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 II, claims 12-17, in the reply filed on July 7, 2026, is acknowledged.
Claims 1-11 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method of preparing a single atom catalyst for carbon dioxide conversion, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 7, 2026.
Claims 12-17 are presently under consideration by the Examiner.
Applicants’ request for rejoinder of non-elected Group I, upon the indication of allowable subject matter in elected Group II, is duly noted.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Documents were filed on January 4, 2024.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 16 is indefinite because the limitation recited therein, “wherein a product from the carbon dioxide reduction reaction with the single atom catalyst…”, does not further limit or define the single atom catalyst of claim 12 (from which claim 16 depends), with respect to the catalyst described therein. The limitations of claim 16 appear to describe a result of using the catalyst in a carbon dioxide conversion process.
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.
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.
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.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (CN 109950557).
Regarding claims 12 and 14, Sun et al. teach a non-noble metal oxygen reduction electrocatalyst comprising a nitrogen-doped carbon carrier (“carbon support”; “nitrogen atom…positioned on a surface of the carbon support”), and iron dispersed thereon, wherein the iron is “dispersed on the support in the form of single atoms and coordinates with nitrogen in the support to form active sites” (“metal atoms positioned on the carbon support”; “metal atom coordinates with the nitrogen atom”). See claim 1 of Sun et al., as well as paragraph [0008].
Regarding claim 13, it is considered that because Sun et al. do not teach or suggest the presence of metals other than iron in the aforementioned electrocatalyst, the skilled artisan would readily envision that said iron would not be in contact with other metal elements.
Sun et al. do not explicitly teach or suggest that the electrocatalyst is “for carbon dioxide conversion”, as recited in Applicants’ claims. Additionally, Sun et al. do not teach or suggest (i) the limitations of Applicants’ claims 15 and 17 regarding the catalyst (a) having a carbon monoxide selectivity of 20% or more during a carbon dioxide reduction reaction or (b) selectively controlling a ratio of hydrogen:carbon monoxide during the carbon dioxide reduction reaction, or (ii) the limitations of Applicants’ claim 16 regarding a product from the carbon dioxide reduction reaction with the single atom catalyst for carbon dioxide conversion includes hydrogen and carbon monoxide.
However, it is considered that because the electrocatalyst disclosed in Sun et al. structurally reads upon Applicants’ claimed catalyst, with respect to comprising a nitrogen-doped carbon support and iron dispersed on the support, wherein the iron is in the form of single atoms and coordinated with nitrogen, the skilled artisan would have been motivated to reasonably expect the electrocatalyst disclosed in Sun et al. to suitably and effectively function as a catalyst for carbon dioxide conversion, absent the showing of convincing evidence to the contrary.
Further, the limitation “for carbon dioxide conversion”, as recited in the instant claims, is considered a statement of intended use.
Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Sun et al. disclose an electrocatalyst structurally reading upon Applicants’ claimed catalyst, it is clear that the electrocatalyst of Sun et al. would be capable of performing the intended use, i.e., for carbon dioxide conversion, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 15-17, it is considered that because the electrocatalyst disclosed in Sun et al. structurally reads upon Applicants’ claimed catalyst, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the electrocatalyst disclosed in Sun et al. to exhibit, during a carbon dioxide reduction reaction, both a carbon monoxide selectivity and to exhibit selective controlling of a ratio of hydrogen:carbon monoxide comparable to that instantly claimed, as well as to comparably produce a product including hydrogen and carbon monoxide.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01(I).
Conclusion
An English translation of Li et al. (CN 112791739, Applicants’ submitted art) accompanies this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. 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.
/Patricia L. Hailey/Primary Examiner, Art Unit 1732 August 18, 2026
Prosecution Insights