DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s Restriction/Election filed on 02/12/2026.
Currently claims 1-5, 10-17, 19, 21-23, 26, 29 and 82 are pending in the application.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-5, 10-17, 19, 21-23, 26 and 82, in the reply filed on 02/12/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/11/2024 and 10/09/2023 were filed before the mailing date of the office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the examiner.
Minor Objections
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet preferably within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The abstract of the disclosure is objected to because it is too long. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, in the limitation of the claim, “…wherein a least a portion of the plurality of particles are in physical and electrical contact …”, the underlined word should be replaced by ‘at’.
Appropriate correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 13-16, 23, 26 and 82 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0267240 A1 (Ke) and further in view of US 2014/0360883 A1 (Deguchi) and WO 2020/135739 (Sim).
Regarding claim 1, Ke discloses, a photoelectrode comprising:
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a light absorbing layer (as annotated on Fig. 1B; [0012], [0040]);
an insulator layer (nonconductive or insulating polymer; [0040] – [0042]) disposed on the light absorbing layer, wherein the insulator layer has an average thickness of 20 nanometers (nm) or more (100 nm or less; [0048]; the range of 100 nm or less overlaps the claimed range of 20 nm or more);
Note: In MPEP 2144.05 (I), it is stated that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
a set of protrusions (as annotated on Fig. 1B),
But Ke fails to teach explicitly, wherein each protrusion penetrates through the insulator layer to the light absorbing layer, such that each protrusion is in physical and electrical contact with the light absorbing layer; and a plurality of particles disposed on the insulator layer, wherein a least a portion of the plurality of particles are in physical and electrical contact with at least a portion of the set of protrusions; wherein the plurality of particles and optionally the set of protrusions comprise a catalyst material.
However, in analogous art, Deguchi discloses, a plurality of particles (27; nickel oxide fine particles; Fig. 2D; [0085]) disposed on the insulator layer (24; insulating substrate; Fig. 2D; [0085]), wherein a least a portion of the plurality of particles (27) are in physical and electrical contact (particles 27 are embedded in the protrusions) with at least a portion of the set of protrusions (as annotated on Fig. 2D);
wherein the plurality of particles (27) and optionally the set of protrusions (as shown in Fig. 2D) comprise a catalyst material ([0084]).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke and Deguchi before him/her, to modify the teachings of photoelectrode as taught by Ke and to include the teachings of nickel oxide fine particles in contact with the protrusions and act as co-catalytic agents as taught by Deguchi since co-catalytic activity of nickel oxide is effective in increasing the oxygen production efficiency in the photoelectrode ([0084]). Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Deguchi while forming a photoelectrode of Ke.
But the combination of Ke and Deguchi fails to teach explicitly, wherein each protrusion penetrates through the insulator layer to the light absorbing layer, such that each protrusion is in physical and electrical contact with the light absorbing layer;
However, in analogous art, Sim discloses, wherein each protrusion (610; protrusion; Fig. 1; page 4) penetrates through the insulator layer (700; barrier layer; Fig. 1; page 4) to the light absorbing layer (200; transparent conductive oxide layer; Fig. 1; page 4), such that each protrusion (610) is in physical and electrical contact with the light absorbing layer (200);
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim before him/her, to modify the teachings of a photoelectrode as taught by Ke and to include the teachings of protrusion penetrates through the insulator layer to the light absorbing layer, such that each protrusion is in physical and electrical contact with the light absorbing layer as taught by Sim since the connection would facilitate the flow of electron generated in light absorbing layer towards the catalyst particle layer on top. Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Sim while forming a photoelectrode of Ke.
Regarding claim 2, Ke discloses, the photoelectrode of claim 1, wherein the light absorbing layer comprises silicon, gallium arsenide, AlGaAs, InP, InGaP, InAlP, AlP, InGaAsN, InGaAs, GaN, InGaN, AlInGaN, AlGaN, SiGe, SiC, CdTe, CdSe, ZnO, ZnSe, ZnTe, CdZnTe, SnS.sub.2, Zn.sub.3P.sub.2, ZnP.sub.2, Zn.sub.3As.sub.2, TiO.sub.2, hybrid organic-inorganic perovskite compounds, copper oxides, SrTiO.sub.3, MoS.sub.2, GaSe, SnS, CuInGaSe.sub.2, a-Si:H (hydrogenated amorphous silicon), bismuth vanadate (BiVO.sub.4), iron oxide (Fe.sub.2O.sub.3), or a combination thereof ([0033]).
