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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 13, 2025 has been entered.
This is in response to the Amendment dated November 13, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 5-6 and 9-14 (species) drawn to an invention nonelected without traverse in the reply filed on March 25, 2025.
Claim Rejections - 35 USC § 112
Claims 1, 4, 7-8, 17-21 and 23 have been rejected under 35 U.S.C. 112(a) or 35 U.S.C.
112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The rejection of claims 1, 4, 7-8, 17-21 and 23 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4, 7-8, 17-21 and 23 were rejected under 35 U.S.C. 103 as being unpatentable over Sivasankar et al. (US Patent Application Publication No. 2013/0118911 A1) in view of Bittner et al. (“Physical Properties of Pyridinium Ionic Liquids,” The Journal of Chemical Thermodynamics (2012 Dec 1), Vol. 55, pp. 159-165) and Van Tilborg et al. (“The Electrosynthesis of Carboxylic Acids From Carbon Dioxide and Butadiene.,” Recueil des Travaux Chimiques des Pays‐Bas (1981), Vol. 100, No. 11, pp. 437-438).
With regard to claims 20 and 23, the rejection under 35 U.S.C. 103 as being unpatentable over Sivasankar et al. in view of Bittner et al. and Van Tilborg et al. has been withdrawn in view of Applicant’s amendment. Claims 20 and 23 have been cancelled.
With regard to claims 1, 4, 7-8, 17-19 and 21, the rejection under 35 U.S.C. 103 as being unpatentable over Sivasankar et al. in view of Bittner et al. and Van Tilborg et al. stands.
Regarding claim 1, Sivasankar teaches a method for electrochemical reductive
carboxylation of an unsaturated organic substrate, the method comprising:
(a) providing a reactant medium comprising:
(i) a water-immiscible, ionically conductive, aprotic organic liquid comprising one or more organic liquid cations, the aprotic organic liquid being selected from the
group consisting of an organic solvent (= propylene carbonate) comprising a dissolved electrolyte (= ionic liquids comprising pyridinium and imidazolium groups) [page 2,
[0022]], a liquid polymer comprising a dissolved electrolyte, a water-insoluble polymeric electrolyte, and combinations thereof,
(ii) an unsaturated organic substrate reactant (= the catholyte may include one or more of aromatics comprising benzene, toluene, trifluro toluene, chlorobenzene and m-cresol; and alkenes comprising 1-octene) [page 2, [0022]], and
(iii) a carbon dioxide reactant (= an input feed 112 of a non-aqueous catholyte having carbon dioxide dissolved therein into cathode region) [page 2, [0018]];
(b) providing a product medium (= an input feed 114 of an aqueous anolyte into the
anode region) [page 2, [0018]] comprising water (= in general the anolyte is a water based
solvent, preferably water) [page 2, [0020]], the product medium being free from supporting electrolytes (= the electrochemical cell 102 is configured to feed at least one electrolyte into at least one of the anode and cathode regions)1 [pages 3-4, [0031]]; and
(c) electrochemically reducing the unsaturated organic substrate reactant in the
reactant medium with (i) a cathode in the reactant medium (= cathode region 104 having
cathode 106) and (ii) an anode in the product medium (= anode region 108 having anode 110)
[page 2, [0017]; and Fig. 1].
The method of Sivasankar differs from the instant invention because Sivasankar does not disclose the following:
a. Wherein the water-immiscible, ionically conductive, aprotic organic liquid
comprises one or more organic liquid counterions.
Sivasankar teaches that the ionic liquids comprises pyridinium and imidazolium groups
(page 2, [0022]).
Bittner teaches pyridinium ionic liquids (= title).
