DETAILED ACTION
Election/Restrictions
1. Applicant’s election without traverse of claims 18-36 in the reply filed on 11/17/25 is acknowledged.
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 Objections
Claims 20 and 30 are objected to because of the following informalities:
in lines 3-4, it appears some additional information related to an earlier amendment was inadvertently included in the claim
in line 4, it appears the “or” was mistakenly inserted after “lithium” instead of before as likely intended
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, it is noted that all of the limitations of dependent claim 25 appear to already be totally included in independent claim 18, i.e. the claim from which claim 25 depends. As such, it would appear to the examiner that dependent claim 25 fails to further limit the subject matter of independent claim 18 in any possible manner.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 18, 19, 22-26 and 28-36 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by “Understanding Continuous Lithium-Mediated Electrochemical Nitrogen Reduction” by Lazouski et al., Joule 3, pages 1127-1139 (April 17, 2019) (hereinafter referred to as “LAZOUSKI”) with evidence from “Kamlet-Taft Solvent Parameters” accessed from http://www.stenutz.eu/chem/solv26.php (published online before March 2012) and which was provided with the IDS filed 2/29/24 (hereinafter referred to as “KT-Parameters”).
Regarding claims 18 and 25, LAZOUSKI teaches a system for the electrochemical production of NH3 from nitrogen gas and a hydrogen-containing molecule (see LAZOUSKI at Fig. 1A & 1B and also LAZOUSKI at “Electrochemical Approach” section on page 1128), wherein the system comprises:
an electrochemical cell that comprises a cathode, an anode and a lithium-ion containing electrolyte disposed between the cathode and the anode (see LAZOUSKI at Fig. 1B depicting the copper cathode, platinum anode, and lithium containing electrolyte on both sides of the separator), and
wherein the system is configured to operate the electrochemical cell under conditions such that (i) lithium ions in the electrolyte are converted to lithium metal at the cathode (see LAZOUSKI at Fig. 1A and Fig. 1B depicting lithium deposition at the cathode), wherein the lithium metal reacts with nitrogen gas to form Li3N (see LAZOUSKI at Fig. 1A and Fig. 1B depicting the reaction of lithium metal with nitrogen as claimed), and wherein the Li3N reacts with protons in a proton donor to form NH3, lithium ions and proton acceptor (see LAZOUSKI at Fig. 1A and also LAZOUSKI at “Electrochemical Approach” section on page 1128 teaching the Li3N reacting as claimed to form ammonia, i.e. NH3) and wherein the proton donor has a Kamlet-Taft alpha parameter (α) greater than 0.7 and Kamlet-Taft beta parameter (β) greater than 0.5 (see LAZOUSKI at “Electrochemical Approach” section on page 1128 the proton donor/carrier being ethanol, which as evidenced by KT-Parameters, has α and β values as claimed), and (ii) protons are generated from the hydrogen-containing molecule at the anode, wherein the protons react with the proton acceptor to produce the proton donor (see LAZOUSKI at Fig. 1A and Fig. 1B depicting the ethanol which would acts as the hydrogen donor providing the hydrogen at the cathode and which would after losing the hydrogen at the cathode would get another proton back at the anode from the hydrogen-containing molecule, i.e. THF, at the anode as claimed),
a source of nitrogen gas (see LAZOUSKI at Fig. 1B depicting N2 gas); and
a source of the hydrogen-containing molecule (see LAZOUSKI at Fig. 1B depicting THF as the solvent and which would be the source of hydrogen; see also LAZOUSKI at page 1138 in the “Experimental Procedures” section, second paragraph, teaching the nitrogen gas being continuously supplied as THF-saturated gas to the cathode compartment).
Regarding claim 19, LAZOUSKI teaches the system wherein the proton donor is an alcohol as claimed (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of ethanol and the evidence provided by KT-Parameters).
Regarding claim 22, LAZOUSKI teaches the system wherein the hydrogen-containing molecule is selected from hydrogen gas, water, or an organic hydrogen-containing molecule (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of THF as claimed).
Regarding claim 23, LAZOUSKI teaches the system further comprising an ionically conductive separator positioned between the anode and the cathode (see LAZOUSKI at Fig. 1B depicting the presence of a daramic separator as claimed).
Regarding claim 24, LAZOUSKI teaches the system further comprising a voltage source for supplying energy to operate the electrochemical cell (see LAZOUSKI at Fig. 1B depicting the presence of the cathode and anode that would implicitly include a power supply to provide for the metal plating at the cathode; see also LAZOUSKI at pages 1131-1132 and specifically the section titled “Effect of Current Density” showing that a current density was supplied to the electrodes thereby necessitating the inclusion of a voltage source as claimed).
