DETAILED ACTION
Claims 62-63, 65 and 70 are amended.
Claims 82-90 are new.
Claims 61-71 and 82-90 are pending, with claims 72-81 being cancelled.
Claims 61-71 and 82-90 are 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 without traverse of Group I, claims 61-71 in the reply filed on 09/03/2025 is acknowledged.
Claims 72-81 are now cancelled. The restriction requirement mailed 07/16/2025 is withdrawn from the record.
Claim Objections
Claims 61, 86 and 89-90 are objected to because of the following informalities:
Claim 61,
Line 4, it is suggested to amend “reactive species oxygen” to “reactive oxygen species”.
Claim 65,
Line 1, to provide further clarity in claim 65, it is suggested to amend “85%” to “85 wt. %”.
Claim 86,
Line 2, it is suggested to amend “pyridinum” to “pyridinium”.
Claim 89,
Lines 2-3, it is suggested to amend “the radiation” to “the EM radiation”.
Claim 90,
Line 1, it is suggested to amend “the radiation” to “the EM radiation”.
Appropriate correction is required.
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.
Claims 71 and 84 are 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 71 recites the limitation " the protic solvent" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 84 recites the limitation "the superoxide" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 61-71, 82-83, 85-87 and 90 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayyan et al. “Superoxide Ion: Generation and Chemical Implications” (Hayyan).
Regarding claims 61-62, 69 and 90, Hayyan discloses generation and chemical implications of superoxide ion (Hayyan, Title and Abstract).
Hayyan further discloses superoxide ion is one of reactive oxygen species (ROS) (Hayyan, page 3030, 1. Introduction, first and second full paragraphs; page 3034, left column, last paragraph and Figure 1; page 3035, 3.4. Generation of O2− at Oxide Surfaces, first paragraph).
Hayyan further discloses the generation of the superoxide ion (O2[Symbol font/0x2D]) using ionic liquids (Hayyan, Abstract).
Hayyan further specifically discloses using 1-n-butyl-3-methylimidazolium hexafluorophosphate [BMIm]-[HFP] (i.e., an aprotic solvent) as the ionic liquid (Hayyan, page 3038, 3.5.3. Ionic Liquids, second paragraph). Hayyan further specifically discloses the effect of the ionic liquid on the superoxide ion (O2[Symbol font/0x2D]) at a glassy carbon macroelectrode (i.e., a composition comprising a carbon material and an ionic liquid) (Hayyan, page 3058, right column, first paragraph and Figure 13).
Hayyan further discloses generation of the superoxide ion (O2[Symbol font/0x2D]) by photochemical process, where dissolved organic matter absorbs ultraviolet (UV) radiation and generates an excited triplet state that then reacts with O2 to form O2− (i.e., produces a reactive species oxygen (ROS) when the composition is exposed to oxygen and an electromagnetic (EM) radiation an electromagnetic (EM) radiation illuminating the composition) (Hayyan, page 3037, right column, first and second full paragraphs). Hayyan further specifically discloses a UV−visible (vis) spectrophotometer (i.e., a radiation source external to the composition) being employed to detect O2− in any medium because O2− has a wavelength close to 255 nm in aprotic solvents (Hayyan, page 3050, 5.2.1. UV−Visible, first paragraph), therefore, it is clear that the wavelength of the UV radiation (i.e., electromagnetic (EM) radiation) would be necessarily including 255 nm, which falls within the claimed range.
Regarding claims 63 and 85, as applied to claim 61, Hayyan further discloses the effect of the electrodes on O2− generation, and specifically discloses using single-walled carbon nanotube−dihexadecyl phosphate film electrodes (Hayyan, page 3065, 7. EFFECT OF ELECTRODES ON O2− GENERATION, first paragraph).
Regarding claim 64, as applied to claim 61, given that Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of having 0.001% w/v to about 1% w/v of the carbon material to be suspended in the IL.
Regarding claim 65, as applied to claim 62, given that Hayyan further discloses stable superoxide ion O2− being generated (Hayyan, page 3035, left column, last paragraph) and further given that the Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of having 85% of the superoxide generated by the composition to have a stability for at least 75 hours in the IL.
Regarding claim 66, as applied to claim 62, Hayyan further discloses the O2− lifetime being 25-28 h under certain conditions (Hayyan, page 3037, left column, second full paragraph), where the lifetime of 25-28 hours corresponds to a half lifetime of 12.5-14 hours, which falls within the claimed range.
While Hayyan does not explicitly disclose a half lifetime of the superoxide particularly in ionic liquids as claimed, given that Hayyan discloses the superoxide ion being generated in the ionic liquid (IL) (Hayyan, page 3055, last paragraph to page 3056, 6.1. Generation of O2− in ILs, second paragraph), and thus, the superoxide in the IL would be necessarily capable of having a half lifetime equal to or greater than zero, which would fall within the claimed range.
Alternatively, given that Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of producing a superoxide in the IL with a half lifetime a time up to 200 hours.
