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 .
Status of the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on 05/22/2026. Claims 94-97, 100-102, 104, 106-110, 112-119 and 121 are pending in the current Office action. Claims 94, 108-109, 114, and 121 were amended by Applicant.
Status of the Rejection
The objection to claim 121 is withdrawn in view of Applicant’s amendments.
The rejections of claims 108-109 and 121 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 94-97, 108, 112-113, 116, and 119 under 35 U.S.C. § 102(a)(1) as anticipated by Li et al. are withdrawn in view of Applicant’s amendments.
The rejections of claims 94-97, 100-101, 104, 108, 112-113, 116, and 119 under 35 U.S.C. § 102(a)(1) as anticipated by Mallouk et al. are withdrawn in view of Applicant’s amendments.
The rejections of claim 110 under 35 U.S.C. § 102(a)(1) or 103 are withdrawn in view of Applicant’s amendments.
The rejections of claims 102, 106-107, 109, 114-115, 117-118, and 121 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
New grounds of rejection are necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 108-109 and 121 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 108 and 109, claims 108 and 109 recite the limitation “the concentration of carbon-containing ion in the carbon-containing resulting products”. It is unclear what is meant by this limitation. Specifically, it is unclear how the carbon containing products e.g., carbon monoxide, can have a concentration of carbon-containing ion(s), and the specification provides no clarity on this matter.
Claims 108 and 109 are therefore indefinite.
Regarding claim 121, claim 121 recites the limitation “heating the carbon-containing resulting products … prior to the chemically reacting step”. It is unclear, in light of the specification, how this limitation is intended to be interpreted.
Specifically, as claimed in claim 94, the “resulting products” are formed from the “intermediate products” that are produced by the “chemically reacting step”. It is unclear how the “resulting products” could be heated prior to the step in which they are formed.
Claim 121 is therefore indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 94-97, 100-101, 104, 106, 108, 110, and 112-115 are rejected under 35 U.S.C. 103 as being unpatentable over Mallouk et al. (“Electrolysis of CO2 to Syngas in Bipolar Membrane-Based Electrochemical Cells” ACS Energy Lett. 2016, 1, 1149−1153 and SI) in view of Yu et al. (“Comparative Study between Pristine Ag and Ag Foam for Electrochemical Synthesis of Syngas with Carbon Dioxide and Water” Catalysts 2019, 9, 57) and as evidenced by, in the case of claim 104, Toray (“Torayca™ Carbon Paper” 2024).
Regarding claim 94, Mallouk teaches a method of electrolyzing a carbon-containing ion (“Electrolysis was carried out using aqueous bicarbonate” abstract), the method comprising:
applying an electrical potential (“a cathode potential of −1.45 V vs Ag/AgCl …” p. 1151 col. 1 para. 1) between an anode and an electrode (“CO2 electrolysis using NiFeOx and Ag catalysts” p. 1150 para. bridging cols. 1 and 2 and see Fig. 2b);
dissociating, within a bipolar membrane, water into hydrogen ions and hydroxide ions (Eq. 5 on p. 1150 col. 2);
permeating the hydrogen ions and the hydroxide ions out of the bipolar membrane, the hydrogen ions permeating towards the electrode and the hydroxide ions permeating towards the anode (“in the BPM cell, the dissociation of water (reaction 5) drives H+ and OH− ions toward the cathode and anode, respectively” p. 1150 col. 2 between eq. 1 and eq. 2, see also Fig. 2);
chemically reacting, at the bipolar membrane, the hydrogen ions with the carbon-containing ion to form one or more carbon-containing intermediate products (“reaction of protons with HCO3− ions at the membrane/catholyte interface” para. bridging p. 1150-1151); and
electrochemically reducing, at the electrode, one of the carbon-containing intermediate products to form one or more carbon-containing resulting products (“CO2 reduction to CO … at the Ag catalyst” p. 1151 col. 1 para. 1).
Mallouk does not teach the electrode comprises a free-standing porous metallic material having a plurality of pores distributed throughout the metallic material.
However, Yu teaches a silver foam electrode (“silver (Ag) foam” abstract and § 3.3. para. 1) comprising a free-standing (see below) porous metallic material having a plurality of pores distributed throughout the metallic material (“Ag foam is a low density solid with a highly porous structure” p. 2 para. 3), which provides enhanced activity relative to silver nanoparticles (Table 3) for the electrochemical reduction of carbon dioxide to carbon monoxide (e.g., Fig. 5) in a membrane cell using a bicarbonate electrolyte (“The anolyte and catholyte were 0.5 M NaOH and 0.1 M KHCO3 with solution saturated with CO2 (pH 6.8), respectively.” § 3.3. para. 1).
