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 .
Claims 1-24 are pending.
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 12/31/2025 is acknowledged. Claims 14-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-13 are under consideration in this Office action.
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.
Claim 3 is 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 3 recites the limitation "the discrete number of atomic layers" in line 1. There is insufficient antecedent basis for this limitation in the claim. There is no previous mention in the dependence of the claim of a “discrete number of atomic layers”. For examination purposes, this claim has been interpreted as intended to be dependent on claim 2.
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.
Claims 1-5, 9-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasgupta et al. (“Atomic Layer Deposition of Platinum Catalysts on Nanowire Surfaces for Photoelectrochemical Water Reduction” and Supplementary Information, J. Am. Chem. Soc., 2013).
Regarding claim 1, Dasgupta discloses an electrode for a reaction in a chemical cell (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-4, photocathode for photoelectrochemical water reduction), the electrode comprising:
a substrate having a surface (see e.g. SI-Fig. 1, Si wafer base; Page S2, lines 9-11);
an array of nanostructures supported by the substrate and extending outward from the surface of the substrate, each nanostructure of the array or nanostructures having a semiconductor composition (see e.g. SI-Fig. 1, semiconductor Si nanowire (NW) array extending up from Si wafer base; Page 12932, Col. 2, lines 7-9, and Page S2, lines 9-11); and
a catalyst arrangement disposed along each nanostructure of the array of nanostructures, the catalyst arrangement comprising a metal-based catalyst for the reaction in the chemical cell (see e.g. Fig. 1a-c, Pt nanoparticles (NPs) as cocatalyst for photoelectrochemical water reduction deposited along the length of the NWs; Page 12932, Col. 2, bottom paragraph, lines 1-8);
wherein the semiconductor composition of each nanostructure of the array of nanostructures establishes sites at which the metal-based catalyst is anchored to the nanostructure (see e.g. Fig. 1a-c, Pt NPs nucleated on NW surface; Page 12933, Col. 1, bottom paragraph, lines 1-5); and
wherein the array of nanostructures and the catalyst arrangement are configured such that the metal-based catalyst is distributed along sidewalls of each nanostructure of the array at an atomic scale (see e.g. SI-Fig. 1 and Fig. 1c, subnanometer-scale, i.e. atomic scale, Pt islands deposited along length, i.e. sidewalls, of NWs; Page 12932, Col. 2, bottom paragraph, lines 4-8, and Page 12933, Col. 1, bottom paragraph, lines 1-5).
Regarding claim 2, Dasgupta discloses the catalyst arrangement comprising a distribution of metal species in a discrete number of atomic layers (see e.g. Fig. 1 and Table 1; 1, 2, 3 and 10 cycles, i.e. layers, of the subnanometer-scale deposition; Page 12933, Col. 1, bottom paragraph, lines 1-5).
Regarding claim 3, Dasgupta discloses the discrete number of atomic layers being 1, 2 or 3 (see e.g. Fig. 1b-c and Table 1; 1, 2 and 3 cycles, i.e. layers).
Regarding claim 4, Dasgupta discloses the catalyst arrangement disposed along each nanostructure of the array of nanostructures comprising a plurality of atomically dispersed catalysts (see e.g. SI-Fig. 1 and Fig. 1c, plurality of subnanometer-scale, i.e. atomic scale, Pt islands deposited along each of NWs; Page 12933, Col. 1, bottom paragraph, lines 1-5).
Regarding claim 5, Dasgupta discloses adjacent nanostructures of the array of nanostructures being positioned relative to one another such that the catalyst arrangement along the sidewalls is spatially confined by the adjacent nanostructures (see e.g. SI-Fig. 1 and Fig. 1c, subnanometer-scale, i.e. atomic scale, Pt islands deposited along length, i.e. sidewalls, of each of the NWs, thereby being confined therebetween; Page 12932, Col. 2, bottom paragraph, lines 4-8, and Page 12933, Col. 1, bottom paragraph, lines 1-5).
Regarding claim 9, Dasgupta discloses the substrate comprising a semiconductor material (see e.g. SI-Fig. 1, semiconductor Si wafer base; Page S2, lines 9-11, and Page 12932, Col. 2, lines 7-9); and the semiconductor material being configured to generate charge carriers upon absorption of solar radiation such that the chemical cell is configured as a photoelectrochemical system (see e.g. Page S2, lines 9-11, and Page 12932, Col. 2, lines 7-12, Si semiconductor which traps light and transports generated charge carriers).
Regarding claim 10, Dasgupta discloses the semiconductor material of the substrate and the semiconductor composition of the array of nanostructures being configured such that the charge carriers generated in the substrate are extracted by the array of nanostructures (see e.g. Page S2, lines 9-11, and Page 12932, Col. 2, lines 7-12, Si semiconductor nanowire array in which the generated charge carriers are transported for the electrode reaction).
