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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 5 September 25 is acknowledged.
Claim Rejections - 35 USC § 112
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 6, 7 and 8 are 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.
As to claim 6, the claim recites the limitation “aqueous solution”. However, claim 1, upon which claim 6 depends, already introduces the limitation of “an aqueous solution”. Therefore, it is unclear as to if the limitation of claim 6 intends to refer back to that of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
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.
Claims 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0079540 A1 to Bocarsly et al. (Bocarsly) in view of In Situ Carbon Encapsulation Confined Nickel-Doped Indium Oxide Nanocrystals for Boosting CO2 Electroreduction to the Industrial Level to Chen et al. (Chen).
As to claims 1, 3, 4, 5 and 9, Bocarsly teaches a system for reducing carbon dioxide to oxalate comprising an aqueous solution comprising KCl, an inorganic salt, and carbon dioxide, into which a plurality of separated electrodes are immersed, a working electrode and a counter electrode, the working electrode comprising Cr2O3:Ga2O3 in a 3:1 ratio (thus x=3), and thus a container of some sort for holding the aqueous solution and the plurality of electrodes. The electrodes supplied with a potential of 1.38 V, and thus comprising a circuitry of some sort configured for applying this voltage to the electrodes (Paragraphs 0050-0054).
However, Bocarsly fails to further teach that the working electrode is metal enhanced. However, Chen also discusses selective metal oxide catalysts for carbon dioxide reduction and teaches that by doping these catalysts with nickel the adsorption capacity of the catalysts for carbon dioxide molecules and reaction intermediates is enhanced (Section 1. Introduction). Therefore, it would have been obvious to one of ordinary skill in the art to nickel dope the oxide electrode of Bocarsly in order to enhance the adsorption capacity of the catalysts for carbon dioxide molecules and reaction intermediates as taught by Chen, thus a copper free electrode.
As to claims 6, 7 and 8, the combination of Bocarsly and Chen teaches the apparatus of claim 1. Bocarsly further teaches that the aqueous solution comprises a pH adjustor for a target pH of, for example, 5.1 (Paragraph 0054).
Claims 1, 2, 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of US 2019/0085477 to Ono et al. (Ono).
As to claims 1, 2, 3 and 9, Chen teaches a system for reducing carbon dioxide to a product, the system comprising a container (cell), an aqueous solution within the container, the aqueous solution comprising a potassium hydroxide electrolyte and carbon dioxide, a plurality of electrodes, a cathode and an anode, separated by a salt bride, anion exchange membrane, the cathode comprising a nickel doped indium oxide (thus copper free), a potential of, for example, 0.9V applied to the electrodes, thus a circuitry of some sort configured to provide a voltage to the plurality of electrodes (Section 1. Introduction; Section 2.7 Electrochemical Experiments in the Flow Cell).
However, Chen teaches that the electrolyte comprises potassium hydroxide, thus failing to teach an inorganic salt. However, Ono also discusses electrolytic carbon dioxide reduction and teaches that, for example, potassium chloride, an inorganic salt, is a known equivalent to potassium hydroxide (Paragraph 0041). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the potassium hydroxide with potassium chloride as a known equivalent as taught by Ono (MPEP 2144.06 II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Enhanced activity of β-Ga2O3 by substitution with transition metal for CO2 photoreduction under visible light irradiation to Li et al. – specifically doping gallium oxide with nickel.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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