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 .
This is in response to the Amendment dated July 22, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Claim Objections
Claim 91 has been objected to because of minor informalities.
The objection of claim 91 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 91 and 92 have been 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.
The rejection of claims 91 and 92 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejection - 35 USC § 103
Claim(s) 1, 4, 7, 15, 18-20, 23-28, 30-32 and 91-95 stand rejected under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view Hori et al. (“Fuel Cell and Electrolyzer Using Plastic Waste Directly as Fuel,” Waste Management (2020 Feb 1), Vol. 102, pp. 30-39), WO 2018/213889 (‘889), Myren et al. (“Chemical and Electrochemical Recycling of End-Use Poly (Ethylene Terephthalate) (PET) Plastics in Batch, Microwave and Electrochemical Reactors,” Molecules (2020 Jun 13), Vol. 25, No. 12, pp. 1-9) and EP 0269949 (‘949).
Regarding claim 1, WO ‘116 teaches a method for electrochemical up-cycling of
polymers,1 wherein the method comprises:
(a) preparing a slurry comprising a mixture of plastic (= plastics (except perfluorinated polymers)) [page 4, lines 27-28] particles (= the organic waste comes in all forms: (d) particulate
in suspension in liquids) [page 5, lines 4-11; and page 8, lines 11-15];
(b) flowing the slurry into an electrochemical cell (= the apparatus continuously circulates the anolyte portion of the electrolyte directly from the electrochemical cell 25
through the reaction chamber 5(a) to maximize the concentration of oxidizing species
contacting the waste) [page 28, lines 19-23], wherein
(i) the electrochemical cell comprises (A) a cathode in a cathode compartment and (B) an anode in an anode compartment (= membrane 27 separates the anode and the cathode chambers in the electrochemical cell 25) [page 26, lines 3-4], and
(ii) the slurry is flown through the anode compartment (= the anolyte flow path in
the electrochemical cell 25) [page 28, line 34, to page 29, line 1; and Fig. 1A];
(c) providing a medium selected from a group consisting of:
(i) an electrolyte, wherein
(A) the electrolyte is a flowable electrolyte that is flowed through the cathode of the electrochemical cell (= the catholyte portion of the electrolyte is circulated by pump 43 through the electrochemical cell 25 on the cathode 28 side of the membrane 27) [page 39, lines 24-27; and Fig. 1A], and
(B) the electrochemical cell further comprises a membrane or separator
between the anode and the cathode (= membrane 27 separates the anode and
the cathode chambers in the electrochemical cell 25) [page 26, lines 3-4; and Fig.
1A]; and
(ii) protons that are pumped from decomposition of the plastic particles in the
slurry from the anode and reduced at the cathode (= hydrogen ions (H+) or hydronium ions (H3O+) travel through the membrane 27) [page 26, lines 4-7];
(d) providing a voltage between the anode and the cathode of the electrochemical cell
(= the anodic oxidation in the electrochemical cell is driven by an externally induced electrical
potential induced between the anode(s) and cathode(s) of the cell) [page 5, lines 22-24], wherein the electrochemical cell is utilized to apply the voltage between the anode and the cathode, and wherein the voltage is modulated with a predetermined switching frequency (= in the case of certain electrolyte compositions, a low level AC voltage is impressed across the
electrodes in the electrochemical cell) [page 13, lines 28-32]; and
(e) oxidizing the plastic particles in the slurry (= the organic waste comes in all forms:
(d) particulate in suspension in liquids) [page 5, lines 4-11; and page 8, lines 11-15] to prepare a
product selected from the group consisting of fuels, chemicals, oxy-hydrogenated products, and combinations thereof (= the oxidizers react with the organic waste to produce CO2 and water) [page 25, lines 19-20].
The method of WO ‘116 differs from the instant invention because WO ‘116 does not disclose the following:
a. Wherein the anode comprises a conductive material support selected from the
group consisting of Ni gauze/mesh, Ti, stainless steel, Ni-Cr-Mo alloys, graphite, nickel foam, Ti foam, aluminum, aluminum foam, and combinations thereof.
WO ‘116 teaches that the anodic oxidation in the electrochemical cell is driven by an
externally induced electrical potential induced between the anode(s) and cathode(s) of the
cell (page 5, lines 22-24).