A series of pyridinium ionic liquids (ILs) with different cationic structures: 1-ethylpyridinium [C2py], 1-butylpyridinium [C4py], 1-butyl-2-methylpyridinium [C4-2-C1py], 1-butyl-3-methylpyridinium [C4-3-C1py], 1-butyl-4-methylpyridinium [C4-4-C1py], 1-hexylpyridinium [C6py] combined with an anion bis(trifluoromethylsulfonyl)imide [NTf2], and 1-butyl-3-methylpyridinium trifluoromethanesulfonate [C4-3-C1py][OTf], 1-butyl-3-methylpyridinium tetrafluoroborate [C4-3-C1py][BF4], and 1-butyl-3-methylpyridinium tris(pentafluoroethyl)trifluorophosphate [C4-3-C1py][FAP] were measured (page 159, abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the water-immiscible, ionically conductive, aprotic organic liquid described by Sivasankar with wherein the water-immiscible, ionically conductive, aprotic organic liquid comprises one or more organic liquid counterions because
bis(trifluoromethylsulfonyl)imide [NTf2], 1-butyl-3-methylpyridinium trifluoromethanesulfonate
[C4-3-C1py][OTf], 1-butyl-3-methylpyridinium tetrafluoroborate [C4-3-C1py][BF4] and 1-butyl-3-methylpyridinium tris(pentafluoroethyl)trifluorophosphate [C4-3-C1py][FAP] are anions that combine with the cationic structures of 1-ethylpyridinium [C2py], 1-butylpyridinium [C4py], 1-butyl-2-methylpyridinium [C4-2-C1py], 1-butyl-3-methylpyridinium [C4-3-C1py], 1-butyl-4-methylpyridinium [C4-4-C1py] and 1-hexylpyridinium [C6py] as ionic liquids.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the
prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, 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 US 327, 65 USPQ 297 (1945).”
b. Thereby forming a dicarboxylic organic product comprising a reaction product between (i) at least one of the unsaturated organic substrate reactant and a radical-anion of the unsaturated organic substrate reactant, and (ii) at least one of carboanions formed from the carbon dioxide reactant, CO2 anion-radicals formed from the carbon dioxide reactant, and the carbon dioxide reactant in the reactant medium.
Sivasankar teaches that the catholyte may include one or more of alkenes (page 2, [0022]).
The electrochemical cell is generally operational to reduce carbon dioxide in the cathode region to a first product recoverable from the first region while producing an oxidation
product recoverable from the anode region. The cathode may reduce the carbon dioxide into a first product that may include one or more compounds including CO, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, lactic acid, propane, propanoic acid, acetone,
isopropanol, 1-propanol, 1,2-propylene glycol, butane, butane, 1-butanol, 2-butanol, an alcohol, an aldehyde, a ketone, a carboxylate, and a carboxylic acid, preferably oxalate or oxalic acid. Preferably a product extractor (not shown) is employed to extract the selected reduction product from the catholyte output flow 120 and the selected oxidation product from the anolyte output flow 118. In a preferable embodiment, the carbon dioxide reduction product is an oxalate salt, and the oxidation product is X2, where X is at least one of Br or Cl (page 4, [0041]).
van Tilborg teaches the electrosynthesis of carboxylic acids from carbon dioxide and butadiene (= Title; and page 437, Scheme:
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).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by Sivasankar by
thereby forming a dicarboxylic organic product comprising a reaction product between (i) at least one of the unsaturated organic substrate reactant and a radical-anion of the unsaturated organic substrate reactant, and (ii) at least one of carboanions formed from the carbon dioxide reactant, CO2 anion-radicals formed from the carbon dioxide reactant, and the carbon dioxide reactant in the reactant medium because carboxylic acids are produced by electroreducing CO2
to CO2- and reacting the CO2- with an alkene.
Sivasankar teaches or suggests the electrolysis process conditions that can be used in
order to form a dicarboxylic organic product as presently claimed.
Furthermore, it has been held that a newly discovered use or function of components does not necessarily mean the method is unobvious since this use or function may be presumed or inherent in the prior art (MPEP § 2112).
c. (d) recovering the dicarboxylic organic product in the product medium after transport of the dicarboxylic organic product formed in the reactant medium to the product medium.
Sivasankar teaches that:
With reference to FIG. 1, the ion permeable zone 116 between the anode region and the cathode
region can be the interface or “phase stilling zone” between the anolyte and the catholyte. Alternatively, as shown in FIG. 2, the ion permeable zone 116 may be an ion selective membrane or a hydrophobic or glass fiber separator. Depending upon the anolyte and catholyte selected, the ion permeable zone may also be an emulsion layer formed between the anolyte and catholyte (page 3, [0028]).
