Detailed Action
This is a Final Office action based on application 18/377,589 filed on June 24, 2021. The application is a CON of application 17/356,973, with priority to provisional application 63/043,909 filed June 25, 2020.
Claims 1-3 and 5-20 are pending, Claims 11-20 are currently withdrawn, and Claims 1-3 and 5-10 have been fully considered.
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 .
Status of the Rejection
The art rejections of record are withdrawn in response to amendment.
New grounds of rejection are presented
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Lan” (CN 107253752 A; hereinafter, text citations attributed to Lan are taken from a machine translation of the document into English).
Regarding claim 1, Lan discloses a working electrode for the electrochemical remediation of a metal species (para [0043]-[0044], a conductive composite material is utilized as a working electrode to absorb cobalt ions and reduce them to elemental cobalt, thereby achieving remediation of a cobalt-contaminated wastewater; see Examples 1-3 para [0047]-[0064]), the working electrode comprising:
a conductive substrate (an polyurethane sponge coated with straw charcoal, as described in para [0050] (Example 1), [0056] (Example 2), [0062] (Example 3); para [0005], the phrase “straw charcoal” refers to biochar made from various agricultural plant matter, such as chaff, straw, nut shells, sawdust etc; para [0085]-[0094], Comparative Examples 8 and 9 show that the straw charcoal/sponge substrate with no conductive polymer coating can be used as an electrode, ergo the substrate is conductive);
and a polymeric coating comprising polythiophene on the conductive substrate (para [0042], “combining straw charcoal and conductive polythiophene on polyurethane sponge”; para [0051], [0057], [0063] disclose methods for synthesizing a polythiophene coating onto the straw charcoal/sponge substrate).
Regarding claim 5, Lan teaches the electrode of claim 1 and further teaches the substrate comprises conductive carbon (straw charcoal, as described in para [0050] (Example 1), [0056] (Example 2), [0062] (Example 3); para [0005], the phrase “straw charcoal” refers to biochar made from various agricultural plant matter, such as chaff, straw, nut shells, sawdust etc).
Regarding claim 6, Lan teaches the electrode of claim 1, and further teaches the conductive substrate comprises a polyurethane sponge (para [0042]), a material that satisfies the plain meaning of the word “mesh”.1
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being obvious over “Paranthaman” (US 2019/0225513 A1).
Regarding claim 1, Paranthaman teaches a working electrode (para [0010], “A capacitive deionization system can include a first electrode“) comprising:
a conductive substrate (“first current collector” comprising a metal foam, as described in para [0010]-[0011], [0014], [0061]);
and a polymeric coating comprising a semiconducting or redox-active polymer on the conductive substrate (para [0054], “conductive polymer coating is provided on the carbon particles of the first electrode forming first coated carbon particles"; para [0056], “coated carbon particles are adhered to an open cell metal foam”; the “coated carbon particles” is the coating on the substrate, and the “conductive polymer” is a component that the coating comprises).
Paranthaman teaches using the working electrode as a capacitive deionization electrode, and does not specifically teach that it can be used for the electrochemical remediation of a metal species. Nevertheless, Paranthaman’s electrode reads on the electrode of claim 1 because the limitation “for the electrochemical remediation of a metal species” is a preamble recitation expressing the intended use of the claimed electrode, rather than a structural feature of the electrode. Article claims are limited by the article’s structure, and are not limited by the manner in which the article is meant to be used (MPEP 2114). A preamble statement reciting the intended use of the article could be considered further limiting if the intended use were to clearly imply an additional structural feature (MPEP 2111.02(II)), however, in this instance, there is no apparent structural feature that can be relied upon to distinguish an electrode for metal remediation (as claimed) from electrode for capacitive deionization (as taught in Paranthaman. Therefore the recitation “for the electrochemical remediation of a metal species” does not patentably distinguish Applicant’s claim 1 from Paranthaman’s disclosure.
