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 .
DETAILED ACTION
1. Applicant’s election of Group II (claims 7-12) with traverse with respect to Groups III and IV, for further prosecution on the merits, filed 2/23/26 is acknowledged. Applicant does not traverse the Restriction to "product claims" identified as Groups I, V, and VI, claims 1-6 and 16-20. In regard to the traversal to Groups III and IV, Applicant submits that the claims of Group II are directed to an "electrode for reducing N2O to N₂, the electrode comprising the MXene, or a derivative thereof, of formula 1, and immobilized nitrous oxide reductase on the MXene. Claims 13-15 are directed to an "electrochemical apparatus" including the electrode and the corresponding method of reducing N2O to N₂ with the electrode or apparatus. Accordingly, once the Office finds any one claim to the electrode to be novel and nonobviousness, there is no further search or examination necessary to determine the allowability of claims 13-15. In fact, claims 13-15 depend directly or indirectly from claim 7. In addition, Applicant submits for consideration a list of amended claims consistent with Applicant's election with this Response for examination.
2. Applicants’ arguments are considered regarding claims 13-15 drawn to an apparatus comprising a working electrode, a counter electrode, and a reference electrode, wherein the working electrode is the electrode of claim 7; and a method of reducing N2O to N2, the method comprising: contacting N2O or a dissolved form thereof in a liquid medium with the electrode of claim 7; and applying a current to the electrode; but not found to be persuasive at least at this time for issues relating to the ‘working electrode make up’. However, the issue will be revisited upon allowance of Group II claims.
3. Claims 7-12 are under consideration in this Office Action.
4. Claims withdrawn:
Claims 1-6 & 13-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
5. Priority
Receipt is acknowledged of papers (foreign priority filed 8/10/23 & 11/27/23) submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
6. IDS filed 2/11/24 is acknowledged. A signed copy of the IDS is provided with this Office Action.
7. Drawings filed 3/18/24 is acknowledged.
8. Claims 7-12 are drawn to as follows:
7. An electrode for use in reducing N20 to N2, the electrode comprising a MXene or a derivative thereof, of formula M n+1 Xn Ts, wherein M is a transition metal of Groups 3, 4, 5, 6, or a combination thereof, of the Periodic Table of the Elements, X is carbon, nitrogen, or a combination thereof, T is oxide, epoxide, hydroxide, Cl-C5 alkoxide, fluoride, chloride, bromide, iodide, or a combination thereof, n is 1, 2, or 3, and s is 0, 1, or 2, and nitrous oxide reductase immobilized on the MXene or a derivative thereof.
8. The electrode of claim 7, wherein the MXene or a derivative thereof is immobilized on a surface of the electrode through a binder.
9. The electrode of claim 7, wherein the derivative is N-, P-, or S-doped MXene, or a hybrid material of a transition metal carbide and either of MXene, or N-, P-, or S-doped MXene.
10. The electrode of claim 9, wherein the derivative is N-, P-, or S-doped Ti.sub.3C.sub.2 MXene, a hybrid material of Mo.sub.2C and Ti.sub.3C.sub.2 MXene, a hybrid material of Mo.sub.2C and N-, P-, or S-doped Ti.sub.3C.sub.2 MXene, a hybrid material of W.sub.2C and Ti.sub.3C.sub.2 MXene, or a hybrid material of W.sub.2C and N-, P-, or S-doped Ti.sub.3C.sub.2 MXene.
11. The electrode of claim 7, wherein the MXene or a derivative thereof has a three-dimensional structure in which delaminated nanosheets comprise 2 to 10 interlaced layers, and optionally wherein the MXene is Ti.sub.3C.sub.2 MXene.
12. The electrode of claim 7, wherein the nitrous oxide reductase is cross-linked to a carbon compound having two or more formyl groups on an immobilized silanized surface.
9. 35 U.S.C. § 112, first paragraph (Written Description)
Claims 7-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to the a genus comprising: An electrode for monitoring the reduction N20 to N2, wherein the electrode comprising a MXene or a large number of derivative of formula M n+1 Xn Ts, as well as wherein M is a transition metal of Groups 3, 4, 5, 6, or a combination thereof, of the Periodic Table of the Elements, which according to the periodic table – may be - Group 3: Transition Metals (Lanthanides and Actinides),Group 4: Post-Transition Metals (Lanthanides and Actinides),Group 5: Metalloids (Silicon, Germanium, etc.), Group 6: Nonmetals (Carbon, Nitrogen, etc.); X is carbon, nitrogen, or a combination thereof, T is oxide, epoxide, hydroxide, Cl-C5 alkoxide, fluoride, chloride, bromide, iodide, or a combination thereof, n is 1, 2, or 3, and s is 0, 1, or 2, and wherein the nitrous oxide reductase is from any source and immobilized on the MXene or a derivative thereof. See claim 7, for example.
The claimed invention encompasses a genus of MXene derivatives and encompassing a variety of periodic table elements as well nitrous oxide reductase from any source not adequately described.
The instant application disclose: An electrode for monitoring the reduction N20 to N2, the electrode comprising MXene of formula M n+1 Xn Ts, wherein M is a transition metal carbide comprising Mo.sub.2C or W.sub.2C, X is carbon, nitrogen, or a combination thereof, T is oxide, epoxide, hydroxide, C1-C5 alkoxide, fluoride, chloride, bromide, iodide, or a combination thereof, n is 1, 2, or 3, and s is 0, 1, or 2, and Pseudomonas nitrous oxide reductase immobilized on the MXene. See for example paragraph [0055] of Applicant’s published application - US 20250051734 A1.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
"To fulfill the written description requirement, a patent specification must describe aninvention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what isclaimed."). Thus, an applicant complies with the written description requirement "bydescribing the invention, with all its claimed limitations, not that which makes it obvious,"and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966."Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents" of the University of California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus ...") Regents" of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP further states that if a biomolecule is described only by a functional characteristic, without any disclosed correlation between function and structure of the sequence, it is "not sufficient characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence." MPEP § 2163. The MPEP does state that for a generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP § 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP § 2163. Although the MPEP does not define what constitute a sufficient number of representative species, the courts have indicated what do not constitute a representative number of species to adequately describe a broad generic. In Gostelli, the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli, 872, F.2d at 1012, 10 USPQ2d at 1618. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include "level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient." MPEP § 2163. While all of the factors have been considered, a sufficient amount for a prima facie case is discussed below.
Further, to provide evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include: a) the scope of the invention; b) actual reduction to practice; c) disclosure of drawings or structural chemical formulas; d) relevant identifying characteristics including complete structure, partial structure, physical and/or chemical properties, and structure/function correlation; e) method of making the claimed compounds; f) level of skill and knowledge in the art; and g) predictability in the art.
Moreover, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus of polypeptides, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
10. No claim is allowed.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEKCHAND SAIDHA whose telephone number is (571)272-0940. The examiner can normally be reached on M-F 8.00-5.30. 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, Robert B Mondesi can be reached on 408 918 7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TEKCHAND SAIDHA/
Primary Examiner, Art Unit 1652
Recombinant Enzymes, Hoteling
Telephone: (571) 272-0940
Fax: (571) 273-0940