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 .
This is in response to the Amendment dated December 11, 2025. 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 and 38 (species) drawn to an invention nonelected without traverse in the reply filed on August 4, 2025.
Claim Objections
Claim 12 has been objected to because of minor informalities.
The objection of claim 12 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 1-4, 12, 14-15, 18-19, 28 and 32-37 have been 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.
The rejection of claims 1-4, 12, 14-15, 18-19, 28 and 32-37 under 35 U.S.C. 112(b) or
35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 102/103
Claim(s) 1-4, 12, 14-15, 18-19, 28 and 33-37 have been rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Boutin et al. (“Aqueous Electrochemical Reduction of Carbon Dioxide and Carbon Monoxide into Methanol with Cobalt Phthalocyanine,” Angewandte Chemie International Edition (2019 Nov 4), Vol. 58, No. 45, pp. 16172-16176).
The rejection of claims 1-4, 12, 14-15, 18-19, 28 and 33-37 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Boutin et al. has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Claim(s) 32 has been rejected under 35 U.S.C. 103 as being unpatentable over Boutin
et al. (“Aqueous Electrochemical Reduction of Carbon Dioxide and Carbon Monoxide into
Methanol with Cobalt Phthalocyanine,” Angewandte Chemie International Edition (2019 Nov 4), Vol. 58, No. 45, pp. 16172-16176) as applied to claims 1-4, 12, 14-15, 18-19, 28 and 33-37 above, and further in view of Wu et al. (“Heterogeneous Molecular Catalysts of Metal Phthalocyanines for Electrochemical CO2 Reduction Reactions,” Accounts of Chemical Research
(2021 Aug 4), Vol. 54, No. 16, pp. 3149-3159).
The rejection of claim 32 under 35 U.S.C. 103 as being unpatentable over Boutin
et al. as applied to claims 1-4, 12, 14-15, 18-19, 28 and 33-37 above, and further in view of Wu et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Election/Restrictions
Newly submitted claim 51 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 51 is dependent on non-elected claim 38.
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, claim 51 is 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 Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 51-55 been renumbered 47-51.
Claim Rejections - 35 USC § 112
Claim 37 is 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 37
• lines 1-2, recite “wherein the method comprises contacting an aqueous solution
comprising a metal cation and an anion with CO2”.
Is the “an aqueous solution” the same as the first aqueous solution recited in claim 1, line 2? If so, then the words “an aqueous” should be amended to the words -- the first aqueous -- to ensure proper antecedent basis for the claim terminology.
Is the “a metal cation” further limiting the cation recited in claim 1, line 2?
Is the “an anion” the same as the anion recited in claim 1, line 2? If so, then the word “an” should be amended to the word -- the -- to ensure proper antecedent basis for the claim terminology.
Is the “CO2” the same as the CO2 recited in claim 1, line 2? If so, then the word -- the -- should be added before “CO2” to ensure proper antecedent basis for the claim terminology.
• lines 2-3, recite “thereby forming an aqueous solution comprising a cation, an anion, and CO2”.
Claim 1, lines 3-4, recite “thereby forming a second aqueous solution comprising the cation, the anion, and the CO2 or the CO”.
There are two aqueous solutions formed in the method. It is unclear from the claim language what their relationship is. Also, the second aqueous solution is applied with a voltage
in the method while the aqueous solution recited in claim 37 is floating.
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, 12, 14-15, 18-19, 37 and 47 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gao et al. (“Activity and Selectivity Control in CO2 Electroreduction to Multicarbon Products over CuOx Catalysts via Electrolyte Design,” ACS Catal (2018), Vol. 8, pp. 10012–10020).
Regarding claim 1, Gao teaches a method, comprising:
• contacting a first aqueous solution comprising a cation and an anion (= a 0.1 M LiHCO3 solution) [page 10017, right column, lines 37-40] with CO2 or CO (= 40 mL of electrolyte and purged continuously with CO2 (99.995%, 20 mL min-1) [page 10017, right column, lines 30-31], thereby forming a second aqueous solution comprising the cation, the anion, and the CO2 or the CO (= an aqueous 0.1 M LiHCO3 solution was used as an electrolyte) [page 10017, right column, lines 33 and 37];
• contacting the second aqueous solution comprising the cation, the anion, and the CO2
or the CO with an electrode (= working electrode and counter electrode compartments were
both filled with 40 mL of electrolyte) [page 10017, right column, lines 29-30]; and
• applying a voltage to the second aqueous solution comprising the cation, the anion,
and the CO2 or the CO (= CO2 electroreduction in different electrolytes at −1.0 V vs RHE) [page 10018, left column, lines 8-9] via the electrode (= the O2-plasma-treated Cu foil was used as a working electrode) [page 10017, right column, line 57-58];
wherein the cation is Li+ (= aqueous 0.1 M LiHCO3) [page 10017, right column, line 33].
