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 with traverse of Group I, claims 1-6, in the reply filed on 02/05/2026 is acknowledged. The traversal is on the grounds that examination burden was not established as required under US practice.
This is not found persuasive because the instant application was filed under 35 U.S.C. § 371. As described in MPEP § 801 and 823, applications submitted under 35 U.S.C. § 371 are subject to restriction on the basis of Unity of Invention, rather than US practice. Under the Unity of Invention standard, inventions are considered distinct if they do not share any special technical features (MPEP § 1850 and 1893.03(d)). It is noted that examination burden is not a consideration under the Unity of Invention standard. As described in the requirement for Unity of Invention mailed 12/18/2025, the different inventions of the instant application do not share special technical features. Applicant has not provided any evidence or argument suggesting Examiner’s determination that the inventions of the instant application do not share special technical features is incorrect. Applicant’s argument is therefore not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/05/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 lines 2-3 recite “from nitrogen gas supply”, but should recite “from a nitrogen gas supply” to correct the typo.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Specifically, the limitation “nitrogen gas supply means” in claim 1 has been interpreted under 35 U.S.C. § 112(f) as “a nitrogen cylinder 122, … a pipe 121, … a nitrogen cylinder regulator 123, … and a nitrogen gas mass flow controller 124” as recited in paras. 81-84 and equivalents thereof.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura (WO 2021/124616 A1, with citations to US Pat. Pub. 2021/0395902 A1 as the official English translation on file with the Office) in view of Rondinone (US Pat. Pub. 2018/0334753 A1) and Katayama et al. (“Electrochemical conversion of dinitrogen to ammonia induced by a metal complex–supported ionic liquid” Electrochemistry Communications 67 (2016) 6-10).
Regarding claim 1, Tamura teaches an ammonia production method comprising supplying electrons from a power source (“supplying electric power … to the oxidation electrode 12 and the reduction electrode 13, … a reduction reaction occurs at the reduction electrode 13” para. 14 and Fig. 4), protons from a proton source (“The second electrolytic solution may be an aqueous solution” para. 16 and Fig. 4), and nitrogen molecules (“nitrogen (N2) taken out by the oxygen separator is supplied to the second electrolytic solution stored in the electrolytic solution regulation tank 19” para. 26 and Fig. 1), in the presence of a complex (“a molybdenum complex” para. 39 and Fig. 4) and a solid catalyst at a cathode (“the reduction electrode 13 include a metal selected from a group consisting of gold (Au), silver (Ag), copper (Cu), platinum (Pt), zinc (Zn), iron (Fe), titanium (Ti), tin (Sn), indium (In), bismuth (Bi), samarium (Sm), and nickel (Ni), a metal material such as an alloy containing at least one of the metals, …” para. 20 and Fig. 4) in a production apparatus performing electrolysis (“electrochemical reaction cell 14” para. 13 and Fig. 4), thereby producing ammonia from nitrogen molecules (“In the second electrolytic bath 3, nitrogen (N2) in the second electrolytic solution is reduced by the ammonia producing catalyst and the reducing agent to produce ammonia (NH3)” para. 14 and Fig. 4), wherein the complex is:
(A) a molybdenum complex having, as a PNP ligand, 2,6- bis(dialkylphosphinomethyl)pyridine (wherein the two alkyl groups are possibly identical to or different from each other, and at least one hydrogen atom of the pyridine ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom) (“(B) a molybdenum complex having 2,6-bis( dialkylphosphinomethyl)pyridine (where two alkyl groups may be the same or different and at least one hydrogen atom of the pyridine ring may be substituted with an alkyl group, an alkoxy group, or a halogen atom) as a PNP ligand.” paras. 41 and 48, and see eqs. B1 and B2);
(B) a molybdenum complex having, as a PCP ligand, N,N- bis(dialkylphosphinomethyl)dihydrobenzimidazolidene (wherein the two alkyl groups are possibly identical to or different from each other, and at least one hydrogen atom of the benzene ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom) (“(A) a molybdenum complex having N,N-bis(dialkylphosphinomethyl)dihydrobenzimidazolidene (where two alkyl groups may be the same or different and at least one hydrogen atom of the benzene ring may be substituted with an alkyl group, an alkoxy group, or a halogen atom) as a PCP ligand” paras. 40 and 45, and see eq. A1);
(C) a molybdenum complex having, as a PPP ligand, bis(dialkylphosphinoethyl)arylphosphine (wherein the two alkyl groups are possibly identical to or different from each other) (“(C) a molybdenum complex having bis(dialkylphosphinomethyl)arylphosphine (where two alkyl groups may be the same or different) as a PPP ligand” paras. 42 and 51, and see eq. C1); or
(D) a molybdenum complex of trans-Mo(N2)2(R5R6R7P)4 (wherein R5 and R6 are aryl groups that are possibly identical to or different from each other; R7 is an alkyl group; and two R7s are possibly connected together to form an alkylene chain) (“(D) a molybdenum complex expressed by trans-Mo(N2)2R1R2R3P)4 (where R1, R2, R3 are alkyl groups or aryl groups which may be the same or different, and two R3s may couple with each other to form an alkylene chain)” paras. 43 and 54, and see eqs. D1 and D2);
the solid catalyst is a metal catalyst (“gold (Au), silver (Ag), copper (Cu), platinum (Pt), zinc (Zn), iron (Fe), titanium (Ti), tin (Sn), indium (In), bismuth (Bi), samarium (Sm), and nickel (Ni), a metal material such as an alloy containing at least one of the metals, …” para. 20); and
the proton source is an electrolytic solution (“The second electrolytic solution may be an aqueous solution” para. 16 and Fig. 4).
