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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7 and 15-18, drawn to a product, classified in C25B 11/077.
II. Claims 8-14, drawn to a process of its manufacture, classified in C25D 3/12.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as a product and its process of making. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the nanocomposite electrode may be made by, e.g. electroless plating or vapor deposition of Co.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions differ in their field of classification. Invention I is classified by the non-noble metal oxide electrocatalyst. Invention II is classified by an electroplating bath of a cobalt solution.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Heather Flanagan on 2/10/2026, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-7 and 15-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-14 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 7 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.
Claim 7 includes the limitation “a volume of the nanocomposite electrode is at least 0.1 cm3”. The metes and bounds of the claim are unclear as there is no indication if either the whole volume of the electrode or only a portion of it is at least 0.1 cm3. Appropriate correction is required. For the purpose of examination, claim has been treated as directed to only a portion of the electrode with volume at least 0.1 cm3.
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.
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.
Claims 1-3, 5-7, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wenyang et al. (J. Hazard. Mater., 2022) in view of Wang et al. (CN 111293303 A, using attached machine translation).
Regarding claims 1-3, 5, and 6, Wenyang teaches an electrode for electrochemical reduction of nitrate to ammonia comprising a copper substrate, and Co3O4 and Co(OH)2 electrolytically deposited on the copper substrate (p. 1, Abstract; p. 2, 2.2 Preparation of Co3O4/Cu electrode). Wenyang does not teach a porous copper electrode wherein the porous copper substrate is a copper foam, nor wherein the Co3O4 is in the form of nanoparticles which are bound to and extend from the copper substrate. However, Wang teaches an electrode comprising a platinum nanoparticle catalyst supported on a foam copper substrate (p. 2, "the negative electrode comprises..."), wherein the nanoparticles are bound to and extend from the porous copper substrate (p. 3, "In another aspect of the invention..."), and the nanoparticles are in the range of 50 to 500 nanometers (p. 2, “the platinum nanoparticle is 10-60 nm.”). The electrode disclosed by Wang is analogous because its application is in hydrogen evolution reaction (p. 2, “The invention claims a simple and fast method…”), known in the art as a similar reduction reaction occurring in aqueous electrochemical cells.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the copper and Co3O4 electrode of Wenyang by using a copper foam substrate and Co3O4 nanoparticles deposited on the substrate. One of ordinary skill in the art would have been motivated to make this modification in order to increase the active surface area of both Cu and Co3O4 in the electrode and therefore the number of potential sites for the overall reduction reaction (Wenyang p. 4, 3.1 Theoretical predicting activity of dual active sites...; see also p. 3, 2.6 Computational Methods), and to decrease the required catalyst loading (Wang p. 3, “…this method can effectively reduce the loading of platinum…”). Doing so would result in an electrode with improved ammonia yield per unit mass or volume of catalytic material as the number of reaction sites increases.
Regarding claim 7, Wenyang does not disclose a volume of the nanocomposite electrode at least 0.1 cm3. However, the volume of an electrode will be limited by the size and composition of the electrolytic bath, the structural requirements for operation, and other parameters of specific applications. The claimed volume would have been obvious to one of ordinary skill in the art through routine experimentation. See MPEP § 2144.05(II).
Regarding claims 15-18, the electrode of Wenyang is utilized in the electrocatalytic reduction of nitrate to ammonia in an aqueous solution (p. 3, 2.3 Electrochemical test). The electrocatalytic reduction of nitrate to nitrite is facilitated by the copper in the electrode of Wenyang, and the further reduction of nitrite to ammonia is facilitated by the presence of Co3O4 in the electrode (p. 5, 3.1).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wenyang in view of Wang as applied to claim 1 above, and further in view of Sacco et al. (WO 98/21767 A2).
Regarding claim 4, Wang does not teach a porosity of the copper foam in a range of 5 to 200 pores per inch. However, Sacco teaches a copper foam support member for an electrode, equivalent to a copper foam substrate, with "a pore size within the range from about 40 ppi to about 70 ppi" (p. 8, lines 10-16; as an electrode support member p. 5, lines 3-6). Sacco teaches that this helps with filling the active negative material and providing greater mechanical flexibility of the copper support member (p. 8, lines 10-16). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode copper foam substrate disclosed by Wang to include wherein a porosity of the copper foam substrate is between 40 and 70 ppi, because of the greater ease of filling the negative space of the electrode with, e.g. catalytically active nanoparticles for improving its function.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colton B Forry whose telephone number is (571)272-8873. The examiner can normally be reached Monday through Friday, 7:30 AM-5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Barr can be reached at (571)272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CBF/Examiner, Art Unit 1711
/MICHAEL E BARR/Supervisory Patent Examiner, Art Unit 1711