Like WO ‘116, Hori teaches the electrochemical oxidation of plastic waste (page 30, abstract). Pt/C anode materials were synthesized (page 31, left column, lines 44-45).
WO ‘889 teaches electrode structures (ρ [0001]).
A current collecting substrate may comprise a porous conductive substrate such as a woven metal mesh, a non-woven metal mesh, a perforated metal foil, a perforated metal sheet, a metal foam, a non-woven fibrous metal felt or other porous metal structure capable of carrying a catalyst. In various embodiments, a metal current collecting substrate may be made of one or more metals such as nickel, copper, titanium, tin, zinc, or alloys or compounds of these or any other metals. In other embodiments, a current collecting substrate may comprise a carbon felt, a graphite felt, carbon nanotubes, a sintered porous carbon or graphite substrate, a woven or non-woven graphite mesh, or other porous conductive substrate structure capable of carrying a catalyst (ρ [00125]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the anode taught by WO ‘116 with wherein the anode comprises a conductive material support selected from the group consisting of Ni gauze/mesh, Ti, stainless steel, Ni-Cr-Mo alloys, graphite, nickel foam, Ti foam, aluminum, aluminum foam, and combinations thereof. The person with ordinary skill in the art would have be motivated to make this modification because WO ‘116 teaches the electrooxidation of plastic waste on page 4, lines 19-28, and is silent as to the anode material, where using Pt/C as an anode material would have electrooxidized plastic waste as taught by Hori on page 31, left column, lines 44-45, where a nickel mesh, a nickel foam, a titanium metal, a titanium foam and graphite would have been alternatives to carbon as catalyst carriers as taught by WO ‘889 in [00125], and thus, would have been suitable to use as a carrier for the platinum catalyst of Hori.
The substitution of art recognized equivalents as shown by WO ‘889 in [00125] is within the level of ordinary skill in the art. In addition the substitution of one catalyst carrier for another is likely to be obvious when it does nothing more than yield predictable results.
b. (f) wherein the product is an oxy-hydrogenated product, wherein
(i) the oxy-hydrogenated product comprises a carbon-containing compound having at least one oxygen-containing functional group selected from hydroxyl, carbonyl, carboxylic acid, ester, ether, and combinations thereof.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the oxy-hydrogenated products are claimed in the alternative where the products produced by WO ‘116 meets the
limitation of the product being chemicals, and thus, would meet this claimed limitation.
Furthermore, modified WO ‘116 teaches the method of at least claim 1 as applied above, similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA
1950).
(ii) the oxy-hydrogenated product is a compound used for at least of one of a synthesis of materials and biochemical/thermal degradation.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the oxy-hydrogenated products are claimed in the alternative where the products produced by WO ‘116 meets the
limitation of the product being chemicals, and thus, would meet this claimed limitation.
Nevertheless, Myren teaches methods for the chemical recycling of end-use poly(ethylene terephthalate) (PET)2 in batch, microwave and electrochemical reactors (page 1, abstract; and
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(page 3, Fig. 1(d)).
EP ‘949 teaches a process for the production of quaternary ammonium hydroxides
(page 1, lines 2-3).
Polar solvents which can be used include aliphatic lower alcohols such as methanol,
ethanol and propanol, monovalent aromatic alcohols such as benzyl alcohol, glycols such as
ethylene glycol, acid amides such as N,N-dimethylformamide, and nitriles such as acetonitrile (page 8, lines 17-21).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by modified WO ‘116 with wherein the oxy-hydrogenated product is a compound used for at least of one of a synthesis of materials and biochemical/thermal degradation. The person with ordinary skill in the art would have been motivated to make this modification because ethylene glycol is an oxy-hydrogenated product from electrolyzing PET as taught WO ‘116 on page 4, lines 19-28, and Myren on page 3, Fig. 1(d), and is a compound used for at least of one of a synthesis of quaternary ammonium hydroxides as tuahgt by EP ‘949 on page 8, lines 17-21.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 4, WO ‘116 teaches wherein the slurry is a mixture of the plastic particles (= plastics (except perfluorinated polymers) [page 1, line 9] and combined waste (e. g.
a mixture of any of the foregoing with each other or other non-organic waste) henceforth collectively referred to as organic waste (page 1, lines 17-19); and the organic waste comes in
all forms: (d) particulate in suspension in liquids (page 5, lines 4-11)).
