DETAILED ACTION
Claim 15 was rejected in Office Action mailed on 12/23/2025.
Applicant filed a response, amended claim 1 and 3-5, and withdrew claims 1-9, 11-13 and 16 on 03/20/2026.
Claims 1-9, 11-13 and 15-16 are pending, and claim(s) 1-9, 11-13 and 16 are withdrawn.
Claim 15 is rejected.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a heterojunction photocatalyst having specific types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen-evolution photocatalyst, does not reasonably provide enablement for any heterojunction photocatalyst, having any types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen- evolution photocatalyst, having the claimed heterojunction selectivity (a), the claimed heterojunction selectivity (b) and satisfying the formula of {heterojunction selectivity (a) (%) of the solid mediator x heterojunction selectivity (b) (%) of the hydrogen-evolution photocatalyst}/10,000 > 0.4, as presently claimed (Claim 1) . The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claim 15 can be used as claimed and whether claim 15 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claim 15, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claim 15 read on any heterojunction photocatalyst, having any types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen- evolution photocatalyst, having the claimed heterojunction selectivity (a), the claimed heterojunction selectivity (b) and satisfying the formula of {heterojunction selectivity (a) (%) of the solid mediator x heterojunction selectivity (b) (%) of the hydrogen-evolution photocatalyst}/10,000 > 0.4
(b) There is no direction or guidance presented for any heterojunction photocatalyst, having any types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen- evolution photocatalyst, having the claimed heterojunction selectivity (a), the claimed heterojunction selectivity (b) and satisfying the formula of {heterojunction selectivity (a) (%) of the solid mediator x heterojunction selectivity (b) (%) of the hydrogen-evolution photocatalyst}/10,000 > 0.4
(c) There is an absence of working examples concerning any heterojunction photocatalyst, having any types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen- evolution photocatalyst, having the claimed heterojunction selectivity (a), the claimed heterojunction selectivity (b) and satisfying the formula of {heterojunction selectivity (a) (%) of the solid mediator x heterojunction selectivity (b) (%) of the hydrogen-evolution photocatalyst}/10,000 > 0.4, while the specification only discloses a few examples of a heterojunction photocatalyst having specific types of a solid mediator, of a hydrogen-evolution photocatalyst, of an oxygen-evolution photocatalyst.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claim 15.
Response to Arguments
In response to the amended claim 1, specifically, regarding “a heterojunction selectivity (b) of the hydrogen-evolution photocatalyst to the solid mediator, calculated by a following formula, is 60% or more” and “heterojunction selectivity (a) (%) of the solid mediator x heterojunction selectivity (b) (%) of the hydrogen-evolution photocatalyst}/10,000 > 0.4”, the amendments overcome the previous double patenting rejections over copending Application 18/842,921 and 18/842,884. Therefore, the double patenting rejections are withdrawn from the record.
Upon further consideration of Specification – [0069] - Table 1 and applicant’s remarks:
“Viewing the examples of the present application - including the comparative example, which is more similar to the inventive examples than anything disclosed in Takashima - it is apparent that values for heterojunction selectivity (a), heterojunction selectivity (b), and the relationship{heterojunction selectivity (a) x heterojunction selectivity (b)}/10,000 > 0.4, may or may not be present in a catalyst. Spec., [0069] (Table 1). Such features are not explicitly disclosed and Takashima and, further, it cannot be reasonably asserted that such features are inherently (necessarily) present in Takashima.”
Remarks, p. 9
Applicant’s argument is found persuasive. Therefore, the previous 35 U.S.C. 103 rejections over Takashima are withdrawn from the record. However, the amendments necessitates a new set of 35 U.S.C. 112(a) scope of enablement rejection, as set forth above.
Conclusion
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 Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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 director, Alexa Neckel can be reached at (571)272-2450. 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.
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
Prosecution Insights