The electrochemical cell is generally operational to reduce carbon dioxide in the cathode region to a first product recoverable from the first region while producing an oxidation product recoverable from the anode region. The cathode may reduce the carbon dioxide into a first product that may include one or more compounds including CO, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, lactic acid, propane, propanoic acid, acetone, isopropanol, 1-propanol, 1,2-propylene glycol, butane, butane, 1-butanol, 2-butanol, an alcohol, an aldehyde, a ketone, a carboxylate, and a carboxylic acid, preferably oxalate or oxalic acid. Preferably a product extractor (not shown) is employed to extract the selected reduction product from the catholyte output flow 120 and the selected oxidation product from the anolyte output flow 118. In a preferable embodiment, the carbon dioxide reduction product is an oxalate salt, and the oxidation product is X2, where X is at least one of Br or Cl (page 4, [0041]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by Sivasankar by
recovering the dicarboxylic organic product in the product medium after transport of the dicarboxylic organic product formed in the reactant medium to the product medium because Sivasankar teaches oxalic acid in the cathode region and oxalic acid is more soluble in water (= product medium) than in an aprotic organic liquid (= reactant medium), and thus, would have transferred from the cathode region into the anode region via the interface or “phase stilling zone” between the anolyte and the catholyte due to its solubility in water.
Furthermore, it has been held that a newly discovered use or function of components
does not necessarily mean the method is unobvious since this use or function may be presumed or inherent in the prior art (MPEP § 2112).
Regarding claim 4, Sivasankar teaches wherein the aprotic organic liquid comprises the organic solvent comprising a dissolved electrolyte, the dissolved electrolyte comprising the one or more organic liquid cations (= the ionic liquids comprising pyridinium and imidazolium groups) [page 2, [0022]] and Bittner teaches the one or more organic liquid counterions (= an anion of bis(trifluoromethylsulfonyl)imide [NTf2], 1-butyl-3-methylpyridinium
trifluoromethanesulfonate [C4-3-C1py][OTf], 1-butyl-3-methylpyridinium tetrafluoroborate [C4-3-C1py][BF4] and 1-butyl-3-methylpyridinium tris(pentafluoroethyl)trifluorophosphate [C4-3-C1py][FAP]) [page 159, abstract].
Regarding claim 7, Sivasankar teaches wherein the unsaturated organic substrate reactant comprises at least one of an aromatic hydrocarbon substrate, a heteroaromatic
hydrocarbon substrate, an alkylenic hydrocarbon substrate, and an alkylynic hydrocarbon
substrate (= the catholyte may include one or more of aromatics comprising benzene, toluene, trifluro toluene, chlorobenzene and m-cresol; and alkenes comprising 1-octene) [page 2,
[0022]].
Regarding claim 8, Sivasankar teaches wherein: the unsaturated organic substrate
reactant comprises a substituted or unsubstituted benzene (= the catholyte may include one or more of aromatics comprising benzene, toluene, trifluro toluene, chlorobenzene and m-cresol) [page 2, [0022]].
The method of Sivasankar differs from the instant invention because Sivasankar does
not disclose wherein the dicarboxylic organic product comprises phthalic acid.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because the dicarboxylic organic product is the product produced by the method. Sivasankar teaches a method in a similar method as presently claimed. Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633,
86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Furthermore, the Applicant has a different reason for, or advantage resulting from doing
what the prior art relied upon has suggested, it is noted that it is well settled that this is not
demonstrative of nonobviousness. In re Kronig 190 USPQ 425, 428 (CCPA 1976); In re Linter 173 USPQ 560 (CCPA 1972); the prior art motivation or advantage may be different than that of
Applicant’s while still supporting a conclusion of obviousness. In re Wiseman 201 USPQ 658 (CCPA 1979); Ex parte Obiaya 227 USPQ 58 (Bd. of App. 1985) [MPEP § 2144].
Regarding claim 17, Sivasankar teaches wherein in the reactant medium and the product medium are in direct liquid-liquid contact (= with reference to FIG. 1, the ion permeable zone 116 between the anode region and the cathode region can be the interface or
“phase stilling zone” between the anolyte and the catholyte) [page 3, [0028]].
Regarding claim 18, Sivasankar teaches wherein the reactant medium is substantially free from water (= a non-aqueous catholyte) [page 2, [0018]].
Regarding claim 19, Sivasankar wherein the reactant medium further comprises a supporting electrolyte (= the electrochemical cell 102 is configured to feed at least one electrolyte into at least one of the anode and cathode regions) [pages 3-4, [0031]].