Paranthaman teaches that the semiconducting or redox-active polymer is selected from of polyaniline, polythiophene, polypyrrole, poly(p-phenylene) (para [0013], [0059], claim 5). However, Paranthaman does not specifically demonstrate an electrode in which the polymer is a polythiophene (para [0078], Paranthaman’s only experimental example uses polyaniline as the polymer).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, when forming the electrode taught in Paranthaman, to select polythiophene as the semiconducting or redox-active polymer from among the four semiconducting or redox-active polymers that Paranthaman discloses are suitable for use in their invention, because the selection of a known material based upon its suitability for the base invention’s intended use is within the ambit of one of ordinary skill in the art [MPEP § 2144.07]. The court has held that if an anticipated success is attained by a person pursuing one of a finite number of known options within their technical grasp, the outcome likely reflects ordinary skill and common sense, rather than inventiveness (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397 (2007); also see MPEP 2143(E) and case law discussed therein). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Regarding claims 2-3, Paranthaman renders obvious the working electrode of claim 1, wherein the polymeric coating further comprises a conductive additive, wherein the conductive additive comprises carbon particles (the conductive coating also comprises, in addition to the conductive polymer, “tire-derived carbon” i.e. carbon particles formed by pyrolysis of tire rubber waste; see para [0052], [0054], [0062]-[0064], [0070]-[0071]).
Regarding claim 5, Paranthaman renders obvious the working electrode of claim 1, wherein the conductive substrate comprises a metal selected from a list that includes titanium and stainless steel (para [0014], “The current collector can be formed from at least one of the selected from the group consisting of Ni, Pd, Pt, Ti, Zr, Hf, Cu, Ag, Au, and stainless steel”). Paranthaman does not specifically demonstrate an embodiment in which the metal is titanium or stainless steel (para [0078], Paranthaman’s only experimental example uses nickel as the metal). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select titanium or stainless steel from among the metals that Paranthaman teaches are suitable, because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07]. The court has held that if an anticipated success is attained by a person pursuing one of a finite number of known options within their technical grasp, the outcome likely reflects ordinary skill and common sense, rather than inventiveness (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397 (2007); also see MPEP 2143(E) and case law discussed therein).
Regarding claim 6, Paranthaman renders obvious the working electrode of claim 1, wherein the conductive substrate comprises a mesh (para [0056], “an open cell metal foam”; an open cell foam reads on the claim because claims are given their broadest reasonable interpretation in light of the specification and of the plain meanings of the words. An open cell mesh fits within the scope of the plain meaning of “mesh”2).
Regarding claim 7, Paranthaman, who renders obvious the working electrode of claim 1, also teaches an electrochemical system for the electrochemical remediation of a metal species (para [0010], “A capacitive deionization system”), the system comprising: an electrochemical cell comprising:
the working electrode (para [0010], “system can include a first electrode”); and
a counter electrode spaced apart from the working electrode (para [0010], “A second electrode”);
a power supply electrically connected to the working and counter electrodes (para [0067], “The first and second electrodes are electrically connected with a power source”); and
a pump for flowing a contaminated solution and then a recovery solution through the electrochemical cell (para [0055], “a pump 82 for circulating the saline solution”).
Paranthaman teaches using the system for capacitive deionization, and does not specifically teach that it can be used for the electrochemical remediation of a metal species. Nevertheless, Paranthaman’s system reads on the system of claim 7 because the limitation “for the electrochemical remediation of a metal species” is a preamble recitation expressing the intended use of the claimed electrode, rather than a structural feature of the system. Apparatus claims are limited by the device’s structure, and are not limited by the manner in which the device is meant to be used (MPEP 2114). A preamble statement reciting the intended use of the device could be considered further limiting if the intended use clearly implied an additional structural feature (MPEP 2111.02(II)), however, in this instance, there is no apparent structural feature that can be relied upon to distinguish the claimed system for metal remediation from Paranthaman’s system for capacitive deionization. Therefore, the recitation “for the electrochemical remediation of a metal species” does not patentably distinguish Applicant’s claim 7 from Paranthaman’s disclosure.
