CTFR 18/318,757 CTFR 88684 DETAILED ACTION 12-151 AIA 26-51 12-51 Status of Claims Claims 1-10 are pending. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of Objections and Rejections The previous objection to the specification is withdrawn in view of Applicant’s amendment. The previous objections to claim 8-9 are withdrawn in view of Applicant’s amendment. All other rejections from the previous Office action are withdrawn in view of Applicant’s amendment. 12-256 AIA New grounds of rejection are necessitated by amendment . Information Disclosure Statement 06-52 AIA The information disclosure statement (IDS) submitted on 9 January 2026 was filed after the mailing date of the Non-Final Office action on 4 December 2025 . The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-4, 6-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yabe et al. (JP 2017-202941) . Regarding claim 1, Yabe discloses an adsorption/discharge of carbon dioxide (title, [0017]) comprising an electrolyte solution placed in contact with a gas containing carbon dioxide and air (= oxygen) [0009], [0062] that electrochemically adsorbs and releases carbon dioxide [0001] (= a carbon dioxide recovery system that separates CO 2 from gas containing CO 2 and O 2 via an electrochemical reaction, the carbon dioxide recovery system) comprising: A carbon dioxide adsorption and release device (10) comprising a first electrode (1) and a second electrode (2), the first electrode including a porous body (4) comprising for example activated carbon [0055] and a catalyst such as platinum [0056] (= an electrochemical cell including a working electrode and a counter electrode, the working electrode including a CO 2 adsorbent); An electrolyte (3) disposed between the electrodes (Figure 1) [0009] (= an electrolytic solution disposed between the working electrode and the counter electrode); An external power supply [0031] configured to apply a first voltage and a second voltage different from the first voltage [0009] (= a power supply configured to apply a first voltage and a second voltage different from the first voltage between the working electrode and the counter electrode, wherein) The external power supply is configured to apply a first voltage such that the second electrode functions as the positive electrode (cathode) [0035]-[0036], connecting the positive electrode of a DC power supply to the first electrode and the negative electrode of the DC power supply to the second electrode [0025] and also connecting the first electrode as the negative electrode (anode) [0031] (= the power supply is configured to apply the first voltage such that the working electrode is a negative electrode and the counter electrode is a positive electrode); Additionally, a voltage is applied between the electrodes in the presence of an electrolytic solution (3), carbon dioxide is filled and adsorbed into the porous body (4) in the form of bicarbonate ions or carbonate ions [0058], next a potential difference is reduced and ions are released from the porous body (4) into the electrolyte (3), causing local supersaturation and turning into carbon dioxide, allowing carbon dioxide to be released [0059], the second electrode donates electrons to the reductants in the electrolyte (3) [0036] (= the CO 2 adsorbent is configured to adsorb CO 2 via an oxygen reduction reaction by using electrons supplied from the counter electrode to the working electrode wherein a first voltage is applied between the working electrode and the counter electrode, the oxygen reduction reaction producing active oxygen via reduction of O 2 ). Yabe discloses applying a second voltage between the first electrode and second electrode such that the first electrode is positive and which is lower than the first voltage thereby desorbing the carbonate ions or bicarbonate ions from the surface of the porous body [0009] (= the CO 2 adsorbent is configured to desorb CO 2 by discharging electrons from the working electrode to the counter electrode when a second voltage different from the first voltage is applied between the working electrode and the counter electrode; further the manner of operating the claimed system does not structurally distinguish the claimed system from the system of Yabe MPEP § 2114 II), The porous body has a catalyst with carbon-based material [0055]-[0056] (= and the CO 2 adsorbent has a promoting function for promoting the oxygen reduction reaction; Yabe discloses the same materials as indicated in the instant specification for providing a promoting function including a Pt catalyst with a carbon carrier [0043]). PNG media_image1.png 424 724 media_image1.png Greyscale Figure 1 of JP 2017-202941. Figure 1 indicates that the electrons are moving from the first electrode (1) to the second electrode (2) and the CO 2 reducing at the porous body of the first electrode. Regarding the claimed “configured to apply a first voltage…” and “configured to apply the first voltage” (lines 8-10), the phrasing is directed towards the intended use of the claimed power supply. Moreover, the external power supply of Yabe applies first and second voltages that differ [0009] and different polarities as described above. Regarding the claimed “producing active oxygen” while Yabe does not specifically address the claim limitation “producing active oxygen”, this is considered to be an intrinsic property resulting from following the method steps taught by the reference(s), which are the same as those instantly claimed, absent any clear and convincing evidence and/or arguments to the contrary. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise. Additionally the instant system claims recite ‘CO 2 adsorbent is configured to adsorb”…”when the first voltage is applied”… “the CO 2 adsorbent is configured to desorb…” “when the second voltage different from the first voltage is applied”. The claimed statements are directed towards the manner of operating the claimed system. There is nothing positively recited that alters the structure of the system that differs from Yabe. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus. All structural elements are met and/or rendered obvious by the disclosure of Yabe. Any reaction or product produced by the claimed system does not further structurally limit the claimed system. Regarding claims 2-4, Yabe discloses the same materials as indicated as satisfying the claimed “oxygen reduction catalyst” including Pt and a “high specific surface area material” (e.g. Pt catalyst with activated carbon) (instant Spec. [0040]) [0055]-[0056]. Regarding claim 6-7, Yabe discloses the claimed system as described above. Yabe discloses dissolving the carbon dioxide to form carbonate ions or bicarbonate ions and wherein the system includes adsorbing the carbonate ions or bicarbonate ions, applying a second voltage between the first electrode and second electrode such that the first electrode is positive and which is lower then the first voltage thereby desorbing the carbonate ions or bicarbonate ions from the surface of the porous body [0009]. Instant claim 6 states a promoting function for the oxygen reduction reaction (claim 1) and carbonate ion dissociation reaction (claim 6) carried out by the CO 2 adsorbent without further specifying any structural differences. Since Yabe discloses promoting function being present from the catalyst material and carbon-based porous body, the structure of Yabe discloses both promoting functions. The instant claims do not contain any structural differences from the device of Yabe. Moreover, the manner of operating the claimed system does not differentiate an apparatus claim from the prior art as stated above. Regarding claim 8, Yabe discloses the adsorbent containing a catalyst included with activated carbon [0055]-[0056]. There is nothing structurally claimed that differs from the disclosure of Yabe in regards to the CO 2 adsorbent. Moreover Yabe discloses the same or similar reaction occurring enhanced by the catalytic material and carbon-based porous body. Regarding claim 10, Yabe discloses the same materials as indicated as satisfying the claimed “oxygen reduction catalyst” including Pt and a “high specific surface area material” (e.g. Pt catalyst with activated carbon) (instant Spec. [0040]) [0055]-[0056]. Yabe discloses both electrodes comprising porous conductive material (e.g. conductive polymer [0020]) . 07-21-aia AIA Claim (s) 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yabe et al. (JP 2017-202941) in view of Narvaez-Celada et al. (“CO 2 electrochemical reduction on metal-organic framework catalysts: current status and future directions”, J. of Mater. Chem. A, 10, 5899, 2022) . Regarding claim 5, Yabe discloses the claimed system as described above. Yabe discloses a high specific surface area material such as activated carbon. Yabe fails to disclose the high specific surface area material is Ni 3 (HITP) 2 . In the same or similar field of CO 2 electrochemical reduction, Narvaez-Celada discloses the addition of metal organic frameworks (MOFs) having high surface area with tailorable makeup making them ideal candidates for catalyst design (abstract). Narvaez-Celada discloses that MOFs can be combined with carbon-based materials and can include MOFs such as Ni 3 (HITP) 2 which has remarkable electrical properties due to full in-plane charge delocalization, which leads to high conductivity value in bulk and film form (pg. 5903, left column, first paragraph). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising Ni 3 (HITP) 2 as a high specific surface area material because Narvaez-Celada discloses the Ni 3 (HITP) 2 provides remarkable electrical properties as described above. It would have been obvious to utilize the MOF material alone or in combination with the carbon-based catalytic material of Yabe for enhancing the electrochemical CO 2 reaction. Regarding claim 9, Yabe discloses ruthenium as a catalyst material [0056], however fails to disclose the claimed RuO 2 . Narvaez-Celada discloses that it is known in the field that RuO 2 and IrO 2 are utilized as a commercial catalysts (pg. 5903, left column, 2 nd paragraph). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising a RuO 2 catalyst material because Yabe discloses that ruthenium is a catalytic material and Narvaez-Celada discloses that RuO 2 is a known commercially available catalyst in the same or similar field of endeavor . Response to Arguments 07-37 AIA Applicant's arguments filed 4 March 2026 have been fully considered but they are not persuasive. On pages 8-11 the remarks generally state that the prior art applied does not disclose the claimed invention . On page 12, “Argument 1” states that Yabe et al. teach a different polarity arrangement for the CO 2 adsorption and therefore does not disclose the claimed invention. It is initially noted that Yabe et al. disclose that the first and second electrodes may be formed of the same material and structure. Such an arrangement would provide for adsorption to occur on either electrode depending on the voltage applied. Yabe et al. disclose that the second electrode may function as the positive electrode (cathode), therefore the first electrode functions as the negative electrode (anode) [0031], [0034]-[0035]. Additionally, Yabe et al. disclose that when the second voltage is applied, the first electrode is positive and the voltage is lower than the first voltage [0009]. Moreover, application of the polarity (negative, positive) to a terminal is directed towards the manner of operating a claimed system. The device of Yabe et al. includes an external power supply connected to both the first and second electrodes and therefore is capable of applying either polarity to the electrodes. On pages 12-13 “Argument 2” is directed towards the claimed production of active oxygen. The Examiner acknowledges that Yabe et al. do not explicitly state the formation of active oxygen, however, the use of a device to produce a particular product does not further structurally limit the claimed device. Yabe et al. disclose each structural element and material as claimed. Similar to the instant specification [0019]-[0021], Yabe et al. disclose carbonate ion dissociation reaction [0009]. The argument further states that the oxygen reduction reaction that produces active oxygen is an electrochemical reduction reaction…the working electrode is the negative electrode, allowing electrons to be supplied. Yabe et al. unambiguously disclose the movement of electrons based on the application of an external power supply. The argument continues by stating that Yabe et al.’s configuration appears to be directed simply to electrostatic adsorption and desorption of carbonate ions and therefore does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. The Examiner acknowledges the teaching of Yabe et al. stating “the carbonate ions or bicarbonate ions are electrostatically adsorbed onto the surface” [0024]. However, Yabe et al. also disclose multiple embodiments, for example, one in which no external voltage application is required [0022] and embodiments where external voltage is applied (see citations above). On pages 13-16 “Argument 3” is presented and states that Yabe et al. is silent about the technical feature recited in the amended independent claim and therefore does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. There is nothing currently structurally claimed that differs from the disclosure of Yabe et al. Yabe et al. indicates that application of a voltage includes the first electrode as the negative electrode [0031]-[0035]. Conclusion 07-40 AIA 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 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. 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, 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. 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. /Stefanie S Wittenberg/Primary Examiner, Art Unit 1795 Application/Control Number: 18/318,757 Page 2 Art Unit: 1795 Application/Control Number: 18/318,757 Page 3 Art Unit: 1795 Application/Control Number: 18/318,757 Page 4 Art Unit: 1795 Application/Control Number: 18/318,757 Page 5 Art Unit: 1795 Application/Control Number: 18/318,757 Page 6 Art Unit: 1795 Application/Control Number: 18/318,757 Page 7 Art Unit: 1795 Application/Control Number: 18/318,757 Page 8 Art Unit: 1795 Application/Control Number: 18/318,757 Page 9 Art Unit: 1795 Application/Control Number: 18/318,757 Page 10 Art Unit: 1795 Application/Control Number: 18/318,757 Page 11 Art Unit: 1795 Application/Control Number: 18/318,757 Page 12 Art Unit: 1795
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