Regarding claim 7, WO ‘116 teaches wherein particle size of the plastic particles is in a range of about 10 microns and about 2000 microns (= a filter 6 is located at the base of the
reaction chamber 5(a) to limit the size of the solid particles to approximately 1mm in diameter
(i.e., smaller than the minimum dimension of the anolyte flow path in the electrochemical cell
25)) [page 28, line 31, to page 29, line 3].
Regarding claim 15, the method of WO ‘116 differs from the instant invention because WO ‘116 does not disclose wherein the cathode comprises a conductive material support
selected from the group consisting of Ni gauze/mesh, Ti, stainless steel, Ni-Cr-Mo alloys, graphite, nickel foam, Ti foam, aluminum, aluminum foam, and combination thereof.
WO ‘116 teaches that the anodic oxidation in the electrochemical cell is driven by an
externally induced electrical potential induced between the anode(s) and cathode(s) of the
cell (page 5, lines 22-24).
Hori teaches that a Pt/C electrode (Electrochem, carbon support: Vulcan XC72, carbon paper: Toray TGP-H-090, Pt loading: 2 mg cm-2) was also used as the anode in some trials for comparison purposes and as the cathode for all experiments (page 31, left column, lines 56-60).
WO ‘889 teaches electrode structures (ρ [0001]).
A current collecting substrate may comprise a porous conductive substrate such as a woven metal mesh, a non-woven metal mesh, a perforated metal foil, a perforated metal sheet, a metal foam, a non-woven fibrous metal felt or other porous metal structure capable of carrying a catalyst. In various embodiments, a metal current collecting substrate may be made of one or more metals such as nickel, copper, titanium, tin, zinc, or alloys or compounds of these or any other metals. In other embodiments, a current collecting substrate may comprise a carbon felt, a graphite felt, carbon
nanotubes, a sintered porous carbon or graphite substrate, a woven or non-woven graphite mesh, or other porous conductive substrate structure capable of carrying a catalyst (ρ [00125]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the cathode taught by WO ‘116 with wherein the cathode comprises a conductive material support selected from the group consisting of Ni gauze/mesh, Ti, stainless steel, Ni-Cr-Mo alloys, graphite, nickel foam, Ti foam, aluminum, aluminum foam, and combination thereof. The person with ordinary skill in the art would have be motivated to make this modification because WO ‘116 teaches the electrooxidation of plastic waste on page 4, lines 19-28, and is silent as to the cathode material, where using Pt/C as a cathode material would have electrooxidized plastic waste as taught by Hori on page 31, left column, lines 56-60, where a nickel mesh, a nickel foam, a titanium metal, a titanium foam and graphite would have been alternatives to carbon as catalyst carriers as taught by WO ‘889 in [00125], and thus, would have been suitable to use as a carrier for the platinum catalyst of Hori.
The substitution of art recognized equivalents as shown by WO ‘889 in [00125] is within the level of ordinary skill in the art. In addition the substitution of one catalyst carrier for another is likely to be obvious when it does nothing more than yield predictable results.
Regarding claim 18, WO ‘116 teaches wherein the electrochemical cell comprises the
electrolyte (= the catholyte portion of the electrolyte is circulated by pump 43 through the
electrochemical cell 25 on the cathode 28 side of the membrane 27) [page 39, lines 24-27].
Regarding claim 19, WO ‘116 teaches wherein the electrochemical cell comprises the
membrane (= a membrane in the electrochemical cell separates the anolyte and catholyte)
[page 6, lines 1-2].
Regarding claim 20, WO ‘116 teaches wherein the membrane comprises nafion or
fritted glass (= the membrane is ion-selective or semi-permeable (i.e., microporous plastic, ceramic, sintered glass frit, etc.) [page 6, lines 3-5].
Regarding claim 23, WO ‘116 teaches wherein the electrolyte comprises an acid (= the electrolytes used are from a family of acids, alkali, and neutral salt aqueous solutions (e.g. sulfuric acid, potassium hydroxide, sodium sulfate aqueous solutions, etc.)) [page 9, lines 15-18].
Regarding claim 24, WO ‘116 teaches wherein the acid is sulfuric acid or phosphoric acid
(= the electrolytes used are from a family of acids, alkali, and neutral salt aqueous solutions
(e.g. sulfuric acid, potassium hydroxide, sodium sulfate aqueous solutions, etc.)) [page 9, lines
15-18].
