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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 13, 16, 20, 21, 23 and 25 in the reply filed on 23 January 2025 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16 and 21 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.
As to claim 16, the term “substantially” in the claim is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term substantially renders indefinite the degree of copper oxide in the active layer.
As to claim 21, it is unclear as to how a single substrate can have an “average” surface area, a single component typically having a single surface area.
Claim Rejections - 35 USC § 103
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 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.
Claims 20, 13, 16 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over “Electro- and Photoreduction of Carbon Dioxide: The Twain Shall Meet at Copper Oxide/Copper Interfaces” to Janaky et al. (Janaky) in view of “Heterostructured Cu2O/CuO decorated with nickel as a highly efficient photocathode for photoelectrochemical water reduction” to Dubale et al. (Dubale).
As to claims 20, 13 and 16, Janaky teaches a nanostructured electrode, a photocathode, the nanostructured electrode formed by exposing a precursor electrode to a photoelectrochemical reaction, the precursor electrode comprising a copper foil substrate and a nanostructured copper oxide layer disposed on the copper foil substrate, the photoelectrochemical reaction forming an active layer on the copper oxide layer comprising metallic copper (Abstract; Page 334 Last Paragraph; Page 335; Figure 3). However, Janaky fails to further teach that the active layer/precursor electrode comprises nickel.
However, Dubale also discusses copper oxide electrodes and teaches that solar conversion efficiency of copper oxide photocathodes can be increased by surface decoration with metallic nickel (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art to surface decorate the copper oxide precursor electrode of Janaky with nickel in order to increase the solar conversion efficiency as taught by Dubale. The combination thus forming, after photoelectrochemical reaction, an active outer surface on top of the copper oxide (thus not including the copper oxide) comprising metallic nickel and metallic copper.
As to claim 21, the combination of Janaky and Dubale teaches the electrode of claim 20. Janaky is silent as to a specific useful size of the electrode and corresponding copper foil substrate. However, Dubale further teaches a size of the photocathode, and corresponding substrate, of 1.5 cm x 3 cm or 4.5 cm2 (Section 2.1.1). Therefore, it would have been obvious to one of ordinary skill in the art to form the substrate in the size of Dubale with the reasonable expectation of providing an effective photocathode.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Janaky and Dubale as applied to claim 20 above, and further in view of “CO2 Reduction at Low Overpotential on Cu Electrodes Resulting from the Reduction of Thick Cu2O Films” to Li et al. (Li).
As to claim 23, the combination of Janaky and Dubale teaches the electrode of claim 20. However, Janaky is silent as to a specifically desired thickness of the copper oxide layer. However, Li also discusses copper oxide films on which copper is generated and teaches that effective electrode activity is generated at approximately 3 microns copper oxide layer thickness (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the copper oxide film of Janaky with a thickness of 3 microns with the expectation of having effective electrode activity as taught by Li.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Janaky and Dubale as applied to claim 20 above, and further in view of US 2020/0141015 A1 to Dinh et al. (Dinh).
As to claim 25, the combination of Janaky and Dubale teaches the electrode of claim 20. However, the combination is silent as to the thickness of the nickel catalyst layer. However, Dinh also discusses catalysts layers for electrochemical carbon dioxide reduction and teaches that the catalyst layer should be balanced between thick for coverage and thin for diffusion and that an effective thickness is, for example, 100 nm (Paragraph 0026). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the nickel catalyst layer of the combination with a thickness of 100 nm in order to balance the coverage and diffusion concerns as taught by Dinh.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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