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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on September 3, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings were received on November 23, 2023. These drawings are acceptable.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6
Line 2, please amend the word “comprises” to the words -- further includes --.
This is an instance where the article should be changed to ensure the further limitation of the claim terminology. See claim 1, lines 3-4.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maas, Jr. et al. (US Patent No. 4,526,774).
Regarding claim 1, Maas teaches an electrolysis system (= an electrochemical reaction section 12) [col. 2, line 48; and Fig. 1:
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], comprising:
• an anode reaction chamber (= an anode compartment 15) [col. 2, line 52], comprising an anode reaction solution (= filled by the appropriate electrolyte from anolyte reservoir 20)
[col. 2, lines 66-67] and an anode immersed in the anode reaction solution (= an anode 16 contained in an anode compartment 15) [col. 2, lines 52-53], wherein the anode reaction solution includes an iodide ion (= the anodic reaction: 3I- → I3- + 2e-) [col. 3, lines 14-15], and a material of the anode includes a carbon material (= the anode for the iodide oxidation was high
density graphite) [col. 4, line 23-25], and the anode reaction chamber performs an iodide
oxidation reaction (= the anodic reaction: 3I- → I3- + 2e-) [col. 3, lines 14-15];1
• a cathode reaction chamber (= a cathode compartment 13) [col. 2, lines 52-53], comprising a cathode reaction solution (= filled by the appropriate electrolyte from catholyte reservoir 18) [col. 2, lines 66-67] and a cathode immersed in the cathode reaction solution (= a cathode 14 contained in a cathode compartment 13) [col. 2, lines 51-53], wherein the cathode reaction solution includes a hydrogen ion (= the cathodic reaction: 2H+ + 2e- → H2) [col. 3, lines 16-18];2 and
• a spacer, separating the anode reaction chamber and the cathode reaction chamber, wherein the spacer allows a cation or an anion to pass through (= providing an electrolysis cell having a membrane therein to separate said cell into anode and cathode chambers) [col. 2, lines 8-10; and col. 4, lines 32-36];
۰ the anode reaction chamber and the cathode reaction chamber are electrically connected to each other (= a direct current power supply 17 is connected to anode 16 and cathode 14 by electrically conducting conduits 19) [col. 2, line 67, to col. 3, line 1].
Regarding claim 2, Maas teaches wherein the material of the anode is made of the carbon material (= a graphite plate anode (Ultra Carbon Company, grade UF-4S)) [col. 7, lines 21-23].
Regarding claim 4, Maas teaches wherein the carbon material comprises a carbon fiber paper, a conductive carbon, a carbon cloth, a graphite, a carbon sphere or a combination thereof (= a graphite plate anode (Ultra Carbon Company, grade UF-4S)) [col. 7, lines 21-23].
Regarding claim 5, Mass teaches wherein the carbon material is not subjected to
surface modification treatment or is subjected to surface modification treatment (= a graphite plate anode (Ultra Carbon Company, grade UF-4S)) [col. 7, lines 21-23].
Regarding claim 6, Maas teaches wherein the anode reaction solution comprises a first solute and a second solute (= the anolyte can comprise a mixture of iodine and hydrogen iodide) [col. 2, lines 17-18].
Regarding claim 10, Maas teaches wherein the spacer comprises a perfluorosulfonic acid membrane, a sulfonated chitosan membrane, a cross-linked graphene oxide membrane, or a combination thereof (= three proton conductive membranes were used including “Nafion®
390”, a fabric reinforced membrane 0.30 mm thick; “Nafion® 117”, an unsupported membrane 0.19 mm thick; and “Raipore® R 1010”, an unsupported membrane 0.05 mm thick) [col. 4, lines
32-36].3
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.
I. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maas, Jr. et al. (US Patent No. 4,526,774) as applied to claims 1-2, 4-6 and 10 above, and further in view of WO 2023/046815 (‘815).
Regarding claim 3, Mass teaches the system of at least claims 1-2, 4-6 and 10 as applied above. Maas does not explicitly teach wherein the anode comprises an anode body and an
anode catalyst layer disposed on the anode body, wherein a material of the anode body or the anode catalyst layer includes the carbon material.
Maas teaches a graphite plate anode (Ultra Carbon Company, grade UF-4S) [col. 7,
lines 21-23].
WO ‘815 teaches that:
Suitable anodes in this case may comprise graphitic or vitreous carbon anodes. Preferably, the anode can be made of graphite, carbon paper or carbon cloth, the latter
optionally in combination with carbon felt (page 6, lines 1-3).
A carbon cloth strip with a platinum foil as anode (WE) [page 15, lines 15-16].