Tamura further teaches the nitrogen is supplied from a nitrogen gas supply means (“a nitrogen supply unit 7” para. 25 and Fig. 1) comprising an oxygen separator that provides nitrogen from air (“nitrogen supplier 6” paras. 25-26 and Fig. 1), a pipe (“pipe 20” para. 26 and Fig. 1) and an “electrolytic solution regulation tank 19” (para. 26 and Fig. 1) that regulates the amount of nitrogen mixed with the electrolyte by adjusting the amount of nitrogen discharged to the air (para. 24).
Because the “nitrogen supplier 6” provides the same result of supplying nitrogen for the electrolysis, and because the use of nitrogen gas supplied from a cylinder is well known as a means for supplying nitrogen gas to an electrolytic cell (see e.g., Katayama Fig. 1), the “nitrogen supplier 6” is considered to be an equivalent of the claimed “nitrogen cylinder” (“(B) A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.” MPEP § 2183).
Alternatively, because Katayama teaches a nitrogen cylinder is a suitable means for supplying nitrogen to an electrochemical cell, it is considered that a person having ordinary skill in the art would have found it obvious to use a nitrogen cylinder in place of the oxygen separator of Tamura. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
The “pipe 20” is equivalent to the claimed “pipe”.
Because the “electrolytic solution regulation tank 19” controls the concentration of nitrogen gas in the electrolyte by controlling the pressure of nitrogen gas in the system, the “electrolytic solution regulation tank 19” is considered to be an equivalent of the claimed nitrogen cylinder regulator (“(A) The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification.” MPEP § 2183).
Tamura does not teach the nitrogen gas supply means comprises a nitrogen gas mass flow controller or an equivalent thereof.
However, Rondinone teaches that a mass flow controller (“mass flow controller” para. 29) provides the predictable benefit of allowing the volume of nitrogen introduced to a nitrogen reduction electrolyzer to be measured and controlled (para. 29).
As Tamura and Rondinone each teach electrochemical methods for the reduction of nitrogen to ammonia, Tamura and Rondinone are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the nitrogen gas supply means of Tamura by adding a nitrogen gas mass flow controller, as taught by Rondinone. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of controlling and measuring the amount of nitrogen gas supplied to the system, as taught by Rondinone. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 2, claim 2, as currently drafted, further limits claim 1 only when the complex is (A). I.e., claim 2 is currently drafted as an optional limitation.
In the instant case, modified Tamura teaches the complex is (B), (C), or (D). Modified Tamura thus renders the limitations of claim 2 obvious.
Furthermore, when modified Tamura teaches the complex is (A), Tamura further teaches the molybdenum complex (A) is a molybdenum complex of the formula (A1), (A2), or (A3), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; X is an iodine atom, a bromine atom, or a chlorine atom; and at least one hydrogen atom on the pyridine ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom (paras. 48-49 and eqs. B1-B3).
Regarding claim 3, modified Tamura renders the limitations of claim 1 obvious, as described above.
Claim 3, as currently drafted, further limits claim 1 only when the complex is (B). I.e., claim 3 is currently drafted as an optional limitation.
In the instant case, modified Tamura teaches the complex is (A), (C), or (D). Modified Tamura thus renders the limitations of claim 3 obvious.
