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 15 July 2025 has been entered. Claims 6 and 10-12 are amended. Accordingly, claims 6 and 10-12 remain pending in the application.
The declaration under 37 CFR 1.132 filed 11 December 2025 is insufficient to overcome the rejection of claims 6 and 10-12 based upon Wakai as applied under 35 U.S.C. 103 as set forth in the last Office action because: It refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Specifically, the declaration argues Wakai does not disclose how to selectively produce CO only; however, the claims do not require selectively producing CO only. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 24 August 2021. It is noted, however, that applicant has not filed a certified copy of the JP 2021-136112 application as required by 37 CFR 1.55.
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.
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wakai ("Effect of Concentration, Acid, Temperature, and Metal on Competitive Reaction Pathways for Decarbonylation and Decarboxylation of Formic Acid in Hot Water") in view of '387 (RU 2297387) and Yoshida ("NMR Spectroscopic Evidence for an Intermediate of Formic Acid in the Water-Gas-Shift Reaction") as evidenced by Osborne ("The Pressure of Saturated Water Vapor in the Range 100 C to 374 C").
Regarding Claim 6, Wakai discloses a method for producing carbon monoxide (CO), the method comprising decomposing formic acid, in the presence of water, by hydrothermal reaction with a temperature of 275-350°C (275-350°C meets the limitation of 350°C or less; pg. 572, Col. 1, par. 1). Wakai further discloses putting the formic acid sample solution in a quartz tube (quartz tube meets the limitation of a batch/reaction vessel) for reaction (pg. 572, Col. 1, par. 4), which meets the limitation of housing the water and the formic acid in a batch vessel; and decomposing the formic acid in the batch vessel. Wakai further discloses an example wherein a 2.0 M solution of formic acid is treated at 250°C for 1 hour (1 hour meets the limitation of 12 hours or less) to produce CO (pg. 573, Col. 1, par. 4; pg. 573, Fig. 3), which meets the limitation wherein a formic acid concentration of the formic acid aqueous solution is 2.0 mol/L or more.
Wakai is silent to the pressure conditions of the hydrothermal reaction.
'387 discloses a method for producing carbon monoxide, the method comprising: dehydration (aka decomposition; see pg. 1, par. 10) of formic acid, or its aqueous solutions (formic acid aqueous solutions meets the limitation of in the presence of water), under conditions with a pressure of 15-100 atm (claim 1) and temperatures of 170-300°C (170-300°C meets the limitation of 350°C or less; claim 3), such that the reaction of '387 meets the limitation of a hydrothermal reaction. '387 further discloses an example wherein 20% formic acid (20% formic acid meets the limitation of 2.0 mol/L or more) is fed into the reactor at 300°C and 100 atm (pg. 4, par. 13-14). ‘387 further discloses dehydrating formic acid under pressure to obtain carbon monoxide compressed to the pressure necessary for its further use, since most synthesis processes for chemical products based on the use of carbon monoxide are carried out at elevated pressure (pg. 2, par. 3).
Osborne discloses the saturated vapor pressure of water at 170-300°C is 7.8171-84.788 atm (pg. 62-63, Table 3), such that the reaction pressure of ‘387 meets the limitation of a pressure P being equal to or more than the saturated vapor pressure of water at the temperature T.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wakai to incorporate the teachings of ‘387 to decompose formic acid by hydrothermal reaction under a pressure P being equal to or more than the saturated vapor pressure of water at the temperature T in order to produce carbon monoxide compressed to the pressure necessary for its further use, since most synthesis processes for chemical products based on the use of carbon monoxide are carried out at elevated pressure, as recognized by ‘387 (pg. 2, par. 3).
Wakai is further silent to the gas phase volume inside the quartz tube.
Yoshida discloses a method for producing carbon monoxide, the method comprising: decomposing formic acid, in the presence of hot water, under conditions with a temperature of 275-350° C (275-350°C meets the limitation of 350°C or less; pg. 7479, Col. 1, par. 2-Col. 2, par. 1). Yoshida further discloses quartz tube reaction vessels, wherein the sample solution of formic acid in hot water occupies 76%, 78% and 80% of the internal volume of the vessels (aka filling factor), and at the reaction temperatures, the filling factors reach 97% due to liquid expansion (pg. 7480, Col. 1, par. 3). The liquid volume percentages in the quartz tube reaction vessel correspond to a gas phase volume based on the entire volume VT inside the batch vessel of 0.24VT, 0.22VT, 0.20VT, and 0.03VT, respectively, such that the gas phase volume of Yoshida meets the limitation wherein a gas phase volume based on the entire volume VT inside the batch vessel is 0.3VT or less.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wakai to incorporate the teachings of Yoshida wherein, in the decomposing formic acid, the water and the formic acid are housed in the batch vessel so that, when an entire volume of the batch vessel is VT, a gas phase volume Vg based on the entire volume VT inside the batch vessel is 0.3VT or less, because reacting at a gas phase volume of 0.3VT or less is a process parameter well-known in the art of decomposing formic acid to produce carbon monoxide in a quartz tube batch reaction vessel, as recognized by Yoshida.