Regarding claim 25, the method of WO ‘116 differs from the instant invention because WO ‘116 does not disclose wherein the acid is at a concentration in a range of 0.1 M and 9 M.
WO ‘116 teaches that:
The electrolyte composition is selected based on demonstrated adequate solubility of the compounds containing at least one of the mediator species present in the reduced form (e.g., sulfuric acid may be used with ferric sulfate, etc.)) [page 9, lines 21-25].
The concentration of electrolyte in the anolyte is governed by its effect upon the solubility of the mediator species containing compounds and by the conductivity of the anolyte solution desired in the electrochemical cell for the given mediator species being used (page 9, lines 29-33).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the acid described by WO ‘116 with
wherein the acid is at a concentration in a range of 0.1 M and 9 M because considering that WO
‘116 is silent as to the specific concentration of the acid, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the
concentration of the acid through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 26, WO ‘116 teaches wherein the electrolyte comprises a catalytic additive (= at least one of the mediator species present in the reduced form (e. g., sulfuric acid
may be used with ferric sulfate, etc.)) [page 9, lines 21-25].
Regarding claim 27, WO ‘116 teaches wherein the catalytic additive comprises an additive selected from a group consisting of Fe+2, Fe+3, Cr+2, Cr+3, V+3, V+2, and salts thereof (= at least one of the mediator species present in the reduced form (e. g., sulfuric acid may be used
with ferric sulfate, etc.)) [page 9, lines 21-25].
Regarding claim 28, WO ‘116 teaches wherein the catalytic additive is at a concentration in a range of 10 mM and 1000 mM (= the concentration of the mediator species
containing compounds in the anolyte may range from .0005 molar (M) up to the saturation point) [page 9, lines 26-28].
Regarding claim 30, WO ‘116 teaches wherein the electrochemical cell further
comprises a reference electrode (= first, various cell voltages (e.g., open circuit, anode vs. reference electrode, ion specific electrode, etc.) yield information about the ratio of oxidized to
reduced mediator ion concentrations which may be correlated with the amount of reducing agent (i.e., organic waste) either dissolved in or wetted by the anolyte) [page 36, lines 4-10].
Regarding claim 31, the method of WO ‘116 differs from the instant invention because
WO ‘116 does not disclose wherein the reference electrode comprises a material selected from the group consisting of Pt, Ni, Au, Ag/AgCl, Ag, and combinations thereof.
WO ‘116 teaches that various cell voltages (e.g., open circuit, anode vs. reference electrode, ion specific electrode, etc. ) yield information about the ratio of oxidized to reduced mediator
ion concentrations which may be correlated with the amount of reducing agent (i.e., organic waste) either dissolved in or wetted by the anolyte (page 36, lines 4-10).
Myren teaches:
End-use PET depolymerization using basic conditions produced in the electrochemical reduction of protic solvents, electrolytic experiments have been shown to produce 17% terephthalic acid after 1 h of electrolysis at −2.2 V vs. Ag/AgCl in 50% water/methanol mixtures with NaCl as a supporting electrolyte (page 1, abstract).
Controlled potential electrolyses for headspace analysis were performed in a custom H-cell equipped with the anode and cathode chambers separated by a glass frit with a separated headspace. The working electrode chamber contained a glassy carbon plate electrode and a BASi single junction Ag/AgCl (3 M NaCl) reference electrode (page 7, lines 5-8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the reference electrode described by WO ‘116 with wherein the reference electrode comprises a material selected from a group consisting of Pt, Ni, Au, Ag/AgCl, Ag, and combinations thereof. The person with ordinary skill in the art would have be motivated to make this modification because using a BASi single junction Ag/AgCl (3 M NaCl) electrode as a reference electrode would have
performed a controlled potential electrolysis in end-use PET depolymerization.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “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 US 327, 65 USPQ 297 (1945).”
Regarding claim 32, WO ‘116 teaches wherein the step of oxidizing the plastic particles
occurs while controlling temperature in a range between 20°C and 180°C. (= is operated within
the temperature range from approximately 0 oC to slightly below the boiling point of the
electrolytic solution, usually less than 100 oC) [page 35, lines 13-17].