Regarding claim 3, Ke discloses, the photoelectrode of claim 1, wherein the light absorbing layer comprises silicon ([0033]).
Regarding claim 13, Ke discloses, the photoelectrode of claim 1, wherein the insulator layer has an average thickness of 50 nm or more (100 nm or less; [0048]; the range of 100 nm or less overlaps the claimed range of 50 nm or more);
Note: In MPEP 2144.05 (I), it is stated that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
Regarding claim 14, the combination of Ke, Deguchi and Sim discloses, the photoelectrode of claim 1, wherein the catalyst material comprises a metal (Nickel; [0085]; Deguchi Ref.) selected from the group consisting of Ni, Pt, Mo, Co, Ru, Ir, or a combination thereof.
Regarding claim 15, the combination of Ke, Deguchi and Sim discloses, the photoelectrode of claim 1, wherein the catalyst material comprises Ni (Nickel; [0085]; Deguchi Ref.).
Regarding claim 16, the combination of Ke, Deguchi and Sim discloses, the photoelectrode of claim 1, wherein the catalyst material comprises an oxygen evolution reaction catalyst (Deguchi teaches that the catalyst material increases the oxygen production efficiency in the photoelectrode, therefore, it can be considered that it is an oxygen evolution reaction catalyst; [0084]).
Regarding claim 23, the combination of Ke, Deguchi and Sim discloses, the photoelectrode of claim 1, wherein the plurality of particles have an average particle size of from 5 nm to 50 μm ([0106]; Deguchi teaches nickel oxide fine particles with a size of several tens of nanometers to several micrometers. This range overlaps the claimed range of 5 nm to 50 μm).
Note: In MPEP 2144.05 (I), it is stated that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
Regarding claim 26, the combination of Ke, Deguchi and Sim discloses, the photoelectrode of claim 1, wherein the plurality of particles (27; nickel oxide fine particles; Fig. 2D; [0085]) and/or the set of protrusions cover from 5% to 80% of a top surface of the insulator layer (24; Deguchi Ref.).
Note: Comparing the size of protrusions including the particles 27 which are embedded with the protrusions and the insulating layer 24, it can be considered that protrusions including the particles 27 would cover from 5% to 80% of a top surface of the insulator layer. In MPEP 2125 (I), it is stated that Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972).
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Regarding claim 82, the combination of Ke, Deguchi and Sim discloses, a device (400; device; Fig. 4; [0089]) comprising the photoelectrode (401; cathode electrode; Fig. 4; [0089]) of claim 1 (see the rejection of claim 1).
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Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ke, Deguchi and Sim as applied to claim 1 and further in view of US 2017/0253981 A1 (Tamura).
Regarding claim 4, the combination of Ke, Deguchi and Sim fails to teach explicitly, the photoelectrode of claim 1, wherein the light absorbing layer has an average thickness of from 100 nanometers (nm) to 500 micrometers (microns, μm).
However, in analogous art, Tamura discloses, the photoelectrode of claim 1, wherein the light absorbing layer has an average thickness of from 100 nanometers (nm) to 500 micrometers (microns, μm) ([0068]; Tamura teaches the thickness of the visible-light photocatalyst is 10 nm to 200 nm which overlaps the claimed range of from 100 nanometers (nm) to 500 micrometers).
Note: In MPEP 2144.05 (I), it is stated that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim and Tamura before him/her, to modify the teachings of a photoelectrode with a light absorbing layer as taught by Ke and to include the teachings of the average thickness of a light absorbing layer as taught by Tamura since the light absorbing layer with this thickness would sufficiently absorb light and prevent recombination of photo-excited carriers ([0068]). Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Tamura while forming a photoelectrode of Ke.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ke, Deguchi and Sim as applied to claim 1 and further in view of US 6437362 B1 (Suzuki).