Regarding claim 8, Paranthaman renders obvious the system of claim 7, wherein the electrochemical cell further comprises a membrane between the working electrode and the counter electrode (para [0058], “an anion exchange membrane adjacent to the conductive polymer coating of the first electrode, and a cation exchange membrane adjacent the conductive polymer coating of the second electrode”).
Regarding claim 9, Paranthaman renders obvious the system of claim 7, wherein the counter electrode comprises a metal, carbon, crystalline material, and/or a polymer (para [0054], [0072], [0075], the second electrode, like the first electrode, comprises a metal current collector, and a coating on the current collector, wherein the coating comprises carbon particles and a conductive polymer).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Paranthaman in further view of “Xiong” (US 2010/0147704 A1).
Regarding claim 10, Paranthaman renders obvious the system of claim 7, but does not teach wherein the electrochemical cell comprises multiple pairs of the working electrode and the counter electrode arranged in a stack.
Xiong is similarly directed to a capacitive deionization system (para [0005], [0008], [0018], figure 1), said system comprising a working electrode (para [0018], figure 1, a first cation-exchange electrode member 12), said working electrode comprising a semiconducting or redox-active polymer (para [0020]-[0021], “member 12 includes a conductive base 30 ... one or more conducting polymers may be employed as the conductive substrate 38 ... may include polyaniline, polypyrrole, polythiophene, and combinations thereof”), and said system further comprising a counter electrode (figure 1, para [0018], second anion-exchange electrode member 14). Xiong further teaches wherein the system comprises multiple pairs of the working electrode and the counter electrode arranged in a stack. Xiong teaches (para [0034]-[0037], figure 5-7). Xiong teaches that by configuring the electrochemical ion removing device as a stack of many cells, the device is able to split the incoming water into many smaller streams which are treated in parallel, thereby improving deionization efficiency relative to a single-channel device (para [0037]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Paranthaman by arranging the electrochemical cell with multiple pairs of the working electrode and counter electrode in parallel, based on Xiong’s disclosure of having arranged electrodes this way in a similar device (figure 5-7), and Xiong’s teaching that such arrangement results in a device with high deionization efficiency (para [0037]).
Response to Amendment
The Declaration under 37 CFR 1.130, filed 18 March 2026, is sufficient to overcome the rejection of claim 1 based upon “Hatton” (US 2022/0119283 A1).
Response to Arguments
Applicant’s arguments, see Remarks filed 18 March 2026, with respect to the rejections of the claims under §102, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of Lan and Paranthaman
Applicant amends claim 1 to further recite that the conducting polymer is polythiophene or one of certain polythiophene derivatives.
With respect to the §102(a)(2) rejection over “Hatton” (US 2022/0119283 A1), applicant notes that present inventor Xiao Su is a joint inventor of the Hatton reference, and swears under affidavit that Hatton obtained the subject matter of amended claim 1 directly from Su. Applicant argues that the Hatton reference is therefore disqualified as prior art under §102(b)(2)(A).
With respect to the §102(a)(1) rejection over “Lu” (WO 2020/028334 A1), Applicant argues that the only conductive polymers that Lu considers are nitrogen-containing polymers e.g. polyaniline. Applicant argues that the amendment to claim 1, limiting the conductive polymer to polythiophenes, distinguishes claim 1 from Lu.
Applicant’s arguments are persuasive and the rejections of record are withdrawn. However upon further search and consideration Examiners find that the claimed subject matter is disclosed elsewhere in the prior art. New grounds of rejection are therefore presented in this action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. “Otani” (JP H07-24760 B2) discloses an electrode for reversible absorption and release of ions from water, comprising a metal plate coated with polythiophene.
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 Andrew R Koltonow whose telephone number is (571)272-7713. The examiner can normally be reached Monday - Friday, 10:00 - 6:00 ET.
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 V 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.
/ANDREW KOLTONOW/Examiner, Art Unit 1795
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
1The plain meaning of mesh as defined in American Heritage Dictionary is:
“mesh n. ... 2. An openwork fabric or structure; a net or network”
2 The plain meaning of mesh as defined in American Heritage Dictionary is:
“mesh n. ... 2. An openwork fabric or structure; a net or network”