DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. KR10-2022-0160725, filed on November 25, 2022.
Claim Interpretation
3. Claim 8, line 4 and claim 9, line 3, each recites a phrase “TiO2 photocatalyst”. The examiner interprets that the phrase refers to photocatalyst consisting of TiO2.
Drawings
4. The drawings are objected to because Fig. 6b has typos for the XPS binding energies for the Bi 4f7/2 and 4f5/2 peaks (see annotated Fig. 6b below). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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Annotated Fig. 6b
Specification
5. The disclosure is objected to because of the following informalities:
[0015] discloses a phrase “vs NHS” It is advised to edit this phrase to “vs NHE (normal hydrogen electrode” in the specification according to Liao et. al., Construction of BiOI/TiO2 flexible and hierarchical S-scheme heterojunction nanofibers membranes for visible-light-driven
photocatalytic pollutants degradation. Science of the Total Environment. (2021) (Liao) that discloses the potential of H2O/·OH at 2.40 V vs NHE (Liao, p. 8, right column, paragraph 1). Appropriate correction is required.
Similarly, it is suggested to amend “vs NHS” to “vs NHE” in specification [0064], [0066] and [0067].
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 5 recites the term, "(vs NHS)". However, it is unclear what the term refers to, i.e., what NHS refers to, and whether vs NHS is required or optional. The examiner interprets the phrase refers to vs. normal hydrogen electrode. Interpretation is speculative. Clarification is required.
8. Claim 6 recites the term, "granular type". However, it is unclear what would be considered as "granular type". The examiner interprets the term as "granular". Clarification is requested. It is advised to delete "type" in the claim.
9. Regarding claim 13, the term “size of a nanometer scale or less” in claim 13 is a relative term which renders the claim indefinite. The term “size of a nanometer scale or less” 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. The examiner interprets the term as "size of 100 nm or less". Clarification is requested.
Claim Rejections - 35 USC § 102
10. 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.
11. 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.
12. Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han, et. al., Mechanistic insights into nano-regional heterostructures for photocatalytic and photoelectrochemical applications. Nanyang Environment and Water Research Institute. (2020) (Han).
13. Regarding, claims 1-4, Han teaches a photocatalyst heterostructure (reading upon p-n heterojunction photocatalyst) (Han, p. 66, paragraph 1), wherein examples of applications for the photocatalyst are in the degradation of organic pollutants (Han, p. 62, paragraph 2), such as volatile organic compounds (VOCs) (Han, p. 62, paragraph 1) including phenol (Han, p. 88, paragraph 1).
Han further teaches the photocatalyst comprising n-type TiO2 nanorod assembled microflowers (n-type TiO2 nanorod assembled microflowers reading upon first compound particles) with p-type BiOI nanodots (reading upon second compound particles) on the surface of the microflowers (Han, p. 66, paragraph 1).
wherein the TiO2 microflowers possess an average diameter of about 2.44 µm (Han, p. 74, paragraph 2) with ultra-small nanodots decorating the surface of the microflowers (i.e. composite) (Han, p. 78, Figure 3.5), which falls within the recited range.
Han further teaches the size of the composite to have a standard deviation of about 0.3 µm (i.e., standard deviation of Han is derived as: (2.8-2.2)/2=0.3µm) (Han, p. 75, Figure 3.3(b)) see annotated Figure 3.3(b) below.
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Annotated Figure 3.3(b)
Given Han teaches a p-n photocatalyst heterostructure (Han, p. 66, paragraph 1) with a composition (i.e., a composite of n-type TiO2 and p-type BiOI) and structure (p-type BiOI on surface of n-type TiO2) that are identical or substantially identical with those of the presently claimed (claim 1; specification, Examples 1-4), therefore, it is clear that the p-n photocatalyst heterostructure (Han, p. 66, paragraph 1) of Han would necessarily and inherently meet the claimed “upon exposure to energy irradiation the composite generates a reactive oxygen species of singlet oxygen (1O2) to induce photolysis of gaseous pollutants.”
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claim Rejections - 35 USC § 103
14. 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.
