Office Action Predictor
Application No. 18/023,749

HETEROJUNCTION PHOTOCATALYST, PHOTOCATALYST COMPOSITE, METHOD FOR PRODUCING HETEROJUNCTION PHOTOCATALYST, AND METHOD FOR PRODUCING HYDROGEN

Non-Final OA §102§DP
Filed
Feb 28, 2023
Examiner
ZHANG, JIALAN
Art Unit
1732
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Kao Corporation
OA Round
1 (Non-Final)
63%
Grant Probability
Moderate
1-2
OA Rounds
3y 2m
To Grant
67%
With Interview

Examiner Intelligence

63%
Career Allow Rate
12 granted / 19 resolved
Without
With
+4.2%
Interview Lift
avg trend
3y 2m
Avg Prosecution
47 pending
66
Total Applications
career history

Statute-Specific Performance

§103
50.0%
+10.0% vs TC avg
§102
15.6%
-24.4% vs TC avg
§112
26.2%
-13.8% vs TC avg
Black line = Tech Center average estimate • Based on career data

Office Action

§102 §DP
DETAILED ACTION Claims 1-9, 11-13 and 15-16 are pending, with claims 1-9, 11-13 and 16 being withdrawn after consideration. Claim 1 5 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. Election/Restrictions Applicant's election with traverse of FILLIN "Enter claim indentification information" \* MERGEFORMAT Group IV, claim 15 in the reply filed on FILLIN "Enter mail date of the reply." \* MERGEFORMAT 11/20/2025 is acknowledged. The traversal is on the ground s that (1) “ the burden is on the examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction …this burden has not been met ” ; (2) the reasoning provided in the previous Office Action mailed 09/23/2025 “does not explicitly address how the terms in claim 1 of the present application should be construed in relation to the terminology in the cited Takashima reference”; and (3) “applicant notes that the claims were not found to lack unity of invention in the October 26, 2021 Written Opinion of the International Searching Authority. As indicated in the MPEP, in considering the existence of a single general inventive concept, "the benefit of any doubt [is] given to the applicant." MPEP 1850.II” . These are not found persuasive as set forth below. Firstly, while applicant argues that “the burden is on the examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction…this burden has not been met” (Remarks filed 11/20/2025, page 2) , this is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I to V do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraphs 11-12 of the previous Office Action mailed 09/23/2025. Therefore, given that the Examiner has properly established that Groups I to V lack unity as set forth in paragraphs 11-12 of the previous Office Action mailed 09/23/2025, it is the Examiner's position that the restriction is proper. Further, while applicant argues that the reasoning provided in the previous Office Action mailed 09/23/2025 “does not explicitly address how the terms in claim 1 of the present application should be construed in relation to the terminology in the cited Takashima reference” (Remarks filed 11/20/2025, page 3), However, the Examiner respectfully notes that this issued was addressed in the previous Office Action mailed 09/23/2025 . Specifically, the Office Action mailed on 09/23/2025, pages 4-5, paragraph 12, explained how the terminology in the present invention (e.g., claim 1) corresponds to the terminology used in the cited reference Takashima. Therefore, the previous Office Action mailed 09/23/2025 have provided the explanation that the applicant asserts is missing, i.e., how the terms in claim 1 of the present application should be construed in relation to the terminology in the cited Takashima reference. Further, while Applicants point to MPEP 1850, however, this portion of the MPEP does not state that the USPTO should be precluded from independently revisiting the inquiry regarding lack of unity or that the USPTO must defer to the International Searching Authority. It is agreed that this portion of the MPEP states that is clear that the decision with respect to unity of invention rests with the International Searching Authority or the International Preliminary Examining Authority. However, this is believed to refer to letting applicants know that the ISA can make the determination of lack of unity not that the USPTO cannot make an independent decision on lack of unity. Further, it is noted that MPEP 1850 II also says that lack of unity of invention may be directly evident "a priori," that is, before considering the claims in relation to any prior art, or may only become apparent "a posteriori," that is, after taking the prior art into consideration. As set forth in paragraphs 11-12 of the previous Office Action mailed 09/23/2025, the Examiner has shown that the present invention does not make a contribution over the prior art, i.e. has shown there is a lack of unity "a posteriori" and therefore, the restriction requirement is proper. The requirement is still deemed proper and is therefore made FINAL. Claim s 1-9, 11-13 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on FILLIN "Enter mail date of the reply." \* MERGEFORMAT 11/20/2025 . 