The method of Gao differs from the instant invention because Gao does not disclose producing methanol.
The invention as a whole would have been anticipated to one having ordinary skill in the art before the effective filing date of the claimed invention because “of producing methanol” is recited in the preamble of claim 1, line 1. MPEP § 2111.02(II) states that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Regarding claim 12, Gao teaches wherein the anion is a bicarbonate or a hydroxide (=
aqueous 0.1 M LiHCO3) [page 10017, right column, line 33].
Regarding claim 14, Gao teaches wherein the second aqueous solution has a pH of about pH 2, about pH 3, about pH 4, about pH 5, about pH 6, about pH 7, about pH 8, about pH 9, about pH 10, about pH 11, about pH 12, or about pH 13 (= electrolytes (pH 6.8)) [page 10017, right column, line 37].
Regarding claim 15, Gao teaches wherein second aqueous solution has a pH of about pH
6.8 or about pH 13 (= electrolytes (pH 6.8)) [page 10017, right column, line 37].
Regarding claim 18, Gao teaches wherein the voltage is applied vs. a reference hydrogen electrode (RHE) [= CO2 electroreduction in different electrolytes at −1.0 V vs RHE]
(page 10018, left column, lines 8-9).
Regarding claim 19, Gao teaches wherein the voltage is applied at about -0.5 V, about -
0.6 V, about -0.7 V, about -0.8 V, about -0.9 V, or about -1.0 V vs. the reference hydrogen electrode (= CO2 electroreduction in different electrolytes at −1.0 V vs RHE) [page 10018, left column, lines 8-9].
Regarding claim 37, Gao teaches wherein the method comprises contacting an aqueous solution comprising a metal cation and an anion (= an aqueous 0.1 M NaHCO3 solution was used as an electrolyte) [page 10017, right column, lines 33 and 37] with CO2 (= 40 mL of electrolyte and purged continuously with CO2 (99.995%, 20 mL min-1)) [page 10017, right column, lines 30-31], thereby forming an aqueous solution comprising a cation, an anion, and CO2 (= an aqueous 0.1 M NaHCO3 solution was used as an electrolyte) [page 10017, right column, lines 33 and 37].
Regarding claim 47, Gao teaches wherein the voltage is applied at about -0.8 V vs. the
reference hydrogen electrode (= CO2 electroreduction in different electrolytes at −1.0 V vs RHE) [page 10018, left column, lines 8-9].
Claim Rejections - 35 USC § 103
I. Claim(s) 33-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al.
(“Activity and Selectivity Control in CO2 Electroreduction to Multicarbon Products over CuOx Catalysts via Electrolyte Design,” ACS Catal (2018), Vol. 8, pp. 10012–10020) as applied to
claims 1, 12, 14-15, 18-19, 37 and 47 above.
Gao is as applied above and incorporated herein.
Regarding claim 33, the method of Gao differs from the instant invention because Gao does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide at greater than 10%, 20%, 30%, 40%, 50%, 60%, 70%, 80%, or 90% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because Gao teaches the method as
presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious
where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 34, the method of Gao differs from the instant invention because Gao
does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide at greater than 30% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because Gao teaches the method as
presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be
expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 35, the method of Gao differs from the instant invention because Gao does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide of about
10%, 20%, 30%, 40%, 50%, 60%, 70%, 80%, or 90% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because Gao teaches the method as
presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious
where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or
characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 36, the method of Gao differs from the instant invention because Gao does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide of about 30% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because Gao teaches the method as
presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
II. Claim(s) 1, 12, 14-15, 28, 32-37 and 50 is/are 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).
Regarding claim 1, CN ‘525 teaches a method of producing methanol (= the electrolysis of carbon dioxide and water to produce methanol) [ρ [n0032]], comprising:
• contacting a first aqueous solution comprising a cation and an anion (= LiOH aqueous
solution) [ρ [n0041]] with CO2 or CO (= carbon dioxide is introduced into electrolyte solution 21
(204)) [ρ [n0043]], thereby forming a second aqueous solution comprising the cation, the anion,
and the CO2 or the CO (= the electrolyte 21 (204) is an alkaline aqueous solution, such as LiOH aqueous solution) [ρ [n0041]];
• contacting the second aqueous solution comprising the cation, the anion, and the CO2 or the CO with an electrode (= electrolysis half-reaction equation at the cathode: 10H2O + 12e- + 2CO2 = 2CH3OH + 12OH-) [ρ [n0044] and [n0045]]; and
• applying electrolytic power to the second aqueous solution comprising the cation, the
anion, and the CO2 or the CO via the electrode (= the negative electrode of the electrolytic
power supply 21 (201) is connected to the cathode plate 21 (205) through the wire 21 (202)) [ρ
[n0041]];
wherein the cation is Li+ (= LiOH aqueous solution) [ρ [n0041]].
The method of CN ‘525 differs from the instant invention because CN ‘525 does not disclose wherein the electrolytic power is a voltage.
CN ‘525 teaches the electrolysis of carbon dioxide and water to produce methanol (ρ
[n0032]).
Shi, like CN ‘525, teaches the electro-reduction of carbon dioxide to methanol (= Title).
One fascinating experimental work was recently reported by Wang and co-workers13 that a cobalt(II) tetraamino phthalocyanine (CoPc-NH2) molecule (Scheme 1) supported on carbon nanotubes (CNTs) can efficiently reduce CO2 to methanol in a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE) [page 16549, right column, lines 12-17].
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the electric power taught by CN ‘525 with wherein the electrolytic power is a voltage because CO2 can be efficiently reduced to methanol
under an applied potential.1
Regarding claim 12, CN ‘525 teaches wherein the anion is a bicarbonate or a hydroxide
(= LiOH aqueous solution) [ρ [n0041]].
Regarding claim 14, the method of CN ‘525 differs from the instant invention because
CN ‘525 does not disclose wherein the second aqueous solution has a pH of about pH 2, about pH 3, about pH 4, about pH 5, about pH 6, about pH 7, about pH 8, about pH 9, about pH 10, about pH 11, about pH 12, or about pH 13.
CN ‘525 teaches the electrolyte 21 (204) is an alkaline aqueous solution, such as NaOH,
KOH, or LiOH aqueous solution, etc. (ρ [n0041]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second aqueous solution taught by CN ‘525 with wherein the second aqueous solution has a pH of about pH 2, about pH 3, about pH 4,
about pH 5, about pH 6, about pH 7, about pH 8, about pH 9, about pH 10, about pH 11, about pH 12, or about pH 13 because CN ‘525 teaches that the aqueous solution is alkaline. The alkaline pH range is between 7 and 14. Thus, a person having ordinary skill in the art would have chosen a pH value between 7 and 14 in order for the aqueous solution to have been alkaline.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie
inside ranges disclosed by the prior art” a prima facie case of obviousness exists in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) “.
Furthermore, MPEP § 2144.05(II)(A)) states that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 15, the method of CN ‘525 differs from the instant invention because CN ‘525 does not disclose wherein the second aqueous solution has a pH of about pH 6.8 or about pH 13.
CN ‘525 teaches the electrolyte 21 (204) is an alkaline aqueous solution, such as NaOH,
KOH, or LiOH aqueous solution, etc. (ρ [n0041]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second aqueous solution taught by CN ‘525 with wherein the second aqueous solution has a pH of about pH 6.8 or about pH 13 because CN ‘525 teaches that the aqueous solution is alkaline. The alkaline pH range is between 7 and 14. Thus, a person having ordinary skill in the art would have chosen a pH value between 7 and 14 in order for the aqueous solution to have been alkaline.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie
inside ranges disclosed by the prior art” a prima facie case of obviousness exists in In re
Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) “.
Furthermore, MPEP § 2144.05(II)(A)) states that "where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955).”
Regarding claim 28, the method of CN ‘525 differs from the instant invention because
CN ‘525 does not disclose wherein the electrode comprises cobalt phthalocyanine (CoPc).
CN ‘525 teaches that:
A catalyst is used to increase the reaction rate of methanol production from carbon dioxide electrolysis. The catalyst metal or metal oxide may be, for example, copper, aluminum, iron, cobalt, nickel, magnesium, titanium, zinc, lead, silver, tin, gold, mercury, lithium, sodium, potassium, calcium, barium, platinum, or zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of some oxides of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of multiple oxides; or a metal, a mixture of metal oxides; or a carbon particle, a metal, a mixture of metal oxides (ρ [n0053]).
