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 .
Response to Arguments
Applicant’s arguments, see Pg. 4, filed 02/26/2026, with respect to the 35 USC 112(b) rejections have been fully considered and are persuasive. Support for determining a percentage of photocatalyst based on the number of particles by the method outlined in par. [0066]-[0068] of the instant specification is sufficient to clarify the term for a skilled artisan. The 35 USC 112(b) of 12/09/2025 has been withdrawn.
Applicant's remaining arguments filed 02/26/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 5 the prior art Dukes does not teach or suggest the single metal catalyst atom is bound proximal to the single Fe, Co, Mn, Cr, or W atom. Applicant argues that Dukes stating on Pg. 58 that gold atoms being in solution or weakly adsorbed to the surface do not provide evidence they are proximal.
However, the term “proximal” is not given an expressed definition in the instant specification and accordingly the term was interpreted broadly. In the instant case, Dukes teaches gold and iron-doped titanium oxide ultra-nanoparticles, where gold facilitates electron transfer between iron atoms. Examiner acknowledges Dukes describes on Pg. 58 gold atoms can remain in solution or be weakly bound to the surface. However this is in reference to removal of solvent following synthesis and in no way precludes gold being present within the photocatalyst material. In fact, gold must be present given its electron transfer effects with iron, as stating on Pg. 58 of Dukes.
Therefore, given that the gold single metal catalyst atom is in the same material and proximal enough to facilitate electron transfer, and given that the claims nor the instant invention as a whole limit the term “proximal” to a defined distance, the teaching of Dukes meets the limitation as claimed.
Applicant argues on Pg. 5-6 that the secondary references Choi, Kaur, Tsai, and Hejazi do not remedy the deficiencies of the prior art Dukes teaching the proximity of the single metal catalyst atom, thus the cited references provide no suggestion or motivation to modify the prior art Dukes.
However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Dukes anticipates the method of instant claim 1, and where Dukes is subsequently deficient in addressing dependent claims, the secondary references were applied and motivations for combining were provided.
Applicant argues on Pg. 7 the instant invention displays superior quantum efficiency.
However, in response to applicant's argument that the catalyst of the instant invention obtains superior quantum efficiency, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., quantum efficiency) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 1-2, 14, 19, 22-26 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dukes (Dissertation, 2013; cited in IDS dated 07/24/2023).
Regarding claim 1, Dukes teaches an gold and iron-doped titanium oxide ultrananoparticle where the iron atoms are adsorbed onto the [001] faces in the TiO2 particles within the oxygen vacancies (Pg, iii., Abstract; Pg. 60, Summary). Dukes teaches single atoms of gold are incorporated into the material, that the gold atoms exist in the cationic state (Au3+) and that the Au atoms function as catalyst sites, being active in photocatalytic oxidation of methanol (Pg. 50, 52, 55, 58, 60; Figure 5.4). Dukes teaches the addition of Au atoms does not block iron sites but does result in transference of electrons between iron and gold atoms such that the single metal catalyst atom (Au) must be near the single iron atom to facilitate electron transfer (Pg. 58).
Regarding claim 2, Dukes teaches the single metal atom catalyst is gold (Au) (Pg. 50-51).
Regarding claim 14, Dukes teaches the single atom doped into the TiO2 in addition to the catalyst atom is iron (Pg. 48-49).
Regarding claim 19, Dukes teaches the TiO2 particles are ultra-nanoparticles, with sizes less than 2 nm (Pg. 24-25; Fig. 3.1; Table 3.1). Dukes teaches an example where the TiO2 nanoparticles has a size of 0.86 nm (Pg. 30).
Regarding claim 22, Dukes teaches the engineered defect should be located on the (001) anatase TiO2 surface as those sites are the least stable and the most photoactive (Pg. 11-12; Table 1.1).
Regarding claim 23, Dukes teaches the TiO2 particles are in the anatase phase (Pg. 25-26).
Regarding claim 24, Dukes teaches the TiO2 anatase crystals are in a truncated bipyramid particle shape (Figure. 1.3; Pg. 8).
Regarding claim 25, Dukes anticipates the photocatalyst of claim 1 and Dukes further teaches the Au-doped Fe-TiO2 particles are prepared as a bulk material comprising a plurality of particles where about 1 Au atom is present for every 300 Ti atoms (Pg. 50-55). Dukes teaches the particles are photocatalytic (Pg. 51-52). The instant specification describes a composition as “ is typically a mixture of particles, some of which are the photocatalyst and some of which are other particles that are otherwise identical to the photocatalyst but lacking the single metal catalyst atom” [0044]. Accordingly, Duke teaching a plurality of Au-doped Fe-TiO2 particles that are photocatalytic, where Au is not present for every Ti particle, meets the limitation “a composition comprising a plurality of photocatalysts of claim 1.”