Furthermore, when modified Tamura teaches the complex is (B), Tamura further teaches the molybdenum complex (B) is a molybdenum complex of the following Formula (B1), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; X is an iodine atom, a bromine atom, or a chlorine atom; at least one hydrogen atom on the benzene ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom (paras. 45-46 and eq. A1).
Regarding claim 4, modified Tamura renders the limitations of claim 1 obvious, as described above.
Claim 4, as currently drafted, further limits claim 1 only when the complex is (C). I.e., claim 4 is currently drafted as an optional limitation.
In the instant case, modified Tamura teaches the complex is (A), (B), or (D). Modified Tamura thus renders the limitations of claim 4 obvious.
Furthermore, when modified Tamura teaches the complex is (C), Tamura further teaches the molybdenum complex (C) is a molybdenum complex of the following Formula (C1), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; R5 is an aryl group; and X is an iodine atom, a bromine atom, or a chlorine atom (paras. 51-53 and eq. C1).
Regarding claim 5, modified Tamura renders the limitations of claim 1 obvious, as described above.
Claim 5, as currently drafted, further limits claim 1 only when the complex is (D). I.e., claim 5 is currently drafted as an optional limitation.
In the instant case, modified Tamura teaches the complex is (A), (B), or (C). Modified Tamura thus renders the limitations of claim 5 obvious.
Furthermore, when modified Tamura teaches the complex is (D), Tamura further teaches the molybdenum complex (D) is a molybdenum complex of the following Formula (D1) or (D2), wherein R5 and R6 are aryl groups that are possibly identical to or different from each other; R7 is an alkyl group; and n is 2 or 3 (paras. 54-56 and eqs. D1-D2).
Regarding claim 6, modified Tamura renders the limitations of claim 1 obvious, as described above.
Tamura further teaches the solid catalyst contains platinum or gold (“gold (Au), … platinum (Pt) …, a metal material such as an alloy containing at least one of the metals, …” para. 20).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/285352 (the reference application) as published in US Pat. Pub. 2024/0328014 A1. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the reference application recites each of the limitations of claim 1.
Claim 1 of the reference application thus anticipates claim 1 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 2, claim 2 of the reference application recites each of the limitations of claim 2.
Claim 2 of the reference application thus anticipates claim 2 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 3, claim 3 of the reference application recites each of the limitations of claim 3.
Claim 3 of the reference application thus anticipates claim 3 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 4, claim 4 of the reference application recites each of the limitations of claim 4.
Claim 4 of the reference application thus anticipates claim 4 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 5, claim 5 of the reference application recites each of the limitations of claim 5.
Claim 5 of the reference application thus anticipates claim 5 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 6, claim 1 of the reference application anticipates the limitations of claim 1, as described above.
Claim 6 of the reference application further recites the solid catalyst contains platinum or palladium.
Claim 6 of the reference application thus anticipates claim 6 of the instant application. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/021304 (the reference claim) as published in US Pat. Pub. 2023/0295813 A1, in view of Tamura (WO 2021/124616 A1, with citations to US Pat. Pub. 2021/0395902 A1 as the official English translation on file with the Office).
Regarding claim 1, the reference claim recites an ammonia production method comprising supplying electrons from a power source, protons from a proton source, and nitrogen molecules from nitrogen gas supply means in the presence of a complex and a solid catalyst at a cathode in a production apparatus performing electrolysis, thereby producing ammonia from nitrogen molecules (claim 1 lines 1-7), wherein
the solid catalyst is a metal catalyst, an oxide catalyst, or a combination of these (claim 1 lines 11-12); and
the proton source is an electrolyte membrane, an electrolytic solution, or both the electrolyte membrane and the electrolytic solution (claim 1 lines 13-15).
The reference claim does not recite the complex is (A), (B), (C), or (D).
However, Tamura teaches complexes having the structures (A), (B), (C), and (D) are suitable complexes for catalyzing the reduction of nitrogen to ammonia (paras. 40-54 and eqs. A1-D2).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the limitations of the reference claim, such that the complex has the structure (A), (B), (C), or (D), as taught by Tamura. A person having ordinary skill in the art would have been motivated to make this modification because Tamura teaches complexes with these structures are suitable as catalysts for the reduction of nitrogen to ammonia. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claim 1 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 2, the modified reference claim further recites, via Tamura, the molybdenum complex (A) is a molybdenum complex of the formula (A1), (A2), or (A3), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; X is an iodine atom, a bromine atom, or a chlorine atom; and at least one hydrogen atom on the pyridine ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom (paras. 48-49 and eqs. B1-B3).
