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 .
Claims 1-20 are pending for this Office Action.
Election/Restrictions
Applicant's election with traverse of claims 1-7 in the reply filed on 06/08/2026 is acknowledged. The traversal is on the following ground(s) that are not found persuasive.
On page(s) 2, the Applicant argues that there is no support that the product of group I can be made by a different method. Gokarna et al (“Colloidal Synthesis of Octahedral Shaped PbSe Nanocrystals from Lead Oleate and Se: Temperature Effect”, Bull. Korean Chem. Soc. 2005, Vol. 26, No. 11) teaches forming irregular octahedral lead particles (see e.g. abstract; Fig 4) using a colloidal method (see e.g. abstract). Britt et al (“Hexameric Octahedral Clusters of PbSe Nanocrystals Grown from Amorphous Lead(II) Carboxylate Nanoparticles”, Chemistry of Materials, Vol 25, Issue 12, 2013) teaches forming irregular octahedral lead particles (see e.g. abstract; Fig 2) using an injection method (see e.g. page 2545, col 1, “Synthetic procedures”).
On page(s) 3, the Applicant argues that there is no support that the product of group I can be used in a different process. Sun et al (“Investigation of lead particles loading on the surface of activated carbon on the performance of lead carbon batteries and its potential mechanisms“, Journal of Energy Storage, Volume 60, April 2023, 106641) teaches using an electrode comprising lead particles in a battery (see e.g. abstract).
On page(s) 3, the Applicant argues that distinctness between group II and group III using A, B, and C has not been shown. All three criteria were addressed in the Restriction Requirement and reproduced here. “In the instant case, the inventions as claimed have material different modes of operation that do not overlap in scope and are not obvious variants (a method of making irregular octahedral shaped Pb particles on a substrate vs a method of electrolytically reducing carbon dioxide). Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.”
The requirement is still deemed proper and is therefore made FINAL. Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected methods, there being no allowable generic or linking claim.
Claims 1-7 are under consideration for this Office Action.
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) 1 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oloman et al (US 20080223727 A1) in view of He et al (“Electrochemically created roughened lead plate for electrochemical reduction of aqueous CO2”, Catalysis Communications, 72, 2015, pages 38–42).
Claim 1: Oloman discloses an electrode (see e.g. abstract), comprising:
a substrate (see e.g. [0010]);
a catalyst layer (“electro-active material”) at least partially covering a surface of the substrate (“non-conductive substrates coated with selectively electro-active materials”, see e.g. [0010]).
Oloman discloses that the substrate can be glass (see e.g. [0010]). KSR rationale E states that it is obvious to choose ‘from a finite number of identified, predictable solutions, with a reasonable expectation of success’ and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Oloman by selecting glass as the material of the substrate.
Oloman discloses that the catalyst can be lead (Pb) (see e.g. [0010]). KSR rationale E states that it is obvious to choose ‘from a finite number of identified, predictable solutions, with a reasonable expectation of success’ and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Oloman by selecting lead as the material of the catalyst.
Oloman does not explicitly teach that the Pb layer comprises irregular octahedral-shaped Pb particles having an average particle size of from 0.5 to 3 micrometers (µm); wherein the irregular octahedral-shaped Pb particles are uniformly distributed on a surface of the Pb layer.
He disclose an electrode for the electrochemical reduction of CO2 (see e.g. abstract), making it analogous art to the instant invention and Oloman (see e.g. abstract of Oloman) (MPEP § 2141.01(a) I). The electrode of He includes surface-roughened Pb (see e.g. abstract) comprising irregular octahedral-shaped Pb particles (see e.g. Fig 1; page 39, col 1, paragraph starting with “Fig. 1b-d”: “octahedral-like Pb particles”) having an average particle size of from 0.5 µm (see e.g. page 39, col 1, paragraph starting with “Fig. 1b-d”: “have an average size of ~0.5 μm”) uniformly distributed on a surface of the Pb layer (see e.g. page 39, col 1, paragraph starting with “Fig. 1b-d”: “a uniform distribution”). These electrodes “exhibited significantly higher activity, selectivity, and energy utilization in the electrocatalytic reduction of CO2 to HCOOH using water under ambient temperature and pressure” that “maintained high activities” due to “the enlarged active surface area and increased number of reactive species associated with the three-dimensional structure of the surface” (see e.g. abstract). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Oloman such that the Pb catalyst is modified to be modified in the manner detailed in He to yield surface-roughened Pb comprising irregular octahedral-shaped Pb particles that exhibit significantly higher activity, selectivity, and energy utilization in the electrocatalytic reduction of CO2 to HCOOH using water under ambient temperature and pressure that maintain high activities due to the enlarged active surface area and increased number of reactive species associated with the three-dimensional structure of the surface.
