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
Applicant’s election without traverse of Group I to claims 1-14 in the reply filed on 3/10/2026 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/2026.
Claim Rejections - 35 USC § 112
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 regards 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 regards as his invention.
Claim 3 is 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 term “thin film” in claim 3is a relative term which renders the claim indefinite. The term “thin” 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.
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 1 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Luo et al, “Self-Driven Photoelectrochemical Splitting of H2S for S and H2 Recovery and Simultaneous Electricity Generation” Environmental Science & Technology, 2017, 51, 12965-12971.
As to claim 1, Luo teaches of a method comprising:
providing a photocathode electrically connected by a wire to a photocatalyst, where both the photocathode and the photocatalyst are at least partially immersed in an electrolyte solution that comprises an aqueous fluid having hydrogen sulfide at least partially dissolved therein (Luo, p. 12966-12967, Apparatus and Methods of Hydrogen Sulfide Splitting and Figs. 2(b));
illuminating the photocathode with first light thereby causing the photocathode to generate a first plurality of electron-electron hole pairs, wherein the photocathode comprises a silicon-based heterojunction (Luo, p. 12967-12968, Characterization of the WO3 Photoanode and Si, and Fig. 2(a));
illuminating a photocatalyst with second light thereby causing the photocathode to generate a second plurality of electron-electron hole pairs, wherein the photocatalyst comprises a semiconductor (Luo, p. 12967-12968, Characterization of the WO3 Photoanode and Si, and Fig. 2(a)); and
photochemically converting the hydrogen sulfide to hydrogen gas and sulfur (Luo, p. 12967-12968, Characterization of the WO3 Photoanode and Si, and Fig. 2(a)).
PNG
media_image1.png
420
608
media_image1.png
Greyscale
PNG
media_image2.png
410
656
media_image2.png
Greyscale
As seen in Luo, Fig. 2(b), there is a photoanode (comprising a semiconductor photocatalyst) where sulfur is photochemically generated and a photocathode that comprises a heterojunction where hydrogen is generated. The system is illuminated by first and second light such that hole electron pairs are generated at each electrode.
As to claim 13, Luo teaches that the light source generates visible light utilizing a source to generate AM 1.5 solar light illumination (Luo, 12966, Photoelectrochemical Measurements and 12967 and p. 12967, Characterization of the WO3 Photoanode and Si (2nd paragraph)), generally considered 300 nm to 1200 nm.
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.
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.
Claims 2-10 are rejected under 35 U.S.C. 103 as being unpatentable over Luo as applied to claim 1 above, and further in view of Alarawi, et al “Enhanced photoelectrochemical hydrogen production efficiency of MoS-2--Si heterojunction” Optics Express, 27, 8, 2019 A352-A363.
As to claims 2-10, Luo teaches to the method of claim 1.
Luo does not teach the specifics of the heterojunction structure of the photocathode.
Alarawi teaches of hydrogen generation by photoelectrochemical water splitting using a Si-based photocathode (Alarawi, Abstract).
Alarawi teaches that p-type Si has been widely used as photocathodes in hydrogen generation system (PEC system) however, the p--Si/H2O junction causes issues such that p-n junctions can boost the photovoltage. Systems that further include n+-layer and p+ layer further facilitate overall performance. Within these heterojunction system catalytic materials like MoS2 have excellent HER activity and favorable band-gap alignment such that a photocathode of the MoS2/Si-HJ is an improved photocathode in relation to catalytic activity and improved light harvesting characteristic (Alarawi, p. A352-353, Introduction, p. A358 and p. A361).
Alarawi teaches that the heterojunction is formed of n-type layer of crystalline silicon (100) silicon wafer with a n+-Si on one side and p+-Si on the other side of the silicon wafer. The layered structured is formed comprising Al-2O3 and Si3N4 (used as pattern mask being etched) and then a silver (Ag) layer. The heterojunction further has the co-catalyst as a sulfide (molybdenum sulfide) for hydrogen generation and a micro-pyramidal surface structure (Alarawi, A353-A354, 2.2 Fabrication of MoS2/Si-HJ photocathode and Figs. 3(b) and 4(a)).