As Mallouk and Yu each teach methods for the electrochemical reduction of carbon dioxide to carbon monoxide using a bicarbonate catholyte and silver cathode in a membrane cell, Mallouk and Yu are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, such that the electrode the electrode comprises a free-standing porous metallic material having a plurality of pores distributed throughout the metallic material i.e., silver foam, as taught by Yu. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of enhancing the catalytic activity of the electrode relative to silver nanoparticles, as taught by Yu. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose (i.e., silver foam as a cathode for the electrochemical reduction of carbon dioxide to carbon monoxide) establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding the limitation “free-standing”, Yu teaches the silver foam is used directly as the electrode (§ 3.3. para. 1), was purchased commercially (§ 3.1.), and does not describe any support/substrate for the silver foam or monolithic silver. Yu thus implicitly teaches the silver foam is “free-standing”.
Regarding claim 95, Mallouk further teaches the carbon-containing ion is bicarbonate (“Aqueous 0.5 M KHCO3 saturated with CO2 and 0.1 M KOH were circulated through the serpentine cathode and anode flow fields, respectively,” p. 1150 para. bridging cols. 1 and 2 and see Fig. 2b).
Regarding claim 96, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Mallouk further teaches the one or more carbon-containing intermediate products comprises carbon dioxide (“reaction of protons with HCO3− ions at the membrane/catholyte interface” para. bridging p. 1150-1151; as evidenced by e.g., the instant specification, the reaction of protons with HCO3- ions produces carbon dioxide).
Regarding claim 97, modified Mallouk renders the limitations of claim 95 obvious, as described above.
Mallouk further teaches the one or more carbon-containing resulting products comprises carbon monoxide (“CO2 reduction to CO … at the Ag catalyst” p. 1151 col. 1 para. 1).
Regarding claim 100, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Mallouk further teaches the faradaic efficiency of the reaction performed at the reducing step is greater than 60%, a range encompassed by the claimed range (Fig. 3b and “the CO selectivity was above 60%.” p. 1151 col. 1 para. 1).
Regarding claim 101, Mallouk further teaches the electrical potential applied across the electrodes introduces a current density I/A at the electrode of 50 mA cm-2, a value within the claimed range, where I is electrical current and A is the geometrical surface are of the electrode (“a constant current density of 50 mA/cm2” Fig. 3 caption and “50 mA/cm2 current density” p. 1151 col. 1 para. 1).
Regarding claim 104, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not explicitly teach, via Yu, the porosity of the electrode.
However, Mallouk teaches the porosity of the electrode is 78%, a value within the claimed range (“Carbon paper (Toray 120)” p. S1 § titled “Materials”, as evidenced by Toray, Toray 120 carbon paper has a porosity of 78%).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application, when modifying the electrode used in the method of Mallouk, to use an electrode porosity of about 78%, a value within the claimed range, because Mallouk teaches this is a suitable electrode porosity.
Regarding claim 106, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach, via Yu, the electrochemically active surface area of the electrode is in the range of from about 0.10 m2/g and about 0.3 m2/g. Rather Mallouk, via Yu, is silent as to this electrode property.
However, the instant application indicates that a silver foam having a porosity between 70% and 85% results in an electrochemically active surface area of between about 0.10 m2/g and 0.3 m2/g (para. 55).
Furthermore, Mallouk teaches the porosity of the electrode is 78%, a value within the claimed range (“Carbon paper (Toray 120)” p. S1 § titled “Materials”, as evidenced by Toray, Toray 120 carbon paper has a porosity of 78%).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application, when modifying the electrode used in the method of Mallouk, to use an electrode porosity of about 78%, a value within the claimed range, because Mallouk teaches this is a suitable electrode porosity. Based on the instant specification, it is considered that a silver foam electrode with a porosity of about 78% would have an electrochemically active surface area of between about 0.10 m2/g and 0.3 m2/g i.e., the claimed range.
Regarding claim 108, claim 108 has been interpreted as “wherein the concentration of the carbon-containing ion is in the range of from 0.1 M to 6 M”.
Modified Mallouk renders the limitations of claim 94 obvious, as described above.
Mallouk further teaches the concentration of the carbon-containing ion is 0.5 M, a value within the claimed range (“Aqueous 0.5 M KHCO3 saturated with CO2 and 0.1 M KOH were circulated through the serpentine cathode and anode flow fields, respectively,” p. 1150 para. bridging cols. 1 and 2).