Claim 4: Oloman in view of He does not explicitly teach that the Pb layer has an arithmetic average roughness (Sa) in a range of 2.5 to 3.8 µm. However, Heteaches that the Pb layer is subjected to a roughening treatment (see e.g. (page 38, col 2, paragraph starting with “All electrochemical”). The roughening process causes an “enlarged active surface area” (see e.g. abstract; page 41, col 1, paragraph starting with “The XRD”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Oloman in view of He by optimizing the roughness Sa of the electrode via the roughening process to get the desired active surface area for the reaction.
Claim 5: Oloman in view of He does not explicitly teach that Pb layer has a root mean square roughness (Sq) in a range of 3.0 to 5.7 µm. However, He teaches that the Pb layer is subjected to a roughening treatment (see e.g. (page 38, col 2, paragraph starting with “All electrochemical”). The roughening process causes an “enlarged active surface area” (see e.g. abstract; page 41, col 1, paragraph starting with “The XRD”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the electrode of Oloman in view of He by optimizing the roughness Sq of the electrode via the roughening process to get the desired active surface area for the reaction.
Claim 6: Oloman in view of He does not explicitly teach a current density of 40 to 100 milliamperes per square centimeter (mA/cm2) at a potential of -0.5 to -0.7 Volt (VAg/AgCl). However, the limitation of clam 6 is describing a property of the electrode. Oloman in view of He teaches all of the structural limitations of claim 6 and therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention of claim 6 and the electrode of Oloman in view of He would have substantially similar properties, including a current density of 40 to 100 milliamperes per square centimeter (mA/cm2) at a potential of -0.5 to -0.7 Volt (VAg/AgCl).
Claim 7: Oloman in of He does not explicitly teach a Tafel slope of 200 to 360 millivolts per decade (mV/decade) for CO production in a salt solution at a scan rate of 5 to 50 millivolts per second (mV/s). However, the limitation of clam 6 is describing a property of the electrode. Oloman in view of He teaches all of the structural limitations of claim 6 and therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention of claim 6 and the electrode of Oloman in view of He would have substantially similar properties, including a Tafel slope of 200 to 360 millivolts per decade (mV/decade) for CO production in a salt solution at a scan rate of 5 to 50 millivolts per second (mV/s).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oloman in view of He as applied to claim 1 above, and in further view of Baker et al (US 20170335472 A1).
Claim 2: Oloman does not explicitly teach that the transparent substrate is a glass substrate selected from the group consisting of a fluorine doped tin oxide (FTO) glass substrate, a tin doped indium oxide (ITO) glass substrate, an aluminum doped zinc oxide (AZO) glass substrate, a niobium doped titanium dioxide (NTO) glass substrate, an indium doped cadmium oxide (ICO) glass substrate, an indium doped zinc oxide (IZO) glass substrate, a fluorine doped zinc oxide (FZO) glass substrate, a gallium doped zinc oxide (GZO) glass substrate, an antimony doped tin oxide (ATO) glass substrate, a phosphorus doped tin oxide (PTO) glass substrate, a zinc antimonate glass substrate, a zinc oxide glass substrate, a ruthenium oxide glass substrate, a rhenium oxide glass substrate, a silver oxide glass substrate, and a nickel oxide glass substrate. Oloman only provides a general teaching of a “glass” substrate. Therefore, a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention would be motivated to find a specific type of glass material suitable for these types of electrodes. Baker teaches an electrode for the electrolytic reduction of carbon dioxide (see e.g. abstract), making it analogous art to the instant invention and Oloman (see e.g. abstract of Oloman) (MPEP § 2141.01(a) I). It is shown in Baker that FTO glass is a known substrate for supporting catalysts in these reactions (see e.g. page H1113, col 2, paragraph starting with “In another”). MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention to use FTO glass as the substrate as taught in Baker with a reasonable expectation success.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oloman in view of He as applied to claim 1 above, and in further view of Kumuwat et al (“Comparative Study of Carbon Supported Pb, Bi and Sn Catalysts for Electroreduction of Carbon Dioxide in Alkaline Medium”, Journal of The Electrochemical Society, 164, 14, 2017, pages H1112-H1120).
Claim 3: Oloman does not explicitly teach that the transparent substrate is a glassy carbon substrate. Oloman only provides a general teaching of a “glass” substrate. Therefore, a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention would be motivated to find a specific type of glass material suitable for these types of electrodes. Kumawat teaches an electrode using Pb for the electrolytic reduction of carbon dioxide, making it analogous art to the instant invention and Oloman (see e.g. abstract of Oloman) (MPEP § 2141.01(a) I). It is shown in Kumuwat that glassy carbon is a known substrate for supporting Pb catalysts (see e.g. page H1113, col 2, paragraph starting with “In another”). MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the instant invention to use glassy carbon as the substrate as taught in Kumuwat with a reasonable expectation success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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