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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/2025 has been entered.
Status of the Claims
This is a non-final Office action in response to the applicant’s arguments and amendments filed on 11/18/2025. Claims 33-36, 39-41, 43-44, and 46-53 are pending in the current office action. Claims 33 and 53 were amended by applicant.
Status of the Rejection
The objections to claims 33 and 53 are withdrawn in view of Applicant’s amendments.
The rejections of claims 33-36, 39-41, 43-44, and 46-52 under 35 U.S.C. § 103 are withdrawn in view of applicant’s amendments.
The rejection of claim 53 under 35 U.S.C. § 103 is maintained.
New rejections of claims 33-36, 39-41, 43-44, and 46-52 are necessitated in view of applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 33-36, 39-41, 43-44, and 46-52 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement on the grounds of new matter. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 33, claim 33 recites the limitation “the regeneration voltage is between -1.5 and -2.0 V”. Support for this limitation could not be identified in the specification as originally filed. Specifically, as noted in the advisory action mailed 10/06/2025, support was only found for regeneration voltages of: -1.5 V, -1.75 V, -2.0 V, -2.25 V, -2.5 V, -2.1 to -3.5 V, -2.5 to -4 V, and -2.5 to -5 V. While Applicant has argued there exists support for the range -1.5 to -2.0 V, Applicant’s arguments are not persuasive (see Response to Arguments, below).
Claim 33 is therefore rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirements, on the grounds of inclusion of new matter not described in the specification as originally filed.
Regarding claims 34-36, 39-41, 43-44, and 46-52, claims 34-36, 39-41, 43-44, and 46-52 depend from claim 33, and therefore incorporate the new matter introduced in claim 33.
Claims 34-36, 39-41, 43-44, and 46-52 are therefore rejected under 35 U.S.C. § 112(a) for the same reasons enumerated for claim 33, above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 33-36, 39-41, 43-44, 46, 48-49, and 50-53, are rejected under 35 U.S.C. 103 as being unpatentable over Ma (US Pat. Pub. 2020/0220185 A1) in view of Ono (US Pat. Pub. 2020/0002822 A1).
Regarding claim 33, Ma teaches a method for reducing CO2 in an electrolytical system (abstract), the method comprising:
applying an operational voltage to the electrolytical system to operate CO2 reduction (“applying a current to the MEA at a first current density, to thereby reduce COx and produce a COx reduction product;” para. 6 and e.g., Fig. 18 shows the first current density corresponds to an operation voltage) for a first period of time defining an operation cycle (“current-on periods” para. 7), thereby forming carbonate ions at a cathode side of the electrolytical system and having a local carbonate ion concentration (para. 148 and Fig. 4 indicate carbonate forms at the cathode during the current-on period(s)); and
subsequently applying a regeneration voltage to the electrolytical system for a second period of time defining a regeneration cycle (“During current pauses, the cell voltage may be held at any of various values” para. 74) to force electromigration of the formed carbonate ions to an anode side of the electrolytical system (see below), wherein the second period of time is 60 seconds, a value within the claimed range (“1 minute current-off (i.e., a current pause)” para. 301 and Fig. 14);
characterized in that the regeneration voltage is lower than the operational voltage (“during a current pause, the cell's voltage is held between about 0 and 1.4” volts” para. 74, equivalent to a potential between 0 and -1.4 V i.e., a cathodic potential, as defined in the instant application, which is lower than the operational voltage of -3.0 V) and the operational voltage is about -3.0 V (Fig. 18), a value within the claimed range, and
characterized in that said method further comprises repeating the operation cycle and the regeneration cycle by alternating a voltage applied to the electrolytical system between the operational voltage and the lower regeneration voltage (“one hour of operation a cycling [sic]” para. 301 and Fig. 14).
Ma does not teach the regeneration voltage is between -1.5 and -2.0 V.
