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 in the reply filed on 5/1/2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 5/1/2026.
Claims 1-15 are pending examination.
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.
Claims 11-12 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.
Claims 11-12 recite that the photocatalyst (i.e. anode composition) comprises a semiconductor and that the semiconductor comprises platinum or a platinum alloy.
A platinum or a platinum alloy are not a semiconductor. Platinum is a precious/noble metal.
For the purpose of examination it will be assumed that the photocatalyst comprises a composition that can include platinum or a platinum alloy.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Rioja-Cabanillas et al “Hydrogen from wastewater by photocatalytic and photoelectrochemical treatment” Journal of Physics: Energy, 3, 2021, 012006 in view of Alarawi, et al “Enhanced photoelectrochemical hydrogen production efficiency of MoS2-Si heterojunction” Optics Express, Vol 27, No 8, 2019, p. A352-A363.
As to claims 1-12, Rioja teaches of a method for hydrogen generation from a wastewater stream, 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 (Rioja, p. 6, Section 3.1 and Fig. 4);
illuminating the photocathode with first light thereby causing the photocathode to generate a first plurality of electron-electron hole pairs (Rioja, p. 2-4, Section 2.1);
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 and additionally includes platinum (Rioja, p. 2-4, Section 2.1 and p. 4-5, Section 2.2); and
photochemically converting wastewater to hydrogen gas and oxygen (Rioja, Abstract and Fig. 1).
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Rioja teaches that photoelectrochemical cell systems can utilize either semiconductor photoanodes with a metallic cathode, semiconductor photocathodes with a metallic anode, or both photoanode and photocathode. Within all these systems, the anode is connected to the cathode and the electrodes are immersed in the electrolyte.
Rioja teaches that materials for the photoanode include titanium dioxide and that a metallic co-catalyst is typically used, like platinum. In systems where both the anode and cathode are photolytic, they would both be illuminated to generate the desired electron-electron hole pairs.
Rioja does not teach that the photocathode comprises a silicon-based heterojunction.
Alarawi teaches of enhanced hydrogen generation by using a photocathode comprising a silicon-based heterojunction (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)).
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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 Rioja as per Alarawi so as to utilize the desired photocathode as it has improved catalytic activity, corrosion protection and enhanced hydrogen generation and light harvesting ability.
As to claim 13, Rioja in view of Alarawi teaches to the method of claim 1.
Rioja teaches that the wastewater includes sacrificial agents such as alcohols including ethanol or propanol, such that oxidation of pollutants within wastewater is energetically more favorable than water splitting (Rioja, p. 13-14, Section 4.4 and p. 16 Section 5).
As to claim 14, Rioja in view of Alarawi teaches to the method of claim 1.
Rioja teaches that the system absorb light in the visible (400 nm to 800 nm region) as well as the UV region (100 nm to 400 nm) of solar radiation (Rioja, p. 4, Section 2.1 last paragraph).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Rioja in view of Alarawi as applied to claim 1 above, and further in view of US 4,160,479 of Richardson et al
As to claim 15, Rioja teaches that hydrogen can be generated from wastewaters from industrial processes including paper making, farming, oil refining, petrochemicals and general industrial wastewaters (Rioja, p. 9, 11, 12 and 13, Sections 4.1, 4.2, 4.3 and 4.4).
Rioja does not specifically teach a gas-oil separation plant.
Richardson teaches that oil refining for producing chemicals (Richardson, col 1 lines 4-24).
Richardson also shows that hydrogen can be generated from a waste stream from a oil-gas separation system such that hot water is injected into a well, generating an oil-water-gas mixture that is when separated into its various components such that hydrogen is generated from the separated water to be used in other processes of the system for improved flexibility and reduced overall energy consumption of the system (Richardson, col 3 line 28 thru col 4 line 36, col 7 line 42 thru col 8 line 35, col 9 line 19-53).
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 Rioja as per Richardson so as to utilize wastewater from gas-oil separation system as part of an overall oil refining in allowing for improved flexibility and energy consumption as well as hydrogen generation from the desired water source.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/305,113 (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.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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