Regarding claim 5, the combination of Ke, Deguchi and Sim fails to teach explicitly, the photoelectrode of claim 1, wherein the light absorbing layer further comprises a doped layer having an average thickness of from 10 nm to 500 μm.
However, in analogous art, Suzuki discloses, the photoelectrode of claim 1, wherein the light absorbing layer (combined 504 and 505; doped layer and light absorbing layer; Fig. 5B; col. 1, lines 55-65) further comprises a doped layer (504) having an average thickness of from 10 nm to 500 μm (microns, μm) (Fig. 5B; col. 1, lines 55-65); Suzuki teaches the thickness of the doped layer is 16 nm which overlaps the claimed range of from 10 nm to 500 μm).
Note: In MPEP 2144.05 (I), it is stated that In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim and Suzuki before him/her, to modify the teachings of a photoelectrode with a light absorbing layer as taught by Ke and to include the teachings of the average thickness of the doped layer inside the light absorbing layer as taught by Suzuki since in MPEP2143 (I) (A), it is stated that Combining prior art elements according to known methods to yield predictable results is obvious. Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Suzuki while forming a photoelectrode of Ke.
Claims 11-12 is rejected under 35 U.S.C. 103 as being unpatentable over Ke, Deguchi and Sim as applied to claim 1 and further in view of US 2024/0154046 A1 (Okuda).
Regarding claim 11, the combination of Ke, Deguchi and Sim fails to teach explicitly, the photoelectrode of claim 1, wherein the insulator layer comprises SiO.sub.2, TiO.sub.2, silicon nitride, silicon oxynitride, aluminum oxide, strontium titanate, tungsten oxide (WO.sub.3), aluminum nitride, boron nitride, aluminum gallium nitride, or a combination thereof.
However, in analogous art, Okuda discloses, the photoelectrode of claim 1, wherein the insulator layer (5; insulator layer; Fig. 2; [0055]) comprises SiO.sub.2, TiO.sub.2, silicon nitride, silicon oxynitride, aluminum oxide, strontium titanate, tungsten oxide (WO.sub.3), aluminum nitride, boron nitride, aluminum gallium nitride, or a combination thereof (SiO2; Fig. 2; [0055]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim and Okuda before him/her, to modify the teachings of a photoelectrode with an insulating polymer as taught by Ke and to include the teachings of the insulating layer comprising SiO.sub.2 as taught by Okuda since in MPEP2143 (I) (B), it is stated that Simple substitution of one known element for another to obtain predictable results is obvious. Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Okuda while forming a photoelectrode of Ke.
Regarding claim 12, the combination of Ke, Deguchi and Sim fails to teach explicitly, the photoelectrode of claim 1, wherein the insulator layer comprises SiO2.
However, in analogous art, Okuda discloses, the photoelectrode of claim 1, wherein the insulator layer (5; insulator layer; Fig. 2; [0055]) comprises SiO2 (SiO2; Fig. 2; [0055]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim and Okuda before him/her, to modify the teachings of a photoelectrode with an insulating polymer as taught by Ke and to include the teachings of the insulating layer comprising SiO.sub.2 as taught by Okuda since in MPEP2143 (I) (B), it is stated that Simple substitution of one known element for another to obtain predictable results is obvious. Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Okuda while forming a photoelectrode of Ke.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ke, Deguchi and Sim as applied to claim 1 and further in view of US 2015/0083605 A1 (Tamura2).
Regarding claim 17, the combination of Ke, Deguchi and Sim fails to teach explicitly, the photoelectrode of claim 1, wherein each of the protrusions in the set of protrusions has an average characteristic dimension of from 0.1 nm to 1 μm.
However, in analogous art, Tamura2 discloses, the photoelectrode of claim 1, wherein each of the protrusions (pillar protrusions; [0177]) in the set of protrusions has an average characteristic dimension of from 0.1 nm to 1 μm (2.1um; [0177]).