Regarding claim 21, Sivasankar teaches wherein: the cathode comprises at least one of
tin, bismuth, gallium, indium, copper, silver, gold, cadmium, mercury, and lead (= in addition, the cathode may be a suitable conductive electrode, such as Al, Au, Ag, Bi, C, Cd, Co, Cr, Cu, Cu alloys (e.g., brass and bronze), Ga, Hg, In, Mo, Nb, Ni, NiCo2O4, Ni alloys (e.g., Ni 625, NiHX), Ni-Fe alloys, Pb, Pd alloys (e.g., PdAg), Pt, Pt alloys (e.g., PtRh), Rh, Sn, Sn alloys (e.g., SnAg, SnPb, SnSb), Ti, V, W, Zn, stainless steel (SS) (e.g., SS 2205, SS 304, SS 316, SS 321), austenitic steel, ferritic steel, duplex steel, martensitic steel, Nichrome (e.g., NiCr 60:16 (with Fe)), elgiloy (e.g.,
Co-Ni-Cr), degenerately doped p-Si, degenerately doped p-Si:As, degenerately doped p-Si:B, degenerately doped n-Si, degenerately doped n-Si:As, degenerately doped n-Si:B and
conductive polymers) [page 5, [0052]]; and the anode comprises at least one of nickel, stainless
steel, and ruthenium-doped titania (= anode electrodes may be the same as cathode electrodes
or different) [page 6, [0060]].
Continued Response
Claim Rejections - 35 USC § 112
Claims 24 and 25 are 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 24
line 2, “preferentially soluble in the product medium as compared to the reaction medium” is indefinite.
The word "preferentially" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05.
Claim Rejections - 35 USC § 103
Claim(s) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Sivasankar et al. (US Patent Application Publication No. 2013/0118911 A1) in view of Bittner et
al. (“Physical Properties of Pyridinium Ionic Liquids,” The Journal of Chemical Thermodynamics
(2012 Dec 1), Vol. 55, pp. 159-165) and Van Tilborg et al. (“The Electrosynthesis of Carboxylic Acids From Carbon Dioxide and Butadiene.,” Recueil des Travaux Chimiques des Pays‐Bas
(1981), Vol. 100, No. 11, pp. 437-438) as applied to claims 1, 4, 7-8, 17-19 and 21 above.
Sivasankar, Bittner and Van Tilborg are as applied above and incorporated herein.
Regarding claim 24, the method of Sivasankar differs from the instant invention
because Sivasankar does not disclose wherein the dicarboxylic organic product is preferentially
soluble in the product medium as compared to the reaction medium.
Sivasankar teaches that:
The electrochemical cell is generally operational to reduce carbon dioxide in the cathode region to a first product recoverable from the first region while producing an oxidation product recoverable from the anode region. The cathode may reduce the carbon dioxide into a first product that may include one or more compounds including CO, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, lactic acid, propane, propanoic acid, acetone, isopropanol, 1-propanol, 1,2-propylene glycol, butane, butane, 1-butanol, 2-butanol, an alcohol, an aldehyde, a ketone, a carboxylate, and a carboxylic acid, preferably oxalate or oxalic acid. Preferably a product extractor (not shown) is employed to extract the selected reduction product from the catholyte output flow 120 and the selected oxidation product from the anolyte output flow 118. In a preferable embodiment, the carbon dioxide reduction product is an oxalate salt, and the oxidation product is X2, where X is at least one of Br or Cl (page 4, [0041]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by Sivasankar with
wherein the dicarboxylic organic product is preferentially soluble in the product medium as
compared to the reaction medium because Sivasankar teaches oxalic acid in the cathode region and oxalic acid is more soluble in water (= product medium) than in an aprotic organic liquid (=
reactant medium).
Furthermore, it has been held that a newly discovered use or function of components does not necessarily mean the method is unobvious since this use or function may be presumed or inherent in the prior art (MPEP § 2112).
Regarding claim 25, the method of Sivasankar differs from the instant invention
because Sivasankar does not disclose wherein electrochemically reducing the unsaturated organic substrate reactant comprises forming a CO2 anion-radical from the carbon dioxide reactant, and then subsequently reacting the CO2 anion-radical with the unsaturated organic
substrate reactant.
Sivasankar teaches that the catholyte may include one or more of alkenes (page 2, [0022]).
