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 and 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gnanamani et al (“Hydrogenation of Carbon Dioxide over Co−Fe Bimetallic Catalysts”, ACS Catal. 2016, 6, 2, 913–927). “Electrode” (Merriam-Webster, 2009) used as an evidentiary reference for claim 17.
Claim 1: Gnanamani discloses an iron/cobalt carbide compound (see e.g. page 918, col 2, paragraph starting with “In order”), wherein the molar ratio of cobalt to iron ranges from 100 to 0 (see e.g. page 916, Table 2), overlapping with the claimed range of from about 2:1 to about 5:1. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 2: Gnanamani discloses that compound has the formula FexCo1-xC (see e.g. page 920, col 2, paragraph 3.3), with a ratio of Fe and Co (see e.g. page 916, Table 2) overlapping with the claimed range of X = about 0.05 to about 0.30. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 3: Gnanamani discloses a ratio of Fe and Co (see e.g. page 916, Table 2) overlapping with the claimed range of X = about 0.15 to about 0.25. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 4: The limitations claiming “the iron/cobalt carbide compound is produced by the process comprising (a) mixing an iron salt with a cobalt salt in water to produce FeCo Prussian blue analog (PBA); and(b) heating PBA to produce the iron/cobalt carbide compound” are describing a method of making of the product. MPEP § 2113 states ‘”[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)’. Claim 4 is only describing how the product of claim 1 is made and there is not considered to be limiting the structure of claim 1. Therefore, Gnanamani renders the claim obvious.
Claim 5: This claim is further limiting the process of claim 4. Therefore, Gnanamani renders the claim obvious for the same reasons.
Claim 6: This claim is further limiting the process of claim 4. Therefore, Gnanamani renders the claim obvious for the same reasons.
Claim 7: This claim is further limiting the process of claim 4. Therefore, Gnanamani renders the claim obvious for the same reasons.
Claim 8: This claim is further limiting the process of claim 4. Therefore, Gnanamani renders the claim obvious for the same reasons.
Claim 9: Gnanamani discloses that the compound has a particle size from 20-100 nm (see e.g. page 918, col 2, paragraph starting with “Figure 6”).
Claim 10: The limitation claiming that “compound has an overpotential of from about 0.30 V to about 0.50 V” is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 11: The limitation claiming that “the compound has a Tafel slope of from about 70 mV dec-1 to about 90 mV dec-1” is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 12: The limitation claiming that “the iron/cobalt carbide compound comprises a Co3C orthorhombic phase” is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 13: The limitation claiming that “the iron/cobalt carbide compound comprises a Co3C orthorhombic phase and a Co2C orthorhombic phase” is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 14: The limitation claiming that “the compound has an X-ray powder diffraction pattern comprising a peak at from 42.0o to 43.0o 2θ as measured by X-ray powder diffraction using an x-ray wavelength of 1.54 A is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 15: The limitation claiming that “the compound has an X-ray powder diffraction pattern comprising a peak at from 41.0o to 42.0o 2θ as measured by X-ray powder diffraction using an x-ray wavelength of 1.54 A is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 16: The limitation claiming that “the compound has an X-ray powder diffraction pattern comprising a peak at from 45.0o to 46.0o 2θ as measured by X-ray powder diffraction using an x-ray wavelength of 1.54 A is describing a property of the compound in claim 1. 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 compound of Gnanamani would have the same properties because it teaches all the limitations of claim 1.
Claim 17: Gnanamani discloses the iron/cobalt carbide compound of claim 1 (see rejection of claim 1 above). Electrodes are defined as being a conductor capable of being in a circuit (see e.g. Electrode). As the invention of Gnanamani comprises conductive material (see e.g. page 926, col 1, paragraph starting with “A series”), it is considered to read on an electrode.
Claim 18: Gnanamani discloses that the iron/cobalt carbide compound comprises a film on the surface of the electrode (see e.g. Fig 2).
Claim 19: Gnanamani discloses the electrode of claim 17 (see rejection of claim 17 above). The limitation claiming “an oxygen evolution system” contains no other structural limitations. Therefore, Gnanamani renders the claim obvious.
Claim 20: The limitations claiming “the system comprises a water electrolysis system, a solar fuel generator, an electrowinning system, an electrolytic hydrogen generator, a reversible fuel cell, or a reversible air battery” are considered intended uses for the system that do not further limit the structure. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Therefore, Gnanamani renders the claim obvious.
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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