However, Ma instead teaches the regeneration voltage is between 0 and -1.4 V, a range very close to the claimed range. A range in the prior art very close to a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Furthermore, Ono teaches cathodic potentials of up to -2.5 V, a range overlapping the claimed range, are suitable for regenerating a carbon dioxide reduction catalyst (para. 77 and abstract).
As Ma and Ono each teach methods for reducing carbon dioxide comprising the cyclical application of regeneration voltages, Ma and Ono are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Ma, such that the regeneration voltage is between 0 and -2.5 V, a range fully encompassing the claimed range. A person having ordinary skill in the art would have been motivated to make this modification because Ma teaches the use of a cathodic regeneration potential and Ono teaches cathodic regeneration potentials of up to -2.5 V are suitable for regenerating carbon dioxide reduction catalysts. A range in the prior art fully encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Regarding the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system”, the instant application indicates that this limitation is the result of applying a regeneration voltage lower i.e., less cathodic, than the operational voltage to the cathode (see e.g., p. 4 lines 1-3).
Ma (and modified Ma) teach the regeneration potential is less cathodic than the operational voltage. Furthermore, Ma indicates the applied regeneration potential between results in the removal of detrimental species from the cathode surface (see paras. 301 and 303).
The method of Ma (and modified Ma) thus necessarily results in forcing electromigration of the formed carbonate ions to an anode side of the electrolytical system. Ma (and modified Ma) thus render the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system” obvious.
Alternatively, it is considered that a person having ordinary skill in the art would find it obvious that the method of Ma (and modified Ma) will result in forcing electromigration of the formed carbonate ions to an anode side of the electrolytical system, because Ma (and modified Ma) teach cathodic regeneration voltages fully within the range indicated by the instant specification to result in this forced electromigration i.e., potentials of less than -5 V. Ma (and modified Ma) thus render the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system” obvious. (see MPEP § 2112(I) and 2112.02(I)).
Regarding claim 34, Ma further teaches that the duration of the operation cycle i.e., 4.5 min, (“1 minute current-off (i.e., a current pause) for every 4.5 minutes current applied was applied.” para. 301) is chosen to maintain the local carbonate ion concentration at the cathode side below a carbonate solubility limit (see below).
Ma teaches the duration of the operation cycle is 270 s (“4.5 minutes” para. 301). The instant specification indicates an operation cycle with a duration of 1-1200 s results in maintaining the local carbonate ion concentration at the cathode side below a carbonate solubility limit (p. 5 lines 5-8).
Ma thus necessarily teaches the limitation “the duration of the operation cycle is chosen to maintain the local carbonate ion concentration at the cathode side below a carbonate solubility limit”, because Ma teaches the duration of the operation cycle is within the range the instant application indicates results in this limitation.
Alternatively, because Ma teaches an operation cycle duration within the range the instant application indicates results in maintaining the local carbonate ion concentration at the cathode side below a carbonate solubility limit, a person having ordinary skill in the art would have found it obvious that the method of Ma results in maintaining the local carbonate ion concentration at the cathode side below a carbonate solubility limit.
Regarding claims 35 and 36, modified Ma teaches the limitations of claim 33, as described above. Ma further teaches the first period of time is 270 s (“current-off (i.e., a current pause) for every 4.5 minutes current applied was applied.” para. 301), a value within the claimed ranges of 1-1200 s (claim 35) and 60-300 s (claim 36).
Regarding claim 39, modified Ma teaches the limitations of claim 33, as described above. Ma further teaches each operation cycle is performed for the same duration (Fig. 1a and para. 301).
Regarding claim 40, modified Ma teaches the limitations of claim 33, as described above. Ma further teaches each regeneration cycle is performed for the same duration (Fig. 1a and para. 301).
Regarding claim 41, modified Ma teaches the limitations of claim 33, as described above.
Ma further teaches the duration of each operation cycle may vary (“the intervals and/or pause durations may change over the course of operation.” Para. 72).
