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 December 10, 2025. 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 Arguments
Claim Rejections - 35 USC § 112
Claims 1, 4, 7-8, 15, 18-20, 23-28, 30-32 and 91-95 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 1, 4, 7-8, 15, 18-20, 23-28, 30-32 and 91-95 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.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 Rejections - 35 USC § 103
I. Claim(s) 1, 7, 18-20, 23-28, 30, 32 and 94-95 have been rejected under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view of Jiang et al. (“STEP Polymer
Degradation: Solar Thermo-Coupled Electrochemical Depolymerization of Plastics to Generate Useful Fuel Plus Abundant Hydrogen,” Solar Energy Materials and Solar Cells (2020 Jan 1), Vol. 204, pp. 1-10) and Thiounn et al. (“Advances and Approaches for Chemical Recycling of Plastic Waste,” Journal of Polymer Science (2020 May 15), Vol. 58, No. 10, pp. 1347-1364).
The rejection of claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view of Jiang et al. and Thiounn et al. has been withdrawn in view of the new grounds of rejection.
II. Claim(s) 4 has been rejected under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view of Jiang et al. (“STEP Polymer Degradation: Solar Thermo-Coupled Electrochemical Depolymerization of Plastics to Generate Useful Fuel Plus Abundant
Hydrogen,” Solar Energy Materials and Solar Cells (2020 Jan 1), Vol. 204, pp. 1-10) and Thiounn
et al. (“Advances and Approaches for Chemical Recycling of Plastic Waste,” Journal of Polymer Science (2020 May 15), Vol. 58, No. 10, pp. 1347-1364) as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of Hamad et al. (“Recycling of Waste from Polymer Materials: An Overview of the Recent Works,” Polymer Degradation and Stability (2013 Dec 1),
Vol. 98, No. 12, pp. 2801-2812).
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view of Jiang et al. and Thiounn et al. as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of Hamad et al. has been withdrawn in view of the new grounds of rejection.
III. Claim(s) 8, 15 and 91-93 have been rejected under 35 U.S.C. 103 as being unpatentable
over WO 03/095116 (‘116) in view of Jiang et al. (“STEP Polymer Degradation: Solar Thermo-Coupled Electrochemical Depolymerization of Plastics to Generate Useful Fuel Plus Abundant Hydrogen,” Solar Energy Materials and Solar Cells (2020 Jan 1), Vol. 204, pp. 1-10) and Thiounn et al. (“Advances and Approaches for Chemical Recycling of Plastic Waste,” Journal of Polymer Science (2020 May 15), Vol. 58, No. 10, pp. 1347-1364) as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of Hori et al. (“Fuel Cell and Electrolyzer Using Plastic Waste Directly as Fuel,” Waste Management (2020 Feb 1), Vol. 102, pp. 30-39) and WO 2018/213889 (‘889).
The rejection of claim 8, 15 and 91-93 under 35 U.S.C. 103 as being unpatentable over WO 03/095116 (‘116) in view of Jiang et al. and Thiounn et al. as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of Hori et al. and WO 2018/213889 (‘889) has been withdrawn in view of the new grounds of rejection.
IV. Claim(s) 31 has been rejected under 35 U.S.C. 103 as being unpatentable over WO
03/095116 (‘116) in view of Jiang et al. (“STEP Polymer Degradation: Solar Thermo-Coupled Electrochemical Depolymerization of Plastics to Generate Useful Fuel Plus Abundant Hydrogen,” Solar Energy Materials and Solar Cells (2020 Jan 1), Vol. 204, pp. 1-10) and Thiounn et al. (“Advances and Approaches for Chemical Recycling of Plastic Waste,” Journal of Polymer Science (2020 May 15), Vol. 58, No. 10, pp. 1347-1364) as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of 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).
The rejection of claim 31 under 35 U.S.C. 103 as being unpatentable over WO
03/095116 (‘116) in view of Jiang et al. and Thiounn et al. as applied to claims 1, 7, 18-20, 23-28, 30, 32 and 94-95 above, and further in view of Myren et al. has been withdrawn in view of the new grounds of rejection.
Response to Amendment
Claim Objections
Claim 91 is objected to because of the following informalities:
Claim 91
line 1, this claim is dependent on cancelled claim 8.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 91 and 92 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 91
lines 1-3, recite “wherein the anode comprises a catalyst comprising 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”.
Claim 1, lines 7-10, recite “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”.
It is unclear from the claim language what the relationship is between the catalyst comprising 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 and 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.
Claim Rejection - 35 USC § 103
Claim(s) 1, 4, 7, 15, 18-20, 23-28, 30-32 and 91-95 is/are 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, 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 one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the anode described 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 because WO ‘116 is silent as to the anode material and Pt/C is an anode material which would have been used to electrooxidize plastic waste where a nickel mesh, a nickel foam, a titanium metal, a titanium foam and graphite are alternatives to carbon as a current collecting substrate that are capable of carrying the platinum catalyst.