Regarding Claim 12, Wakai further discloses putting the formic acid sample solution in a quartz tube for reaction (pg. 572, Col. 1, par. 4), which meets the limitation of housing the water and the formic acid in a batch vessel; and decomposing the formic acid in the batch vessel, and the batch vessel has an inner wall surface in contact with the formic acid housed in the batch vessel, and the inner wall surface is made of a nonmetallic material, as quartz is a nonmetallic material.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wakai ("Effect of Concentration, Acid, Temperature, and Metal on Competitive Reaction Pathways for Decarbonylation and Decarboxylation of Formic Acid in Hot Water") in view of '387 (RU 2297387) and Yoshida ("NMR Spectroscopic Evidence for an Intermediate of Formic Acid in the Water-Gas-Shift Reaction" and Matsuda (US 2022/0177402).
Regarding Claim 10, Wakai, ‘387, and Yoshida teach the elements as described above with regards to claim 6.
Wakai is silent to how formic acid is generated prior to decomposition.
Matsuda discloses producing formic acid by reacting carbon dioxide and hydrogen (Abstract). The method of Matsuda produces a formic acid in which the formic acid solution can be concentrated with high efficiency by a simple method and a formic acid can be recovered at a high yield [0010].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wakai to incorporate the teachings of Matsuda generate formic acid by causing carbon dioxide and hydrogen to react with each other in order to produce a formic acid in which the formic acid solution can be concentrated with high efficiency by a simple method and a formic acid can be recovered at a high yield, as recognized by Matsuda [0010].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wakai ("Effect of Concentration, Acid, Temperature, and Metal on Competitive Reaction Pathways for Decarbonylation and Decarboxylation of Formic Acid in Hot Water") in view of Yoshida ("NMR Spectroscopic Evidence for an Intermediate of Formic Acid in the Water-Gas-Shift Reaction" and Matsuda (US 2022/0177402) and Sugimasa (US 2014/0363351).
Regarding Claim 11, Wakai, ‘387, Yoshida, and Matsuda teach the elements as described above with regards to claim 10.
Wakai is further silent to generating hydrogen by electrolyzing water using renewable energy.
Matsuda teaches hydrogen generated by electrolysis of water can be utilized [0042].
Sugimasa discloses water can be electrolyzed using electric power generated from renewable energy in order to efficiently generate hydrogen (Abstract) and to prevent the exhaustion of resources and destruction of the environment [0002].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wakai to incorporate the teachings of Matsuda and Sugimasa to generate hydrogen by electrolyzing water using renewable energy, because producing hydrogen by electrolyzing water is a process parameter well-known in the art of producing formic acid, as recognized by Matsuda, and the use of renewable energy prevents the exhaustion of resources and destruction of the environment while efficiently generating hydrogen, as recognized by Sugimasa (Abstract, [0002]).
Response to Arguments
Applicant's arguments and the declaration filed 11 December 2025 have been fully considered but they are not persuasive.
Applicant argues Wakai does not disclose how to selectively produce CO (and H2O) only (“Remarks”, pg. 5, par. 3; “Declaration”, par. 4).
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., producing selectively CO only) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues the coexistence of CO2 and H2 did not present a problem with regard to the processes disclosed by Yoshida such that the presence of CO2 and H2 was acceptable (“Remarks”, pg. 5, par. 4; “Declaration”, par. 4), and that Yoshida does not disclose how to obtain substantially only CO from formic acid (“Remarks”, pg. 9, par. 2; “Declaration”, par. 15).
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., producing selectively CO only, limiting the production of CO2 and H2) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues the reaction time of the claimed invention is not disclosed or suggested by the cited references, and reaction time is critical to selectively obtaining CO (“Remarks”, pg. 6, par. 2; “Declaration”, par. 5).
However, Wakai discloses decomposing formic acid for 1 hour (pg. 573, Col. 1, par. 4; pg. 573, Fig. 3), which meets the limitation of 12 hours or less (See rejection of claim 1).
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.
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735