DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/11/2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (Triphasic Metal Oxide Photocatalyst for Reaction Site-Specific Production of Hydrogen Peroxide from Oxygen Reduction and Water Oxidation, Advanced Energy Materials, 2022).
It is noted that the above reference originates from a party related to but not identical to the inventors of the instant application – as such, until the difference between the inventors of the instant application and the authors of the paper can be properly attested to, no grace period under 35 U.S.C. 102(b)(1) applies
Regarding Claim 1, Kim discloses a composite, comprising a nanosheet including a cobalt oxide; and a core-shell particle including a core including an iron oxide and a shell including a titanium oxide, wherein the core-shell particle is located on the nanosheet (Abstract: the authors report a triphasic metal oxide photocatalyst with a cobalt hydroxide carbonate nanosheet phase for water oxidation as well as iron oxide and titanium oxide phases of a core-shell morphology for charge transfer and oxygen reduction; 2 Results and Discussion: Fe3O4 is in the core and TiO2 is in the shell; Fig. 1: the core shell particles are located on the cobalt-comprising nanosheet).
Regarding Claim 2, Kim discloses the cobalt is in the form Co2(OH)2CO3 (2 Results and Discussion).
Regarding Claim 3, Kim discloses the iron is in the form Fe3O4 (2 Results and Discussion).
Regarding Claim 4, Kim discloses the titanium is in the form TiO2 (2 Results and Discussion).
Regarding Claim 7, Kim discloses the core of the core-shell particles is in contact with the nanosheet (Fig. 1b).
Regarding Claim 8, the composite of Kim has the same composition as the composite of Claim 1. Therefore, the composite of Kim must have a core that absorbs visible light, and a shell that absorbs ultraviolet light, absent evidence to the contrary, as products having the same composition cannot have mutually exclusive properties – see MPEP 2112.01(I).
Regarding Claims 9-10, with regard to the language ‘serves as a water oxidation site’ and ‘serves as an oxygen reduction site’, it is noted that this phrase is the intended use of the claimed product. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function — see MPEP 2111.02(II). In the instant case, the composite of Kim has the same composition as the composite of Claim 1. Therefore, the composite taught by Kim is commensurately capable of providing for such intended uses in as much as recited and required herein, and therefore meets this intended use limitation as claimed.
Regarding Claim 11, the composite of Kim meets the limitations of Claim 1 and is considered a photocatalyst.
Regarding Claim 12, with regard to the language ‘is used for the production of hydrogen peroxide’, it is noted that this phrase is the intended use of the claimed product. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function — see MPEP 2111.02(II). In the instant case, the composite of Kim as modified above has the same composition as the composite of Claim 1. Therefore, the composite taught by Kim is commensurately capable of providing for such intended uses in as much as recited and required herein, and therefore meets this intended use limitation as claimed.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liang et al. (Preparation and characterization of TiO2–Graphene@Fe3O4 magnetic composite and its application in the removal of trace amounts of microcystin-LR, RCS Advances, 2014), hereinafter ‘Liang’, in view of Shi et al. (Synergistic catalysis of Co3O4 and graphene oxide on Co3O4/GO catalysts for degradation of Orange II in water by advanced oxidation technology based on sulfate radicals, Chemical Engineering Journal, 2014), hereinafter ‘Shi’.
Regarding Claim 1, Liang discloses a composite, comprising:
a nanosheet; and a core-shell particle including a core including an iron oxide and a shell including a titanium oxide, wherein the core-shell particle is located on the nanosheet (3.1 Preparation and characterization of TiO2–graphene@Fe3O4 composite: two-dimensional graphene oxide (GO) sheets were decorated with a large quantity of spherical Fe3O4 NPs. Then the TiO2 layer was directly coated on the surface of graphene@Fe3O4).
Further regarding Claim 1, while Liang discloses the composite described above is useful in the removal of organic contaminants from water and air, especially heterogeneous photocatalysis degradation mediated by titanium dioxide (1. Introduction), Liang does not disclose that the nanosheet comprises a cobalt oxide.
Shi discloses catalysts for the removal of organic components in water comprising graphene oxide, and particularly considers synthesis and characterization of supporting metallic oxides on GO or rGO (reduced graphene oxide) as a catalyst compound, such as TiO2, Fe3O4, Co3O4, and Fe(OH)3 (1. Introduction). A person of ordinary skill in the art would have recognized Shi as analogous to Liang, as both references are drawn to the same field of endeavor as the claimed invention, catalysts for the removal of organic contaminants in water comprising metal oxides such as TiO2 and Fe3O4 and also comprising graphene oxide - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. While the disclosures of Liang and Shi differ in the target contaminant, the disclosure of Shi is drawn to increasing oxidative degradation rates in general, which would contribute to the degradation of compounds other than those expressly disclosed by Shi (Orange II).