Regarding claim 110, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Mallouk further teaches the operating temperature is about 20 °C (see below), a value within the claimed range or, alternatively, a range overlapping the claimed range.
A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Regarding the limitation “the operating temperature is in the range of from 20 °C to 80 °C”, Mallouk does not specify the operating temperature for the method using aqueous bicarbonate. Mallouk therefore implicitly teaches the method is performed at room temperature i.e., about 20 °C, see excerpt from Oxford Dictionary of Biochemistry and Molecular Biology (2nd ed.), below.
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Regarding claims 112 and 113, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk further teaches, via Yu, the metallic material is silver (claim 113), a transition metal (claim 112) (“silver (Ag) foam” abstract and § 3.3. para. 1).
Regarding claim 114, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk further teaches, via Yu, the electrode is made from a foam material (“silver (Ag) foam” abstract and § 3.3. para. 1).
Regarding claim 115, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk further teaches, via Yu, the electrode comprises a free-standing silver foam (see below).
Regarding the limitation “free-standing silver foam”, Yu teaches the silver foam is used directly as the electrode (§ 3.3. para. 1), was purchased commercially (§ 3.1.), and does not describe any support/substrate for the silver foam or monolithic silver. Yu thus implicitly teaches the silver foam is “free-standing”.
Claim 102 is rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Krause (US Pat. Pub. 2020/0131649 A1).
Regarding claim 102, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach a surface of the electrode is hydrophilic.
However, Krause teaches a method for improving the wettability of a gas diffusion electrode (“The use of ion exchange resins … increases the proportions of the hydrophilic regions of the electrode, which can increase electrolyte transport through the electrode” para. 121 and see paras. 123 and 141) for carbon dioxide reduction (title) in a bicarbonate electrolyte (“The catholyte was a 1 M KHCO3 solution” para. 268), by applying a hydrophilic coating to the surface of the electrode facing the catholyte (para. 121).
As Krause teaches a method for the electrochemical reduction of carbon dioxide in membrane cells using bicarbonate electrolytes, Krause is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, such that a surface of the electrode is hydrophilic, as taught by Krause. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving contact between the electrode and the catholyte, as taught by Krause. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 107 is rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Ramdin et al. (“High Pressure Electrochemical Reduction of CO2 to Formic Acid/Formate: A Comparison between Bipolar Membranes and Cation Exchange Membranes” Ind. Eng. Chem. Res. 2019, 58, 1834−1847).
Regarding claim 107, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach the operating pressure at the electrode is in the range of from about 4 atm to about 10 atm.
However, Ramdin teaches the Faradaic efficiency and current density (Fig. 4) of the electrochemical reduction of carbon dioxide in a bipolar membrane cell (abstract) using a bicarbonate electrolyte (“The anolyte, catholyte, flow rate, and electrolysis time were 1 M KOH, 0.5 M KHCO3, 10 mL/min, and 20 min” Fig. 4 caption) can be improved by increasing the pressure at the electrode in the range of about 5 atm to about 50 atm (“5−50 bar” p. 1838 col. 1 para. 1 and see e.g., Fig. 4, note 1 bar is about 1 atm), a range overlapping the claimed range.
As Ramdin teaches a method for the electrochemical reduction of carbon dioxide using a bicarbonate electrolyte in a bipolar membrane cell, Ramdin is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, by using a pressure at the electrode in the range of about 5 to about 50 atm, a range overlapping the claimed range, as taught by Ramdin. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving the Faradaic efficiency and current density, as taught by Ramdin. Furthermore, simple substitution of one known element for another (i.e., using the pressure range of Ramdin in place of the pressure used in Mallouk) to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Claim 109 is rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Fontecave (WO 2020127821 A1) and Verma et al. (“The effect of electrolyte composition on the electroreduction of CO2 to CO on Ag based gas diffusion electrodes” Phys. Chem. Chem. Phys. 2016, 18, 7075-7084).
Regarding claim 109, claim 109 has been interpreted as “wherein the concentration of the carbon-containing ion is in the range of from 4M to 6M”.
Modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach the concentration of the carbon-containing ion in the carbon-containing solution is in the range of from 4M to 6M.
However, Fontecave teaches a concentration of between 0.01 M and 10 M, a range encompassing the claimed range, is suitable for a bicarbonate catholyte (“The concentration of the salt of hydrogen carbonate advantageously is below 10 M, for example below 1 M, notably below 0.5 M. It can be comprised between 0.01 M and 0.5 M, notably between 0.05 M and 0.2 M.” p. 19 lines 16-18) used in a bipolar membrane cell (“A H-type cell was used with the two compartments being separated by a bipolar exchange membrane” p. 27 lines 5-17) for the electrochemical reduction of carbon dioxide to carbon monoxide (p. 23 line 25 – p. 24 line 5).
