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 .
Claim Objections
Claims 14 and 17 are objected to because of the following informalities:
claims 14 and 17 both refer to “the electrocatalytic material” having a current density (see claim 14 at line 1 and claim 17 at line 3); however, it would appear that this is a typo as the electrocatalytic material is used to make “a electrocatalytic working electrode” (see claim 1 at line 4) and it is the electrode that would have a current density applied in the electrolytic method
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 is 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 2 recites the limitation "the solid" once in each of the last two lines of the claim. However, there is insufficient antecedent basis for this limitation in the claim since the claim earlier sets forth a first mixture that is used to form “a solid” (see claim 2 on page 36, line 1). The claim then requires that solid to be washed (see claim 2 on page 36, line 2). The washed solid then undergoes further processing in the next line of the claim to form a second solution (see claim 2 on page 36, line 3). This second solution is then used to form what the claim refers to as “the solid” (see claim 2 on page 36, line 4). But, the solid of line 4 cannot be referring back to the solid formed from the first mixture. As such, the reference to “the solid” in the last two line of claim 2 is unclear as to whether “the solid” being referred to is the solid formed from the first mixture or if it is the solid formed from the second solution.
Please note, for purposes of claim interpretation the examiner will be treating “the solid” in the last two lines of claim 2 as though it is referring to “a second solid” and treating the solid previously set forth as “a first solid” since that would appear most in keeping with the specification and what would appear to be applicant’s intent. It is additionally noted that an amendment such as noted above setting forth “a first solid” and “a second solid” would overcome the above noted indefiniteness.
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 3-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Enhanced Electrochemical Reduction of CO2 by Zeolitic Imidazolate Frameworks-8 Supported Silver Nanoparticles” by Zhuang et al., Adv. Mater. Lett. 11(8), 20081546 (2020) (hereinafter referred to as “ZHUANG”) in view of US Pub. No. 2026/0117399 to Chen et al., (hereinafter referred to as “CHEN”).
Regarding claim 1, ZHUANG teaches a method for syngas production (see ZHUANG at Abstract), comprising:
contacting an electrocatalytic working electrode with a gaseous electrolytic solution comprising carbon dioxide in a cell having a reference electrode and a counter electrode (see ZHUANG at paragraph spanning pages 1-2 teaching the study using ZIF-8 with silver nanoparticles for the electrochemical reduction of CO2 to CO; see also ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the cell configuration including a working, reference and counter electrode which was used for the CO2 gas reduction),
wherein the electrocatalytic working electrode comprises an electrocatalytic material on a conductive carbon substrate (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the working electrode being formed by placing the catalyst mixture on a glassy carbon electrode; see also ZHUANG at Abstract),
wherein the electrocatalytic material comprises a zeolitic imidazolate framework-8 (ZIF-8) and silver (see ZHUANG at page 2, section titled “Synthesis of Ag/ZIF-8 and Ag/C” teaching the process for the formation of the Ag nanoparticle containing ZIF-8; see also ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the process for the making of the catalyst-modified working electrode),
wherein the ZIF-8 and silver are in a layer of particles (see ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the process for the making of the catalyst-modified working electrode which would result in a layer of particles as claimed),
wherein the particles are in the form of one or more polyhedrons (see ZHUANG at Fig. 1(a) on page 3; see also ZHUANG at page 4, paragraph starting “Fig. 4 displays …” which mentions Fig. 4d showing the presence of ZIF-8 dodecahedrons),
wherein the one or more polyhedrons have a longest dimension with an average length of 0.1 to 20 µm (see ZHUANG at Fig. 4c and Fig. 4d on page 4 depicting sized of around 100 nm but with others having sizes just under 200 nm based on the depicted scale, i.e. 0.1 to less than 0.2 µm),
wherein the electrocatalytic working electrode, the reference electrode, and the counter electrode are in connection with a potentiostat workstation (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the use of a CHI660E electrochemical workstation which is a potentiostat workstation as claimed);
applying a potential to the cell during the contacting (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the CO2 reduction experiment occurring with the electrochemical cell which would of necessity include applying a potential as claimed); and
forming a gaseous syngas product by electrocatalytically reducing the carbon dioxide in the gaseous electrolytic solution without forming any liquid syngas product (see ZHUANG at page 4, paragraph in the middle of the right-hand column stating “The CO2RR performance …” teaching the CO2RR resulting in CO and H2 as products and the reaction occurring without the production of any liquid products).
