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 .
This is in response to the Amendment dated December 17, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 10-15 and 17-21 (product) and 22 (apparatus) drawn to an invention nonelected with traverse in the reply filed on July 7, 2025.
Claim Objections
Claim 1 has been objected to because of minor informalities.
The objection of claim 1 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 1-2, 4-7 and 24-25 have been 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.
The rejection of claims 1-2, 4-7 and 24-25 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 102
I. Claim(s) 1-2, 4 and 24 have been rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holt et al. (“Electrocatalytic Hydrogenation of 2-Cyclohexen-1-One in a High Sulfur Environment Using a Carbon-Supported Nanostructured Tungsten Sulfide Catalyst,” Catalysis Communications (2010 Dec 15), Vol. 12, No. 4, pp. 314-317).
The rejection of claims 1-2, 4 and 24 under 35 U.S.C. 102(a)(1) as being anticipated by Holt et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 1-2, 4 and 24 have been rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (“Sulfur Vacancy-Promoted Highly Selective Electrosynthesis of Functionalized Aminoarenes via Transfer Hydrogenation of Nitroarenes with H2O over a Co3S4− x Nanosheet Cathode,” CCS Chemistry (2021 Jan 1), Vol. 3, No. 1, pp. 507-515).
The rejection of claims 1-2, 4 and 24 under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 1-2, 4 and 24 have been rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mehri et al. (“Electrochemical Hydrogenation and Desulfurization of Thiophenic Compounds over MoS2 Electrocatalyst Using Different Membrane-Electrode Assembly,” Advances in
Environmental Technology (2019 Jan 1), Vol. 5, No. 1, pp. 23-33).
The rejection of claims 1-2, 4 and 24 under 35 U.S.C. 102(a)(1) as being anticipated by Mehri et al. has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
I. Claim(s) 5-7 and 25 have been rejected under 35 U.S.C. 103 as being unpatentable over Mehri et al. (“Electrochemical Hydrogenation and Desulfurization of Thiophenic Compounds over MoS2 Electrocatalyst Using Different Membrane-Electrode Assembly,” Advances in Environmental Technology (2019 Jan 1), Vol. 5, No. 1, pp. 23-33) as applied to claims 1-2, 4 and 24 above, and further in view of Bezverkhyy et al. (“Preparation of Highly Dispersed Pentlandites (M, M’)9S8 (M, M’ = Fe, Co, Ni) and their catalytic properties in hydrodesulfurization,” The Journal of Physical Chemistry B (2004 Jun 10), Vol. 108, No. 23, pp. 7709-7715).
The rejection of claims 5-7 and 25 under 35 U.S.C. 103 as being unpatentable over Mehri et al. as applied to claims 1-2, 4 and 24 above, and further in view of Bezverkhyy et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 5-7 have been rejected under 35 U.S.C. 103 as being unpatentable over Mehri et al. (“Electrochemical Hydrogenation and Desulfurization of Thiophenic Compounds over MoS2 Electrocatalyst Using Different Membrane-Electrode Assembly,” Advances in Environmental Technology (2019 Jan 1), Vol. 5, No. 1, pp. 23-33) as applied to claims 1-2, 4 and
24 above, and further in view of and Strachan et al. (“The Catalytic Nature of Chevrel Phases (MxMo6S8) in Review,” Materials Research Bulletin (2021 Jul 1), Vol. 139, pp. 1-8).
The rejection of claims 5-7 under 35 U.S.C. 103 as being unpatentable over Mehri et al. as applied to claims 1-2, 4 and 24 above, and further in view of and Strachan et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Election/Restrictions
Newly submitted claim 31 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 31 is dependent on non-elected claim 17.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 31 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 24 is objected to because of the following informalities:
Claim 24
line 2, please amend the words “reducible organic compound” to -- at least one multiple bond --.
This is an instance where the article should be changed to ensure proper antecedent basis for the claim terminology.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1, 5-7 and 24-30 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.
Claim 1
line 12, the words “substantially conforms” is indefinite.
While this is a term of degree that implies approximation rather than perfection, it fails to point out what is included or excluded by the claim language.
See also claim 5, line 2.
line 16, the words “spinel-like” is indefinite.
The word “like" renders the claim indefinite because the claim include elements not actually disclosed, thereby rendering the scope of the claim unascertainable.
Claim Rejections - 35 USC § 102
Claim(s) 1 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (“Converting Copper Sulfide to Copper with Surface Sulfur for Electrocatalytic Alkyne Semi-Hydrogenation with Water,” Nature Communications (2021 Jun 23), Vol. 12, No. 1, pp. 1-11 and pp. 1-24 (Supplemental Information)).