Note: In MPEP 2144.05 (I), it is stated that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above claimed ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP 2144.05 (II) (A)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Ke, Deguchi and Sim and Tamura2 before him/her, to modify the teachings of a photoelectrode with protrusions as taught by modified Ke and to include the teachings of the average characteristic dimension of protrusions as taught by Tamura2 since in MPEP2143 (I) (A), it is stated that Combining prior art elements according to known methods to yield predictable results is obvious. Absent this important teaching in Ke, a person with ordinary skill in the art would be motivated to reach out to Tamura2 while forming a photoelectrode of Ke.
Allowable Subject Matter
Claims 10, 19 and 21-22 are objected to as being dependent upon rejected base claims, but would be allowable if rewritten in independent forms including all of the limitations of the base claims and any intervening claims.
Regarding claim 10, the closest prior art, US 2012/0267240 A1 (Ke), in combination with US 2014/0360883 A1 (Deguchi), WO 2020/135739 (Sim), US 2017/0253981 A1 (Tamura) and US 6437362 B1 (Suzuki), fails to disclose, “the photoelectrode of claim 1, wherein the light absorbing layer comprises Si with a buried pn junction”, in combination with the additionally claimed features, as are claimed by the Applicant.
Regarding claim 19, the closest prior art, US 2012/0267240 A1 (Ke), in combination with US 2014/0360883 A1 (Deguchi), WO 2020/135739 (Sim), US 2017/0253981 A1 (Tamura) and US 6437362 B1 (Suzuki), fails to disclose, “the photoelectrode of claim 1, wherein each of the protrusions in the set of protrusions has an average characteristic dimension that varies with the thickness of the insulator layer”, in combination with the additionally claimed features, as are claimed by the Applicant.
Regarding claim 21, the closest prior art, US 2012/0267240 A1 (Ke), in combination with US 2014/0360883 A1 (Deguchi), WO 2020/135739 (Sim), US 2017/0253981 A1 (Tamura) and US 6437362 B1 (Suzuki), fails to disclose, “the photoelectrode of claim 1, wherein the set of protrusions are dispersed across the insulator layer laterally such that the set of protrusions within the insulator layer have an areal density of from 10.sup.4 to 10.sup.13 protrusions per cm.sup.2 of the insulator layer”, in combination with the additionally claimed features, as are claimed by the Applicant.
Regarding claim 22, the closest prior art, US 2012/0267240 A1 (Ke), in combination with US 2014/0360883 A1 (Deguchi), WO 2020/135739 (Sim), US 2017/0253981 A1 (Tamura) and US 6437362 B1 (Suzuki), fails to disclose, “the photoelectrode of claim 1, wherein the set of protrusions are dispersed throughout the insulator layer such that the set of protrusions within the insulator layer have an areal density of from 2×10.sup.8 to 8×10.sup.8 protrusions per cm.sup.2 of the insulator layer”, in combination with the additionally claimed features, as are claimed by the Applicant.
Examiner’s Note (Additional Prior Arts)
The examiner included a few prior arts which were not used in the rejection but are relevant to the disclosure.
US 2010/0133111 A1 (Nocera) - Catalytic materials, photoanodes, and systems for electrolysis and/or formation of water are provided which can be used for energy storage, particularly in the area of solar energy conversion, and/or production of oxygen and/or hydrogen. Compositions and methods for forming photoanodes and other devices are also provided.
US 2006/0065301 A1 (Miyoshi) - A dye sensitizing solar cell is disclosed including a photoelectrode and a counter electrode, recesses are formed in the surface of a substrate member of the photoelectrode, and a transparent electrode film is formed on the surface of the substrate member to form recessed portions in the transparent electrode film. On the transparent electrode film of the photoelectrode with this construction, a porous semiconductor electrode film is formed, and a sensitizing dye is absorbed and carried on the porous semiconductor electrode film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S M SOHEL IMTIAZ whose telephone number is (408) 918-7566. The examiner can normally be reached on 8AM-5PM, M-F, PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine S. Kim can be reached at 571-272-8458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S M SOHEL IMTIAZ/Primary Patent Examiner
Art Unit 2812
03/17/2026
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