The electrochemical cell is generally operational to reduce carbon dioxide in the cathode region to a first product recoverable from the first region while producing an oxidation product recoverable from the anode region. The cathode may reduce the carbon dioxide into a first product that may include one or more compounds including CO, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, lactic acid, propane, propanoic acid, acetone, isopropanol, 1-propanol, 1,2-propylene glycol, butane, butane, 1-butanol, 2-butanol, an alcohol, an aldehyde, a ketone, a carboxylate, and a carboxylic acid, preferably oxalate or oxalic acid. Preferably a product extractor (not shown) is employed to extract the selected reduction product from the catholyte output flow 120 and the selected oxidation product from the anolyte output flow 118. In a preferable embodiment, the carbon dioxide reduction product is an oxalate salt, and the oxidation product is X2, where X is at least one of Br or Cl (page 4, [0041]).
van Tilborg teaches the electrosynthesis of carboxylic acids from carbon dioxide and
butadiene (= Title; and page 437, Scheme:
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It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by Sivasankar with
wherein electrochemically reducing the unsaturated organic substrate reactant comprises forming a CO2 anion-radical from the carbon dioxide reactant, and then subsequently reacting the CO2 anion-radical with the unsaturated organic substrate reactant because carboxylic acids are produced by electroreducing CO2 to CO2- and reacting the CO2- with an alkene.
Sivasankar teaches or suggests the electrolysis process conditions that can be used in order to form a dicarboxylic organic product as presently claimed.
Furthermore, it has been held that a newly discovered use or function of components does not necessarily mean the method is unobvious since this use or function may be presumed
or inherent in the prior art (MPEP § 2112).
Response to Arguments
Applicant’s arguments filed November 13, 2025 have been fully considered but they are not persuasive. The standing prior art rejection has been maintained for the following reasons:
• Applicant states that thus, any proposed modification of or selection within Sivasankar that still meets Sivasankar’s intended purpose of co-producing a reduction product from carbon dioxide and an oxidation product from an anodic reactant (Sivasankar at ρ 7) will necessarily include an electrolyte in the aqueous anolyte.
In response, Sivasankar teaches that:
The electrochemical cell 102 is configured to feed at least one electrolyte into at least one of the anode and cathode regions. In typical processes, the electrolyte is non-reactive in nature but
needed for the charge neutrality/balancing of the process during reduction and oxidation (redox) reactions which occur at cathode and anode respectively. However, in the present invention, an inorganic electrolyte is selected to be reactive in nature, for example, at the anode:
2NaBr → Br2 + 2Na+ + 2e-
(pages 3-4, [0031]).
In general, the electrolyte may be at least one selected from: an alkali metal salt, an alkaline earth salt; an onium salt, an aromatic or alkyl amine, a primary, secondary or tertiary amine salt, or a hydrogen halide. If electrolytes are fed into both the anode and cathode regions, the electrolyte fed into the anode region may be different from the electrolyte fed into the cathode region. Preferably the electrolyte fed into the anode region is MX, where M is selected from the group consisting of cations of Na, K, Li, Cs, Rb, Be, Mg, Ca, Ba, tetraalkylammonium and pyridinium, and X is selected from the group consisting of anions of Cl, Br, F, and I. Even more preferably, the electrolyte fed into the anode region is at least one of MBr and MCl (page 4, [0034]).
If electrolytes are only fed into the cathode region, then the anode region would be free from supporting electrolytes.
There is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). References are evaluated by what they
collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
The disclosure of reference must be considered for what it fairly teaches one of ordinary
skill in the art, pertinence of non-preferred disclosure must be reviewed in such light. A
reference may be relied upon for all that it would have reasonably suggested to one having
ordinary skill the art, including non-preferred and alternative embodiments. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123 and § 2141.02).
The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
• Applicant states that even if it were possible, however, to make different selections of
the various components in Sivasankar such that Sivasankar's reduction product formed in the non-aqueous catholyte would naturally be transported to the aqueous anolyte as asserted in
the Office Action, any such selection would be impermissible, not because individual component selections might be non-preferred or alternative embodiments, but rather because the collective component selections would result a reaction system that operates contrary to Sivasankar's principle of operation and intended purpose: By selecting reaction system components that meet the recited limitation of part (d) in claim 1, the resulting reaction system defeats Sivasankar's intended purpose of separately forming two reaction products in different phases to facilitate their downstream recovery. Specifically, the resulting reaction system would form a product stream including both halogen gas and oxalate, which would then require an additional downstream
separation process to provide separate halogen gas and oxalate products (e.g., as intended and already provided by Sivasankar's reaction system according to its principle of operation).
