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 .
Claim Rejections - 35 USC § 102
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 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.
Claims 1, and 9 - 13 are rejected under 35 U.S.C. 102 as being anticipated by Cui et al. ( “Nitrogen-doped TiO2 from TiN and its visible light photoelectrochemical properties,” Electrochemical Communications 10 (2008) 367-371; hereinafter Cui )
Regarding claim 1, Cui teaches a photoelectrochemical device, comprising: a substrate; a first titanium nitride (TIN) layer coated on the substrate ( page 368 Section 2.2 TiN film was produced by an electrophoretic deposition process on freshly polished Ti substrate ); and a first nitrogen-doped titanium dioxide (N-TiO2) layer coated on the first TiN layer ( page 369 section 3.1 The oxidation was performed at 350 ̊ C in an attempt to produce anatase TiO2. After the electrophoretic deposition, the resulted TiN film was converted to nitrogen-doped TiO2 through an annealed process. Tompkins explains the inherent material property of TiN oxidation at 350 ̊ C which leaves a layer of TiN after the creation of the N-TiO2 ).
Regarding claim 9, Cui teaches the photoelectrochemical device as claimed in claim 1 (as discussed above). The way in which the first TiN layer and the first N-TiO2 layer are both formed does not patentably distinguish the claim. MPEP 2113.1 I discloses “[E]ven 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… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695,698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 10, Cui teaches the photoelectrochemical device as claimed in claim 9 ( as discussed above). The way in which the first TiN layer is formed does not patentably distinguish the claim. MPEP 2113.1 I discloses “[E]ven 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… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695,698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 11, Cui teaches the photoelectrochemical device as claimed in claim 10 (as discussed above). The ratio of air to argon does not patentably distinguish the claim. MPEP 2113.1 I discloses “[E]ven 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… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695,698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 12, Cui teaches the photoelectrochemical device as claimed in claim 9 (as discussed above). The way the first N- TiO2 layer is formed does not patentably distinguish the claim. MPEP 2113.1 I discloses “[E]ven 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… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695,698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 13, Cui teaches the photoelectrochemical device as claimed in claim 12 (as discussed above). The ratio of air to argon does not patentably distinguish the claim. MPEP 2113.1 I discloses “[E]ven 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… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695,698,227 USPQ 964,966 (Fed. Cir. 1985).
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.
Claims 2 – 4 are rejected under U.S.C. 103 as being unpatentable over Cui et al. “Nitrogen-doped TiO2 from TiN and its visible light photoelectrochemical properties,” Electrochemical Communications 10 (2008) 367-371; 02/2008 in view of Wu et al.; “Effects of nitrogen concentration on N-doped anatase TiO2: Density functional theory and Hubbard U analysis,” Journal of Alloys and Compounds 522 (2012) 46-50.
Claim 2: Cui discloses the photoelectrochemical device as claimed in claim 1 ( as discussed above).
Cui does not appear to disclose the first N- TiO2 layer is a homogeneous layer having a nitrogen content ranging from 2.8 at% to 4.2 at%.
However, Wu teaches the first N- TiO2 layer is a homogeneous layer having a nitrogen content ranging from 2.8 at% to 4.2 at% ( page 47 Section 1 Various concentrations of nitrogen, x=0.0625, 0.125, 0.1875, 0.25 and 0.3125 ( 2.08, 4.17 and 6.25, 8.33, and 10.42 at.%) are analyzed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to utilize the teachings of Wu with Cui to implement the first N- TiO2 layer is a homogeneous layer having a nitrogen content ranging from 2.8 at% to 4.2 at% because this helps to match the device to a specific photocatalytic application.
Claim 3: Cui and Wu disclose the photoelectrochemical device as claimed in claim 2 ( as discussed above).
Cui does not appear to disclose the nitrogen content of the first N-TiO2 layer ranges from 3.6 at% to 4.2 at%.
However, Wu teaches the nitrogen content of the first N-TiO2 layer ranges from 3.6 at% to 4.2 at% ( page 47 Section 1 Various concentrations of nitrogen, x=0.0625, 0.125, 0.1875, 0.25 and 0.3125 ( 2.08, 4.17 and 6.25, 8.33, and 10.42 at.%) are analyzed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to utilize the teachings of Wu with Cui to implement the first N- TiO2 layer is a homogeneous layer having a nitrogen content ranging from 3.6 at% to 4.2 at% because a smaller band gap would be achieved to efficiently absorb visible light.
Claim 4: Cui discloses the photoelectrochemical device as claimed in claim 1 (as discussed above).
Cui does not appear to disclose the first N- TiO2 layer has a photonic bandgap ranging from 2.8 eV to 3.0 eV.
However, Wu teaches the first N- TiO2 layer has a photonic bandgap ranging from 2.8 eV to 3.0 eV ( Fig. 5 Band gap value between nitrogen concentration (d) and (e) ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to utilize the teachings of Wu with Cui to implement the first N- TiO2 layer has a photonic bandgap ranging from 2.8 eV to 3.0 eV because doping the TiO2 lowers the intrinsic band gap from 3.2 eV and a range of 2.2 to 2.8 eV is ideal for photocatalysis applications.
Response to Arguments
Applicant's arguments filed 04/02/2026 have been fully considered but they are not persuasive. First argument that two references can't be used in a 102 rejection. Tompkins is mentioned to explain an inherent property in the claim. MPEP 2131.01. Multiple reference 35 U.S.C. 102 Rejections. III. To Show That A Characteristic Not Disclosed in the Reference is Inherent. Extra reference or evidence can be used to show an inherent characteristic of the thing taught by the primary reference. Second argument is that Tompkins does not explain the inherent material property of TiN oxidation at 350 degrees C which leaves a layer of TiN after the creation of the N-TiO2. Fig 1 and Table 1 show the oxidation of TiN at 350 degrees C. Third argument is that Cui alone does not anticipate Claim 1 because Cui's substrate is a Ti metal foil -not the substrate of the claimed invention. However, Cui's substrate is made of Ti as mentioned in 2. Experimental details, 2.2 Sample and electrode preparation lines 1-3. Further the applicant argues that Cui's TiN power is a precursor material, not an intentionally deposited TiN layer. However, in the Conclusion of the article, it clearly states, " nanocrystalline TiN powders were firstly electrophoretically deposited on the surface of a Ti substrate to form uniform TiN thin films." Lastly, applicant argues that Cui does not disclose a residual TiN layer which is also stated in the Conclusion. MPEP 2131 discloses "The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)." The fourth argument of the applicant disagrees with the product by process rejections of claims 9-13. However, claims 9-13 only mention sputtering in the claims and no specific mention of DC magnetron reactive sputtering. Fifth argument is that Claim 2 rejection is not valid because Wu’s nitrogen concentrations are theoretical parameters and not experimentally synthesized compositions. And further that the combination lacks a proper technical motivation. As discussed above, Wu describes the elements arranged as required by the claim and the combination for the rejection is justified. Sixth argument is that claim 3 depends on claim 2 and further narrows the range of the nitrogen content. This range is covered by Wu and the application of Wu to this claim is appropriate as discussed above. Seventh argument is that claim 4 argues that Wu does not teach the nitrogen content in the range from 3.6 at% to 4.2 at%. As stated in the rejection and shown in Wu on page 47 section 1 a nitrogen concentration of 4.17 at% is listed which is within the range of the claim.
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.
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/K.N.F./Examiner, Art Unit 2817
/MARLON T FLETCHER/Supervisory Primary Examiner, Art Unit 2817
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