15. Claims 1-4, 7-11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Han, et. al., Mechanistic insights into nano-regional heterostructures for photocatalytic and photoelectrochemical applications. Nanyang Environment and Water Research Institute. (2020) (Han) further in view of Huang, H., et. al., In Situ Construction of Dye-Sensitized BiOCl/Rutile-TiO2 Nanorod Heterojunctions with Highly Enhanced Photocatalytic Activity for Treating Persistent Organic Pollutants. Inorganic Chemistry. (2021) (Huang).
16. Regarding claims 1-4, Han teaches a photocatalyst heterostructure (reading upon p-n heterojunction photocatalyst) (Han, p. 66, paragraph 1), wherein examples of applications for the photocatalyst are in the degradation of organic pollutants (Han, p. 62, paragraph 2), such as volatile organic compounds (VOCs) (Han, p. 62, paragraph 1) including phenol (Han, p. 88, paragraph 1).
Han further teaches the photocatalyst comprising n-type TiO2 nanorod assembled microflowers (n-type TiO2 nanorod assembled microflowers reading upon first compound particles) with p-type BiOI nanodots (reading upon second compound particles) on the surface of the microflowers (Han, p. 66, paragraph 1).
wherein the TiO2 microflowers possess an average diameter of about 2.44 µm (Han, p. 74, paragraph 2) with ultra-small nanodots decorating the surface of the microflowers (i.e. composite) (Han, p. 78, Figure 3.5), which falls within the recited range.
Han further teaches the size of the composite to have a standard deviation of about 0.3 µm ±0.9 micrometers or less (i.e., standard deviation of Han is derived as: (2.8-2.2)/2=0.3µm) (Han, p. 75, Figure 3.3(b)) see annotated Figure 3.3(b) below.
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Annotated Figure 3.3(b)
However, Han does not explicitly teach upon exposure to energy irradiation the composite generates a reactive oxygen species of singlet oxygen (1O2) to induce photolysis of gaseous pollutants.
With respect to the difference, Huang teaches a p-n heterojunction photocatalyst wherein degradation of organic pollutants such as 2-sec-butyl-4,6-dinitrophenol (Huang, Abstract) proceeds via generation of various reactive species under visible-light irradiation, such as h+, •O2−, •OH, singlet oxygen (1O2), etc. (Huang, p. 11, left column, paragraph 2)
Huang further teaches that •O2− and h+ are the reactive species (Huang, p. 11, left column, paragraph 2).
Huang expressly teaches in general to achieve effective photocatalytic degradation of organic pollutants the generation of reactive species such as singlet oxygen (1O2) under visible-light irradiation is important to induce degradation (Huang, p. 11, left column, paragraph 2).
Han and Huang are analogous art as they are both drawn to p-n heterojunction photocatalysts drawn to the photodegradation of VOCs, such as phenols (Huang, Abstract).
In light of the motivation for generating ∙O2- from a photocatalyst as disclosed by Han above, it therefore would have been obvious to one of ordinary skill in the art to modify the BiOI/TiO2 photocatalyst of Han to generate various reactive species under including singlet oxygen (1O2), in order to achieve effective photocatalytic degradation from a photocatalyst, and thereby arrive at the claimed invention.
17. Regarding claim 7, Han teaches optimal photocatalytic performance upon ultraviolet and visible light illumination (Han, p. 84, paragraph 1).
18. Regarding claim 8, Huang teaches a composite that comprises TiO2 (Huang, Abstract) and a peak of Ti 2p binding energy as measured by X-ray photoemission spectroscopy (XPS) (Huang, p.5, left column, paragraph 1)
wherein two sets of peaks in the Ti 2p spectrum of TiO2 nanorods ascribe to Ti3+ (Ti 2p1/2 at 464.2 eV, Ti 2p3/2 at 457.9 eV) and Ti4+ (Ti 2p1/2 at 463.3 eV, Ti 2p3/2 at 458.2 eV) (Huang, p.5, left column, paragraph 1)
wherein the two sets of peaks in the Ti 2p spectrum of the 10%-BiOCl/R-TiO2 composite are shifted in the positive direction of the TiO2 nanorods (Huang, p. 4, Figure 4b), see annotated Figure 4b below.