Further, Shi discloses that cobalt oxide, namely Co3O4, synergistically interacts with graphene oxide to catalyze the formation of peroxymonosulfate (PMS), a compound capable of reacting with and neutralizing organic contaminants, thereby removing them (Introduction). Shi discloses that although Co3O4 or GO alone exhibits low catalytic activity, their hybrid (Co3O4/GO) exhibits an unexpectedly high catalytic activity in the degradation of Orange II in water by advanced oxidation technology based on sulfate radicals (Id.).
In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add cobalt oxide, Co3O4, to the graphene oxide nanosheets of Liang. The use of such materials in combination has been shown in the prior art to achieve synergistic effects in the degradation of organic components, and therefore one of skill in the art would have had a reasonable expectation that such a combination would increase the effectiveness of organic contaminant removal by the composite.
Regarding Claim 3, Liang as modified above makes obvious the use of Fe3O4 (the graphene oxide of Liang is decorated with Fe3O4 particles).
Regarding Claim 4, Liang as modified above makes obvious the use of TiO2 (3.1: TiO2 layer was directly coated on the surface of graphene@Fe3O4).
Regarding Claim 5, Liang as modified above makes obvious a diameter of the core-shell particle is 10 nm to 50 nm (3.1: the diameter of the Fe3O4 particles after coating was 50 nm).
Regarding Claim 6, Liang as modified above discloses that the diameter of the iron particles changed from 20 nm to 50 nm after TiO2 coating (3.1). This implies, assuming a uniform coating on the 20 nm diameter iron particles, a 15 nm layer coating of titanium upon said iron particles. This falls outside the claimed range.
It is apparent, however, that the instantly claimed shell thickness and that taught by Liang are so close to each other that the fact pattern in the instant case is similar to that in In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) wherein, despite a “slight” difference in the ranges taught by the prior art and the claims of the application, the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Furthermore, regarding the disclosure of Liang, it is not clear whether this implied 15 nm thickness of the formed composite is uniform and includes irregularities in the particles, i.e., some titanium oxide particles having large, non-uniform crystals or rough surfaces that vary beyond a uniform 15 nm thickness. Therefore, it is reasonable to interpret such a thickness as encompassing a range of thickness values around 15 nm, broadening the reasonable interpretation of what the disclosed thickness of the titanium oxide layer in the composite of Liang is or should be.
In light of the case law cited above, and given that there is only a “slight” difference between the shell thickness disclosed by Liang and the shell thickness disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the shell thickness disclosed in Liang is so close to that claimed that one of ordinary skill in the art before the effective filing date of the claimed invention would have expected the composite of both Liang as modified above and the instant claim to have the same properties, and thereby would have arrived at the claimed invention, absent showings to the contrary or evidence of criticality associated with the claimed shell thickness.
Regarding Claim 7, Liang as modified above makes obvious the nanosheet is in contact with the core of the core-shell particle (as discussed above, the process of Liang first attaches iron particles to the graphene oxide, then coats the iron-graphene oxide composite. By this process, the portion of the iron particles attached to the graphene oxide would remain in contact therewith after coating, at least to a degree satisfying the instant claim).
Regarding Claim 8, the composite of Liang as modified above has the same composition as the composite of Claim 1. Therefore, the composite of Liang must have a core that absorbs visible light, and a shell that absorbs ultraviolet light, absent evidence to the contrary, as products having the same composition cannot have mutually exclusive properties – see MPEP 2112.01(I).
Regarding Claims 9-10, with regard to the language ‘serves as a water oxidation site’ and ‘serves as an oxygen reduction site’, it is noted that this phrase is the intended use of the claimed product. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function — see MPEP 2111.02(II). In the instant case, the composite of Liang as modified above has the same composition as the composite of Claim 1. Therefore, the composite taught by Liang as modified above is commensurately capable of providing for such intended uses in as much as recited and required herein, and therefore meets this intended use limitation as claimed.
Regarding Claim 11, the composite of Liang meets the limitations of Claim 1 and is considered a photocatalyst.
Regarding Claim 12, with regard to the language ‘is used for the production of hydrogen peroxide’, it is noted that this phrase is the intended use of the claimed product. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function — see MPEP 2111.02(II). In the instant case, the composite of Liang as modified above has the same composition as the composite of Claim 1. Therefore, the composite taught by Liang as modified above is commensurately capable of providing for such intended uses in as much as recited and required herein, and therefore meets this intended use limitation as claimed.
Conclusion
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/DANIEL C. MCCRACKEN/ Primary Examiner, Art Unit 1736