The substitution of art recognized equivalents as shown by WO ‘889 is within the level
of one having ordinary skill in the art. In addition, the substitution of one current collecting
substrate for another is likely to be obvious when it does no more than yield predictable results.
MPEP § 2144.07 states that “[t]he 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).”
b. (f) Wherein the product is an oxy-hydrogenated product.
WO ‘116 teaches that the oxidizers react with the organic waste to produce CO2 and water1 (page 25, lines 19-20).
This invention relates generally to a process and apparatus for the mediated electrochemical oxidation (MEO) destruction of nearly all organic solid or liquid wastes which includes, but is not limited to, halogenated hydrocarbons (except fluorinated hydrocarbons), pesticides, detergents, petroleums and paraffins, macrocyclic compounds, plastics (except perfluorinated polymers), latex, carbon residues, cyclic aliphatic compounds (such as olefins, alcohols, ketones, etc. ), aromatics, aldehydes, esters, amines, hydrocarbons (including alkanes, alkenes, alkynes, alkenynes, heterocyclic compounds, organic acids, ethers, organometallic compounds, organic radicals (such as: univalent, bivalent, or trivalent radicals derived from saturated and unsaturated aliphatics, aromatic hydrocarbons, heterocyclic compounds) ; 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 3-19).
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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124
555
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Greyscale
(page 3, Fig. 1(d)).
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 product described by WO ‘116 with wherein the product is an oxy-hydrogenated product because in order to obtain ethylene glycol, a oxy-hydrogenated product, one having ordinary skill in art would have electrolyzed end-use PET, a plastic.
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.
c. Wherein the oxy-hydrogenated product is a compound used for at least of one of a synthesis of materials and biochemical/thermal degradation.
Myren teaches ethylene glycol (=
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49
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Greyscale
) [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 one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the oxy-hydrogenated product described by the WO ‘116 combination with wherein the oxy-hydrogenated product is a compound used for at least of one of a synthesis of materials and biochemical/thermal degradation because ethylene glycol is a compound used as a polar solvent in preparing the quaternary ammonium hydrogen-carbonates used in the process for the production of quaternary ammonium hydroxides.
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 “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 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)).
Myren teaches non-plastic recalcitrant polymers (= end-use poly(ethylene terephthalate) (PET)) [page 1, abstract].
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 one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cathode described 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 because WO ‘116 is silent as to the cathode material and Pt/C is a cathode material which would have been used to electrooxidize plastic waste where a nickel mesh, a nickel foam, a titanium metal, a titanium foam and graphite are alternatives to carbon as a current collecting substrate that are capable of carrying the platinum catalyst.
The substitution of art recognized equivalents as shown by WO ‘889 is within the level of one having ordinary skill in the art. In addition, the substitution of one current collecting
substrate for another is likely to be obvious when it does no more than yield predictable results.
MPEP § 2144.07 states that “[t]he 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 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. As to optimization
results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re
Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
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 one 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 because using a BASi single junction Ag/AgCl (3 M NaCl) electrode as a reference electrode performs 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 “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, Hori teaches wherein the anode comprises a catalyst comprising a metal selected from the group consisting of Ni, Fe, Co, Cr, Mo, Pt, Rh, Ru, Pd, Ir, and 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 one 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 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. As to optimization results, a patent will not
be granted based upon the optimization of result effective variables when the optimization is
obtained through routine experimentation unless there is a showing of unexpected results
which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
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].
RE: REMARKS
• Applicant states that therein lies a fundamental problem in that Carson '116 does not disclose a similar method as presently claimed, nor is it inherent that the processes disclosed or taught in Carson ‘116 necessarily resulted in the formation of oxy-hydrogenated compounds.
In response, WO ‘116 teaches that the oxidizers react with the organic waste to produce CO2 and water (page 25, lines 19-20). The water (H2O) is an oxy-hydrogenated product.
• Applicant states that this use of low level AC voltage in Carson ‘116 does not support that the method of Carson ‘116 is a “similar method as presently claimed.”
In response, present claim 1, lines 21-22, recite “wherein the voltage is modulated with a predetermined switching frequency”.
WO ‘119 teaches that in the case of certain electrolyte compositions, a low level AC
voltage is impressed across the electrodes in the electrochemical cell (page 13, lines 28-30). An AC (alternating current) voltage has a polarity switching frequency, which is directly related to its frequency in Hertz (Hz).
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.
MPEP § 2144(IV) states that "[o]ne of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings in In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).”
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.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 The water (H2O) is an oxy-hydrogenated product.
2 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).