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 1-20 are pending
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 11/12/2025 is acknowledged. The traversal is on the ground(s) that no evidence is provided to show that the product of group I can be used for the different process described in the restriction requirement, that the product of group I can be made by a different process, or that the processes of groups II and III lack capability of being used together and substantially similar design, mode of operation, function or effect, as well as that the search of all claims would not impose a serious burden on the Office. This is not found persuasive because the alternative examples of processes of making or using the product or different product made provided act as support for the distinction of group I and each of groups II and III. MPEP § 806.05(f) states that “Allegations of different processes or products need not be documented”. Regarding the processes of groups II and III, one is a method of making an electrode while the other is a method of using the electrode, thereby having at least different modes of operation and effect. Furthermore, the inventions do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
The traversal is also on the ground(s) that there would not be a search burden. This is not found persuasive because burden was established in the restriction requirement because groups I, II and III would require search in different classifications and different search queries. MPEP § 803 states that “For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02.”.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 1-10 are under consideration in this Office action.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “304” in Figure 3. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Page 7, lines 4-8, and Page 15, line 13-Page 15, line 5, describe wt% of various elements in the PTNC material based on a total weight% of the PTNC material, but including the minimum wt% of all the materials would lead to a total wt% of at least 125%, which does not appear to make logical sense.
Appropriate correction is required.
Claim Objections
Claims 4-6 are objected to because of the following informalities:
In claim 4, line 3, “plane in” should read “plane is in”.
In claim 5, line 3, “plane in” should read “plane is in”.
In claim 6, line 3, “plane in” should read “plane is in”.
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.
Claim 7 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 7 recites the limitations of the PTNC material comprising different elements at various wt% amounts based on the total weight of the PTNC material, the wt% limitations being linked together with “and”, implying that all the wt% ranges for the different elements need to be met. However, including the minimum wt% of all the materials would lead to a total wt% of at least 125%. It is therefore unclear how it is possible for the PTNC material to comprise the claimed weight percentages of all the claimed elements based on a total weight of the material.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arif et al. (“Enhanced charge separation in dual Z-scheme Au decorated LaFeO3-g-C3N4-BiFeO3 system for efficient H2 production”, Fuel, 2022).
Regarding claim 1, Arif discloses an electrode (see e.g. Page 3, Col. 2, bottom paragraph, line 1, electrode film), comprising:
a transparent substrate (see e.g. connecting paragraph of Pages 3-4, lines 7-9, FTO glass substrate); and
a layer of a perovskite-based nanocomposite (PTNC) material at least partially covering a surface of the transparent substrate (see e.g. Page 2, Col. 1, bottom paragraph, lines 1-4, and Col. 2, 2nd paragraph, line 1, and Page 4, Col. 1, lines 6-9, LFO/BFO perovskite-based nanocomposite as photocatalytic film on FTO glass substrate);
wherein the PTNC material comprises gold (Au) nanoparticles, graphitic carbon nitride (g-C3N4) nanoparticles, and perovskite-based nanoparticles (see e.g. Scheme ` 1, Au/LFO-CN-BFO nanocomposite comprising Au nanoparticles, LaFeO3 and BiFeO3 perovskite nanoparticles, and g-C3N4 nanosheets; Page 6, Col. 1, paragraph starting “Accordingly”, lines 3-8, and Col. 2, lines 15-19).
Regarding claims 2-3, Arif discloses the transparent substrate being a fluorine doped tin oxide (FTO) glass substrate (see e.g. connecting paragraph of Pages 3-4, lines 7-9, FTO glass substrate).
Regarding claim 4, Arif discloses the Au nanoparticles present in the PTNC material being spherical nanoparticles having an average diameter of 30 to 50 nanometers (nm) (see e.g. Page 6, Col. 2, lines 15-19), and an interplanar spacing d(111) of the (111) plane being 0.236 nm as determined by X-ray diffraction (see e.g. Fig. 1a, XRD pattern peak attributed to Au (111) at 2θ value of 38.2°, equivalent to a d spacing of 0.236 nm based on Bragg’s Law 2dsinθ=λ with λ=0.15418 nm; Page 3, Col. 2, under “2.8”, lines 1-2, and Page 5, Col. 1, 3rd paragraph, lines 1-5).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Arif in view of Lu et al. (“Engineering graphitic carbon nitride (g-C3N4) for catalytic reduction of CO2 to fuels and chemicals: strategy and mechanism”, Green Chem., 2021).