The catalyst adheres to the anode plate 21 (207) or the cathode plate 21 (205) [ρ [n0054]].
The catalyst may adhere to the cathode material between the cathode plate 21 (205) and the diaphragm 21 (208); the cathode material may be nanoparticles, such as carbon fibers, carbon nanotubes, or silicon nanoparticles (ρ [n0055]).
Shi teaches that:
One fascinating experimental work was recently reported by Wang and co-workers13 that a cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecule (Scheme 1) supported on carbon nanotubes (CNTs) can efficiently reduce CO2 to methanol in a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE). The incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability, compared to its unsubstituted counterpart (cobalt(II) phthalocyanine, CoPc). Meanwhile, the *CO species was proposed to
serve as an important intermediate during the reduction of CO2 to methanol based on the experimental observations (pages 16549-16550, bridging paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode taught by CN ‘525 with wherein the electrode comprises cobalt phthalocyanine (CoPc) because supporting cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecules on the carbon nanotubes (CNTs) of CN ‘525 can efficiently reduce CO2 to methanol where the incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability.
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 “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 32, Shi teaches wherein the CoPc is ligated to a ligand comprising amino, nitrogen, alkyl, carboxyl, or halo (= a cobalt(II) tetraaminophthalocyanine (CoPc-NH2)) [page 16550, Scheme 1].
Regarding claim 33, the method of CN ‘525 in view of Shi differs from the instant invention because CN ‘525 in view of Shi does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide at greater than 10%, 20%, 30%, 40%, 50%, 60%, 70%, 80%, or
90% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because CN ‘525 in view of Shi teaches the method as presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 34, the method of CN ‘525 in view of Shi differs from the instant invention because CN ‘525 in view of Shi does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide at greater than 30% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because CN ‘525 in view of Shi teaches the method as presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 35, the method of CN ‘525 in view of Shi differs from the instant
invention because CN ‘525 in view of Shi does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide of about 10%, 20%, 30%, 40%, 50%, 60%, 70%, 80%, or 90% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because CN ‘525 in view of Shi teaches
the method as presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious
where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or
characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 36, the method of CN ‘525 in view of Shi differs from the instant invention because CN ‘525 in view of Shi does not disclose wherein the method has a selectivity of methanol vs. carbon monoxide of about 30% in favor of methanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because CN ‘525 in view of Shi teaches the method as presently claimed (see “Regarding claim 1” above). Similar processes can reasonably be expected to give similar results.
Furthermore, a process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the
process of the prior art is the same or similar as that of the claim but the function, property or
characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
Regarding claim 37, CN ‘525 teaches wherein the method comprises contacting an
aqueous solution comprising a metal cation and an anion (= a KOH aqueous solution) [ρ [n0041]] with CO2 (= carbon dioxide is introduced into electrolyte solution 21 (204)) [ρ [n0043]], thereby forming an aqueous solution comprising a cation, an anion, and CO2 (= the electrolyte
21 (204) is an alkaline aqueous solution, such as KOH aqueous solution) [ρ [n0041]].
Regarding claim 50, the method of CN ‘525 differs from the instant invention because
CN ‘525 does not disclose wherein the electrode comprises cobalt phthalocyanine (CoPc).
CN ‘525 teaches that:
A catalyst is used to increase the reaction rate of methanol production from carbon dioxide electrolysis. The catalyst metal or metal oxide may be, for example, copper, aluminum, iron, cobalt, nickel, magnesium, titanium, zinc, lead, silver, tin, gold, mercury, lithium, sodium, potassium, calcium, barium, platinum, or zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of some oxides of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of multiple oxides; or a metal, a mixture of metal oxides; or a carbon particle, a metal, a mixture of metal oxides (ρ [n0053]).
The catalyst adheres to the anode plate 21 (207) or the cathode plate 21 (205) [ρ [n0054]].
The catalyst may adhere to the cathode material between the cathode plate 21 (205) and the diaphragm 21 (208); the cathode material may be nanoparticles, such as carbon fibers, carbon nanotubes, or silicon nanoparticles (ρ [n0055]).
Shi teaches that:
One fascinating experimental work was recently reported by Wang and co-workers13 that a cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecule (Scheme 1) supported on carbon nanotubes (CNTs) can efficiently reduce CO2 to methanol in a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE). The incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability, compared to its unsubstituted counterpart (cobalt(II) phthalocyanine, CoPc). Meanwhile, the *CO species was proposed to
serve as an important intermediate during the reduction of CO2 to methanol based on the experimental observations (pages 16549-16550, bridging paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode taught by CN ‘525 with
wherein the electrode comprises cobalt phthalocyanine (CoPc) because supporting cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecules on the carbon nanotubes (CNTs) of CN ‘525 can efficiently reduce CO2 to methanol where the incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability.