PNG
media_image3.png
240
282
media_image3.png
Greyscale
PNG
media_image4.png
368
668
media_image4.png
Greyscale
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Luo as per Alawari so as to utilize the desired photocathode as it has improved catalytic activity, corrosion protection and enhanced hydrogen generation and light harvesting ability.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Luo as applied to claim 1 above, and further in view of Zeng, et al “Combined nanostructured Bi2S3/TNA photoanode and Pt/SiPVC photocathode for efficient self-biasing photoelectrochemical hydrogen and electricity generation” Nano Energy, 2014, 9, 152-160.
As to claim 11, Luo teaches to the method of claim 1.
Luo teaches that the semiconductor is WO3 (Luo, p. 12965, Introduction).
Luo does not teach the desired semiconductor material.
Zeng teaches of photoelectrochemical hydrogen generating system (Zeng, Abstract).
Zeng teaches that the use of titanium dioxide nanotube arrays that are sensitized with Bi2S3 are promising photoanode compositions over those based on WO3 as the titanium dioxide is a superior photocatalytic and photoelectronic composition due to its enhanced light harvesting ability and charge separation ability, the composition having improved charge transport properties and enhanced separation rates of the photogenerated electron-hole pairs (Zeng, p. 153, Introduction).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Luo as per Zeng so as to utilize a titanium dioxide based photoanode in order to have improved charge transport properties and enhanced separation rates of the photogenerated electron-hole pairs within the method and system.
Claims 1 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/089792 of Meda et al in view of Zeng, et al “Combined nanostructured Bi2S3/TNA photoanode and Pt/SiPVC photocathode for efficient self-biasing photoelectrochemical hydrogen and electricity generation” Nano Energy, 2014, 9, 152-160.
As to claim 1, Meda teaches to a method, comprising:
providing a cathode electrically connected by a wire to a photocatalyst, where both the cathode and the photocatalyst are at least partially immersed in an electrolyte solution that comprises an aqueous fluid having hydrogen sulfide at least partially dissolved therein (Meda, p. 14 line 24 thru p. 15 line 25, p. 17 lines 16-26);
illuminating a photocatalyst with light thereby generating a plurality of electron-electron hole pairs, wherein the photocatalyst comprises a semiconductor and photochemically converting the hydrogen sulfide to hydrogen gas and sulfur (Meda, p. 18 line 7 thru p. 19 line 4);.
Meda does not teach that the cathode is a photocathode comprising a silicon-based heterojunction or the use thereof.
Zeng teaches of photoelectrochemical hydrogen production (Zeng, Abstract).
Zeng teaches that a photocathode based on mismatched Fermi levels allows for a self-biasing photoelectrochemical production of hydrogen (Zeng, Abstract).
Zeng teaches that when the photoanode comprises titanium dioxide doped with Bi2S3, the photocathode comprising a silicon based heterojunction as it matches the VB and CB for spontaneous hydrogen generation (Zeng, p. 153-154, Introduction).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Meda as per Zeng so as to utilize the desired photocathode within the system in order to facilitate a self-biasing process in generating hydrogen.
As to claim 11, Meda in view of Zeng teaches to the method of claim 1.
Meda teaches that the semiconductor of the photocatalyst (photoanode) comprises CdS and TiO2 (Meda, p. 8 lines 1-5).
As to claim 12, Meda in view of Zeng teaches to the method of claim 1.
Meda teaches that the system includes a sacrificial agent comprising sulfide (Meda, p. 18 line 7 thru p. 19 line 11).
As to claim 13, Meda in view of Zeng teaches to the method of claim 1.
Meda teaches that the illumination includes the whole visible and NIR region such that even UV before 420 nm being cut-off still has active response (Meda, p. 14 lines 2-23).
As to claim 14, Meda in view of Zeng teaches to the method of claim 1.
Meda additionally teaches that the hydrogen sulfide source is a waste stream from a gas-oil separation plant (i.e. refinery or desulfurization of oil for production of fuels) (Meda, p. 1 line 11 thru p. 2 line 4).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-11 and 13-15 of copending Application No. 18/305221 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they each perform a photoelectrochemical generation of hydrogen in an aqueous solution. While sulfur is actively recited as being produced in ‘113 and oxygen is actively recited as being produced in ‘221, the methods are not distinct because each process is performed in water (as a wastewater from an gas-oil separation plant as per the claims) such that in the sulfur generating system, oxygen would also be produced and in the oxygen generating system sulfur would also be produced as hydrogen sulfide is a waste product from the gas-oil separation plant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing 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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759
Prosecution Insights