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 Amendments
This is a final office action in response to applicant's arguments and remarks filed on
10/21/2025.
Status of Rejections
All previous rejections are maintained.
Claims 1-9 are pending and under consideration for this Office Action.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazama et al (US20190032231A1) in view of Geioushy et al (“High efficiency graphene/Cu2O electrode for the electrochemical reduction of carbon dioxide to ethanol”, Journal of Electroanalytical Chemistry, Volume 785, 15 January 2017, Pages 138-143) and Li et al (“Achieving Highly Selective Electrocatalytic CO2 Reduction by Tuning CuO-Sb2O3 Nanocomposites” and Supplemental Information, ACS Sustainable Chem. Eng. March 2020, 8, 12, 4948–4954).
Claim 1: Kazama discloses an electrocatalyst material consisting of copper oxide (see e.g. [0020] and [0022]).
Kazama does not explicitly teach that the copper oxide is copper(I) oxide (Cu2O). However, Kazama teaches that the oxide is MnOm (see e.g. [0022]) wherein M is preferably Cu (see e.g. [0020]), n is less than 30, and m is between 0 and 2 (see e.g. [0026]-[0027]) and the catalyst is used to reduce carbon dioxide (see e.g. abstract). Geioushy teaches that Cu2O is a suitable form of copper oxide for reducing carbon dioxide when the desired product is ethanol (see e.g. abstract). It should be noted that Cu2O is show in Kazama as a comparative example (see e.g. Table 1, Comparative Example 3). However, this is comparing the copper oxides when the desired products are CH4, C2H4, and C2H6. Additionally, Cu2O satisfies the broadest requirements of Kazama (see e.g. claim 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select Cu2O as the form of the copper oxide in Kazama when the target product is ethanol. MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Kazama does not explicitly teach that the containing antimony, wherein the amount of antimony is between 5% to 30% by weight. Li teaches adding antimony to a copper oxide, which satisfies the formula of Kazama (see e.g. abstract of Li and [0022] of Kazama), increases electrochemical CO2 reduction (ECR) efficiency and activity (see e.g. abstract). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama by incorporating the antimony taught in Li to improve the ECR efficiency,
Li teaches different ratios of Cu and Sb (see e.g. Supplemental Table 1) with an exemplary molar ratio of 10:1, yielding a weight% of Sb of ~16.1% and other ratios ranging from 30:1 to 1:5. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama in view of Li by adjusting the amount of antimony relative to the copper to get the desired ECR efficiency.
Claim 2: Kazama in view of Geioushy and Li teaches different ratios of Cu and Sb (see e.g. Supplemental Table 1) with an exemplary molar ratio of 10:1, yielding a weight% of Sb of ~16.1% and other ratios ranging from 30:1 to 1:5. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama in view of Li by adjusting the amount of antimony relative to the copper to get the desired ECR efficiency.
Claim 3: Kazama in view of Geioushy and Li teaches different ratios of Cu and Sb (see e.g. Supplemental Table 1) with an exemplary molar ratio of 10:1, yielding a weight% of Sb of ~16.1% and other ratios ranging from 30:1 to 1:5. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama in view of Li by adjusting the amount of antimony relative to the copper to get the desired ECR efficiency.
Claim 4: Kazama in view of Geioushy and Li discloses an electrode (see e.g. [0009] of Kazama) comprising an electrocatalyst material of claim 1 (see rejection of claim 1 above) deposited on a support (see e.g. [0034] of Kazama).
Kazama does not explicitly teach that the material is a powder including a conductive in a weight ratio between electrocatalyst material and conductive material between 9:1 and 19:1.
Geioushy discloses that mixing Cu2O with graphene as a powder significantly improves the current density of the catalyst (see e.g. page 142, col 2). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama to incorporate the conductive material taught in Geioushy to improve the current density of the catalyst. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the material of Kazama in view of Geioushy to adjust the amount of conductive material relative to the copper to get the desired improvement in current density.
Claim 5: Kazama in view of Geioushy and Li teaches that the conductive material is in the form of powder (see e.g. page 139, col 1, paragraph starting with “Copper foil” of Geioushy).