While Ma does not explicitly teach the range over which the duration of each operation cycle may vary, Ma teaches durations of 180-1800 s, a range overlapping the claimed range, are suitable as operation cycle durations (“3-30 minutes” bottom entry on table between paras. 71 and 72).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use durations between 180 and 1800 s, a range overlapping the claimed range, as the variable operation cycle durations in the method of Ma, because Ma teaches these are suitable operation cycle durations. A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Regarding claim 43, modified Ma teaches the limitations of claim 33, as described above. Ma further teaches that the regeneration voltage is chosen to obtain a CO2 reduction current of 0 mA/cm2, a value within the claimed range (“the applied current during at least a portion of a current pause period is zero” para. 7).
Regarding claim 44, modified Ma teaches the limitations of claim 33, as described above.
Ma further teaches, in a separate embodiment, the operational voltage is -3.5 V, a value within the claimed range (Fig. 20).
Regarding claim 46, Ma teaches the limitations of claim 33, as described above. Ma further teaches the electrolytical system is a membrane electrode assembly (MEA) (“An MEA with a copper cathode catalyst” para. 301) comprising a gas diffusion electrode serving as a cathode (para. 148).
Regarding claim 48, Ma further teaches the cathode comprises a metal layer deposited on a substrate (para. 243).
Regarding claim 49, Ma further teaches the cathode comprises a silver layer (paras. 160, 163) deposited on a carbon paper substrate (para. 283).
Regarding claim 50, modified Ma teaches the limitations of claim 48, as described above. Ma further teaches the cathode comprises a copper layer (para. 301) deposited on a PTFE substrate (paras. 167-168).
Regarding claim 51, modified Ma teaches the limitations of claim 33, as described above. Ma further teaches the electrolytical system comprises an anolyte (“anode water reservoir 119” Fig. 1 and para. 84).
Regarding claim 52, Ma further teaches the anolyte is an aqueous solution comprising salts (para. 84 and Fig. 1d).
Modified Ma does not explicitly teach the salts comprise one or more alkaline compounds, said alkaline compounds comprising one or more alkali metal cations selected from lithium, sodium, potassium, rubidium, cesium and any combination thereof.
However, Ono further teaches that potassium hydroxide (“aqueous potassium hydroxide solution (concentration 1 M KOH) was made to flow through the cathode flow path 21 and the anode flow path 12” para. 107), an alkaline compound comprising potassium, is used as the salt used in the anolyte, which provides the benefit of reducing electrical resistance (“In order to reduce an electrical resistance of the electrolytic solution, it is preferable to use, as the anode solution and the cathode solution, an alkaline solution in which an electrolyte such as a potassium hydroxide or a sodium hydroxide is dissolved in high concentration.” para. 42).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use potassium hydroxide, an alkaline compound comprising potassium, as one of the salts in the anolyte used in the method of Ma, as taught by Ono. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of lowering the resistance of the electrolytic solution, as taught by Ono. Furthermore, use of a material (i.e., potassium hydroxide) known in the art as suitable for a purpose (the salt in an anolyte solution for use in an MEA-type CO2 electrolyzer) establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding claim 53, Ma teaches a method for reducing CO2 in an electrolytical system (abstract), the method comprising:
applying an operation voltage to the electrolytical system to operate CO2 reduction (“applying a current to the MEA at a first current density, to thereby reduce COx and produce a COx reduction product;” para. 6 and e.g., Fig. 18 shows the first current density corresponds to an operation voltage) for a first period of time defining an operation cycle (“current-on periods” para. 7), thereby forming carbonate ions at a cathode side of the electrolytical system and having a local carbonate ion concentration (para. 148 and Fig. 4 indicate carbonate forms at the cathode during the current-on period(s)); and
subsequently applying a regeneration voltage to the electrolytical system for a second period of time defining a regeneration cycle (“During current pauses, the cell voltage may be held at any of various values” para. 74) to force electromigration of the formed carbonate ions to an anode side of the electrolytical system (see below), wherein the second period of time is 60 seconds, a value within the claimed range (“1 minute current-off (i.e., a current pause)” para. 301 and Fig. 14);
characterized in that the regeneration voltage is lower than the operational voltage (“during a current pause, the cell's voltage is held between about 0 and 1.4” volts” para. 74, equivalent to a potential between 0 and -1.4 V as defined in the instant application, which is lower than the operational voltage of -3.0 V) and the operation voltage is about -3.0 V (Fig. 18), a value within the claimed range, and
in that said method further comprises repeating the operation cycle and the regeneration cycle by alternating a voltage applied to the electrolytic system between the operational voltage and the lower regeneration voltage (“one hour of operation a cycling [sic]” para. 301 and Fig. 14).
