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 .
DETAILED ACTION
Claims 1-16 are pending in the application. Claims 1-4 and 10-12 are rejected. Claims 5, 6, 13 and 14 are objected to. Claims 7-9, 15 and 16 are withdrawn from further consideration.
Response to Amendment / Argument
Objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
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) 1-4 and 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Du et al. Applied Surface Science 2019, 469, 61-67.
Du et al. teach the preparation of Co/Ni materials on nickel foam on page 62 (Section 2.2. Synthesis of CoxNiy-EDTA/NF). The authors subsequently teach the following method on page 62:
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The prior art teaches testing of the materials on page 62 including the following:
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Accordingly, the prior art teaches using the CoxNiyP-materials as an electrode. As examples, the prior art teaches the following in Figure 4 (page 65):
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.
Each of the materials above corresponds to a tested electrode containing a material of the instant formula NiCoxPy where x and y are either ~0.5, ~0.25 or ~0.125, each of which is embraced by the instant ranges.
Regarding the limitation of a substrate in claims 3 and 10, the prior art teaches nickel foam as further embraced by instant claims 4 and 12.
Regarding the limitation of claim 1 that the catalyst compound “catalyzes” a certain reaction or the limitation of claim 3 of “thereby catalyzes” the same reaction, MPEP 2112.01(II) states:
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. […]
In this situation, the prior art teaches a material having the formula recited in the instant claims. Furthermore, the instant claims place no limitation on how well or effectively the material need to function as a catalyst. Accordingly, the prior art structure having the identical formula is deemed to anticipate the instant claims.
Regarding instant claim 10, the limitation of “An FDCA production reactor,” appears to be an intended use as do the limitations of “for introducing” and “for discharging”. The prior art teaches electrocatalytic testing on page 64. While the reaction of the prior art is not the same, the reaction setup is deemed to anticipate since the manner in which the prior art reactants are introduced to the system can be considered both an inlet and outlet and the entire system can be considered a reactor. The prior art further teaches the use of an electrode system embraced by instant claim 11 for HER measurements in “2.5. Electrochemical measurements” on page 63 including applying a potential.
Regarding instant claim 2, the prior art is silent regarding the oxidation state of nickel; however, this appears to a natural consequence of treatment with phosphorus as disclosed in the instant specification on page, lines 18-27. Applicant s directed to MPEP 2112.01: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Allowable Subject Matter
Claims 5, 6, 13 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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