Claim 6: Kazama in view of Geioushy and Li teaches that the conductive material is carbon based (graphene, see e.g. abstract of Geioushy).
Claim 7: Kazama in view of Geioushy and Li teaches that the conductive material is graphene (see e.g. abstract of Geioushy).
Claim 8: Kazama in view of Geioushy and Li teaches that the support is a metal mesh (see e.g. [0080]).
Claim 9: Kazama in view of Geioushy and Li teaches that the powder of the electrocatalyst material and possibly of the conductive material are stabilized on the support with an ionomer (see e.g. page 139, col 1, paragraph starting with “Copper foil” of Geioushy).
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
On page(s) 2-4, the Applicant argues that the combination of Kazama with Geioushy is improper “at least in that they are used for different purposes, and that in Kazama Cu2O is a comparative example and not an object of the invention” and that the rejection is the result of impermissible hindsight. This is not considered persuasive. Kazama explicitly discloses that the oxide is MnOm (see e.g. [0022]) wherein M is preferably Cu (see e.g. [0020]), n is less than 30, and m is between 0 and 2 (see e.g. [0026]-[0027]) and the catalyst is used to reduce carbon dioxide (see e.g. abstract). The formula of Kazama would include Cu2O and Kazama discusses Cu2O in a comparative example. The Applicant argues that this teaching away from Cu2O. However, the comparative example is only testing catalysts for producing CH4, C2H4, and C2H6 electrolytically from CO2. It is clear from the disclosure of Kazama that the catalyst has broader use in the reduction of CO2 than those products (see e.g. abstract of Kazama). Geioushy teaches that Cu2O is a suitable form of copper oxide for reducing carbon dioxide when the desired product is ethanol (see e.g. abstract). Therefore, it would have been obvious to combine the two references when ethanol, a known and valuable product of CO2 reduction, is the desired product. The combination of using a known catalyst material that reads on the formula Kazama to generate a desired product is not considered a hindsight reconstruction.
On page(s) 2-4, the Applicant argues that the combination of Kazama with Geioushy is improper because Kazama teaches using catalyst clusters and Geioushy does not disclose clusters. This is not considered persuasive. The Applicant has not explained why the clusters used in Kazama would make Cu2O a non-obvious substitution.
On page(s) 4-5, the Applicant argues that the disclosure of Kazama excludes the possibility of including antimony because Kazama teaches a list of suitable metal atoms, which “excludes the possibility that the material therein contains antimony” and “[teaches] away from the use of antimony”. This is not considered persuasive. Although Kazama might not discuss the use of antimony, KSR outlines suitable rationales that can be used to show obviousness. Rationale G states “Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention” is one such rationale. Li teaches that the addition of antimony to copper oxides increases electrochemical CO2 reduction (ECR) efficiency and activity. Thus, there is a suitable reason to add antimony to the catalyst based on Li even though Kazama does not teach using it.
On page(s) 5-6, the Applicant argues that the combination of Kazama with Li not proper because the teaching of Li is for CuO and the claim requires Cu2O, which have much different electrical properties and crystallographic parameters. This is not considered persuasive. The prior art rejection stated that it was obvious to combine Kazama with Li. As stated above, Kazama discloses that the oxide is MnOm (see e.g. [0022]) wherein M is preferably Cu (see e.g. [0020]), n is less than 30, and m is between 0 and 2 (see e.g. [0026]-[0027]) and the catalyst is used to reduce carbon dioxide (see e.g. abstract). Li teaches adding antimony to a copper oxide, which satisfies the formula of Kazama (see e.g. abstract of Li and [0022] of Kazama), increases electrochemical CO2 reduction (ECR) efficiency and activity (see e.g. abstract). Therefore, Kazama and Li can be combined as they have overlapping scopes. With regard to the antimony with Cu2O, even though Cu2O and CuO might have different properties, the method of incorporating antimony into the copper oxide catalyst outlined in S3 of Li is within the skill of one having ordinary skill in the art to do for CuO or Cu2O with a reasonable expectation of success. MPEP § 2143.02 I and II states “Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success…Obviousness does not require absolute predictability, but at least some degree of predictability is required”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795