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Annotated Figure 4b.
Further, given Han in view of Huang teaches a p-n photocatalyst heterostructure (Han, p. 66, paragraph 1) with a composition (i.e., a composite of n-type TiO2 and p-type BiOI) and structure (p-type BiOI on surface of n-type TiO2) that are identical or substantially identical with those of the presently claimed (claim 1; specification, Examples 1-4)
wherein Huang teaches a p-n heterojunction photocatalyst wherein degradation of organic pollutants such as 2-sec-butyl-4,6-dinitrophenol (Huang, Abstract) proceeds via generation of various reactive species under visible-light irradiation, such as h+, •O2−, •OH, singlet oxygen (1O2), etc. (Huang, p. 11, left column, paragraph 2) therefore, it is clear that the p-n photocatalyst heterostructure (Han, p. 66, paragraph 1) that Han in view of Huang would necessarily and inherently meet the claimed “wherein the composite comprises titanium, and a peak of Ti2p binding energy, as measured by X-ray photoemission spectroscopy (XPS), is shifted in a positive direction with respect to a peak of Ti2p binding energy of a TiO2 photocatalyst.”
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
19. Regarding claim 9, Han in view of Huang teaches a photocatalyst composite that comprises BiOI/TiO2 (Han, p. 66, paragraph 1) wherein a peak of Bi 4f binding is measured by XPS (Han, p. 82, Figure 3.11(a))
wherein characteristic peaks with binding energies of 159.9 eV and 165.2 eV correspond Bi 4f7/2 and Bi 4f5/2 peaks (Han, p. 82, Figure 3.11(a)).
Further, given Han in view of Huang teaches a composition that are identical or substantially identical (see article 19 above) with those of the presently claimed (claim 1; specification, Examples 1-4), therefore, it is clear that the p-n photocatalyst heterostructure (Han, p. 66, paragraph 1) of Han in view of Huang would necessarily and inherently meet the claimed “wherein the composite comprises bismuth, and a peak of Bi4f binding energy as measured by XPS is shifted in a negative direction with respect to a peak of Bi4f binding energy of a TiO2 photocatalyst.”
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.24.
20. Regarding claim 10, Han teaches the first compound particles are TiO2 microflowers comprising of a plurality of TiO2 nanorod primary particles (Han, p. 66, paragraph 1)
wherein the secondary compound particles are BiOI nanodot primary particles (Han, p. 66, paragraph 1).
21. Regarding claim 11, Han teaches the first compound particles are TiO2 microflowers as secondary particles comprising of a plurality of TiO2 nanorod primary particles (Han, p. 66, paragraph 1)
wherein the second compound particles are BiOI nanodot primary particles (Han, p. 66, paragraph 1).
Han further teaches the composite photocatalyst comprising n-type TiO2 nanorod assembled microflowers with p-type BiOI nanodots on the surface of the microflowers (Han, p. 66, paragraph 1).
22. Regarding claim 13, Han teaches p-type BiOI nanodots as second compound particles with an average diameter smaller than 3 nm (Han, p. 80, paragraph 1), which overlaps with the recited range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
23. Regarding claim 14, Huang teaches a p-n heterojunction photocatalyst wherein the content of the first compound TiO2 particles is 95, 93, 90, or 85 weight percent, which falls within the recited range.
wherein the content of the second compound BiOCl particles is 5, 7, 10, or 15 weight percent, which falls within the recited range.
24. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Han and Huang as applied to claims 1-4 above, and further in view of Liao et. al., Construction of BiOI/TiO2 flexible and hierarchical S-scheme heterojunction nanofibers membranes for visible-light-driven
photocatalytic pollutants degradation. Science of the Total Environment. (2021) (Liao).
25. Regarding claim 6, Han in view of Huang teaches the p-n heterojunction photocatalyst of claim 1 wherein the surface of the composite is granular (Han, p. 66, paragraph 1).