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 “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).”
III. Claim(s) 18-19 and 47-49 is/are 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 1, 12, 14-15, 28, 32-37 and 50 above, and further in view of KR 20220164868 (‘868).
CN ‘525 and Shi are as applied above and incorporated herein.
Regarding claim 18, CN ‘525 teaches wherein the voltage is applied (= the electrolytic
power supply 21 (201))2 [ρ [n0041]].
Shi teaches an applied potential of −1.40 V (vs SHE).
The method of CN ‘525 in view of Shi differs from the instant invention because CN ‘525 in view of Shi does not disclose a reference hydrogen electrode (RHE).
KR ‘868, like Shi, teaches CO2 conversion (= abstract).
In another aspect, the reference electrode is a reversible hydrogen electrode (RHE), standard hydrogen electrode (SHE), standard calomel electrode (Standard Calomel Electrode, SCE), Ag/AgCl standard Electrode (Ag/AgCl Reference Electrode), Hg/HgSO4, it may be any one selected from the group consisting of an electrode (Mercury Sulfate Electrode) and a Hg/HgO electrode (Mercury-Mercury Oxide Reference Electrode) [ρ [0027]].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the SHE taught by CN ‘525 in
view of Shi with a reference hydrogen electrode (RHE) because the substitution of art recognized equivalents as shown by KR ‘868 in [ρ [0027]] is within the level of ordinary skill in the art. In addition, the substitution of one reference electrode for another is likely to be
obvious when it does no more than yield predictable results.
Regarding claim 19, CN ‘525 teaches wherein the voltage is applied (= the electrolytic power supply 21 (201))3 [ρ [n0041]].
Shi teaches a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs
SHE).
KR ‘868 teaches the reference hydrogen electrode (= the reference electrode is a reversible hydrogen electrode (RHE), standard hydrogen electrode (SHE)) [ρ [0027]].
The method of CN ‘525 in view of Shi and KR ‘868 differs from the instant invention because CN ‘525 in view of Shi and KR ‘868 does not disclose wherein the voltage is applied at
about -0.5 V, about -0.6 V, about -0.7 V, about -0.8 V, about -0.9 V, or about -1.0 V.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the voltage taught by CN ‘525 in view of
Shi and KR ‘868 with wherein the voltage is applied at about -0.5 V, about -0.6 V, about -0.7 V,
about -0.8 V, about -0.9 V, or about -1.0 V because the voltage would have been depended on the pH of the aqueous solution where ERHE = ESHE + 0.059 x pH.
The discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch and Slaney 205 USPQ 215 (CCPA 1980).
Regarding claim 47, CN ‘525 teaches wherein the voltage is applied (= the electrolytic
power supply 21 (201))4 [ρ [n0041]].
Shi teaches a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE).
KR ‘868 teaches the reference hydrogen electrode (= the reference electrode is a reversible hydrogen electrode (RHE), standard hydrogen electrode (SHE)) [ρ [0027]].
The method of CN ‘525 in view of Shi and KR ‘868 differs from the instant invention because CN ‘525 in view of Shi and KR ‘868 does not disclose wherein the voltage is applied at
about -0.8 V.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the voltage taught by CN ‘525 in view of
Shi and KR ‘868 with wherein the voltage is applied at about -0.8 V because the voltage would
have been depended on the pH of the aqueous solution where ERHE = ESHE + 0.059 x pH.
The discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch and Slaney 205 USPQ 215 (CCPA 1980).
Regarding claim 48, the method of CN ‘525 differs from the instant invention because
CN ‘525 does not disclose wherein the electrode comprises cobalt phthalocyanine (CoPc).
CN ‘525 teaches that:
A catalyst is used to increase the reaction rate of methanol production from carbon dioxide electrolysis. The catalyst metal or metal oxide may be, for example, copper, aluminum, iron, cobalt,
nickel, magnesium, titanium, zinc, lead, silver, tin, gold, mercury, lithium, sodium, potassium, calcium, barium, platinum, or zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of some oxides of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of multiple oxides; or a metal, a mixture of metal oxides; or a carbon particle, a metal, a mixture of metal oxides (ρ [n0053]).