Ma does not teach the regeneration voltage is -2.0 V.
However, Ono teaches cathodic potentials of up to -2.5 V, a range overlapping the claimed range, are suitable for regenerating a carbon dioxide reduction catalyst (para. 77 and abstract).
As Ma and Ono each teach methods for reducing carbon dioxide comprising the cyclical application of regeneration voltages, Ma and Ono are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Ma, such that the regeneration voltage is between 0 and -2.5 V, a range overlapping the claimed range. A person having ordinary skill in the art would have been motivated to make this modification because Ma teaches the use of a cathodic regeneration potential and Ono teaches cathodic regeneration potentials of up to -2.5 V are suitable for regenerating carbon dioxide reduction catalysts. A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05).
Regarding the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system”, the instant application indicates that this limitation is the result of applying a regeneration voltage lower i.e., less cathodic, than the operational voltage to the cathode (see e.g., p. 4 lines 1-3).
Ma (and modified Ma) teach the regeneration potential is less cathodic than the operational voltage. Furthermore, Ma indicates an applied potential between 0 and -1.4 V results in the removal of detrimental species from the cathode surface (see paras. 301 and 303).
The method of Ma (and modified Ma) thus necessarily results in forcing electromigration of the formed carbonate ions to an anode side of the electrolytical system. Ma (and modified Ma) thus render the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system” obvious.
Alternatively, it is considered that a person having ordinary skill in the art would find it obvious that the method of Ma (and modified Ma) will result in forcing electromigration of the formed carbonate ions to an anode side of the electrolytical system, because Ma (and modified Ma) teach cathodic regeneration voltages fully within the range indicated by the instant specification to result in this forced electromigration. Ma (and modified Ma) thus render the limitation “to force electromigration of the formed carbonate ions to an anode side of the electrolytical system” obvious. (see MPEP § 2112(I) and 2112.02(I)).
Claim 47 is are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Ono, as applied to claim 33, and further in view of Gabardo et al. (“Continuous Carbon Dioxide Electroreduction to Concentrated Multi-carbon Products Using a Membrane Electrode Assembly” Joule 3, 2777–2791, 2019).
Regarding claim 47, modified Ma teaches the limitations of claim 33, as described above.
Modified Ma does not teach the electrolytical system is a flow cell system comprising a liquid catholyte and a gas diffusion electrode serving as a cathode.
However, Gabardo teaches a CO2 electrolyzer (title) comprising a flow cell system comprising a liquid catholyte (“Three electrolyzer configurations were compared: an alkaline flow cell (1 M KOH catholyte and anolyte, Figure 1A)” p. 2779 para. 3 and Fig. 1A) and a gas diffusion electrode (GDE) serving as a cathode (Fig. 1A shows the alkaline flow cell has a GDE serving as the cathode).
As Gabardo teaches a method of electrolytically reducing CO2, Gabardo is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Ma, such that the electrolytical system is a flow cell system comprising a liquid catholyte and a gas diffusion electrode serving as a cathode, as taught by Gabardo. A person having ordinary skill in the art would have been motivated to make this modification as Gabardo teaches a flow cell system comprising a liquid catholyte and a gas diffusion electrode (GDE) serving as a cathode i.e., an alkaline flow cell configuration, is a suitable alternative to an MEA configuration for a CO2 electrolyzer. Substituting prior art elements to yield predictable results establishes a prima facie case of obviousness. (MPEP § 2143(I)(B)).