Regarding claim 67, as applied to claim 62, given that the Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of having a generation efficiency of the superoxide in a range of about 2.5*10-4 mol L-1g-1s-1 to about 2.5*10-2 mol L-1g-1s-1.
Regarding claim 68, as applied to claim 61, Hayyan further discloses the effect of the ionic liquid structure on O2[Symbol font/0x2D], where the substituents attached to the cations of ILs have significant effects on the properties of ILs, particularly the physical properties (Hayyan, page 3058, left column, first full paragraph). Hayyan further specifically discloses an embodiment, where the ionic liquid has hydrophobicity (i.e., the ionic liquid is a hydrophobic ionic liquid) (Hayyan, page 3058, left column, first full paragraph).
Regarding claim 70, as applied to claim 61, given that the Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of having an EM radiation with an intensity of 1.5 W/m2 incident on the composition as claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 71, as applied to claim 61, Hayyan further specifically discloses an embodiment, where the O2[Symbol font/0x2D] is generated in aprotic solvents, in which a proton source is absent (i.e., free of protic solvent) (Hayyan, page 3031, 3.1. Electrochemical Reduction of O2, third full paragraph).
Regarding claim 82, as applied to claim 61, Hayyan further specifically discloses an embodiment, where the O2− lifetime is 25-28 h (Hayyan, page 3037, left column, second full paragraph), which corresponds to a half lifetime of 12.5-14 hours, which falls within the claimed range.
While Hayyan does not explicitly disclose a half lifetime of the superoxide in particular ionic liquids as claimed, given that Hayyan discloses the superoxide ion (i.e., a reactive species oxygen (ROS)) being generated in the ionic liquid (IL) (Hayyan, page 3055, last paragraph to page 3056, 6.1. Generation of O2− in ILs, second paragraph), and thus, the reactive species oxygen (ROS) in the IL would be necessarily capable of having a half lifetime equal to or greater than zero, which would fall within the claimed range.
Alternatively, given that Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of producing a superoxide (i.e., a reactive oxygen species (ROS)) in the IL with a half lifetime up to 200 hours.
Regarding claim 83, as applied to claim 66, while Hayyan does not explicitly disclose a half lifetime of the superoxide in particular ionic liquids, which is between 24 hours to 200 hours as claimed, given that Hayyan discloses the generation of superoxide ion using a carbon material and an ionic liquid and, which is identical or substantially identical to the present claimed product in composition (i.e., a carbon material and an ionic liquid) and function (i.e., produces superoxide ion (i.e., a reactive oxygen species) when exposed to oxygen and an electromagnetic (EM) radiation, wherein the EM radiation has a wavelength that falls with the claimed range, i.e. from about 150 nm to about 1100 nm), and therefore, the composition of Hayyan would be necessarily capable of producing a superoxide with a half lifetime between 24 hours to 200 hours as claimed.
Regarding claim 84, as applied to claim 61, Hayyan further specifically discloses an embodiment, where an irreversible process of O2[Symbol font/0x2D] generation in the ionic liquid (i.e., generate the superoxide via irreversible process) (Hayyan, page 3065, left column, last paragraph to right column, first paragraph).
Regarding claim 86, as applied to claim 68, Hayyan further specifically discloses an embodiment, where the ionic liquid is pyridinium-based (i.e., comprises a pyridinium containing ions) (Hayyan, page 3059, 6.2. Long-Term Stability of O2−, second paragraph).
Regarding claim 87, as applied to claim 61, Hayyan further specifically discloses an embodiment, where the real-time measurement of O2[Symbol font/0x2D] using a biosensor (i.e., an indicator to detect the ROS) (Hayyan, page 3062, second full paragraph).
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.
Claims 84 and 88-89 are rejected under 35 U.S.C. 103 as being unpatentable over Hayyan et al. “Superoxide Ion: Generation and Chemical Implications” (Hayyan).
Regarding claim 84, as applied to claim 61, alternatively, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hayyan meets the requirements of the claimed product, Hayyan clearly meets the requirements of the present claim.
Regarding claim 88, as applied to claim 61, Hayyan further discloses the diffusion coefficients of O2, which varies with various IL media and increase with an increase in temperature (Hayyan, page 3064, right column, first and second full paragraphs; page 3063-3064, Table 10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the IL as a solubilizing agent to increase diffusion coefficient of oxygen in the composition, in order to achieve the reaction with higher efficiency.
Regarding claim 89, as applied to claim 61, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hayyan meets the requirements of the claimed product, Hayyan clearly meets the requirements of the present claim.
Claim 64 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Hayyan et al. “Superoxide Ion: Generation and Chemical Implications” (Hayyan) as applied to claim 61 above, and further in view of Polo-Luque et al. “Functionalization and dispersion of carbon nanotubes in ionic liquids” (Polo-Luque).
Regarding claim 64, as applied to claim 61, alternatively, Hayyan does not explicitly disclose 0.001% w/v to about 1% w/v of the carbon material is suspended in the IL, as presently claimed.
