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 II in the reply filed on 23 June 2026 is acknowledged.
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.
Claims 40, 41, 43, 44, 68, 74 and 82-93 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0274113 A1 to Kitagawa et al. (Kitagawa).
As to claims 40, 41, 43, 83, 84, 85, 88, 89, 90, 91 and 92, Kitagawa teaches an electrochemical system comprising a cathodic compartment (13A), an anodic compartment (13B), a cathode (11) in the cathodic compartment (13A), an anode (12) in the anodic compartment (13B), a reference electrode (81) in the cathodic compartment, a cation exchange membrane (for example Nafion) provided between the anodic compartment (13B) and the cathodic compartment (13A) to control ion exchange therebetween, a cathode side solution addition unit (20/21/30/31) (i.e. the alkali addition unit) having an outlet in fluid communication with a liquid inlet of the cathodic compartment and a power source (70/80) to provide an electric current at an applied current density to the anode and cathode (Paragraphs 0020-0026 and 0030; Figure 1). Apparatus claims must be distinguished from the prior art in terms of structure rather than function, functional limitation do not serve to further limit apparatus claims beyond imparting the limitation that the apparatus be capable of performing the claimed function (MPEP 2114). The apparatus of Kitagawa is capable of being supplied with any number of fluids including alkalis, amines and carbon dioxide and operating at any number of operating condition such as temperature and voltage/current to perform the functional language as claimed. Furthermore, Kitagawa specifically teaches the provision of tertiary amines such as diethanolamine, the provision of potassium ions in the form of potassium hydrogen carbonate and the provision of carbon dioxide gas (Paragraphs 0033 and 0041).
As to claim 44, Kitagawa teaches the apparatus of claim 40. Kitagawa further teaches that the cathodic compartment (13A) has a gas inlet for receiving carbon dioxide, thus an inlet capable of performing the functional language as claimed (Figure 1; MPEP 2114).
As to claim 68, Kitagawa teaches the apparatus of claim 40. Kitagawa further teaches that the cathode is an Ag cathode and the reference electrode if an Ag/AgCl electrode (Paragraphs 0025 and 0041).
As to claim 74, Kitagawa teaches the apparatus of claim 40. Kitagawa further teaches that the system is a flow, recirculating cell, system (Figure 1).
As to claim 82, Kitagawa teaches the apparatus of claim 40. Kitagawa further teaches that the cathodic compartment (13A) comprises an outlet to recover products (Paragraph 0026; Figures 1 and 2).
As to claim 86, Kitagawa teaches the apparatus of claim 40. The apparatus of Kitagawa is capable of performing the with a Faradaic efficiency of at least 30% at an applied current density as claimed depending on the selected fluid inputs and operating conditions such as temperature and flow rate (MPEP 2114).
As to claim 87, Kitagawa teaches the apparatus of claim 40. The remaining limitations of the claim are results based upon the chosen fluids applied under operation of the cell, of which Kitahawa is capable of receiving any number (MPEP 2114).
As to claim 93, Kitagawa teaches the apparatus of claim 40. Kitagawa further teaches that the cathode comprises an electrocatalyst (Paragraphs 0004 and 0025).
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.
Claim 61 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa as applied to claim 40 above, and further in view of US 2020/0240023 A1 to Cave et al. (Cave).
As to claim 61, Kitagawa teaches the apparatus of claim 40. Kitagawa teaches that the addition unit provides the solution via a pump, capable of providing a solution with any number of molar concentration ratios (Paragraph 0035; MPEP 2114), but fails to teach any means of controlling the pump. However, Cave also discusses pumping fluids in electrolytic carbon dioxide reactors and teaches that the pumps can be operated via a control unit (Paragraph 0154). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the apparatus of Kitagawa with a control unit for controlling the pump in order to provide control of the system as taught by Cave.
Claim 76 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa as applied to claim 74 above, and further in view of US 2017/0350023 A1 to Shin et al. (Shin).
As to claim 76, Kitagawa teaches the apparatus of claim 74. Kitagawa further teaches that the anolyte and catholyte of the flow system are circulated via pumps (41/61) (Paragraphs 0035 and 0036). However, Kitagawa is silent as to the specific type of pump. However, Shin also discusses electrolytic carbon dioxide reactors and teaches that an effective pump for pumping the fluids is a peristaltic pump (Paragraph 0074). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the pumps of Kitagawa as peristaltic pumps with the reasonable expectation of effectively forming the pumps as taught by Shin.
Claim 94 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa as applied to claim 40 above, and further in view of US 2020/0248324 A1 to Legrand et al. (Legrand)
As to claim 94, Kitagawa teaches the apparatus of claim 40. Kitagawa teaches that the cathode can be formed of a carbon paper substrate onto which nanoparticle electrocatalyst are formed (Paragraph 0064). However, Kitagawa fails to further teach a metal film therebetween. However, Legrand also discusses carbon dioxide reduction cathodes and teaches that a thin metal protective layer should be added over the porous gas diffusion layer (substrate) (Paragraph 0138; Figure 15). Therefore, it would have been obvious to form a thin metal layer, a film, between the substrate and the nanoparticles in order to protect the substate as taught by Legrand. The means by which a product is formed do not serve to patentably distinguish a product (MPEP 2113).
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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