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 .
Applicant's election with traverse of Group I, claims 27-43 in the reply filed on November 26, 2025 is acknowledged. The traversal is on the ground(s) that the instant claims do not lack unity of invention. This is not found persuasive because the Yamada et al (2018/0066370) discloses the first step of the claimed invention, and steps ii) and iii) are taught by Dong et al., (Nature Communication 7:12075, (2016), pages 1-7).
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 29-31, 33-41 and 43 are 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.
Regarding claims 29 (lines 2-3), claim 30 (line 3), claim 31(line 2), claims 33 (line 2), claim 34 (line 2), claim 35 (line 2), claim 38 (line 2), claim 39 (line 2), claim 41 (line 14) and claim 43 (line 2) the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 34 (line3), the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 36 recites the broad recitation 2:1 to 12:1 and the claim also recites 3:1 to 10:1 which is the narrower statement of the range/limitation. The same corrections are required for claims 37 and 40 The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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 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 27-43 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al (US 2018/0066370 A1) in view of Dong et al (Nature Communication 7:12075, (2016), pages 1-7).
Regarding claim 27-30, Yamada teaches a CO2 reduction catalyst which is used for a reduction reaction of carbon dioxide and shows a high efficiency in water, and a CO2 reduction electrode and a CO2 reduction device, which contain the CO2 reduction catalyst. This catalyst contains a conductive material and a porphyrin complex which has a specific structure and is insoluble in water. The porphyrin complex is insoluble in water because it contains only a small number of hydrophilic groups in its structure. The CO2 reduction electrode and the CO2 reduction device contain this catalyst. See abstract. CO2 is reduced to CO by utilizing a porphyrin complex dissolved in an organic solvent as a CO2 reduction catalyst [0005]. See list of catalyst for reduction of CO2 given on pages 2-3 and claims.
Yamada fails to teach steps ii) and iii) of claim 27. However, Dong teaches the reaction of carbon monoxide with amines to form oxamide intermediate and then reducing oxamide/oxamate to ethylene glycol. See abstract and Figure 1.
A person having ordinary skill in the art, prior to the effective filing date of the claimed invention would have been motivated to combine the teachings of Yamada and Dong because carbon dioxide as an abundant, low cost waste material that must be converted to CO to be chemically reactive. Dong provides a high- yield industrial pathway to transform CO into a valuable commodity (ethylene glycol).
Regarding claim 31, Yamada explicitly teaches the electrochemical reduction of carbon dioxide in an aqueous electrolyte (step i) where water is simultaneously reduced to hydrogen [0004} and [0084]. It would have been a routine optimization for a person ordinary skill in the art, prior to the effective filing date of the claimed invention to recycle this co-produced hydrogen for use in the hydrogenation step (step iii) taught by Dong to improve hydrogen and process efficiency. This combination represents a predictable use of known electrochemical by products to satisfy the stoichiometric requirements of the downstream reduction step, requiring no more than ordinary skill in chemical engineering to implement.
Regarding claim 32, Yamada teaches the electrolyte solution in which the electrode 202 is immersed and the electrolyte solution in which the oxidation electrode 203 is immersed can be separated using an ion exchange membrane.
Regarding claim 33-35, Dong explicitly discloses the use of homogeneous palladium catalyst in liquid phase to convert amines and CO into oxamides. See Tables 1-II.
Regarding claim 36, Dong discloses the ratio of CO: amine is 2:1. See Figure 1.
Regarding claim 37, Dong teaches step ii) carried out at room temperature. See abstract.
Regarding claim 38, Dong teaches step ii) carried out at the presence a solvent such as, THF. See Table 2.
Regarding claim 39, Dong teaches iodide promotes both the generation of the carbamoyl group and the reoxidation of Pd(0). See discussion.
Regarding claim 40, the claim range of 0.005 to 0.075 molar equivalents of an iodide promoter is obvious over Dong because the reference explicitly identifies iodide as a critical promoter that enables both the generation of the carbamoyl group and the reoxidation of the Pd (0) catalyst. Since the prior art teaches the specific functional necessity of iodide for the catalytic cycle, the selection of a specific concentration with the claimed range constitutes a routine optimization of result-effective variable. A person of ordinary skill in the art, prior to the effective filing date of the claimed invention motivated to perform the carbonylation at the room temperature conditions taught by the reference, would find it mathematically predictable to test these low molar equivalents to balance catalytic efficiency with material cost, particularly as the range reflects standard catalytic loading practices intended to achieve the exact chemical outcomes described in Dong discussion section.
Regarding claim 41, Dong teaches that step ii) is conducted at room temperature for a duration of 3 hours. See Table 1.
Regarding claim 42, Dong teaches that both the iron and ruthenium based catalyst can be used of hydrogenation of oxamides and oxalates. See page 5, right col. lines 8-11.
Regarding claim 43, Dong teaches the catalyst is Ru or Fe. See page 5, right col. lines 8-11.
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/JAFAR F PARSA/Primary Examiner, Art Unit 1692