to MPEP §2113.
Yet further, it is not clear whether the fact that the fraction of amine that “remains in” results in a structural difference. The Applicant is reminded that, unless the intended use results in a structural difference between the claimed invention and the prior art, the intended use in the instant claim is interpreted under the broadest reasonable interpretation. In this instance, the prior art reads into the claim limitation under the broadest reasonable interpretation of the claim because the intended use does not result in a structural difference between the claimed invention and the prior art.
On pg. 5 of 7, the applicant asserts that “Michaud does not tie any residual organic content in a sintered metal layer to CO2-to-CO electrocatalysis, let alone to the specific electrode performance window recited in claim 8.” 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, utilizing electrically conductive inks to fabricate electrolyzer electrodes benefits performance by lowering electrical resistance, reducing the need for expensive precious metals, and enabling 3D printing of intricate, high-surface-area geometries. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Huo with the method of Michaud for improving performance of a prepared electrode through a printing technique, thereby resulting in more efficient and cost-effective electrode.
On pg. 5 of 7, the applicant asserts that Monteiro does not explicitly teach “an Ag, amine-functionalized, sintered-on-substrate electrode having a controlled residual-amine fraction would predictably exhibit the claimed energetic efficiency at 3.00-3.50 V”. However, Monteiro does not have to be solely relied upon as a prior art to teach all the claimed invention. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, Monteiro teaches to the electrode comprises an energetic efficiency of from 20% to 25% at a cell potential of from about 3.00 Volts to about 3.50 Volts (Monteiro, Fig. 3, teaches to the electrode comprising energetic efficiency of from about 20% to about 25% at a cell potential of from about 3.00 Volts to about 3.50 Volts; Monteiro teaches that CO2 electrolysis conditions can be optimized by varying pH and cation identity). Since the claim is directed to an electrode and does not exclude a gold-electrode, the principle of operation would not have fundamentally changed for the combination. In other words, the combination does not make the electrode of Huo inoperable. Further, the Applicant is reminded that when the compound recited in the references is substantially identical to that of the claims, claimed properties or function may be presumed to be inherent in the prior art. A compound and all of its properties are inseparable. In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). Please refer to MPEP § 2141.02(V).
At least for these reasons, the rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN LEE whose telephone number is (703)756-1254. The examiner can normally be reached M-F, 7:00-16:00.
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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