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 .
Response to Arguments
Applicant’s amendment to claim 1 overcomes the rejection of claims under 35 U.S.C. 112(b) set forth in the prior Office action.
Applicant's arguments filed 23 March 2026 have been fully considered but they are not persuasive. Applicant has argued that the secondary reference, Walsh et al, fails to teach the flow through electrode being used for organic electrosynthesis reactions.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Claims 1-9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bortnikov et al (“Coupling of Alternating Current to Transition-Metal Catalysis: Examples of Nickel-Catalyzed Cross-Coupling”) in view of Walsh et al (“The continued development of reticulated vitreous carbon as a versatile electrode material: Structure, properties and applications”).
Bortnikov et al teach (see abstract, first paragraph of “Results and Discussion” section, and fig. 2(a)) an electrochemical reactor apparatus comprising a reactor body (beaker), glassy carbon electrodes and an AC source.
Bortnikov et al fail to teach (1) at least one electrode being a 3D porous electrode or (2) the electrochemical reactor not include a stirring element.
Regarding (1), Walsh et al teach (see abstract, sections 1 and 5.3) that reticulated vitreous carbon (RVC) electrodes in organic electrosynthesis reactors were advantageous due to the high active surface area and high mass transport of electroactive species to the surface of the reticulated vitreous carbon material. The RVC electrodes were useful in organic electrosynthesis applications.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the RVC electrodes of Walsh et al in place of the glassy carbon electrodes of Bortnikov et al because Walsh et al teach that the reticulated vitreous carbon was an advantageous electrode material for electrochemical synthesis, including high surface area and high mass transport at the electrode surface.
Regarding (2), Walsh et al teach (see next to last paragraph of section 5.3) that using RVC electrodes in a flow through reactor design could prevent the need (“could be superseded”) for stirring of the electrolyte. Thus, there was recognition in the prior art that RVC electrodes could obviate stirring elements that would otherwise be necessary for adequate mass transfer in the electrolyte.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have omitted the stirring element of Bortnikov et al when using the RVC electrodes in a flow through reactor as suggested by Walsh et al when stirring was not desired. See MPEP 2144.04.II.A.
Note that the term “glassy carbon” used by Bortnikov et al is known to be synonymous with the term “vitreous carbon”, and thus the difference between the electrodes of Bortnikov et al and the electrodes of Walsh et al is considered to be the shape of the material since both electrodes were made form the same vitreous/glassy carbon material.
With respect to “wherein said reactor is an organic electrosynthesis reactor”, this limitation refers to the intended use of the reactor. Per MPEP 2114, apparatus claims that include recitations to the manner of operation are limited by the recited structural elements, and here, the identity of the reaction being performed by the electrochemical cell does not impart any structure. However, even if the claim limitation is given patentable weight, Bortnikov et al clearly teaches using the electrochemical reactor for performing organic electrosynthesis reactions (see abstract, fig. 2).
Regarding claim 2, Walsh et al teach using RVC as an electrode in an organic electrosynthesis reactor.
Regarding claims 3-5, Walsh et al describes (see section 2) various RVC materials with a ppi (pores per inch) value of either 10, 30, 60 or 100. In section 5.3, Walsh et al teach using the 10 ppi RVC material as an electrode for electrosynthesis.
Regarding claim 6, Bortnikov et al show the electrochemical reactor being a batch reactor. While Walsh et al indicate that the omission of stirring by using the RVC electrodes occurred only in flow through reactors, Walsh et al also indicate that the RVC electrodes improved mass transfer at the electrode surface. One of ordinary skill in the art at the time of filing would have understood that the stirring mechanism of Bortnikov et al could have been omitted when the improved mass transfer effect of Walsh et al was sufficient for ensuring reactions occur at the electrode surfaces. See also MPEP 2144.04.II.A. Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing to have omitted the stirring element of Bortnikov et al if they were willing to accept lower uniformity of the reactants/products in the fluid being treated/produced in the electrochemical reactor.
Regarding claim 7, Walsh et al suggest using the RVC electrodes in a flow through reactor to obviate the need for stirring elements.
Regarding claim 8, Bortnikov et al suggest both electrodes by glassy carbon. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the RVC material of Walsh et al for both electrodes in the reactor of Bortnikov et al.
Regarding claim 9, Bortnikov et al teach (see page S24 of the supporting information) utilizing the glassy electrodes with an alternating current, wherein a glass paper filter was used as a divider between the electrodes.
PNG
media_image1.png
130
254
media_image1.png
Greyscale
Regarding claim 21, with respect to “wherein said organic electrosynthesis is selected from” followed by a long list of potential reactions, this limitation refers to the intended use of the reactor. Per MPEP 2114, apparatus claims that include recitations to the manner of operation are limited by the recited structural elements, and here, the identity of the reaction being performed by the electrochemical cell does not impart any structure. However, even if the claim limitation is given patentable weight, Bortnikov et al clearly teaches using the electrochemical reactor for performing amination of aryl halides (see abstract, fig. 2, part B reproduced herein).
Conclusion
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 HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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, James Lin can be reached at 571-272-8902. 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.
/HARRY D WILKINS III/Primary Examiner, Art Unit 1794
Prosecution Insights