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 1-17 are pending for this Office Action
Election/Restrictions
Applicant's election with traverse of claims 1-6 in the reply filed on 12/12/2025 is acknowledged. The traversal is on the ground(s) that the system of group I cannot be used to convert reactants into power or electroplating. This is not found persuasive. The Applicant’s arguments are directed as how the system is intended to be used in the instant invention. However, the system has the components that can be used for other processes. For example, Kim et al (US 20130209916 A1) discloses the structure of claim 1 (see rejection of claim 1 below) and uses the system in different processes, such as power storage and water treatment (see e.g. Kim- abstract).
The requirement is still deemed proper and is therefore made FINAL. Claims 7-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim.
Claims 1-6 are under consideration for this Office Action.
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.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticiapted by Kim et al (US 20130209916 A1)
Claim 1: Kim discloses a system (see e.g. abstract; #1 on Fig 1) comprising:
a feed stream (see e.g. #30 on Fig 1), comprising a solvent (water) and a salt, dissolved in the solvent and comprising cations and anions (see e.g. [0057]: “, the electrolyte includes a water-soluble electrolyte such as NaCl, H2SO4, HCl, NaOH, KOH, Na2NO3, etc.”);
a negative current collector (see e.g. #21 on Fig 1);
a negative flow electrode (see e.g. #20 on Fig 1), comprising the solvent and negative active particles, suspended in the solvent (see e.g. [0053]; #12 on Fig 1) and comprising a material to interact with the cations (see e.g. [0056]: “…may include porous carbon (activated carbon, carbon aerosol, carbon nanotube, etc.), graphite powder, metal oxide powder, and the like”);
a negative separating structure, disposed between and in contact with the feed stream and the negative flow electrode (see e.g. #23 on Fig 1), wherein the negative separating structure is configured to selectively pass the cations from the feed stream to the negative flow electrode (see e.g. [0089]);
a positive current collector (see e.g. #11 on Fig 1);
a positive flow electrode (see e.g. #10 on Fig 1), comprising the solvent and positive active particles, suspended in the solvent (see e.g. [0053]; #12 on Fig 1) and comprising a material to interact to react with the anions (see e.g. [0056]: “…may include porous carbon (activated carbon, carbon aerosol, carbon nanotube, etc.), graphite powder, metal oxide powder, and the like”); and
a positive separating structure, disposed between and in contact with the feed stream and the positive flow electrode (see e.g. #13 on Fig 1), wherein the positive separating structure is configured to selectively pass the anions from the feed stream to the positive flow electrode (see e.g. [0089]);
The limitation of the preamble claiming a “a salt-splitting electrolysis system” is drawn to an intended use of the system. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)’. Kim discloses all of the positively recited structure of the system and the preamble does not add or infer any additional structure to the claims.
With regard to the limitations claiming “a negative catalyst configured to react with the cations” and “a positive catalyst configured to react with the anions”, these limitations are a description of the material used for the catalyst. [0010] of the instant PGPub states that ‘In some examples, the negative catalyst comprises one or more of graphitic carbon, carbon-nitride, graphene, carbon nanotubes, transition metal carbides, platinum, palladium, rhodium, and iridium. In the same or other examples, the positive catalyst comprises one or more of graphitic carbon, carbon-nitride, graphene, carbon nanotubes, transition metal carbides (e.g., Ti3C2), platinum, palladium, rhodium, iridium, metal oxides (e.g., iron oxides, nickel oxides, cobalt oxides, manganese oxides), and perovskite oxides (with the formula ABO3, e.g., Ba0.5Sr0.5Co0.8Fe0.2O3 and (Ln0.5Ba0.5)CoO3).’ Kim discloses that the negative and positive materials “…may include porous carbon (activated carbon, carbon aerosol, carbon nanotube, etc.), graphite powder, metal oxide powder, and the like” (see e.g. [0056]). Therefore, Kim anticipates these limitations.
Claim 6: Kim discloses that the negative separating structure is a cation-exchange membrane, and the positive separating structure an anion-exchange membrane (see e.g. [0064]).
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(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim.
Claim 5: Kim teaches that the negative catalyst can comprises graphitic carbon, amongst a list of other materials (see e.g. [0056]). KSR rationale E states that it is obvious to choose ‘from a finite number of identified, predictable solutions, with a reasonable expectation of success’ (see MPEP § 2141 III). Additionally, MPEP § 2144.07 states that ‘[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the system of Kim by using graphitic carbon as the material of the negative catalyst.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kim et al (KR 20160032949 A, referred to as Yeo herein).
Claim 2: Kim does not explicitly teach that each of the negative active particles comprises a negative base structure, comprising supporting the negative catalyst, and each of the positive active particles comprises a positive base structure, comprising supporting the positive catalyst. Yeo teaches an electrolytic system treating a salt solution having flow electrodes, each comprising the solvent and active particles (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The active particles of Yeo have a core and shell structure comprising graphite (see e.g. page 10, paragraph starting with “The core”). “The core shell 102 has an advantage that one or several individual granules are gathered to surround the cell, and thus the electrode area occupied per unit weight or volume is larger than that of the bulk active electrode active material” (see e.g. page 10, paragraph starting with “The core”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the system of Kim by using the core-shell configuration for the active particles as taught in Yeo for the reason above.
Claim 3: Kim in view of Yeo teaches that at least one of the negative base structures and the positive base structure comprises an electronically conductive material (core, see e.g. Yeo - page 10, paragraph starting with “The core”).
Claim 4: Kim in view of Yeo teaches that the electronically conductive material is one or more of graphitic carbon (see e.g. Yeo - page 4, paragraph starting with “The flow”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795