While ZHUANG teaches the substrate being made of carbon and silver nanoparticles being incorporated in the ZIF-8 (see teachings of ZHUANG referenced above), ZHUANG fails to explicitly teach: (1) the substrate being carbon paper; (2) the amount of silver in the electrocatalytic material being 5 to 10 percent by weight.
However, CHEN is also directed towards a carbon dioxide reduction reaction catalytic system and method of operating it (see CHEN at Abstract). CHEN further teaches the catalyst including MOFs such as ZIF-8 (see CHEN at ¶155-¶157) and one of the catalysts including Ag nanoparticles (see CHEN at ¶148). Moreover, as to (1), CHEN teaches that it was known to form the electrode on carbon paper (see CHEN at ¶30-¶33). As such, one of ordinary skill in the art would have recognized the glass carbon of ZHUANG and the conductive carbon paper of CHEN as being equivalents which are used for a similar purpose, i.e. to act as a conductive base for the ZIF-8 and silver nanoparticles electrocatalytic material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the glassy carbon substrate of ZHUANG with the conductive carbon paper of CHEN when forming the working electrode with the electrocatalytic material thereon.
Additionally, as to (2), while ZHUANG is silent as to the weight percent of silver being included in the ZIF-8, CHEN teaches the inclusion of an electrocatalyst with the ZIF-8 in which the catalyst is present in an amount of 0.5 wt% to 10 wt% (see CHEN at ¶155-¶157).
As such, even though ZHUANG is silent as to the amount, one of ordinary skill in the art would have recognized that the amount of silver to be added could be varied. Moreover, one of ordinary skill in the art would have also have understood that the amount could be optimized so as to not include too much silver so that the cost increases and the ZIF-8 structure has too much silver, but then also include a sufficient amount so that CO2RR is optimized.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the process of ZHUANG so as to include the silver nanoparticles in amounts up to 10 wt% as taught by CHEN.
Regarding claim 3, ZHUANG in view of CHEN teaches the method for syngas production wherein the electrocatalytic working electrode was made by a process comprising:
dispersing the electrocatalytic material in an organic solvent, water, and a polymer to form a suspension (see ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the catalyst being dispersed in ethanol, water, and Nafion),
sonicating the suspension (see ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the sonicating of the mixture for 30 minutes to form an ink),
drop-casting the suspension onto the conductive carbon paper (see ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the ink being used to coat the substrate to be used as the working electrode; see also rejection of claim 1 above as to the modification of ZHUANG with CHEN as to the conductive carbon paper), and
drying the suspension-covered conductive carbon paper to form the electrocatalytic working electrode (see ZHUANG at pages 2-3, section titled “Preparation of Working Electrode” teaching the drying in ambient conditions overnight).
Regarding claim 4, ZHUANG in view of CHEN teaches the method for syngas production wherein the electrocatalytic material is in the form of dodecahedron crystals (see teachings of ZHUANG in the rejection of claim 1 above as to the ZIF-8 having a dodecahedron form).
Regarding claim 5, ZHUANG in view of CHEN teaches the method for syngas production wherein the dodecahedron crystals have an average length of 100 to 10,000 nanometers (nm) (see ZHUANG at page 4, paragraph starting “Fig. 4 displays …” which mentions the dodecahedrons having a size of about 100 nm which would result in an average of 100 nm as claimed).