Claim 2 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 3, the modified reference claim further recites, via Tamura, the molybdenum complex (B) is a molybdenum complex of the following Formula (B1), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; X is an iodine atom, a bromine atom, or a chlorine atom; at least one hydrogen atom on the benzene ring is substitutable with an alkyl group, an alkoxy group, or a halogen atom (paras. 45-46 and eq. A1)
Claim 3 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 4, the modified reference claim further recites, via Tamura, the molybdenum complex (C) is a molybdenum complex of the following Formula (C1), wherein R1 and R2 are alkyl groups that are possibly identical to or different from each other; R5 is an aryl group; and X is an iodine atom, a bromine atom, or a chlorine atom (paras. 51-53 and eq. C1).
Claim 4 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 5, the modified reference claim further recites, via Tamura, the molybdenum complex (D) is a molybdenum complex of the following Formula (D1) or (D2), wherein R5 and R6 are aryl groups that are possibly identical to or different from each other; R7 is an alkyl group; and n is 2 or 3 (paras. 54-56 and eqs. D1-D2).
Claim 5 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 6, the modified reference claim further recites the solid catalyst contains platinum, gold, palladium, or zinc oxide (claim 4 lines 2-3).
Claim 6 of the instant application is thus rendered obvious by the reference claim in view of Tamura. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 3, 4 or 5 of copending Application No. 17/640457 (the reference application) as published in US Pat. Pub. 2023/0002917 A1, in view of Tamura (WO 2021/124616 A1, with citations to US Pat. Pub. 2021/0395902 A1 as the official English translation on file with the Office) and Rondinone (US Pat. Pub. 2018/0334753 A1).
Regarding claim 1, claim 1 of the reference application recites an ammonia production method comprising supplying electrons from a power source, protons from a proton source, and nitrogen molecules in the presence of a complex in a production apparatus performing electrolysis, thereby producing ammonia from nitrogen molecules (lines 1-4), wherein the complex is (A), (B), (C), or (D) (lines 5-29) and the proton source is an electrolyte membrane, an electrolytic solution, or both an electrolyte membrane and an electrolytic solution (lines 30-32).
Claim 1 of the reference application does not recite a solid catalyst, wherein the solid catalyst is a metal catalyst, an oxide catalyst, or a combination of these, or a nitrogen gas supply means.
However, Tamura teaches that a cathode used for electrochemical nitrogen reduction to ammonia can suitably comprise a metal catalyst (para. 20) and a means for supplying nitrogen gas (paras. 12 and 25-26).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of claim 1 of the reference application, by adding a solid catalyst, wherein the solid catalyst is a metal catalyst, and a nitrogen gas supply means, as taught by Tamura. A person having ordinary skill in the art would have been motivated to make these modifications to achieve the predictable benefit of supplying nitrogen for the ammonia production reaction and providing a suitable cathode material. Combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
While the nitrogen supply means of Tamura does not comprise a mass flow controller, a person having ordinary skill in the art would have found it obvious to add a mass flow controller to the system used in the method of claim 1 of the reference application, because Rondinone teaches a mass flow controller provides the benefits of allowing the amount of nitrogen supplied to be controlled and measured.
Claim 1 of the instant application is thus rendered obvious by claim 1 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 2, claim 2 of the reference application further teaches the limitations of claim 2.
Claim 2 of the instant application is thus rendered obvious by claim 2 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 3, claim 3 of the reference application further teaches the limitations of claim 3.
Claim 3 of the instant application is thus rendered obvious by claim 3 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 4, claim 4 of the reference application further teaches the limitations of claim 4.
Claim 4 of the instant application is thus rendered obvious by claim 4 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 5, claim 5 of the reference application further teaches the limitations of claim 5.
Claim 5 of the instant application is thus rendered obvious by claim 5 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 6, claim 1 of the reference application in view of Tamura and Rondinone renders the limitations of claim 1 obvious, as described above.
The modified reference claim further teaches, via Tamura, the solid catalyst contains platinum or gold (“gold (Au), … platinum (Pt) …, a metal material such as an alloy containing at least one of the metals, …” para. 20).
Claim 6 of the instant application is thus rendered obvious by claim 1 of the reference application in view of Tamura and Rondinone. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795