Regarding claim 11, Dasgupta discloses each nanostructure of the array of nanostructures comprising a respective nanowire (see e.g. SI-Fig. 1, semiconductor Si nanowire array; Page S2, lines 9-11).
Regarding claim 13, Dasgupta discloses the chemical cell being a photoelectrochemical cell (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-4, photocathode for photoelectrochemical water reduction).
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta in view of Katayama et al. (U.S. 2017/0183787).
Regarding claim 6, Dasgupta teaches all the elements of the electrode of claim 1 as stated above. Dasgupta does not teach the metal-based catalyst comprising an iron species, instead teaching it comprising platinum (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-4).
Katayama teaches a photocatalyst electrode for water decomposition (see e.g. Abstract) wherein a co-catalyst used with the photocatalyst may include Pt, Fe and oxides thereof (see e.g. Paragraphs 0048-0050).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metal-based catalyst of Dasgupta to comprise an Fe species as taught by Katayama as an alternate or additional suitable co-catalyst for photoelectrochemical water decomposition. 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. Further, MPEP § 2143(I)(B) states that “simple substitution of one known element for another to obtain predictable results” may be obvious.
Regarding claim 7, Dasgupta teaches all the elements of the electrode of claim 1 as stated above. Dasgupta does not teach the metal-based catalyst comprising iron oxide, instead teaching it comprising platinum (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-4).
Katayama teaches a photocatalyst electrode for water decomposition (see e.g. Abstract) wherein a co-catalyst used with the photocatalyst may include Pt, Fe and oxides thereof (see e.g. Paragraphs 0048-0050).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metal-based catalyst of Dasgupta to comprise Fe oxide as taught by Katayama as an alternate or additional suitable co-catalyst for photoelectrochemical water decomposition. 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. Further, MPEP § 2143(I)(B) states that “simple substitution of one known element for another to obtain predictable results” may be obvious.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta in view of Vanka et al. (“High Efficiency Si Photocathode Protected by Multifunctional GaN Nanostructures”, Nano Lett., 2018).
Regarding claim 8, Dasgupta teaches all the elements of the electrode of claim 1 as stated above. Dasgupta does not teach the semiconductor composition of each nanostructure of the array of nanostructures comprising nitrogen such that the sites are nitrogen sites, instead teaching it just comprising Si with a thin stabilizing TiO2 layer (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-2, and Page 12935, Col. 1, lines 7-16).
Vanka teaches a photocathode (see e.g. Abstract) comprising GaN nanowires formed on an Si substrate (see e.g. Fig. 2a and Page 6531, Col. 1, lines 7-13), the GaN nanowires protecting the Si surface from corrosion and reducing charge carrier transfer resistance at the semiconductor liquid junction as compared to use of a protection layer such as TiO2, leading to long-term stability at a large current density under sun illumination (see e.g. Abstract and Page 6530, Col. 1, line 16-Col. 2, line 5)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the array of nanostructures of Dasgupta to comprise GaN instead of Si with TiO2, thereby providing nitrogen sites for anchoring of the metal-based catalyst, as taught by Vanka to protect the Si substrate surface from corrosion and reduce charge carrier transfer resistance at the semiconductor liquid junction, leading to long-term stability at a large current density under sun illumination.
Regarding claim 12, Dasgupta teaches all the elements of the electrode of claim 1 as stated above. Dasgupta does not teach the semiconductor composition of each nanostructure of the array of nanostructures comprising a Group III-V semiconductor material, instead teaching it just comprising Si with a thin stabilizing TiO2 layer (see e.g. Page 12932, Col. 2, bottom paragraph, lines 1-2, and Page 12935, Col. 1, lines 7-16).
Vanka teaches a photocathode (see e.g. Abstract) comprising GaN nanowires formed on an Si substrate (see e.g. Fig. 2a and Page 6531, Col. 1, lines 7-13), the GaN nanowires protecting the Si surface from corrosion and reducing charge carrier transfer resistance at the semiconductor liquid junction as compared to use of a protection layer such as TiO2, leading to long-term stability at a large current density under sun illumination (see e.g. Abstract and Page 6530, Col. 1, line 16-Col. 2, line 5)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the array of nanostructures of Dasgupta to comprise GaN instead of Si with TiO2 as taught by Vanka to protect the Si substrate surface from corrosion and reduce charge carrier transfer resistance at the semiconductor liquid junction, leading to long-term stability at a large current density under sun illumination.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mayer et al. (“Hematite/Si Nanowire Dual-Absorber System for Photoelectrochemical Water Splitting at Low Applied Potentials”, J. Am. Chem. Soc., 2012) teaches a photoelectrode for water splitting comprising Fe2O3 grown by atomic layer deposition on vertically aligned Si nanowires.
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795