With respect to the difference, Polo-Luque teaches functionalization and dispersion of carbon nanotubes in ionic liquids (Polo-Luque, Title and Abstract).
Polo-Luque further teaches using a mixture comprising ionic liquid to disperse carbon nanotubes (i.e., the carbon material is suspended in the IL), where well-dispersed CNT suspensions are obtained (Polo-Luque, page 102, left column to page 104, left column, first paragraph).
Polo-Luque further teaches ILs are able to disperse CNTs by themselves, affording readily processable gelatinous substances. For that reason, ILs provide an excellent way to increase CNT dispersibility without the need for solid substances or organic solvents (Polo-Luque, page 99, 1. Introduction, third full paragraph).
Polo-Luque further teaches carbon nanotube dispersion in the ionic liquid with different amounts of dispersed carbon nanotubes for various new material applications (Polo-Luque, page 102, right column, second and third full paragraphs and Table 1; page 103, Table 2).
Polo-Luque and Hayyan are analogous art as they are both drawn to a carbon material (e.g., carbon nanotubes).
As Polo-Luque expressly teaches, the roles of CNTs and ILs are remarkable in improving analytical processes (e.g., sample treatment and electrochemical detection). The materials formed from the combination of CNTs and ILs provide advantages (e.g., easy preparation, mechanical and chemical stability, great versatility and new properties relative to these materials separately) (Polo-Luque, Abstract; page 109. 4. Concluding remarks). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to disperse the carbon nanotubes in the IL with an amount, including the presently claimed, in order to achieve sufficient dispersion of the carbon nanotubes in the ionic liquid.
Claims 61, 63, 68 and 89-90 are rejected under 35 U.S.C. 103 as being unpatentable over Qu et al. “Photochemical Transformation of Carboxylated Multiwalled Carbon Nanotubes: Role of Reactive Oxygen Species” (Qu), taken in view of evidence by European Commission, Glossary: “Ultraviolet radiation” (EC glossary), in view of Huang et al. “Enhancing Pt/C Catalysts for the Oxygen Reduction Reaction with Protic Ionic Liquids: The Effect of Anion Structure” (Huang).
Regarding claims 61, 63, and 90, Qu discloses photochemical transformation of carboxylated multiwalled carbon nanotubes and the role of reactive oxygen species (ROS) (Qu, Title and Abstract).
Qu further discloses the carbon nanotubes (i.e., a composition) generating ROS under UVA irradiation (Qu, Abstract; page 14080, Introduction; page 14081, left column, first full paragraph), where the UVA irradiation is provided by eight 8W black-light lamps (i.e., illuminating the composition from a radiation source external to the composition) with an emitting spectrum in the UVA range (centered at 350 nm) are employed to mimic the UVA fraction of the solar spectrum (Qu, page 14801, left column – “Photochemical Reaction Experiments.”, first paragraph).
Given that it is known in the art that UVA radiation is an electromagnetic radiation with a wavelength of 315-400 nm, which falls within the claimed range, as evidenced by EC glossary (EC glossary, page 1 – “UVA” and page 2), therefore, it would have been obvious to one of ordinary skill in the art that the UVA irradiation of Qu would be an electromagnetic (EM) radiation illuminating the composition, wherein the EM radiation has a wavelength from (1) about 150 nm to about 1100 nm or (2) about 250 nm to 500 nm, as claimed.
Qu does not explicitly disclose the composition comprising an ionic liquid (IL), as presently claimed.
With respect to the difference, Huang teaches enhancing Pt/C catalysts for the oxygen reduction reaction with protic ionic liquids and the effect of anion structure (Huang, Title and Abstract).
Huang further teaches using protic ionic liquids (ILs) to enhance oxygen reduction reaction (ORR) activity of carbon supported platinum catalysts (Pt/C) for application in polymer electrolyte membrane fuel cells (Huang, Abstract).
Huang and Qu are analogous art as they are both drawn to carbon material for industrial applications.
In light of the motivation of using the ionic liquid disclosed by Huang as described above, it would therefore have been obvious to one of ordinary skill in the art to have the composition of Qu to include the ionic liquid disclosed by Huang, in order to enhance the reaction activity in Qu, and thereby arrive at the claimed invention.
Regarding claim 68, as applied to claim 61, Huang further teaches using the [MTBD]-based ionic liquid, e.g., [MTBD][C4F9SO3] IL that is relatively hydrophobic with low water solubility (Huang, page F1458, right column, first paragraph and Conclusions).
Regarding claim 89, as applied to claim 61, given Qu in view of Huang does not discloses having the carbon material suspended in the ionic liquid for a predetermined time, thus it is clear a predetermined time is not required, and hence, the predetermined time would necessarily be 0 min, which falls within the claimed range.
Alternatively, while Qu in view of Huang does not explicitly disclose the carbon material suspended in the ionic liquid for a predetermined time as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Qu in view of Huang meets the requirements of the claimed product, Qu in view of Huang clearly meets the requirements of the present claim.
Conclusion
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/J.Z./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732