Regarding claim 91, WO ‘889 teaches wherein (a) the anode comprises a catalyst supported on the conductive metal support (ρ [00125]), and Hori teaches wherein (b) the catalyst comprises a metal selected from the group consisting of Ni, Fe, Co, Cr, Mo, Pt, Rh, Ru, Pd, Ir, combinations thereof, and composites of graphene metal combinations (= Pt/C anode) [page 31, left column, line 44].
Regarding claim 92, Hori teaches wherein loading of the catalyst is in a range between
0.1 mg/cm2 and 2 mg/cm2 (= the Pt loading was adjusted to ca. 1.7 mg cm-2) [page 31, left column, lines 55-56].
Regarding claim 93, Hori teaches wherein the cathode comprises an electrocatalyst
comprising a material selected from the group consisting of carbon, graphene, Ni, Fe, Co, Mo,
Pt, Rh, Ru, Pd, Ir, and combinations thereof (= a Pt/C electrode (Electrochem, carbon support:
Vulcan XC72, carbon paper: Toray TGP-H-090, Pt loading: 2 mg cm-2) was also used as the anode
in some trials for comparison purposes and as the cathode for all experiments) [page 31, left column, lines 56-60].
Regarding claim 94, the method of WO ‘116 differs from the instant invention because WO ‘116 does not disclose wherein the predetermined switching frequency is between 5
and 15 seconds.
WO ‘116 teaches that in the case of certain electrolyte compositions, a low level AC voltage3 is impressed across the electrodes in the electrochemical cell (page 13, lines 28-32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the predetermined switching frequency described by WO ‘116 with wherein the predetermined switching frequency is between 5 and 15 seconds. The person with ordinary skill in the art would have be motivated to make this modification because considering that WO ‘116 is silent as to the specific predetermined switching frequency, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the predetermined switching frequency through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 95, WO ‘116 teaches wherein the potential is a low potential that is between 0.5 and 1.5 V (= below 4 DC but not limited to that range) [page 37, lines 19-24].
Continued Response
Claim Objections
Claim 93 is objected to because of the following informalities:
Claim 93
line 1, please insert the word -- further -- before the word “comprises”.
This is an instance where the article should be added to ensure the further limitation of the claim terminology.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1, 4, 7, 15, 18-20, 23-28, 30-32 and 91-95 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.
Claim 1
lines 23-32, “(e) oxidizing the plastic particles in the slurry to prepare a product selected
from the group consisting of fuels, chemicals, oxy-hydrogenated products, and combinations thereof;
(f) wherein the product is an oxy-hydrogenated product, wherein (i) the oxy-
hydrogenated product comprises a carbon-containing compound having at least one oxygen-
containing functional group selected from hydroxyl, carbonyl, carboxylic acid, ester, ether, and combinations thereof” is indefinite.
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 1 recites the broad recitation “a product selected from the group consisting of fuels, chemicals, oxy-hydrogenated products, and combinations thereof”, and the claim also recites “wherein the product is an oxy-hydrogenated product, wherein (i) the oxy-hydrogenated product comprises a carbon-containing compound having at least one oxygen-containing functional group selected from hydroxyl, carbonyl, carboxylic acid, ester, ether, and combinations thereof” which is the narrower statement of the range/limitation but the species (a carbon-containing compound having at least one oxygen-containing functional group selected from hydroxyl, carbonyl, carboxylic acid, ester, ether, and combinations thereof ) are not recited as limiting the genus (oxy-hydrogenated products).
Claim 91
line 2, “the conductive metal support” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Response to Arguments
Applicant’s arguments filed July 22, 2026 have been fully considered but they are not persuasive. The standing prior art rejection has been maintained for the following reasons:
• Applicant states that thus, contrary to as set forth in the Office Action, Carson ‘116 does
not disclose or teach making an oxy-hydrogenated product but rather Carson ‘116 discloses and teaches a process and apparatus for the mediated electrochemical (MEO destruction of nearly all organic solid and waste material to produce CO2 and water (both not being a oxy-
hydrogenated product). Carson ‘116, at 25 (lines 19-20) and Abstract.
In response, the oxy-hydrogenated products as presently claimed are recited in the alternative (present claim 1, lines 23-25) where the products produced by Carson ‘116 meets the limitation of the product being chemicals (present claim 1, line 24), and thus, would meet the claimed limitation.
Furthermore, modified WO ‘116 teaches the method of at least claim 1 as applied above, similar processes can reasonably be expected to yield products which inherently have
the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA
1950).