Regarding claim 5, Arif teaches all the elements of the electrode of claim 1 as stated above. Arif further teaches the g-C3N4 nanoparticles present in the PTNC material being nanosheets (see e.g. Page 6, Col. 1, paragraph starting “Accordingly”, lines 5-6) and an interplanar spacing d(002) of the (002) plane being 0.322 nm as determined by X-ray diffraction (see e.g. Fig. 1a, XRD pattern peak attributed to (002) for graphitic carbon at 2θ value of 27.7°, equivalent to a d spacing of 0.322 nm based on Bragg’s Law 2dsinθ=λ with λ=0.15418 nm; Page 3, Col. 2, under “2.8”, lines 1-2, and Page 5, Col. 1, lines 3-6). Arif does not explicitly teach the nanosheets having an average thickness of 1 to 20 nm, instead only teaching stacking layers of thin nanosheets having a thickness of 80 to 100 nm (see e.g. Page 6, Col. 1, paragraph starting “Accordingly”, lines 5-6), but does teach the g-C3N4 nanosheets being used to form a photocatalyst (see e.g. Page 2, Col. 2, lines 1-3).
Lu teaches a graphitic carbon nitride (g-C3N4) photocatalyst (see e.g. Abstract) in the form of nanosheets having an ultrathin thickness of 1 nm (see e.g. Page 5420, connecting paragraph of Cols. 1-2, lines 12-16), the thin nanosheets shortening the electron transfer distance and thus facilitating the photocatalytic reaction (see e.g. Page 5410, Col. 1, bottom paragraph, lines 27-30).
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 g-C3N4 nanosheets of Arif to have an ultrathin thickness of 1 nm as taught by Lu to shorten the electron transfer distance and thus facilitate the photocatalytic reaction.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Arif in view of Isimjan et al. (WO 2019021189 A1), and further in view of Wu et al. (“Rational construction of plasmon Au assisted ferroelectric-BaTiO3/Au/g-C3N4 Z-scheme system for efficient photocatalysis”, Catal. Today, 2020).
Regarding claim 6, Arif teaches all the elements of the electrode of claim 1 as stated above. Arif further teaches the perovskite-based nanoparticles present in the PTNC material being spherical nanoparticles (see e.g. Scheme 1 and Figs. 2a, LFO and BFO nanoparticles with approximately spherical morphology; Page 6, Col. 1, paragraph starting “Accordingly”, lines 6-8). Arif does not explicitly teach the nanoparticles of the PTNC material having an average diameter of 50 to 200 nm, but does teach them forming a heterogeneous photocatalyst (see e.g. Page 2, Col. 2, lines 1-3).
Isimjan teaches a nanocomposite heterojunction photocatalyst (see e.g. Paragraph 0002) comprising an oxygen-containing, i.e. metal oxide, semiconductor, a non-oxygen containing semiconductor such as g-C3N4 and a metal particle such as gold (see e.g. Paragraph 0007 and Paragraph 0009, lines 1-3), wherein the metal oxide may have a particle size of 5 to 500 nm, or more particularly 100 to 200 nm (see e.g. Paragraph 0048, lines 14-16), encompassing or falling within the claimed range of the present invention .
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 perovskite-based, i.e. metal oxide, nanoparticles of Arif to have an average size of 5 to 500 nm or 100 to 200 nm as taught by Isimjan as particular suitable size ranges for metal oxide semiconductors used in forming nanocomposite heterojunction photocatalysts. 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. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Modified Arif does not teach an interplanar spacing d(100) of the (100) plane being in a range of 0.35 to 0.45 nm as determined by X-ray diffraction, but does teach it being a Z-scheme heterojunction photocatalyst for improved H2 evolution (see e.g. Arif Abstract).
Wu teaches a Z-scheme heterojunction photocatalyst (see e.g. Abstract) comprising Au nanoparticles coupled with the perovskite BaTiO3 and g-C3N4 (see e.g. Page 311, Col. 2, bottom paragraph, lines 1-3), the BaTiO3 perovskite exhibiting an interplanar spacing d(100) of the (100) plane of 0.399 nm (see e.g. Fig. 1 and Page 313, Col. 1, bottom paragraph, lines 8-11), this heterojunction photocatalyst providing high photocatalytic activity for H2 evolution from water (see e.g. Page 312, Col. 1, lines 3-6).
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 perovskite-based nanoparticles of modified Arif to instead comprise BaTiO3, which exhibits an interplanar spacing d(100) of 0.399 nm- as taught by Wu as an alternate suitable perovskite material for forming a Z-scheme heterojunction photocatalyst with high activity for H-2 evolution. MPEP § 2143(I)(B) states that “simple substitution of one known element for another to obtain predictable results” may be obvious.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Linh et al. (“A simple and green photoreduction approach for synthesis of Au/g-C3N4 hybrid nanocomposites with high solar light photocatalytic activity”, Semicond. Sci. Technol., 2022) in view of Luo (“Nickel sulfide/graphitic carbon nitride/strontium titanate (NiS/g-C3N4/SrTiO3) composites with significantly enhanced photocatalytic hydrogen production activity”, J. Coll. Int. Sci., 2018).