As Fontecave teaches a method for the electrochemical reduction of carbon dioxide using a bicarbonate electrolyte in a bipolar membrane cell, Fontecave is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, such that the concentration of the carbon-containing ion in the carbon-containing solution is in the range of from 0.01 M to 10 M, a range encompassing the claimed range, as taught by Fontecave. A person having ordinary skill in the art would have been motivated to use this range because Fontecave teaches this range is suitable for a bicarbonate concentration in the catholyte of a method for reducing carbon dioxide to carbon monoxide in a bipolar membrane cell. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose (i.e., a bicarbonate catholyte having a concentration between 0.01 and 10 M for carbon dioxide reduction in a bipolar membrane cell) establishes a prima facie case of obviousness (MPEP § 2144.07). A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Furthermore, Verma teaches that the current density (Fig. 2c-d and Table 1) and Faradaic efficiency (Table 1) of carbon dioxide reduction to carbon monoxide on a silver electrode (abstract) depends on the molar concentration of bicarbonate in the catholyte (Table 1 and abstract). It is therefore considered that the molar concentration of bicarbonate in the catholyte would have been recognized as a result-effective variable by a person having ordinary skill in the art before the effective filing date of the instant application.
It is therefore considered that a person having ordinary skill in the art would have found it obvious to modify the method of Mallouk by using a bicarbonate concentration between 4 M and 6 M as a result of routine optimization within the range taught by Fontecave based on the teachings of Verma (MPEP § 2144.05(II)).
Claims 116-118 are rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Luc et al. (“An Ir-based anode for a practical CO2 electrolyzer” Catalysis Today 288 (2017) 79–84).
Regarding claims 116-118, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach treating the electrode to increase an electrochemically active surface area of the electrode (claim 116), wherein the treating the electrode comprises etching the electrode (claim 117) by immersing the electrode in acid (claim 118).
However, Luc teaches a method of increasing an electrochemically active surface area of a silver electrode (“Nanoporous Ag cathode” § 2.2.3.) used to electrochemically reduce carbon dioxide (abstract) in a membrane cell (“a two-compartment cell separated with an anion exchange membrane” § 2.4. para. 1) comprising a bicarbonate electrolyte (“The electrolyte was a 0.5 M aqueous NaHCO3” Id.), the method comprising etching the electrode (“Nanoporous Ag cathodes were fabricated using a modified dealloying technique, which is known to be an effective method to fabricate nanoporous metals.” § 2.2.3.) by immersing it in acid (“the precursor sheets were leached in 1000 mL of 5 wt% HCl for one hour” § 2.2.).
As Luc teaches a method of forming porous silver cathodes for use in the electrochemical reduction of carbon dioxide, Luc is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, by adding a step of treating the electrode to increase an electrochemically active surface area of the electrode (claim 116) comprising etching the electrode (claim 117) by immersing the electrode in acid (claim 118), as taught by Luc. A person having ordinary skill in the art would have been motivated to make this modification because Luc teaches this is an effective method for increasing the electrochemically active surface area of a silver electrode. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claims 116 and 119 are rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Low et al. (“Enhanced Electroreduction of Carbon Dioxide to Methanol Using Zinc Dendrites Pulse-Deposited on Silver Foam” Angew. Chem. Int. Ed. 2019, 58, 2256 –2260 and SI).
Regarding claims 116 and 119, modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach treating the electrode to increase an electrochemically active surface area of the electrode (claim 116), wherein the treating the electrode comprises depositing a nanosized catalyst on a surface of the electrode, wherein the nanosized catalyst comprises any one of nanowires, nanorods, nanoparticles, or nanocubes (claim 119).
However, Low teaches that treating a silver foam electrode (“Ag foams” p. 2256 col. 2 para. 2) with nanosized catalysts comprising nanowires, nanorods, and/or nanoparticles (“a pulse-deposited (PD) Zn catalyst on Ag foams … into submicron dendrites” p. 2256 col. 2 para. 2 and Figs. 1d,g) provides the predictable benefit of shifting the product of carbon dioxide reduction (abstract) in a bicarbonate solution (“The electrolyte was 0.1 M KHCO3” para. bridging p. S1-S2), provides the predictable benefit of favoring production of methanol over formate ion and carbon monoxide (abstract and Fig. 2).