Regarding claims 6-10, while ZHUANG in view of CHEN as set forth above fails to explicitly teach the method for syngas production in which the electrocatalytic material has the properties as claimed, i.e. the surface area, the Tafel value, the double layer capacitance, the charge transfer resistance, or the chronoamperometry stability, ZHUANG as modified by CHEN nevertheless teaches a method for syngas production having the cell as claimed, including the electrocatalytic material of a ZIF-8 doped with silver in an amount of 5% to 10% as claimed such that it would be reasonably expected for the same cell with a substantially similar electrocatalyst material to have the same properties.
Regarding claim 11, ZHUANG in view of CHEN teaches the method for syngas production wherein the syngas product comprises carbon monoxide and hydrogen in a weight ratio of carbon monoxide to hydrogen from 15:85 to 80:20 at a potential
of -0.5 to -1.5 V vs. RHE (see teachings of ZHUANG at page 5, Fig. 5a, 5b, and 5c depicting voltages within the range of -0.5 to -1.5 as claimed; see also ZHUANG at page 4, paragraph in the middle of the right-hand column stating “The CO2RR performance …” teaching CO being the major product of the two, i.e. greater than 50%, so as to be within the range as claimed).
Regarding claims 12-17, ZHUANG in view of CHEN teaches the method for syngas production wherein the process is preformed in an H-cell (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the CO2 reduction experiment occurring with H-type electrochemical cell), but does not disclose the use of flow cell.
However, CHEN teaches the system for CO2RR being operated in a flow cell (see CHEN at ¶179). Moreover, one of ordinary skill in the electrosynthesis art recognizes that H-cell and flow cell are two common types of electrochemical cells. Furthermore, as shown by CHEN and ZHUANG, either can be used for CO2RR. As such, one of ordinary skill in the art would have readily recognized that either type of cell could be employed for the reduction of CO2 in the process of ZHUANG.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a flow cell, as taught by CHEN, instead of the H-cell in the process of ZHUANG.
Moreover, the method of ZHUANG as modified by CHEN provides for the silver in amounts up to 10 wt%, the operation of the CO2RR at potential values including those as claimed such that the current densities would necessarily result as well as the proportions of CO to H2 as claimed.
Regarding claim 18, ZHUANG in view of CHEN teaches the method for syngas production wherein the reference electrode is a silver/silver chloride (Ag/AgCl) electrode (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the CO2 reduction experiment occurring with the electrochemical cell having a silver/silver chloride reference electrode).
Regarding claim 19, ZHUANG in view of CHEN teaches the method for syngas production wherein the counter electrode is a platinum mesh electrode (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the CO2 reduction experiment occurring with the electrochemical cell having a Pt net, i.e. mesh, counter electrode).
Regarding claim 20, ZHUANG in view of CHEN teaches the method for syngas production wherein the gaseous electrolytic solution further comprises a potassium salt (see ZHUANG at page 3, section titled “CO2 Electrochemical Reduction Performance” teaching the CO2 reduction experiment occurring with the electrochemical cell having a KCl electrolyte, i.e. a potassium salt).
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Interfacial Band Bending Induced Charge-Transfer Regulation Over Ag@ZIF-8@g-C3N4 to Boost Photocatalytic CO2 Reduction Into Syngas” by Li et al., Catal. Sci. Technol. 12, pages 3343-3355 (2022).
“Synthesis of Ag-Doped ZIF-8 Photocatalyst with Excellent Performance for Dye Degradation and Antibacterial Activity” by Abdi, Colloids Surf. A 604, 125330 (2020).
“Cu2+-doped Zeolitic Imidazolate Frameworks (ZIF-8): Efficient and Stable Catalysts for Cycloadditions and Condensation Reactions” by Schejn et al., Catal. Sci. Technol. 5, pages 1829-1839, (2015).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM 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, 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.
/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
Prosecution Insights