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 claims 1-7 in the reply filed on 8/11/26 is acknowledged.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/11/26.
Claim Rejections - 35 USC § 112(b)
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 limitation "the air-permeable electrode" in line 2 of the claim. However, there is insufficient antecedent basis for this limitation in the claim. Specifically, it is noted that claim 5 sets forth “a gas-permeable electrode” (see claim 5 at line 2) and no air-permeable electrode. As such, it is unclear whether the air-permeable electrode in claim 7 is setting forth some other element or referring back to the previously set forth gas-permeable electrode.
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) 1, 2, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN110559853A to Zhang et al., with reference to the machine translation provided with this office action (hereinafter referred to as “ZHANG”) in view of CN110655151A to Yang et al., with reference to the machine translation provided with this office action (hereinafter referred to as “YANG”).
Regarding claim 1, ZHANG teaches a device for degrading a gaseous organic pollutant through electrochemical process (see generally ZHANG at Abstract and Fig. 1 depicting electrochemical reactor 100 configured as claimed), comprising:
an electrochemical reactor comprising a power supply, an anode, a cathode, a proton exchange membrane, an anode airflow channel and a cathode airflow channel (see ZHANG at Fig. 1 depicting reactor 100, anode 10, cathode 20, proton exchange membrane 50, anode airflow channel 30, and cathode airflow channel 40; see also ZHANG at page 4, penultimate paragraph teaching the reactor 100 including a power supply),
wherein the anode is provided in the anode airflow channel (see ZHANG at Fig. 1 depicting anode 10 in the anode airflow channel 30 as claimed); the cathode is provided in the cathode airflow channel (see ZHANG at Fig. 1 depicting cathode 20 in the cathode airflow channel 40 as claimed); the proton exchange membrane is arranged between the anode and the cathode (see ZHANG at Fig. 1 depicting proton exchange membrane 50 positioned between the anode 10 and cathode 20 as claimed); the anode, the proton exchange membrane and the cathode are clamped (see ZHANG at page 4 last paragraph teaching the layers of the reactor being clamped together).
While ZHANG teaches the surface of the anode being coated with a metal oxide including a titanium metal oxide catalyst (see ZHANG at page 6, third paragraph teaching the metal oxide catalyst including titanium oxide catalysts) in which the metal oxide catalyst can oxidize water molecules adsorbed onto the anode surface to produce reactive oxygen species (see ZHANG at page 5, first paragraph), ZHANG fails to explicitly teach the titanium oxide catalyst being a titanium suboxide material coating being provided on a surface of the anode as claimed.
However, YANG teaches a method for preparing a titanium suboxide coated anode (see YANG at Abstract) and also teaches the anode with the titanium suboxide coating being an ideal electrochemical oxidation anode material (see YANG at paragraph spanning pages 1-2).
As such, one of ordinary skill in the art would have recognized that one type of titanium oxide catalyst coating that could be employed in the device of ZHANG would be a titanium suboxide coated anode as taught by YANG. Moreover, the fact that the titanium suboxide coated anode is known to have high electrical conductivity and high oxygen evolution potential would have motivated one of ordinary skill in the art to have employed the titanium suboxide coated anode as the metal oxide containing anode in the device of ZHANG.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an anode prepared by the method of YANG as the anode in the device of ZHANG so as to provide the device having a titanium suboxide coating on the surface of the anode as claimed.
Regarding claim 2, ZHANG in view of YANG teaches the device for degrading the gaseous organic pollutant through electrochemical process wherein the surface of the anode is completely covered by the titanium suboxide material coating (see rejection of claim 1 above as to the combination of ZHANG and YANG in which the process of YANG, including the steps of anodization followed by the microwave hydrogen plasma reduction treatment – see YANG at page 2, fifth paragraph to the end of the page listing the four processing steps including the anodization and gas phase reduction step – would form a titanium oxide coating covering the entire surface of the anode and which after the plasma reduction treatment would form the titanium suboxide coating completely covering the anode as claimed.