As Low teaches a method for the electrochemical reduction of carbon dioxide in a bicarbonate solution on a silver catalyst, Low is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, by increasing the electrochemically active surface area of the electrode by depositing nanosized catalysts comprising Zn nanowires, nanorods, and/or nanoparticles, as taught by Low. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of forming methanol as the product of the carbon dioxide reduction, as taught by Low.
Claim 121 is rejected under 35 U.S.C. 103 as being unpatentable over Mallouk in view of Yu, as applied to claim 94, and further in view of Fontecave (WO 2020127821 A1).
Regarding claim 121, claim 121 has been interpreted as “wherein the system is pre-heated to a temperature in the range from about 60 °C to 80 °C prior to the chemically reacting step”.
Modified Mallouk renders the limitations of claim 94 obvious, as described above.
Modified Mallouk does not teach the system is pre-heated to a temperature in the range from about 60 °C to 80 °C prior to the chemically reacting step.
However, Fontecave teaches a bicarbonate catholyte (“The concentration of the salt of hydrogen carbonate advantageously is below 10 M, for example below 1 M, notably below 0.5 M. It can be comprised between 0.01 M and 0.5 M, notably between 0.05 M and 0.2 M.” p. 19 lines 16-18) used in a bipolar membrane cell (“A H-type cell was used with the two compartments being separated by a bipolar exchange membrane” p. 27 lines 5-17) is preferably pre-heated to a temperature between 50 and 80 °C (“The cathode of the electrolysis device will be exposed to a gaseous or liquid CO2 containing composition such as a CO2-containing aqueous catholyte solution … performed at a temperature which is preferably from 10 to 100 °C, notably from 20 to 100 °C, such as from 50 to 80 °C” p. 18 lines 22-30), a range fully encompassing the claimed range, before electrochemical reduction of carbon dioxide to carbon monoxide (p. 23 line 25 – p. 24 line 5).
As Fontecave teaches a method for the electrochemical reduction of carbon dioxide using a bicarbonate electrolyte in a bipolar membrane cell, Fontecave is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Mallouk, such that the system, in particular the catholyte, is pre-heated to a temperature in the range from about 50 °C to 80 °C, a range encompassing the claimed range, prior to the chemically reacting step, as taught by Fontecave. A person having ordinary skill in the art would have been motivated to make this modification because Fontecave teaches this temperature range is preferable. Furthermore, combining prior art elements (i.e., the catholyte pre-heating step of Fonetcave with the method of Mallouk) according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)). A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Response to Arguments
Applicant’s arguments, see Remarks p. 6, filed 05/22/2026, with respect to the rejections of claims 108-109 and 121 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 108-109 and 121 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant's arguments, see Remarks p. 7-10, filed 05/22/2026, with respect to the rejections under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 7-8 that a person having ordinary skill in the art would not reasonably have considered the step of “reacting protons with HCO3- ions at the membrane/catholyte interface” taught by Mallouk to read on the limitation “chemically reacting, at the ion exchange membrane, the hydrogen ions with the carbon-containing ion to form one or more carbon-containing intermediate productions” as recited in claim 94 or the step of “CO2 reduction to CO and water reduction … at the Ag catalyst” taught by Mallouk to read on the limitation “electrochemically reducing, at the electrode, one of the carbon-containing intermediate products to form on or more carbon-containing resulting products” as recited in claim 94. Specifically, Applicant argues that carbon dioxide cannot reasonably be considered the “intermediate product” claimed in claim 94.
Examiner’s Response #1
Examiner respectfully disagrees. As explicitly claimed in claim 96 and stated in the specification, the “intermediate product” formed during the reaction is carbon dioxide (“the carbon-containing intermediate product is carbon dioxide” para. 9). Thus, applicant’s interpretation is directly and explicitly contradicted by the specification and the claims.
As Applicant’s argument requires a claim interpretation inconsistent with the specification and claims, Applicant’s argument is not persuasive.
Applicant’s Argument #2
Applicant argues on p. 8-9 that Mallouk teaches a method of reducing carbonate ions, whereas Yu teaches a method of reducing carbon dioxide gas, and that therefore a person having ordinary skill in the art would not have considered modifying the method of Mallouk to use the cathode of Yu.
Examiner’s Response #2
Examiner respectfully disagrees. The basis for Applicant’s argument is factually incorrect. As described in the rejection of claim 94 above, both Mallouk and Yu teach the electrochemical reduction of carbon dioxide dissolved in a solution of bicarbonate ion.
As Applicant’s argument relies on an incorrect factual basis, Applicant’s argument is not persuasive.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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