In response, Sivasankar teaches that:
The anolyte output flow 118 may contain the oxidation product, depleted electrolyte, depleted oxidizable anodic reactant and the aqueous anolyte. The catholyte output flow 120
may contain the reduction product, depleted carbon dioxide and non-aqueous catholyte. The outputs may be designed to transport the carbon dioxide reduction product and the anode oxidation product to a region outside of the cell for storage, further processing or recycling. The system may be provided with separators to separate the component parts of the outputs, and recycle them back into the cell following appropriate processing whether by extraction, drying, ion separation, or further chemical conversion (pages 4-5, [0043]).
The anolyte output of Sivasankar does not have to contain an oxidation product, where
a transfer of oxalic acid into the anode region would be the only product in the anolyte.
• Applicant states that thus, any proposed modification of or selection within Sivasankar that would result in transfer of its oxalate product to the aqueous anolyte would be contrary to Sivasankar’s principle of operation and intended purpose, and such rationales cannot support a
prima facie conclusion of obviousness (MPEP § 2143.01(V) and (VI)).
In response, Sivasankar teaches that the catholyte may include one or more of alkenes (page 2, [0022]).
The electrochemical cell 102 is configured to feed at least one electrolyte into at least one of the anode and cathode regions. In typical processes, the electrolyte is non-reactive in nature but
needed for the charge neutrality/balancing of the process during reduction and oxidation (redox) reactions which occur at cathode and anode respectively. However, in the present invention, an inorganic electrolyte is selected to be reactive in nature, for example, at the anode:
2NaBr → Br2 + 2Na+ + 2e-
(pages 3-4, [0031]).
The electrochemical cell is generally operational to reduce carbon dioxide in the cathode region to a first product recoverable from the first region while producing an oxidation product recoverable from the anode region. The cathode may reduce the carbon dioxide into a first product that may include one or more compounds including CO, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, lactic acid, propane, propanoic acid, acetone, isopropanol, 1-propanol, 1,2-propylene glycol, butane, butane, 1-butanol, 2-butanol, an alcohol, an aldehyde, a ketone, a carboxylate, and a carboxylic acid, preferably oxalate or oxalic
acid. Preferably a product extractor (not shown) is employed to extract the selected reduction product from the catholyte output flow 120 and the selected oxidation product from the anolyte output flow 118. In a preferable embodiment, the carbon dioxide reduction product is an oxalate salt, and the oxidation product is X2, where X is at least one of Br or Cl (page 4, [0041]).
The anolyte output flow 118 may contain the oxidation product, depleted electrolyte, depleted oxidizable anodic reactant and the aqueous anolyte. The catholyte output flow 120 may contain the reduction product, depleted carbon dioxide and non-aqueous catholyte. The outputs may be designed to transport the carbon dioxide reduction product and the anode oxidation product to a region outside of the cell for storage, further processing or recycling. The system may be provided with separators to separate the component parts of the outputs, and recycle them back into the cell following appropriate processing whether by extraction, drying, ion separation, or further chemical conversion (pages 4-5, [0043]).
Thus, Sivasankar teaches or suggests the electrolysis process conditions that can be used in order to form a dicarboxylic organic product in the product medium:
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Since carboxylic acids are produced by electroreducing CO2 to CO2- and reacting the CO2- with an alkene (e.g., ethylene) to make oxalic acid, and since oxalic acid is a dicarboxylic organic product in the cathode region and oxalic acid is more soluble in water (= product medium) than in an aprotic organic liquid (= reactant medium), it can transfer from the cathode region into the anode region via the interface or “phase stilling zone” between the anolyte and the catholyte due to its solubility in water.
There is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). References are evaluated by what they
collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Furthermore, it has been held that a newly discovered use or function of components does not necessarily mean the method is unobvious since this use or function may be presumed
or inherent in the prior art (MPEP § 2112).
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 When the electrochemical cell 102 is configured to feed at least one electrolyte into the cathode region, then there is no electrolyte in the anode region or anolyte, thus, making the anode region or anolyte free from supporting electrolytes. This is also confirmed by the disclosure of “If electrolytes are fed into both the anode and cathode regions” (page 4, [0034]).
The “supporting electrolyte” as disclosed in Applicants’ specification is a saturated aqueous solution of an
inorganic salt or other electrolyte (page 8, [0024]).Examples of electrolytes include alkali metal salts and ionic
liquids (page 4, [0010]).