The catalyst adheres to the anode plate 21 (207) or the cathode plate 21 (205) [ρ [n0054]].
The catalyst may adhere to the cathode material between the cathode plate 21 (205) and the diaphragm 21 (208); the cathode material may be nanoparticles, such as carbon fibers, carbon nanotubes, or silicon nanoparticles (ρ [n0055]).
Shi teaches that:
One fascinating experimental work was recently reported by Wang and co-workers13 that a cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecule (Scheme 1) supported on carbon nanotubes (CNTs) can efficiently reduce CO2 to methanol in a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE). The incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability, compared to its unsubstituted counterpart (cobalt(II) phthalocyanine, CoPc). Meanwhile, the *CO species was proposed to
serve as an important intermediate during the reduction of CO2 to methanol based on the experimental observations (pages 16549-16550, bridging paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode taught by CN ‘525 with wherein the electrode comprises cobalt phthalocyanine (CoPc) because supporting cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecules on the carbon nanotubes (CNTs) of CN ‘525 can efficiently reduce CO2 to methanol where the incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability.
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 “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 49, the method of CN ‘525 differs from the instant invention because
CN ‘525 does not disclose wherein the electrode comprises cobalt phthalocyanine (CoPc).
CN ‘525 teaches that:
A catalyst is used to increase the reaction rate of methanol production from carbon dioxide electrolysis. The catalyst metal or metal oxide may be, for example, copper, aluminum, iron, cobalt, nickel, magnesium, titanium, zinc, lead, silver, tin, gold, mercury, lithium, sodium, potassium, calcium, barium, platinum, or zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of some oxides of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of zinc oxide, or chromium trioxide, or copper oxide, or aluminum oxide, or ferric oxide, or iron oxide; or a mixture of multiple oxides; or a metal, a mixture of metal oxides; or a carbon particle, a metal, a mixture of metal oxides (ρ [n0053]).
The catalyst adheres to the anode plate 21 (207) or the cathode plate 21 (205) [ρ [n0054]].
The catalyst may adhere to the cathode material between the cathode plate 21 (205) and the diaphragm 21 (208); the cathode material may be nanoparticles, such as carbon fibers, carbon nanotubes, or silicon nanoparticles (ρ [n0055]).
Shi teaches that:
One fascinating experimental work was recently reported by Wang and co-workers13 that a cobalt(II) tetraaminophthalocyanine (CoPc-NH2) molecule (Scheme 1) supported on carbon nanotubes (CNTs) can efficiently reduce CO2 to methanol in a neutral aqueous solution (pH 6.8) under an applied potential of −1.40 V (vs SHE). The incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability, compared to its unsubstituted counterpart (cobalt(II) phthalocyanine, CoPc). Meanwhile, the *CO species was proposed to
serve as an important intermediate during the reduction of CO2 to methanol based on the experimental observations (pages 16549-16550, bridging paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode taught by CN ‘525 with wherein the electrode comprises cobalt phthalocyanine (CoPc) because supporting cobalt(II)
tetraaminophthalocyanine (CoPc-NH2) molecules on the carbon nanotubes (CNTs) of CN ‘525 can efficiently reduce CO2 to methanol where the incorporation of the electron-donating
amino groups onto the phthalocyanine ligand of the catalyst not only enables a comparable activity and selectivity toward producing methanol (Faradaic efficiency of 32%, with a TOF of
1.01 s-1) but also vastly improves the stability/catalytic durability.
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 “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).”
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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a))
pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In
no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 CN ‘525 teaches an electrolytic power supply 21 (201) [ρ [n0041]]. A power supply is an electrical device that supplies electric power to an electrical load. The main purpose of a power supply is to convert electric current from a source to the correct voltage, current, and frequency to power the load.
2 CN ‘525 teaches an electrolytic power supply 21 (201) [ρ [n0041]]. A power supply is an electrical device that supplies electric power to an electrical load. The main purpose of a power supply is to convert electric current from a source to the correct voltage, current, and frequency to power the load.
3 CN ‘525 teaches an electrolytic power supply 21 (201) [ρ [n0041]]. A power supply is an electrical device that supplies electric power to an electrical load. The main purpose of a power supply is to convert electric current from a source to the correct voltage, current, and frequency to power the load.
4 CN ‘525 teaches an electrolytic power supply 21 (201) [ρ [n0041]]. A power supply is an electrical device that supplies electric power to an electrical load. The main purpose of a power supply is to convert electric current from a source to the correct voltage, current, and frequency to power the load.