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. Claim s 1 -2, 12 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 20 and 22-23 of copending Application No. 18/842,921 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented . Regarding claim 1, copending claim 1 claim s a heterojunction photocatalyst comprising a solid mediator between a hydrogen-evolution photocatalyst and an oxygen-evolution photocatalyst, where the solid state mediator is joined onto the oxygen-evolution photocatalyst. Copending claim 8 further claims a coverage of the solid state mediator to an electrons collecting surface area of the oxygen-evolution photocatalyst is 40% or more . thus, it is clear that the solid mediator is selectively joined to an electrons collecting surface of the oxygen- evolution photocatalyst. Regarding claim 2, copending claims 1 and 6 claim the solid state mediator and the hydrogen-evolution photocatalyst are joined to each other via an ionic polymer. Therefore, it is clear that the hydrogen-evolution photocatalyst is selectively joined to the solid mediator. Regarding claim 12, copending claim s 9 and 20 claim the photocatalyst composite comprising the heterojunction photocatalyst on a substrate. Regarding claim 15, copending claim s 9 and 22 claim a method for producing hydrogen, the method comprising irradiating a heterojunction photocatalyst with light in the presence of water or an alcohol. Regarding claim 16, copending claim s 9, 20 and 22 claim a method for producing hydrogen, the method comprising irradiating a heterojunction photocatalyst with light in the presence of water or an alcohol . Claims 1-2, 7-9, 12 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13-15, 17-21 and 23 of copending Application No. 18/842,884. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Regarding claim 1, copending claim 1 claim s a heterojunction photocatalyst comprising a solid state mediator between a hydrogen-evolution photocatalyst and an oxygen-evolution photocatalyst, wherein the solid state mediator and the hydrogen-evolution photocatalyst are joined to each other via an ionic polymer (i.e., the solid mediator is selectively joined to an electrons collecting surface of the oxygen- evolution photocatalyst) . Regarding claim 2, copending claim s 1 and 3 claim the solid state mediator and the hydrogen-evolution photocatalyst are joined to each other by ionic bonding between the ionic group and the ionic polymer (i.e., the hydrogen-evolution photocatalyst is selectively joined to the solid mediator). Regarding claim 7, copending claim s 1 and 11 claim the hydrogen-evolution photocatalyst comprises a metal oxide (e.g., is a metal oxide). Regarding claim 8, copending claim s 1 and 11 claim the oxygen-evolution photocatalyst comprises a metal oxide (e.g., is a metal oxide). Regarding claim 9, copending claim s 1 and 13 claim the solid state mediator comprises a compound of the transition metal (e.g., is a transition metal compound). Regarding claim 12, copending claim s 1 and 21 claim a photocatalyst composite comprising the heterojunction photocatalyst on a substrate. Regarding claim 15, copending claims 1 and 23 claim a method for producing hydrogen, the method comprising irradiating the heterojunction photocatalyst with light in presence of water or an alcohol. Regarding claim 16, copending claim s 1, 21 and 23 claim a method for producing hydrogen, the method comprising irradiating the heterojunction photocatalyst with light in presence of water or an alcohol. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim 15 is rejected under 35 U.S.C. 102 FILLIN "Insert either \“(a)(1)\” or \“(a)(2)\” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable." \d "[ 2 ]" (a)(1) as being FILLIN "Insert either—clearly anticipated—or—anticipated—with an explanation at the end of the paragraph." \d "[ 3 ]" anticipated by FILLIN "Insert citation of prior art reference(s) demonstrating the shared technical feature does not make a contribution over the prior art." Takashima et al. "Visible-light-induced water splitting on a hierarchically constructed Z-scheme photocatalyst composed of zinc rhodium oxide and bismuth vanadate" (Takashima), as provided in the IDS filed 02/28/2023. Regarding claim 15, Takashima discloses a hierarchically constructed Z-scheme photocatalyst (i.e., a heterojunction photocatalyst) (Takashima, Title and Abstract). Takashima further discloses the Z-scheme photocatalyst having a hierarchical structure, comprising decahedral bismuth vanadate (BiVO 4 ) and zinc rhodium oxide (ZnRh 2 O 4 ) that serve as visible-light-sensitive O 2 - and H 2 - evolution photocatalysts (i.e., an oxygen-evolution catalyst and a hydrogen-evolution catalyst), respectively, and gold (Au) nanoparticles that act as a solid electron mediator and linker between BiVO 4 and ZnRh 2 O 4 (Takashima, Abstract; page 10373, left column, first full paragraph; page 10374 – right column, last paragraph; page 10377 – Conclusions, first paragraph). Takashima further discloses Au particles being photodeposited selectively on the (040) facet of decahedral bismuth vanadate (BiVO 4 ) (i.e., oxygen-evolution photocatalyst) and then loading zinc rhodium oxide (ZnRh 2 O 4 ) on the Au surface, where photoexcited electrons in BiVO 4 accumulate at the (040) facet (i.e., an electrons collecting surface) and then transfer to Au, to combine with holes of ZnRh 2 O 4 (Takashima, Abstract; page 10372, last paragraph to page 10373, left column, second paragraph). Takashima further discloses having the thus-constructed Z-scheme photocatalyst (ZnRh2O4/Au/BiVO4) under irradiation (i.e., irradiating the heterojunction photocatalyst) with visible light (i.e., with light), where water (i.e., in a presence of water) is split into hydrogen (H 2 ) (i.e., producing hydrogen) and oxygen (O 2 ) (Takashima, Abstract; page 10375, “Water splitting”, first paragraph). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT JIALAN ZHANG whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (703)756-1794 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 9-5 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Ching-Yiu Fung can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-5713 . 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. /J.Z./ Examiner, Art Unit 1732 /CORIS FUNG/ Supervisory Patent Examiner, Art Unit 1732
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Prosecution Timeline

Feb 28, 2023
Application Filed
Dec 18, 2025
Non-Final Rejection — §102, §DP
Mar 20, 2026
Response Filed

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Prosecution Projections

1-2
Expected OA Rounds
63%
Grant Probability
67%
With Interview (+4.2%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 19 resolved cases by this examiner