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 the anode taught by Maas with wherein the anode comprises an anode body and an anode catalyst layer disposed on the anode body,
wherein a material of the anode body or the anode catalyst layer includes the carbon material. The person with ordinary skill in the art would have been motivated to make this modification because Maas teaches a graphite plate anode (Ultra Carbon Company, grade UF-4S) on page 7,
lines 21-23, where a carbon cloth strip with a platinum foil anode4 would have been suitable as the anode for iodide ion (I-) oxidation because the substitution of art recognized equivalents as taught by as taught by WO ‘815 on page 6, lines 1-3, and page 15, lines 15-16, is within the level of ordinary skill in the art. In addition the substitution of one graphitic anode for another is likely to be obvious when it does nothing more than yield predictable results.
MPEP § 2144.07 states that “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).”
II. Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maas, Jr. et al. (US Patent No. 4,526,774) as applied to claims 1-2, 4-6 and 10 above, and further in
view of WO 2023/046815 (‘815) and Jung et al. (“Effect of Solution pH on Electrochemical Oxidation of Iodide Ion at Platinum Electrode in Sodium Perchlorate Solution,” Transaction of the Korean Nuclear Society Autumn Meeting, Gyeongiu Korea (October 25-26, 2012), pp. 1-2).
Regarding claim 7, Maas teaches the second solute comprises perchloric acid, perchlorate,5 metal hydroxide, or a combination thereof (= that the initial anolyte composition
was 0.275M IO3- + 1.52M I- + 1.6M OH- with Na+/K+ =1 (col. 7, lines 28-30).
Mass teaches the system of at least claims 1-2, 4-6 and 10 as applied above. Maas does not explicitly teach wherein the first solute comprises metal iodide.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims (MPEP § 2115).
However, Maas teaches that the anolyte can comprise a mixture of iodine and hydrogen iodide (col. 2, lines 17-18).
WO ‘815 teaches that the source of iodide ions (I-) can be obtained through the dissolution of hydrogen iodide (HI) or of an alkali metal iodide added to the reaction medium (page 6, lines 21-22).
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 the first solute taught by Maas with wherein the first solute comprises metal iodide. The person with ordinary skill in the art would have been motivated to make this modification because Maas teaches that the anolyte can comprise a mixture of iodine and hydrogen iodide in col. 2, lines 17-18, where an alkali metal iodide would have been a suitable source of iodide ions (I-) because the substitution of art
recognized equivalents as taught by WO ‘815 on page 6, lines 21-22, is within the level of ordinary skill in the art. In addition the substitution of one iodide ion source for another is likely to be obvious when it does nothing more than yield predictable results.
MPEP § 2144.07 states that “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).”
Regarding claim 8, Maas teaches wherein a concentration of the first solute in the anode reaction solution is in a range of from 5x104 M to 2 M (= 1.52M I-), and a concentration of the second solute in the anode reaction solution is in a range of from 0.05 M to 2 M (= 1.6M OH- with Na+/K+ = 1) [col. 7, lines 29-30].
III. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maas, Jr. et al. (US Patent No. 4,526,774) as applied to claims 1-2, 4-6 and 10 above.
Regarding claim 9, Maas does not explicitly teach wherein comparing with oxygen, the iodide ion, an iodine molecule, a triiodide ion or a combination thereof is less available to pass through the spacer.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because Maas teaches the iodide ion (= I-), the triiodide ion (= I3-) [col. 3, line 15], and the spacer (= three proton conductive membranes were used including “Nafion® 390”, a fabric reinforced membrane 0.30 mm thick; “Nafion® 117”, an unsupported membrane 0.19 mm thick; and “Raipore® R 1010”, an
unsupported membrane 0.05 mm thick) [col. 4, lines 32-36]6 as presently claimed, and since a compound and all of its properties are inseparable (MPEP § 2141.02(V)), the iodide ion and triiodide ion of Maas would have been less available to pass through the spacer as compared with oxygen.
MPEP § 2114 states that “the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 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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/EDNA WONG/Primary Examiner, Art Unit 1795
1 I- = iodide.
2 H= = hydrogen ion.
3 Nafion® 117 = a perfluorosulfonic acid membrane.
4 A carbon cloth strip (= the anode body) with a platinum foil (= the anode catalyst).
5 In the alternative, Jung teaches that the electrolyte solution with 1 mM NaI and 0.1 M NaClO4 was prepared with ultra-pure MilliQ-treated water (18.2 MΩ from MilliQ Academic) [page 1, left column, lines 27-30). The pH of the solution was controlled by HClO4 and NaOH solution, respectively (page 1, left column, lines 33-34). The first oxidation wave was evaluated to correspond with the oxidation of iodide into molecular iodine [11-13]. The molecular iodine was reported to react with iodide anion [13]. And then, tri-iodide anion was formed on the electrode (page 1, right column, lines 8-12).
6 Nafion® 117 = a perfluorosulfonic acid membrane.
Prosecution Insights