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 .
Election/Restrictions
Applicant’s election of Group 1 in the reply filed on 07/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claim 41 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 41 recites method steps in the product claim, therefore it is not clear what is product structure or composition further limited by the claim.
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.
Claim(s) 1, 2, 10, 11, 14, 15, 37-39 and 41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Southern et al. (US 20040238369 A1).
Considering claims 1, 2, 10, 11, 37, 39 and 41, Southern discloses a composition for electrochemical acid generation comprising: a first redox compound (benzoquinone) [0050]; a second redox compound (hydroquinone) [0050]; an organic salt (tetrabutylammonium hexafluorophosphate) [0064]; and at least one solvent (acetonitrile) [0063], wherein the redox potential between the first redox compound and the second redox compound is less than 2 volts in the solvent [0113], and wherein application of a voltage to the composition results in electrochemical acid generation [0058].
Considering claims 14 and 38, Southern discloses the concentration of tetrabutylammonium hexafluorophosphate is 25 mM [0113].
Considering claim 15, Southern discloses the composition does not comprise an amine base [0113].
Claim(s) 1, 2, 10, 11, 37, 39 and 41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maurer et al. (US 10006131 B1).
Considering claims 1, 2, 10, 11, 37, 39 and 41, Maurer discloses a composition for electrochemical acid generation comprising: a first redox compound (reducible chemical) (col. 23, lines 4-43); a second redox compound (acid source) (col. 21, lines 4-41); an organic salt (tetrabutylammonium hexafluorophosphate) (col. 16, lines 15-33); and at least one solvent (col. 4, lines 4-14), wherein the redox potential between the first redox compound and the second redox compound is less than 2 volts in the solvent (col. 4, line 47), and wherein application of a voltage to the composition results in electrochemical acid generation (col. 4, liens 25-29).
Claim Rejections - 35 USC § 103
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.
Claim(s) 4-7 and 42-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Southern et al. (US 20040238369 A1).
Considering claims 4-7 and 42-45, Southern teaches the substituents R3, R4, R5 and R6 may be a halogen [0052], where halogen includes chlorine [0047], with the purpose of altering the precise potential at which oxidation or reduction occurs [0056].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chloring as the substituents in the first and the second redox compound, because Southern teaches the substituents R3, R4, R5 and R6 may be selected for the group comprising hydrogen, chlorine or fluorine, with the purpose of altering the precise potential at which oxidation or reduction occurs.
Claim(s) 12 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maurer et al. (US 10006131 B1).
Considering claims 12 and 40, Maurer discloses the concentration of the first redox compound is from 0.001 mM to 200 mM (col. 23, lines 4-6), which overlaps the claimed range of 0.1 to 2 M, and the concentration of the second redox compound is from 0.1 mM to 2 M (col. 21, lines 4-10), which overlaps the claimed range of 0.1 to 2 M.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ 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). See MPEP 2144.05.
Conclusion
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/WOJCIECH HASKE/Examiner, Art Unit 1794