Regarding claim 26, LAZOUSKI teaches the system wherein the alcohol is selected from a monofunctional C-1-C7 aliphatic alcohol, a difunctional C1-C7 aliphatic alcohol, and a trifunctional C1-C7 aliphatic alcohol (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of ethanol as the alcohol which is an monofunctional aliphatic alcohol as claimed).
Regarding claim 28, LAZOUSKI teaches the system wherein the organic hydrogen-containing molecule is a tetrahydrofuran (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of THF solvent).
Regarding claim 29, LAZOUSKI teaches the system wherein the electrolyte comprises a lithium salt dissolved in a solvent for the lithium salt (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the electrolyte including lithium tetrafluoroborate in THF; see also LAZOUSKI at page 1138, section titled “Experimental Procedures”).
Regarding claim 30, LAZOUSKI teaches the system wherein the lithium salt is lithium tetrafluoroborate (LiBF4), lithium hexafluorophosphate (LiPF6), lithium hexafluoroarsenate (LiAsF6), lithium perchlorate (LiClO4), lithium triflate (LiCF3SO3), lithium bisoxalato borate (LiBOB), lithium difluoroxalato borate (LiDFOB), or lithium trifluorosulfonylimide (LiTFSI) (see rejection of claim 29 above setting forth the teachings of LAZOUSKI with respect to the lithium salt).
Regarding claim 31, LAZOUSKI teaches the system wherein the solvent for the lithium salt is selected from ether-containing organic solvents, fluorinated organic solvents and lactones (see rejection of claims 18 and 29 above setting forth the teachings of LAZOUSKI with respect to the solvent being THF).
Regarding claim 32, LAZOUSKI teaches the system wherein the solvent for the lithium salt and the hydrogen-containing molecule are the same (see rejections of claims 28 and 29 above setting forth the teachings of LAZOUSKI as to the use of the THF solvent).
Regarding claim 33, LAZOUSKI teaches the system wherein the cathode is formed from a metal or a metal oxide (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of a copper metal cathode).
Regarding claim 34, LAZOUSKI teaches the system wherein the cathode is selected from transition metals and alloys of transition metals (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of a copper cathode which reads on a transition metal as claimed).
Regarding claim 35, LAZOUSKI teaches the system wherein the anode is platinum metal (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of a platinum anode).
Regarding claim 36, LAZOUSKI teaches the system wherein the electrochemical cell is capable of being operated at current densities as claimed (see LAZOUSKI at pages 1131-1132 and specifically the section titled “Effect of Current Density” showing that a current density was supplied to the electrodes ranging from 0.3 to 25 mA/cm2 showing the capability of adjusting the current such that higher current densities could be supplied).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over LAZOUSKI in view of US Pub. No. 2009/0259045 to Oooka et al., (hereinafter referred to as “OOOKA”) and KT-Parameters.
Regarding claim 27, while LAZOUSKI teaches the use of an alcohol, and specifically an ethanol, proton donor (see rejection of claim 18 above setting forth the teachings of LAZOUSKI with respect to the use of ethanol), LAZOUSKI fails to explicitly teach the alcohol being 1-butanol as claimed.
However, OOOKA teaches that it is generally known that alcohols such as methanol, ethanol, propanol, and butanol have somewhat similar properties when it comes to hydrogen donation and can be used and is capable of providing a hydrogen in the right circumstances (see OOOKA at ¶17). Since LAZOUSKI teaches the use of ethanol as a hydrogen donor and acceptor in the lithium mediated electrochemical nitrogen reduction process as set forth above, one of ordinary skill in the art would have readily recognized that other alcohols including butanol could also be used as the proton donor. Moreover, KT-Parameters teaches that the α and β parameters of ethanol (0.86 and 0.75 respectively) and butanol (0.84 and 0.84) are very similar. Consequently, one of ordinary skill in the art would have appreciated that they would both be expected to act in a similar fashion in the lithium mediated electrochemical process of LAZOUSKI.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the ethanol with 1-butanol since both are recognized as providing for hydrogen donation, as taught by OOOKA, and exhibit similar properties with respect to the Kamlet-Taft solvent parameter, as taught by KT-Parameters, in order to arrive at a system as claimed since it would be expected to provide for similar properties and also allow for the hydrogen transferring as required by the process of LAZOUSKI.
Allowable Subject Matter
Claims 20-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach the use of an ionic liquid proton donor having the features as claimed in dependent claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2019/144087 to Garzon et al., teaching an electrochemical synthesis of ammonia with lithium halogen salts
US Pub. No. 2012/0241328 to Joshi et al., teaching an ammonia synthesis using lithium ion conductive membrane
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794