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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 19-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. in particular, how to electrolytically reduce carbon dioxide into diamond.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In regard to the present invention, when considering (A) the breadth of the claims: the claims are substantially broad as the claims recite an apparatus with a cathode, anode, and electrolytic solution where the electrodes can be any material of any size and the particular manner of cell operation is not described.
In regard to the present invention, when considering (B) the nature of the invention: the invention is drawn to the electrolytic reduction of carbon dioxide into diamond. While electrolytic reduction of carbon dioxide is straightforward, forming diamond from such a technique is not, which makes this complex and not well known.
In regard to the present invention, when considering (C) the state of the prior art: the prior art teaches that the reduction of carbon dioxide into carbon materials such as graphene and graphite nanoplatelets (Dryfe [0028]) but despite the procedure performed in the prior art being ostensibly the same as claimed, diamond is never previously reported. Barring any description of notable inventive steps, the examiner considers the product to be graphene as opposed to diamond.
In regard to the present invention, when considering (D) the level of one of ordinary skill, in the method steps of the claims would be readily understood by one of ordinary skill in the art; however, one of ordinary skill in the art would have expected these method steps to produce carbon materials that are not diamond. More detailed instructions would be required to explain how diamond is formed instead of the expected graphite, graphene, or other non-diamond carbon material.
In regard to the present invention, when considering (E) the level of predictability in the art, similar to as discussed above, the examiner maintains that the formation of diamond is not predictable from the procedure described.
In regard to the present invention, when considering (F) the amount of direction provided by the inventor, the specification merely states the claimed steps without additional examples or direction.
In regard to the present invention, when considering (G) the existence of working examples, the disclosure appears to provide a single Raman spectrum collected of the product that could reasonably be interpreted as diamond, but fails to provide context for how the sample was collected is anomalous given the prior art that does not report diamond.
In regard to the present invention, when considering (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure , the examiner maintains that a great deal of experimentation would be needed as the claimed product is a notably difficult product to synthesize at atmospheric pressure and no distinct steps are claimed for operation of the electrochemical cell that differ from what a person of ordinary skill in the art would expect. This would lead to an undue amount of experimentation to change cell configuration and unknown additional steps to achieve the claimed diamond product, if it can be achieved at all.
Therefore, in consideration of all the factors above, the examiner cannot consider the claims enabled in regard to the claimed production of diamond as one of ordinary skill in the art would not know how to take standard steps and generate a non-standard product from the disclosure provided by the applicant without significant experimentation and likely would not be able to generate the diamond at all.
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 regard 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 regard as his invention.
Claims 19-29 and 36-37 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.
In regard to claim 19, the term “carbon material” in reference to the product of the method is a broad term, while in the same claim “diamond” is claimed as the product obtained. It is not clear if the carbon material product is exclusively diamond or another type of carbon material. For the sake of further investigation, “carbon material” in claim 19 will be interpreted as “diamond.”
Claim 23 recites the limitation "supporting electrolyte". There is insufficient antecedent basis for this limitation in the claim. The supporting electrolyte is recited in claim 22, but not in claim 19, from which claim 23 depends.
Claim 24 recites the limitation "supporting electrolyte". There is insufficient antecedent basis for this limitation in the claim. The supporting electrolyte is recited in claim 22, but not in claim 19, from which claim 24 depends.
In regard to claim 27, the term “Ordinary temperature and pressure” in claim 27 is a relative term which renders the claim indefinite. The term “Ordinary temperature and pressure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the sake of further examination, this will be interpreted as “room temperature and atmospheric pressure”.
In regard to claims 36 and 37, the use of the phrase “carbon material” lacks antecedent basis as claim 30, upon which claims 36 and 37 depend, does not make mention of “carbon material” only of specifically diamond.
Claims 20-22, 25-26 and 28-29, are included in the rejection as they depend from a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 28-29 and 36-37 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 28-29 and 36-37 broaden the claimed carbon material as claims 19 and 30 (the claims upon which claims 28-29 and 36-37 depend respectively) recite the carbon material is diamond. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 19 and 21-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20160115601 A1 (henceforth referred to as "Dryfe").
In regard to claim 19, Dryfe teaches in [0028] a process for producing graphene and/or graphite nanoplatelet structures (Carbon materials). The process includes electrochemical reduction of carbon oxide (e.g., carbon dioxide) in an electrochemical cell. In [0029]-[0031] the cell is shown to contain a negative electrode (cathode) and a positive electrode (anode) and an electrolyte. In [0087] they teach that the ionic liquid can be 1-butyl-3-methylimidazolium tetrafluoroborate (imidazolium-based ionic liquid). In [0032] they teach that their process can be used at room temperature, which is within 0 to 100°C.
