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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 28, 2026 has been entered.
This is in response to the Amendment dated May 28, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 13 (species) drawn to an invention nonelected without traverse in the reply filed on August 4, 2025.
Claim Rejections - 35 USC § 103
I. Claim(s) 11, 12, 14-15 and 32 have been rejected under 35 U.S.C. 103 as being
unpatentable over CN 113594525 (‘525) in view of Shi et al. (“Theoretical Study on the Electro-Reduction of Carbon Dioxide to Methanol Catalyzed by Cobalt Phthalocyanine,” Inorganic Chemistry (2022 Oct 10), Vol. 61, No. 42, pp. 16549-16564).
The rejection of claims 11, 12, 14-15 and 32 under 35 U.S.C. 103 as being unpatentable over CN 113594525 (‘525) in view of Shi et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 18-19 and 47 have been rejected under 35 U.S.C. 103 as being unpatentable over CN 113594525 (‘525) in view of Shi et al. (“Theoretical Study on the Electro-Reduction of Carbon Dioxide to Methanol Catalyzed by Cobalt Phthalocyanine,” Inorganic Chemistry (2022 Oct 10), Vol. 61, No. 42, pp. 16549-16564) as applied to claims 11, 12, 14-15 and 32 above, and further in view of KR 20220164868 (‘868).
The rejection of claims 18-19 and 47 under 35 U.S.C. 103 as being unpatentable over CN 113594525 (‘525) in view of Shi et al. as applied to claims 11, 12, 14-15 and 32 above, and further in view of KR 20220164868 (‘868) has been withdrawn in view of Applicant’s amendment.
Continued Response
Election/Restrictions
Newly submitted claims 13, 59 and 66 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: they are dependent
on non-elected claim 13.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13, 59 and 66 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
Claim 1, 12, 32, 52-58 and 60-65 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.
Claim 1
line 11, recites “an applied potential”.
Claim 1, line 6, recite “applying a voltage”.
It is unclear from the claim language what the relationship is between the applied voltage and the applied potential.
Claim Rejections - 35 USC § 103
I. Claim(s) 1, 12, 32, 52-55, 58, 60-62 and 65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (“Domino Electroreduction of CO2 to Methanol on a Molecular Catalyst,” Nature (28 November 2019), Vol. 575, 17 pp.) in view of WO 2024/024709 (‘709).
Regarding claim 1, Wu teaches a method of producing methanol (= reduction of CO2 to methanol) [page 639, abstract], comprising:
• contacting a first (= the pre-purified 0.1 M KHCO3) comprising a cation (= KHCO3) and an anion (= KHCO3) [“Methods”, page 1, right column, line 40] aqueous solution (= 0.1 M KHCO3 aqueous electrolyte) [page 640, left column, line 1] with CO2 (= the pre-purified 0.1 M KHCO3 was used as the electrolyte. Before each measurement, the electrolyte was pre-saturated with CO2 by bubbling the gas) [“Methods”, page 1, right column, lines 39-42], thereby forming a second aqueous solution comprising the cation, the anion, and the CO2 (= the CO2 saturated electrolyte) [page 641, left column, line 48];
• contacting the second aqueous solution comprising the cation, the anion, and the CO2 (= the CO2 saturated electrolyte) [page 641, left column, line 48] with an electrode (= the working electrode) [“Methods”, page 1, right column, line 46]; and
• applying a voltage (= MeOH production on CoPc/CNT onsets at about −0.82 V with respect to the reversible hydrogen electrode (RHE)) [page 640, left column, lines 12-14] to the second aqueous solution comprising the cation, the anion, and the CO2 (= the CO2 saturated electrolyte) [page 641, left column, line 48] via the electrode (= the working electrode) [“Methods”, page 1, right column, line 46];
wherein
۰ the electrode comprises cobalt phthalocyanine (CoPc) (= CoPc/CNT or CoPc–NH2/CNT ink was deposited on a well-polished glassy carbon electrode (electrode diameter, 4 mm; mass loading, 0.06 mg cm-2)) [“Methods”, page 1, right volume, lines 19-21], and
۰ the method is performed at a pH of about pH 6 to about pH 8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18] and at an applied potential of-0.8 V vs a reference hydrogen electrode (= MeOH production on CoPc/CNT onsets at about −0.82 V with respect to the reversible hydrogen electrode (RHE)) [page 640, left column, lines 12-14].
Wu does not explicitly teach the following:
a. Wherein the cation is Li+.
b. Wherein the anion is a bicarbonate or a hydroxide.
Wu teaches a 0.1M KHCO3 aqueous electrolyte (page 640, left column, line 1).
Like Wu, WO ‘709 teaches the electroreduction of CO2 to methanol (= electrically
reducing carbon dioxide and converting it into carbon monoxide, olefinic hydrocarbons such as ethylene, and/or alcohols (ρ [0001]); and C1 compounds such as carbon monoxide, methane,
methanol, and formic acid (ρ [0003])).
The anode solution and cathode solution are aqueous solutions in which electrolytes are dissolved.
The electrolyte includes, for example, potassium, sodium, lithium, or at least one of these compounds. The electrolyte includes, for example, at least one compound from the group consisting of LiOH, NaOH, KOH, Li2CO3, Na2CO3, K2CO3, LiHCO3, NaHCO3 and KHCO3 (ρ [0052]).