Regarding claim 5, ZHANG in view of YANG teaches the device for degrading the gaseous organic pollutant through electrochemical process wherein the cathode is a gas-permeable electrode loaded with an oxygen reduction catalyst, and the oxygen reduction catalyst is selected from at least one of platinum, rhodium, ruthenium, palladium, nickel, cobalt oxide, iron compounds and molybdenum compounds (see ZHANG at page 2, paragraphs 3 and 5 teaching the use of a porous conductive adsorption material loaded with an iron-containing catalyst with various forms of the iron containing material recited).
Regarding claim 6, while ZHANG as modified by YANG teaches a loading of the oxygen reduction catalyst between 0.1% to 50% (see ZHANG at page 2, paragraph 7, teaching the loading of the iron-containing catalyst), ZHANG in view of YANG fails to explicitly teach the loading being between 0.1 mg/cm2 to 10.0 mg/cm2 as set forth in the claim.
However, the amount of loading of the cathode catalyst material would have been recognized to be a result effective variable which would have been obvious to one of ordinary skill in the art to optimize. Specifically, one of ordinary skill in the art would have recognized that sufficient loading of the catalyst would be needed to facilitate the desired cathode reaction. However, loading beyond the optimum amount would just add unnecessary costs to the preparation of the device and so one of ordinary skill in the art would have been motivated to have optimized the cathode catalyst loading amount so as to provide a sufficient amount to reduce the energy requirements for the electrochemical device but also have not added too much so that the proper functioning of the cathode is prevented and the cost of supplying the cathode catalyst becomes higher than needed.
Regarding claim 7, ZHANG in view of YANG teaches the device for degrading the gaseous organic pollutant through electrochemical process wherein the gas-permeable electrode is selected from one of a carbon paper electrode, carbon fiber cloth electrode, a foam nickel electrode, a foam titanium electrode, a foam titanium alloy electrode, a titanium mesh electrode, and a titanium alloy mesh electrode (see ZHANG at page 2, third paragraph from the bottom teaching the second porous conductive adsorption material electrode being carbon paper electrode).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHANG in view of YANG as applied to claim 1 above, and further in view of US Pub. No. 2023/0143743 to Sano et al., (hereinafter referred to as “SANO”).
Regarding claims 3 and 4, while ZHANG as modified by YANG teaches the device for degrading the gaseous organic pollutant through electrochemical process having a titanium suboxide coating on the anode (see rejection of claim 1 above) in which the anode if formed from a titanium sheet that undergoes the processing (see YANG at page 2, paragraph 6 discussing step 1 starting with the cleaning of a titanium sheet), ZHANG in view of YANG fails to explicitly teach the coating thickness or the anode being gas-permeable electrode selected from one of a foam titanium electrode, a foam titanium alloy electrode, a titanium mesh electrode, and a titanium alloy mesh electrode.
However, SANO teaches an anode and a method of forming an anode in which the anode is formed from a titanium based substrate formed of titanium or a titanium alloy foam (see SANO at Abstract and ¶67 teaching the formation of a foamed titanium or titanium alloy substrate) and in which the titanium substrate, instead of being anodized to form a TiO2 as taught by YANG, forms a TiO2 coating via a PVD or IP coating process followed by a reductive plasma treatment to form the titanium suboxide coating (see SANO at Fig. 4 depicting the general process and also ¶32 and ¶68).
Furthermore, SANO teaches the anode formed of the titanium suboxide material as having excellent conductivity and corrosion resistance (see SANO at ¶24) and having a film thickness in the range of 0.01 µm up to 3.0 µm (see SANO at ¶25). As such, one of ordinary skill in the art would have recognized the alternative method of forming a titanium suboxide anode as taught by SANO. Consequently, one of ordinary skill in the art would have been motivated to have used the titanium or titanium alloy foam having the titanium suboxide coating as taught by SANO in place of the anode of YANG. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the anode of SANO as an alternative titanium suboxide anode electrode instead of the anode of YANG in the device of ZHANG so as to arrive at the predictable result of having titanium suboxide coating anode with the thickness and gas-permeable metal electrode as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 18/261,077 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the pending claims are claimed by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2020/0407858 to Sano et al., teaching a titanium base material, method for producing titanium base material, electrode for water electrolysis, and water electrolysis device
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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