Regarding claim 1, Wu teaches a process for electrocatalytic hydrogenation of organic compounds (= electrocatalytic alkyne semi-hydrogenation to alkenes) [page 1, line 1] in an electrochemical cell having a cathode, an anode (= a divided three-electrode system (Supplementary Fig. 9)) [page 5, left column, lines 24-25], and an electrolyte (= the 1.0 M KOH electrolyte) [page 5, left column, lines 26-27], wherein the organic compounds are reducible
organic compounds comprising at least one multiple bond (= 4-ethynylaniline (1a), the model substrate) [page 5, left column, line 25-26], the process comprising:
• hydrogenating a multiple bond of the reducible organic compound at the cathode (=
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409
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(page 8, Table 1), wherein
۰ the reducible organic compound is in liquid form or at least partially in dissolved form (= 0.1 mmol of alkynes dissolved in 2.0 ml Diox were rapidly added into the cathode and stirred to form a homogeneous solution) [page 9, left column, lines 41-42],
۰ the cathode comprises a catalyst in the form of a transition metal chalcogenide (= the Cu-S NSs cathode) [page 5, right column, line 10], and
۰ the transition metal chalcogenide substantially conforms to1 the empirical formula M3X4, M9X8 or M”6MkXmX’n, wherein
M represents one or more metals selected from the transition metals of the 4th, 5th or 6th period,
M3X4 has a spinel structure or a spinel-like structure,
M” is selected from alkali and alkaline earth metals,
X represents S, Se and Te,
X’ represents a halide, and
k, m and n represent decimal numbers, wherein 24 ≤ k ≤ 25, 26 ≤ m ≤ 28 and 0 ≤ n ≤ 1 (=
the reduced conversion process of CuS → Cu8S5 → Cu2S → Cu) [page 4, right column, lines 1-2].
Regarding claim 24, Wu teaches wherein the reducible organic compound comprises at least one C-C multiple bond (= 4-ethynylaniline (1a), the model substrate =
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140
216
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) [page 5, left column, line 25-26].
Claim Rejections - 35 USC § 103
I. Claim(s) 5-7 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (“Converting Copper Sulfide to Copper with Surface Sulfur for Electrocatalytic Alkyne Semi-Hydrogenation with Water,” Nature Communications (2021 Jun 23), Vol. 12, No. 1, pp. 1-11 and pp. 1-24 (Supplemental Information)) as applied to claims 1 and 24 above, and further in view of Bezverkhyy et al. (“Preparation of Highly Dispersed Pentlandites (M, M’)9S8 (M, M’ = Fe, Co, Ni) and their catalytic properties in hydrodesulfurization,” The Journal of Physical Chemistry B (2004 Jun 10), Vol. 108, No. 23, pp. 7709-7715).
Regarding claim 5, Wu teaches the process of claims 1 and 24 as applied above. Wu does not teach wherein the transition metal chalcogenide substantially conforms to the empirical formula M9X8 or M”6MkXmX’n and M is selected from a transition metal of the 4th period of groups 4 to 10.
Wu teaches Cu8S5 (page 4, right column, lines 1-2).
Bezverkhyy teaches binary and ternary pentlandites (Co9S8, NiCo8S8, FeCo8S8, Ni3Co6S8, Ni4.5Fe4.5S8) and their catalytic properties (page 7709, right column, lines 35-39).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the transition metal chalcogenide described by Wu with wherein the transition metal chalcogenide substantially conforms to the empirical formula M9X8 or M”6MkXmX’n and M is selected from a transition metal of the 4th period of groups 4 to 10. The person with ordinary skill in the art would have been motivated to make this modification because binary and ternary transition metal pentlandites are also transition metal chalcogenides having catalytic properties to catalyze reactions.2
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 6, Bezverkhyy teaches wherein the transition metal chalcogenide
conforms to formula M9X8 and is at least partially present in crystallized form in a pentlandite
structure (= binary and ternary pentlandites) [page 7709, right column, lines 36-37].
Regarding claim 7, Bezverkhyy teaches wherein the transition metal chalcogenide conforming to formula M9X8 is a compound of formula Fe9-a-b-cNiaCobM’cS8-dSed, wherein M’ is a transition metal of the 4th period, a is a number from 0 to 7, b is a number from 0 to 9, c is a number from 0 to 2, d is a number from 0 to 6, and the sum of a+b+c is a number from 0 to 9 (= binary and ternary pentlandites (Co9S8, NiCo8S8, FeCo8S8, Ni3Co6S8, Ni4.5Fe4.5S8)) [page 7709, right column, lines 36-37].