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 electrolyte taught by Wu with wherein the cation is Li+ and wherein the anion is a bicarbonate or a hydroxide. The person with ordinary skill in the art would have been motivated to make this modification because Wu teaches a KHCO3 aqueous electrolyte on page 640, left column, line 1, where adding an electrolyte including LiOH or LiHCO3 along with KHCO3 would have been suitable to use as the electrolyte to achieve the electroreduction of CO2 to methanol because the substitution of art recognized equivalents as taught by WO ‘709 in [0001], [0003] and [0052] is within the level of ordinary skill in the art. In addition the substitution of one electrolyte for another is likely to be obvious when it does nothing more than yield predictable results.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, 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 12, WO ‘709 teaches wherein the anion is a hydroxide (= LiOH) [ρ [0052]].
Regarding claim 32, Wu teaches wherein the CoPc is ligated to a ligand comprising amino, nitrogen, alkyl, carboxyl, or halo (= CoPc/CNT or CoPc–NH2/CNT ink was deposited on a well-polished glassy carbon electrode (electrode diameter, 4 mm; mass loading, 0.06 mg cm-2)) [“Methods”, page 1, right volume, lines 19-21].
Regarding claim 52, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 53, Wu teaches wherein the CoPc is on a carbon support (= to explore
this possibility, we chose iron phthalocyanine (FePc), cobalt phthalocyanine (CoPc) and nickel phthalocyanine (NiPc) molecules supported on carbon nanotubes (CNTs) as catalysts) [page 639, right column, lines 13-15].
Regarding claim 54, Wu teaches wherein the carbon support is carbon black, graphene, single-walled carbon nanotubes, or multi-walled carbon nanotubes (= carbon nanotubes (CNTs)) [page 639, right column, line 15].1
Regarding claim 55, Wu teaches wherein the carbon support is graphene (= carbon
nanotubes (CNTs)) [page 639, right column, line 15].2
Regarding claim 58, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 60, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 61, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 62, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 65, Wu teaches wherein the CoPc is on a carbon support (= to explore
this possibility, we chose iron phthalocyanine (FePc), cobalt phthalocyanine (CoPc) and nickel
phthalocyanine (NiPc) molecules supported on carbon nanotubes (CNTs) as catalysts) [page 639,
right column, lines 13-15].
II. Claim(s) 56-57 and 63-64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (“Domino Electroreduction of CO2 to Methanol on a Molecular Catalyst,” Nature (28 November 2019), Vol. 575, 17 pp.) in view of WO 2024/024709 (‘709) as applied to claims 1, 12, 32, 52-55, 58, 60-62 and 65 above, and further in view of Tafete et al. (“A Review on Carbon Nanotube-Based Composites for Electrocatalyst Applications,” Fullerenes, Nanotubes and
Carbon Nanostructures (January 2022), Vol. 30, No. 11, pp. 1075–1083).
Regarding claim 56, Wu and WO ‘709 teach the method of at least claims 1, 12, 32, 52-55, 58, 60-62 and 65 as applied above. The references do not teach wherein the carbon support is single-walled carbon nanotubes.
Wu teaches carbon nanotubes (CNTs) [page 639, right column, line 15].
Tafete teaches that:
Carbon nanotubes are divided into two types based on the number of graphene layers: Single-Walled Carbon Nanotubes (SWCNTs) and Multi-Walled Carbon Nanotubes (MWCNTs). SWCNTs consist of a single sheet of graphene seamlessly wrapped into a cylindrical tube and MWCNTs comprising of an array of SWCNTs of different diameters that are concentrically nested into each other (page 1075, left column, lines 7-14).
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 carbon nanotubes taught by Wu with wherein the carbon support is single-walled carbon nanotubes. The person with ordinary skill in the art would have been motivated to make this modification because Wu teaches carbon nanotubes (CNTs) on page 639, right column, line 15, where single-walled carbon nanotubes (SWCNTs) are one of two types of carbon nanotubes as taught by Tafete on page 1075, left column, lines 7-11, which would have been included in the generic teaching of carbon nanotubes in Wu on page 639, right column, line 15.
There is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining references is
what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Regarding claim 57, Wu and WO ‘709 teach the method of at least claims 1, 12, 32, 52-55, 58, 60-62 and 65 as applied above. The references do not teach wherein the carbon support is multi-walled carbon nanotubes.
Wu teaches carbon nanotubes (CNTs) [page 639, right column, line 15].
Tafete teaches that:
Carbon nanotubes are divided into two types based on the number of graphene layers: Single-Walled Carbon Nanotubes (SWCNTs) and Multi-Walled Carbon Nanotubes (MWCNTs). SWCNTs consist of a single sheet of graphene seamlessly wrapped into a cylindrical tube and MWCNTs comprising of an array of SWCNTs of different diameters that are concentrically nested into each other (page 1075, left column, lines 7-14).
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 carbon nanotubes taught by Wu with wherein the carbon support is multi-walled carbon nanotubes. The person with ordinary skill in the art would have been motivated to make this modification because Wu teaches carbon nanotubes (CNTs) on page 639, right column, line 15, where multi-walled carbon nanotubes (SWCNTs) are one of two types of carbon nanotubes as taught by Tafete on page 1075, left column, lines 7-11, which would have been included in the generic teaching of carbon nanotubes in Wu on page 639, right column, line 15.
There is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining references is
what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Regarding claim 63, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Regarding claim 64, Wu teaches wherein the method is performed at a pH of about 6.8 (= the CO2-saturated electrolyte (pH = 6.8)) [page 641, left column, line 18].
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically challenged in the argument.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP 3 536 823 is cited to teach adding lithium hydroxide to the catholyte (ρ [0044]) and alkali metal bicarbonates to the cathode compartment (ρ [0045]).
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.
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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 Carbon nanotubes (CNTs) are made from graphene. They are essentially graphene sheets rolled into seamless cylindrical tubes.
2 Carbon nanotubes (CNTs) are made from graphene. They are essentially graphene sheets rolled into seamless cylindrical tubes.
Prosecution Insights