• Applicant states that more confusing is that Carson ‘116 discloses teaching using
ethylene glycol as a starting material and then destroying it. See Carson ‘116, at 47, lines 6-12 (Example (1)). Nonetheless Examiner states it would have been obvious to modify the product of Carson ‘116 (H2O) with Myren to obtain ethylene glycol. The point of Carson ‘116 was to destroy ethylene glycol so it makes absolutely no sense to use the process of Carson ‘116 to make ethylene glycol. Again, this is a complete conflation of electrochemistries.
• Applicant states that first, as noted above, there is no reason to have combined Myren with Carson ‘116 in that these are not only opposite electrochemistries, the goal of Carson ‘116 was to destroy ethylene glycol; hence, it makes no sense at all to modify Carson ‘116 using Myren to make ethylene glycol.
• Applicant states that thus, Carson ‘116 teaches away from modifying its process to make ethylene glycol (as Examiner surmises).
In response, Carson ‘116 teaches organic free radicals for aiding the MEO process and breaking down the organic waste materials into simpler (i.e., smaller molecular structure) organic compounds (page 59, lines 30-32). Although Carson ‘116 does not explicitly teach what the simpler organic compounds are, in the electrochemical oxidation of PET plastics, ethylene glycol would have been produced as taught by Myren on page 3, Fig. 1(d).
• Applicant states that Hori is directed to a fuel-cell / electrolyzer configuration - a
fundamentally different device and operating principle from the batch or flow electrosynthesis
cell of the claims.
In response, Hori is used in the rejection of the claims for the teachings of anode and
cathode materials.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
• Applicant states that Swiegers ‘889 contributes nothing to that process chemistry. Its invocation is a species-level substitution argument that, under KSR, still requires some
motivation to select the substitute - a reason Carson ‘116 and the four references do not supply, because they do not teach solid-polymer functionalization in the first place.
In response, Swiegers ‘889 used in the rejection of the claims for the teachings of catalyst carriers.
There is no requirement that the motivation to make the combination be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining
references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re
Richman 165 USPQ 509, 514 (CCPA 1970).
• Applicant states that Aoyama does not fill any gap in the obviousness rejection of
Claim 1.
In response, Aoyama is used in the rejection of the claims for the teachings of “(ii) the oxy-hydrogenated product is a compound used for at least of one of a synthesis of materials and biochemical/thermal degradation” (present claim 1, lines 31-32)
Aoyama teaches using ethylene glycol, an oxy-hydrogenated product, for a synthesis of materials, i.e., the production of quaternary ammonium hydroxide.
However, this reference can be irrelevant when the product selected is not the oxy-hydrogenated products.
• Applicant states that the Examiner has completely overlooked that the cited references cannot be coherently combined because they teach incompatible chemistries, on incompatible substrates, with incompatible operating windows. There is absolutely nothing predictable. Indeed, Examiner has again ignored that Applicant has not merely articulated a
different motivation; Applicant has identified different chemistries, different operating
windows, different substrate states, different products, and different mechanisms.
In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Notwithstanding the product produced by the process, as to present claim 1, the simple modification of the anode in the process of WO ‘116 with the materials disclosed by Hori and WO ‘889 is deemed to be within one having ordinary skill in the art.
The Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Teranishi et al. (US Patent Application Publication No. 2020/0313204 A1) is cited to teach:
Specifically, an acid-soluble resin can be used as the artificial synthetic resin. “acid-soluble” used herein includes resins which are dissolved by heating with an acid. Examples of the artificial synthetic resin include polyamides such as nylon, polyesters such as polyurethane, vinylon and polyethylene terephthalate (PET), polycarbonate, polyvinyl alcohol (PVA) and the
like. The solution S may be prepared by, for example, adding a powdery artificial synthetic resin to an acid solution containing water and an acid and mixing. Heating may be appropriately performed during the preparation of the solution S (page 3, [0054]).
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 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.
Information regarding the status of published or unpublished applications may be
obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for
information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDNA WONG/Primary Examiner, Art Unit 1795
1 A preamble is not necessarily accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP § 2111.02.
2 poly(ethylene terephthalate) (PET) is a plastic.
3 An AC (alternating current) voltage has a polarity switching frequency, which is directly related to its frequency in Hertz (Hz).
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