Regarding claim 25, Bezverkhyy teaches wherein the transition metal chalcogenide contains substantially only two of the three elements Fe, Ni and Co and also substantially no metal M’ (= binary and ternary pentlandites (Co9S8, NiCo8S8, FeCo8S8, Ni3Co6S8, Ni4.5Fe4.5S8))
[page 7709, right column, lines 36-37].
II. Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (“Converting Copper Sulfide to Copper with Surface Sulfur for Electrocatalytic Alkyne Semi-Hydrogenation with Water,” Nature Communications (2021 Jun 23), Vol. 12, No. 1, pp. 1-11 and pp. 1-24 (Supplemental Information)) as applied to claims 1 and 24 above, and further in view of Strachan et al. (“The Catalytic Nature of Chevrel Phases (MxMo6S8) in Review,” Materials Research Bulletin (2021 Jul 1), Vol. 139, pp. 1-8).
Regarding claim 5, Wu teaches the process of claims 1 and 24 as applied above. Wu does not teach wherein the transition metal chalcogenide substantially conforms to the empirical formula M9X8 or M”6MkXmX’n and M is selected from a transition metal of the 4th period of
groups 4 to 10.
Strachan teaches that the Chevrel Phases, MxMo6S8, are a class of heterogenous catalysts comprised of abundant materials that have been reported to out-perform conventional MoS2 catalysts in several reactions (page 1, abstract).
Chevrel Phases (CPs; MxMo6T8, where M = most transition metals, T = a chalcogenide, and x ≥0), or ternary molybdenum chalcogenides, possess several interesting behaviours that distinguish them from other non-noble metal materials: facile metal intercalation enables the use of CPs as electrodes [5] and the band structure can allow superconductivity [6,7] (page 1, left column, lines 13-18).
The first report of a catalytic reaction performed by CPs was hydrodesulfurisation (HDS) [page 3, right column, lines 30-31] and used as electrocatalysts (page 4, right column, line 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the transition metal chalcogenide
described by Wu with wherein the transition metal chalcogenide substantially conforms to the empirical formula M9X8 or M”6MkXmX’n and M is selected from a transition metal of the 4th period of groups 4 to 10. The person with ordinary skill in the art would have been motivated to make this modification because Chevrel Phases, MxMo6S8, are a class of heterogenous catalysts used as electrocatalysts3 and are also transition metal chalcogenides used in catalytic reactions.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known
material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 6, Strachan teaches wherein the transition metal chalcogenide conforms to formula M9X8 and is at least partially present in crystallized form in a pentlandite structure (= Chevrel Phases (CPs; MxMo6T8, where M = most transition metals, T = a chalcogenide, and x ≥0)) [page 1, left column, lines 13-14].
Regarding claim 7, Strachan teaches wherein the transition metal chalcogenide conforming to formula M9X8 is a compound of formula Fe9-a-b-cNiaCobM’cS8-dSed, wherein M’ is a transition metal of the 4th, 5th or 6th period, a is a number from 0 to 7, b is a number from 0 to 9, c is a number from 0 to 2, d is a number from 0 to 6, and the sum of a+b+c is a number from 0 to 9 (= Chevrel Phases (CPs; MxMo6T8, where M = most transition metals, T = a chalcogenide, and x ≥0)) [page 1, left column, lines 13-14].
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 26-30 define over the prior art of record because the prior art does not contain any language that teaches or suggests the process as claimed in claim 1, wherein the catalyst in
the form of a transition metal chalcogenide is arranged as a catalyst layer on at least a portion of a surface area of a carrier material of the cathode, and said catalyst layer comprises the transition metal chalcogenide as catalyst and a polymeric binder. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of
obviousness cannot be established.
Claims 26-30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically challenged in the argument.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Algarra et al. (“Cuboidal Mo3S4 Clusters as a Platform for Exploring Catalysis: A Three-
Center Sulfur Mechanism for Alkyne Semihydrogenation,” ACS Catalysis (2018 Jul 9), Vol. 8, No. 8, pp. 7346-7350) is cited to teach a trinuclear Mo3S4 diamino cluster that promotes the
semihydrogenation of alkynes (page 7346, abstract).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
2 Present claim 1 does not recite applying a current or voltage to the electrochemical cell.
3 Present claim 1 does not recite applying a current or voltage to the electrochemical cell.