Regarding claim 26, Dukes anticipates the photocatalyst of claim 1 and Dukes further teaches the Au-doped Fe-TiO2 particles are prepared as a bulk material comprising a plurality of particles where about 1 Au atom is present for every 300 Ti atoms (Pg. 50-55). Dukes teaches the particles are photocatalytic (Pg. 51-52). The instant specification describes a composition as “ is typically a mixture of particles, some of which are the photocatalyst and some of which are other particles that are otherwise identical to the photocatalyst but lacking the single metal catalyst atom” [0044]. Accordingly, Duke teaching a plurality of Au-doped Fe-TiO2 particles that are photocatalytic, where Au is not present for every Ti particle but only present in about 1 TiO2 particles for every 300 TiO2 particles, meets the limitation “the plurality of the photocatalysts is mixed with a plurality of otherwise identical particles that lack the single metal catalyst atom but are otherwise identical to the photocatalyst.”
Regarding claim 28, Dukes anticipates the photocatalyst of claim 1 and the composition of claim 25 and Dukes further teaches the photocatalyst can be prepared as a solution (Pg. 55-56).
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 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Dukes (Dissertation, 2013) in view of Choi et al. (J. Mater. Res., Vol. 25, No. 1, Jan 2010).
Regarding claim 3, Dukes anticipates the photocatalyst of claim 1 and the claim further requires the single metal catalyst atom is Pt, to which Dukes is silent.
Choi teaches a TiO2 material co-doped with two metal ions, which includes cationic Pt (Pt4+ and Pt2+), that are effectively incorporated into Ti(IV) sites of interstitial vacancy sites within the TiO2 material (Abstract; Pg. 156, Conclusion).
Advantageously, cooping TiO2 with two metals, where one metal is Pt(II), provides increased photocatalytic activity compared to undoped samples (Fig. 9, Pg. 155, left and right col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate Pt into the photocatalyst of Dukes in order to increase photocatalytic activity as taught by Choi.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Dukes (Dissertation, 2013) in view of Kuar et al. (J. NonCrystalline Solids 2011, 357, 3399-3404).
Regarding claims 20-21, Dukes anticipates the photocatalyst of claim 1 and the claims further required the ultra-nanoparticle contains between 20 formula units of TiO2 and 1000 formula units of TiO2 (Claim 20) and between 50 formula units of TiO2 and 200 formula units of TiO2 (Claim 21). Dukes teaches the TiO2 crystal structures display 5-6 formula unit layers of TiO2 (Pg. 27).
Kuar teaches the preparation of TiO2 nanoparticles that are nanometer in size that contain 454 units of TiO2 (Abstract; Pg. 3400, left col.). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Kuar (454 formula units) overlaps with the claimed range (between 20 formula units of TiO2 and 1000 formula units of TiO2 (Claim 20) and between 50 formula units of TiO2 and 200 formula units of TiO2 (Claim 21). Therefore, the range in Kuar renders obvious the claimed range.
Advantageously, control of the TiO2 size and formula units provides particles with low atomic variance and a ordered arrangement of Ti coordination environments (Pg. 3402-3404, Discussion).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide TiO2 particles with 454 formula units in the photocatalyst of Dukes in order to provide particles with low atomic variance and ordered Ti coordination environments, as taught by Kuar.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Dukes (Dissertation, 2013) in view of Tsai et al. (ACS Catal. 2016, 6, 6551-6559).
Regarding claim 27, Dukes anticipates the photocatalyst of claim 1 and the composition of claims 25 and 26. The claim further requires “the photocatalyst is present in an amount by weight or by number of particles of between 2% and 100%,” to which Dukes is silent.
Tsai teaches molybdenum doped anatase TiO2 material used as a catalyst support for single Pt atoms that comprises 10 to 20 wt.% Pt (Abstract; Pg. 6555, 3.3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Tsai (10-20 wt.% Pt catalyst) overlaps with the claimed range (between 2% and 100% by weight). Therefore, the range in Tsai renders obvious the claimed range.
Advantageously, catalysts containing 20 wt.% Pt display improved mass activity and stability compared to catalysts with lower Pt loading, while the Pt loaded catalysts in general display excellent photocatalytic activity (Pg. 6557-6558, Conclusion).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide 10-20 wt.% Pt in the photocatalyst of Dukes in order to improve mass activity and stability, as taught by Tsai.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Dukes (Dissertation, 2013) in view of Hejazi et al. (Adv. Mater. 2020, 32, 1908505).
Regarding claim 29, Dukes anticipates the photocatalyst of claim 1 and the claim further requires “a film” to which Dukes is silent.
Hejazi teaches a thin film stabilized single-atom Pt catalyst on TiO2 (Abstract).
Advantageously, preparing the a single-atom Pt catalyst as a film provides high surface area density to be established and allows the photocatalytic effected to be optimized (Pg. 2, left col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to prepare a film of the photocatalyst of Dukes in order to provide high surface area density and optimize the photocatalytic effect of the material, as taught by Hejazi.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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/J.W.T./Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
4/2/2026