Regarding claim 1, Linh teaches an electrode (see e.g. Page 3, Col. 1, line 18, working electrode), comprising:
a transparent substrate (see e.g. Page 3, Col. 1, lines 18-19 and 23, fluorine-doped tin oxide (FTO) glass substrate); and
a layer of a nanocomposite material at least partially covering a surface of the transparent substrate (see e.g. Page 2, Col. 2, lines 7-14, and Page 3, Col. 1, lines 19-26, photocatalyst comprising Au/GCN composite coated on FTO substrate);
wherein the nanocomposite material comprises gold (Au) nanoparticles and graphitic carbon nitride (g-C3N4) nanoparticles (see e.g. Abstract and Page 2, Col. 2, line 10, Au NPs on g-C3N4 nanosheets).
Linh does not teach the nanocomposite material being perovskite-based and comprising perovskite based nanoparticles, but does generally teach perovskite materials such as SrTiO3 being used for photocatalytic applications (see e.g. Page 2, Col. 1, lines 10-13).
Luo teaches a composite photocatalyst (Abstract) in which SrTiO3 nanoparticles are coupled with g-C3N4 to form a heterojunction (see e.g. Figs. 3a-3c, and Page 186, Col. 2, under “3.3” lines 1-7), the combination of the two materials exhibiting higher photocatalytic activity than pure g-C3N4 or SrTiO3 due to the high separation efficiency of the charge carrier and transportation capabilities of the organic-inorganic composite heterojunction (see e.g. Page 185, Col. 1, lines 13-24).
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 nanocomposite of Linh to be perovskite-based with SrTiO3 nanoparticles coupled with the g-C3N4 as taught by Luo to provide higher photocatalytic activity than the g-C3N4 alone due to the high separation efficiency of the charge carrier and transportation capabilities of the organic-inorganic composite heterojunction
Regarding claims 2-3, modified Linh teaches the transparent substrate being a fluorine doped tin oxide (FTO) glass substrate (see e.g. Page 3, Col. 1, lines 18-19 and 23, fluorine-doped tin oxide (FTO) glass substrate).
Regarding claim 4, modified Linh teaches the Au nanoparticles present in the PTNC material being spherical nanoparticles having an average diameter of 10 to 15 nm (see e.g. Linh Page 3, Col. 2, lines 28-29), and an interplanar spacing d(111) of the (111) plane being 0.235 nm as determined by X-ray diffraction (see e.g. Linh Fig. 1a, Page 2, Col. 2, bottom paragraph, lines 3-4, and Page 3, Col. 1, bottom paragraph, lines 10-15, XRD pattern peak attributed to Au (111) at 2θ value of 38.2°, equivalent to a d spacing of 0.235 nm based on Bragg’s Law 2dsinθ=λ with λ=0.15406 nm).
Regarding claim 5, modified Linh teaches the g-C3N4 nanoparticles present in the PTNC material being nanosheets having an average thickness of 5 to 10 nm (see e.g. Linh Page 3, Col. 2, lines 22-23), and an interplanar spacing d(002) of the (002) plane being 0.324 nm as determined by X-ray diffraction (see e.g. Linh Fig. 1a, Page 2, Col. 2, bottom paragraph, lines 3-4, and Page 3, Col. 1, bottom paragraph, lines 3-10, XRD pattern peak attributed to GCN (002) plane at 2θ value of 27.5°, equivalent to a d spacing of 0.324 nm based on Bragg’s Law 2dsinθ=λ with λ=0.15406 nm).
Regarding claim 6, Linh as modified by Luo teaches the perovskite based nanoparticles present in the PTNC material being spherical nanoparticles having an average diameter of about 108 to 200 nm (see e.g. Luo Fig. 3b and Page 186, Col. 2, under “3.3”, lines 3-5, SrTiO3 particles shown with diameters of between about 108 and 200 nm), and an interplanar spacing d(100) of the (100) plane being 0.392 nm as determined by X-ray diffraction (see e.g. Luo Fig. 1, Page 185, Col. 2, under “2.3”, lines 1-3, and Page 186, Col. 1, under “3.1”, lines 1-7, XRD pattern peak attributed to SrTiO3 (100) plane at 2θ value of 22.7°, equivalent to a d spacing of 0.392 nm based on Bragg’s Law 2dsinθ=λ with λ=0.15418 nm)
Regarding claims 8-10, the limitations of the current density, overpotential and Tafel slope are all properties of the claimed electrode in use. MPEP § 2112.01 states “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.”. Page 29 and Table 1 of the instant specification describes the claimed electrode comprising Au nanoparticles, SrTiO3 nanoparticles and sheet-like g-C3N4 which exhibits a current density of 202.96 mA/cm2, overpotential of 0.227 V and Tafel slop of 62.36 mV/dec. Linh as modified by Luo similarly teaches the electrode comprising Au nanoparticles, SrTiO3 nanoparticles and g-C3N4 nanosheets (see e.g. Linh Page 2, Col. 2, lines 7-14; see e.g. Luo Figs. 3a-3c, and Page 186, Col. 2, under “3.3” lines 1-7), and such an electrode would therefore be expected to exhibit the same or very similar properties (e.g. current density, overpotential and Tafel slope) as that of the claimed electrode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795