Response to Amendment
The affidavits under 37 CFR 1.132 filed 09/29/2025 and 11/18/2025 are insufficient to overcome the rejection of claims 33-36, 39-41, 43-44, and 46-53 based upon 35 U.S.C. § 103 as set forth in the last Office action for the reasons described in the response to arguments, below.
Response to Arguments
Applicant’s arguments, see Remarks p. 1, filed 11/18/2025, with respect to the objections to claims 33 and 53 have been fully considered and are persuasive. The objections to claims 33 and 53 have been withdrawn.
Applicant’s arguments, see Remarks p. 1-2, filed 11/18/2025, with respect to the rejections of claims 33-36, 39-41, 43-44, and 46-52 under 35 U.S.C. § 112(a) have been fully considered, but they are not persuasive.
Applicant’s arguments, see Remarks p. 2-4, filed 07/18/2025, with respect to the rejections of claims 33-36, 39-41, 43-44, and 46-53 under 35 U.S.C. § 103 have been fully considered, but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 1-2 that the specification as originally filed provides support for the limitation “the regeneration voltage is between -1.5 and -2.0 V” as recited in amended claim 33. Specifically, Applicant argues that the statement “the regeneration voltage is lower than the operational voltage” provides implicit support for a range of regeneration voltages less than i.e., more anodic than, -3.0 V, and that the specifications recitation of data points at -1.5, -1.75, and -2.0 V provide a sufficient description to support the range between -1.5 V and -2.0 V based on the precedent of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Examiner’s Response #1
Examiner respectfully disagrees. At issue is whether the specification as originally filed provides an implicit or inherent disclosure of a regeneration voltage range between -1.5 and -2.0 V (MPEP § 2163.05). Specifically, in order to provide support for a range not expressly recited in the original disclosure, the disclosure must “take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure” (MPEP § 2163.05(III)).
In the instant case, Applicant first argues that the specification provides implicit support for a range between 3.0 V and -3.0 V, because the specification recites “the regeneration voltage is lower than the operational voltage”. Examiner disagrees with this assessment. Specifically, while the phrase “the regeneration voltage is lower than the operational voltage” may imply a particular range if combined with a well-defined operation voltage:
a) this range will necessarily be open ended i.e., there is no minimum value implied by “lower than” as used in the current context; and
b) taken as a whole, there is no single “operational voltage” described in the original specification that would provide a maximum value to the phrase the regeneration voltage is lower than the operational voltage”.
In particular, while Applicant asserts this phrase requires the regeneration voltage to be less than -3.0 V, the specification explicitly recites “the regeneration voltage can be between -2.5 V and -5.0 V” on p. 8 line 22, which explicitly contradicts Applicant’s assertion. Furthermore, the highest “operational voltage” described in the specification is -4.5 V (p. 8 line 20) i.e., the highest “regeneration voltage” referred to in the specification is greater than the highest “operational voltage”, which contradicts Applicant’s assertion the phrase “the regeneration voltage is lower than the operational voltage” implies any particular range whatsoever.
Furthermore, even if in arguendo, the phrase “the regeneration voltage is lower than the operational voltage” is considered to implicitly provide support for any regeneration voltage lower than an arbitrary operational voltage recited in the specification e.g., <-3.0 V, this would not be considered sufficient, in combination with the three data points disclosed within the claimed range i.e., -1.5, -1.75, and -2.0 V, to provide support for the range between -1.5 and -2.0 V.
