DETAILED ACTION
Status of Claims
Claims 1-19 are pending.
Claims 2-10 are withdrawn from consideration.
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 of Group I in the reply filed on 4 December 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claim 11 is objected to because of the following informalities: the phrase “the second electrode film has a binder holding the active material and conductivity” may be more appropriately written to connect the conductivity with the binder (e.g. the second electrode film has a binder holding the active material and the binder having conductivity). Appropriate correction is required.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Voskian et al. (US 2021/0387139).
Regarding claim 1, Voskian discloses a gas separation system (abstract) (= a gas adsorption system) comprising:
A first patterned electrode (111) [0148] (Figure 1B) configured to adsorb and release a target gas (e.g. CO2, SO2 [0060]-[0061]) from a mixed gas (e.g. air, [0142]) (= a first electrode film configured to adsorb and desorb a target gas from a mixed gas containing the target gas to be recovered by an electrochemical reaction); and
A second patterned electrode (112) [0148] including electroactive species (abstract, [0005], [0089]) (= a second electrode film having an active material to transfer electrons to and from the first electrode film), wherein
The electronically conductive particles (e.g. 224 of conductive scaffold 220 of patterned electrode (210) [0149], [0151], [0179]) having a small particle size of nanotubes for example [0151] (= the active material has a particle size less than or equal to 10 µm). A nanotube falls within the range of less than or equal to 10 µm.
Claim Rejections - 35 USC § 102/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) 11-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Voskian et al. (US 2021/0387139) and alternatively claim(s) 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voskian et al. (US 2021/0387139).
Regarding claim 11, Voskian discloses wherein the patterned electrode comprises a binder comprising a conductive material [0120] (= the second electrode film has a binder holding the active material and conductivity). Voskian discloses the composite material of the electrode comprising a carrier solvent [0175]-[0176]. The claimed “the active material and the binder are mixed into a mixed solvent, and a solubility parameter of the mixed solvent is adjusted by mixing at least two kinds of solvents, relative to the active material and the binder” is directed towards product by process claim language. Product by process claims are not limited to the manipulations of the recited steps only the structure implied by the steps. The solvent of the instant claims do not appear to alter the claimed structure. Alternatively, the disclosure of Voskian reasonably appears to be either identical with or only slightly different than the product claimed. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 12, similar to claim 11 above, the claimed “the solubility parameter of the mixed solvent” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Regarding claim 13, Voskian discloses electroactive species comprising ferrocene [0105].
Regarding claim 14, similar to claim 11 above, the claimed “the solubility parameter of the mixed solvent” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Regarding claim 15, Voskian discloses poly(vinylidene) fluoride [0119].
Regarding claim 16, similar to claim 11 above, the claimed “the mixed solvent is made of a first solvent…the binder” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Regarding claim 17, similar to claim 11 above, the claimed “a Hansen solubility parameters…for the second solvent” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Regarding claim 18, similar to claim 11 above, the claimed “a mixture of the first solvent…and the second solvent” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Regarding claim 19, similar to claim 11 above, the claimed “a surfactant is mixed into a mixture…so as to provide the mixed solvent” does not appear to structurally limit or alter the claimed product (e.g. electrode).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2022/0145002 electroactive composite layer
US 2025/0343249 electrochemical cell
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795