With respect to the difference, Liao teaches a p-n heterojunction with the TiO2 oxidation photocatalyst (OP) and the BiOI reduction photocatalyst (RP) in close contact (p. 8, right column, paragraph 2)
wherein the OP (reading upon the first compound particles) and RP (reading upon the second compound particles) were negatively and positively charged (Liao, p. 9, left column, paragraph 1).
Liao expressly teaches that under light irradiation the generation of electrons at the OP of TiO2 and the generation of holes at the RP of BiOI will recombine due to the influence of Coulombic attraction that substantially improves photocatalytic efficiency (Liao, p. 9, left column, paragraph 1).
Han, Huang, and Liao are analogous art as they are all drawn to the degradation of organic pollutants such as all drawn to p-n heterojunction photocatalysts in the photodegradation of organic pollutants such as Rhodamine B (RhB) (Liao, Abstract).
In light of the motivation to have a p-n heterojunction with improved catalytic efficiency in the photodegradation of organic pollutants as disclosed by Liao above, it therefore would have been obvious to one of ordinary skill in the art to improve the photocatalytic efficiency of the p-n heterojunction of Liao by incorporating the first and second compounds to be negatively and positively charged, respectively.
Although Han in view of Huang does not explicitly teach the second compound particles are self-assembled on the negatively charged surfaces of the first compound particles through an electronic interaction to provide a granular type composition as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Han in view of Huang meets the requirements of the claimed product, Han in view of Huang clearly meets the requirements of the present claim.
26. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Han and Huang as applied to claims 1-4 above, and further in view of Leung (US 10315191 B2) (Leung).
27. Regarding claim 15, Han in view of Huang teaches the limitation of claim 1 wherein applications for the photocatalyst are in the degradation of organic pollutants (Han, p. 62, paragraph 2), including phenol (Han, p. 88, paragraph 1) and RhB (Han p.85, Figure 3.12(a)).
Han further teaches traditional air purifiers employ selective sorbent materials but that these methods only filter pollutants rather than eliminate or degrade pollutants through post-treatment (Han, p. 62, paragraph 1)
wherein air purification can comprise photocatalysts in the degradation of organic pollutants with no other by-processes (Han, p. 62, paragraph 2).
Han further teaches heterostructure photocatalysts are proven to be more effective due to wide light absorption range and enhancement of charge separation (Han, p. 62, paragraph 2).
However, Han and Huang do not explicitly teach an air purifier comprising a photocatalyst filter comprising the p-n heterojunction of claim 1.
With respect to the difference, Leung teaches a photocatalyst filter on a cleaning device to purify air in an air channel (Leung, p. 23, column 10, lines 40-44)
wherein the photocatalyst is a composite fiber that may comprise n-type semiconductors TiO2, ZnO, and Bi2O3 in a heterojunction with p-type semiconductors of CuO, Cu2O, and CdTe (Leung, p 21, column 6, lines 19-21) to form a p-n heterojunction (Leung, p. 25, claim 15) (Leung, p.26, claim 16).
Leung expressly teaches that the photocatalyst is disposable allowing the user to replace the old unit with a new one, which is particularly useful when the photocatalyst is a filter (Leung, p. 25, column 13, lines 24-29) allowing for the photocatalyst to be user-friendly and mass produced with a low cost (Leung, p. 25, column 13, lines 29-31).
Han, Huang, and Leung are analogous art as they are all drawn to p-n heterojunction photocatalysts in the photodegradation of organic pollutants such as RhB (Leung, p. 22, column 7, lines 53-56).
In light of the motivation to have a photocatalyst filter in the degradation of organic pollutants as disclosed by Leung above, it therefore been would have been obvious to one of ordinary skill in the art to incorporate the p-n heterojunction composite of Han and Huang in the photocatalyst filter of Leung.
Allowable Subject Matter
28. Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the objection as discussed in paragraph 3 above, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
29. Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
30. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Remy Frederic Lalisse whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
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, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.L./Examiner, Art Unit 1732
/KELING ZHANG/Examiner, Art Unit 1732