Specifically, the three data points supported by the instant specification cannot reasonably be considered by a person having ordinary skill in the art to provide support for the entirety of the range between -1.5 and -2.0 V. While applicant refers to In re Wertheim for support, that decision involved a closed range i.e., 25 to 60%, with several data points within said closed range and the claimed range. This is not the fact pattern present in the instant case. Rather, the instant specification provides an open range with several data points within the open range and the claimed range. This fact pattern is akin to General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018), wherein a few data points within a claimed range were not found to provide adequate written description for said claimed range when accompanied by an open range in the specification (MPEP § 2163.05(III)).
For the above reasons, Applicant’s argument is not persuasive.
Applicant’s Argument #2
Applicant argues on p. 2-4 that Applicant’s invention achieves unexpected results that overcome the prima facie case of obviousness established under Ma in view of Ono. Specifically, Applicant argues that the evidence provided in the declarations filed on 09/29/2025 and 11/18/2025 demonstrates that the claimed regeneration voltages of -1.5 to -2.0 V (claim 33) or -2.0 V (claim 53) provide the unexpected benefit of a near zero current density during the regeneration process (see Declaration paras. 7 and 8).
Examiner’s Response #2
Examiner respectfully disagrees. At issue is whether the limitations “the regeneration voltage is between -1.5 and -2.0 V” (claim 33) or “the regeneration voltage is -2.0 V” (claim 53) alone or in combination with the other claim limitations, result in unexpected results sufficient to overcome the prima facie case of obviousness established by Ma in view of Ono.
In order for unexpected results to overcome a prima facie case of obviousness, Applicant must provide evidence that has a nexus to the claimed invention (MPEP § 716.01(b)), such evidence must be commensurate in scope with the claims (MPEP § 716.02(d)), the evidence must demonstrate a benefit over the closest prior art (MPEP § 716.02(e)), and Applicant must demonstrate that any such benefit demonstrated is, in fact, unexpected (MPEP § 716.02(b)(I) and 716.02(c)).
In the instant case, Applicant has provided evidence that the beneficial result of a near zero current density during the regeneration process occurs at voltages of -1.50, -1.75 V, and -2.0 V, but does not occur at voltages of -2.25 V or -2.5 V (see declaration filed 09/29/2025 or 11/18/2025 p. 2) i.e., that the alleged unexpected benefit requires a regeneration potential less than -2.25 V. It is therefore considered that the evidence provided has a nexus to the claimed invention, because the claims recite voltages at which the alleged unexpected benefit is demonstrated to occur.
However, the evidence provided is not considered to be commensurate in scope with claims, because the provided evidence does not show the asserted benefit of reducing the current density during the regeneration process does not occur when potentials below -1.5 V are applied. I.e., while the provided evidence supports the alleged unexpected benefit requires a potential of -2.0 V or below, it does not demonstrate this alleged unexpected benefit does not occur at potentials below -1.5 but within the prior art ranges (i.e., 0 to -1.4 V as recited by Ma or 2.5 to -2.5 V as recited by Ono).
Furthermore, the evidence provided by Applicant does not demonstrate a benefit over the closest prior art of record, which is considered to be the method of Ma. Specifically, as Ma teaches a regeneration voltage of up to -1.4 V, Applicant must, at a minimum, provide evidence that the alleged benefit of “near zero current density” during the regeneration cycle does not occur when the regeneration potential is -1.4 V or less, or that a regeneration potential of -1.4 V or less, alone or in combination with other claimed limitations, would otherwise be unsuitable for performing the method as claimed.
Furthermore, Applicant has not explained why the “near zero current density” at potentials between -1.5 and -2.0 V would be considered “unexpected” relative to potentials outside of this range. Specifically, it would generally be expected by a person having ordinary skill in the art that a lower applied potential would result in a lower current density. It is therefore unclear how the benefit asserted by applicant could reasonably be considered “unexpected”, particularly in light of Ono’s teaching of potentials within this range as suitable for regenerating a CO2 electrolyzer.
For at least the above reasons, Applicant’s argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795