In regard to claim 21, Dryfe teaches in [0087] that the ionic liquid is selected from a group containing 1-butyl-3-methylimidazolium tetrafluoroborate.
In regard to claim 22, Dryfe teaches in [0090] that suitable ionic solutions involve the mixing of an alkali metal bicarbonate, naming NaHCO3 explicitly, and alkali metal carbonate, naming Li2CO3, Na2CO3, and K2SO3 explicitly, among other salts. They describe in [0088] that particularly suitable ion-containing liquids include eutectic solvents formed by one or more salts, as well as between salts/salt hydrates and hydrogen bond-donors.
In regard to claim 23, Dryfe teaches in [0090] that suitable ionic solutions involve the mixing of an alkali metal bicarbonate, naming NaHCO3 explicitly, and alkali metal carbonate, naming Li2CO3, Na2CO3, and K2SO3 explicitly, among other salts. They describe in [0088] that particularly suitable ion-containing liquids include eutectic solvents formed by one or more salts, as well as between salts/salt hydrates and hydrogen bond-donors.
In regard to claim 24, Dryfe teaches in [0156] the use of LiBF4 as a supporting electrolyte.
In regard to claim 25, Dryfe teaches in [0154] that the supporting electrolyte in an example cell is at a concentration of 0.1 M which is within the claimed range.
In regard to claim 26, Dryfe teaches in [0080] that a reference electrode may be used and that it may be an Ag/AgBF4 electrode specifically. They further teach in [0148] that a potential of -1.3 V is applied which is within the claimed -5.0 to -0.5 V.
In regard to claim 27, Dryfe teaches in [0032] that their electrochemical process can be performed at room temperature and atmospheric pressure.
In regard to claim 28, Dryfe teaches in [0131] that they synthesize graphene and show an SEM image of it in figure 7.
In regard to claim 29, Dryfe teaches in [0028] a process for producing graphene and/or graphite nanoplatelet structures. This is the same process as claimed and therefore the formation of diamond is anticipated.
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.
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.
Claims 20 and 30-37 are rejected under 35 U.S.C. 103 as being unpatentable over Dryfe.
In regard to claim 20, Dryfe teaches in [0065] that the negative electrode (cathode) is preferably a transition metal. It would have been obvious to have selected silver as the negative electrode as silver is a transition metal. And in [0077] Dryfe teaches that the positive electrode (anode) is preferably platinum mesh.
In regard to claim 30, Dryfe teaches in [0029]-[0031] an electrochemical cell that is shown to contain a negative electrode (cathode) and a positive electrode (anode) and an electrolyte. In [0087] they teach that the ionic liquid can be 1-butyl-3-methylimidazolium tetrafluoroborate (imidazolium-based ionic liquid). Dryfe teaches in [0065] that the negative electrode (cathode) is preferably a transition metal. It would have been obvious to use silver as silver is a transition metal. And in [0077] Dryfe teaches that the positive electrode (anode) is preferably platinum mesh.
In regard to claim 31, Dryfe teaches in [0087] that the ionic liquid is selected from a group containing 1-butyl-3-methylimidazolium tetrafluoroborate.
In regard to claim 32, Dryfe teaches in [0090] that suitable ionic solutions involve the mixing of an alkali metal bicarbonate, naming NaHCO3 explicitly, and alkali metal carbonate, naming Li2CO3, Na2CO3, and K2SO3 explicitly, among other salts. They describe in [0088] that particularly suitable ion-containing liquids include eutectic solvents formed by one or more salts, as well as between salts/salt hydrates and hydrogen bond-donors.
In regard to claim 33, Dryfe teaches in [0090] that suitable ionic solutions involve the mixing of an alkali metal bicarbonate, naming NaHCO3 explicitly, and alkali metal carbonate, naming Li2CO3, Na2CO3, and K2SO3 explicitly, among other salts. They describe in [0088] that particularly suitable ion-containing liquids include eutectic solvents formed by one or more salts, as well as between salts/salt hydrates and hydrogen bond-donors.
In regard to claim 34, Dryfe teaches in [0156] an example cell that has LiBF4 as the supporting electrolyte.
In regard to claim 35, Dryfe teaches in [0154] that the supporting electrolyte in an example cell is at a concentration of 0.1 M which is within the claimed range.
In regard to claim 36, Dryfe teaches in [0131] that they synthesize graphene and show an SEM image of it in figure 7.
In regard to claim 37, In regard to claim 29, Dryfe teaches in [0028] a process for producing graphene and/or graphite nanoplatelet structures. This is the same process as claimed and therefore the formation of diamond is considered to occur.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY SABATOSE whose telephone number is (571)272-9893. The examiner can normally be reached 8:00-6:00 M-Th.
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/A.C.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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