DETAILED ACTION
This is the first office action for 18/650,924, filed 4/30/2024, which is a continuation of 16/481,567, filed 7/29/2019, which is a national stage entry of PCT/US2018/015916, filed 1/30/2018, which claims priority to provisional applications 62/451,817 (filed 1/30/2017) and 62/540,782 (filed 8/3/2017), after the request for continued examination filed 3/9/2026.
Claims 1-9 and 17 are pending, and are considered herein.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/9/2026 has been entered.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following reference, which is not currently applied in a rejection.
Gomez de Arco, et al. (ACS Nano (2010) vol. 4 no. 5 pages 2865-2873): This reference teaches the formation of flexible graphene films for use as solar cell electrodes.
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.
Claims 1, 3, 6, 8, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (Phys. Chem. Chem. Phys., 2015, 17, 32283, and its supplemental information) in view of Ramuz, et al. (ACS Nano 2012, vol. 6, no. 11, 10384-10395).
In reference to Claim 1, Yang teaches a photoelectrode comprising nitrogen- and sulfur-doped, zero-dimensional carbon dots (i.e. carbon quantum dots) disposed on a layer of graphene oxide (Fig. S3 and Supplemental Information section 1.3).
This photoelectrode therefore, comprises a graphene substrate (corresponding to the layer of graphene oxide) functionalized with carbon quantum dots as a photoactive material.
Yang does not teach that the photoelectrode excludes metal and/or metal oxide components, because he teaches that the photoelectrode further comprises a layer of ITO (Fig. S3).
To solve the same problem of providing a carbon-based photoelectric device, Ramuz teaches a device in which an ITO electrode is replaced with a graphene electrode, in order to achieve an all-carbon device (Fig. 1, “Carbon-Based Electrodes for All-Carbon Device Structure” section, pages 10389-10390).
Ramuz teaches that ITO is brittle and expensive (paragraph 2, column 1, page 10389), and that an electrode of reduced graphene oxide provides the benefit of being flexible and smooth (columns 1-2, page 10389). Table 3 of Ramuz further teaches that photoelectric devices using reduced-graphene-oxide-based electrodes have similar function to those using ITO electrodes.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced the ITO layer in the photoelectrode of Yang with a layer of reduced graphene oxide, as taught by Ramuz, because Ramuz teaches (1) that ITO is brittle and expensive, (2) that ITO is suitably replaced with reduced graphene oxide, due to reduced graphene oxide’s flexibility and smoothness, and (3) that photoelectric devices using reduced-graphene-oxide-based electrodes have similar function to those using ITO electrodes.
Replacing the ITO of the photoelectrode of Yang with reduced graphene oxide, as taught by Ramuz, teaches the limitations of Claim 1, wherein the photoelectrode excludes metal and/or metal oxide components.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
It is noted that “for use in a photocell” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In reference to Claim 3, Yang teaches a photocell (Fig. S3, Supplemental Information section 1.4).
The photocell of Yang comprises the photoelectrode of Claim 1 (described in the rejection of Claim 1 above).
The photocell of Yang comprises a counter electrode, corresponding to the Pt wire electrode (Fig. S3, Supplemental Information section 1.4).
The photocell of Yang comprises an electrolyte, corresponding to the 0.05 M Na2S electrolyte (Fig. S3, Supplemental Information section 1.4).
In reference to Claim 6, Yang teaches that the photocell is an electrochemical UV sensor, because he teaches that it is an electrochemical cell that produces current when irradiated with UV light (Figs. S4-S5).
In reference to Claim 8, Yang teaches that the carbon quantum dots are nitrogen-doped carbon quantum dots (Abstract).
In reference to Claim 17, Yang teaches a photoelectrode comprising nitrogen- and sulfur-doped, zero-dimensional carbon dots (i.e. carbon quantum dots) disposed on a layer of graphene oxide (Fig. S3 and Supplemental Information section 1.3).
This photoelectrode therefore, comprises a graphene substrate (corresponding to the layer of graphene oxide) functionalized with carbon quantum dots as a photoactive material.
Yang does not teach that the photoelectrode “consists of” a graphene substrate functionalized with carbon quantum dots, because he teaches that the photoelectrode further comprises a layer of ITO (Fig. S3).
To solve the same problem of providing a carbon-based photoelectric device, Ramuz teaches a device in which an ITO electrode is replaced with a graphene electrode, in order to achieve an all-carbon device (Fig. 1, “Carbon-Based Electrodes for All-Carbon Device Structure” section, pages 10389-10390).
Ramuz teaches that ITO is brittle and expensive (paragraph 2, column 1, page 10389), and that an electrode of reduced graphene oxide provides the benefit of being flexible and smooth (columns 1-2, page 10389). Table 3 of Ramuz further teaches that photoelectric devices using reduced-graphene-oxide-based electrodes have similar function to those using ITO electrodes.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced the ITO layer in the photoelectrode of Yang with a layer of reduced graphene oxide, as taught by Ramuz, because Ramuz teaches (1) that ITO is brittle and expensive, (2) that ITO is suitably replaced with reduced graphene oxide, due to reduced graphene oxide’s flexibility and smoothness, and (3) that photoelectric devices using reduced-graphene-oxide-based electrodes have similar function to those using ITO electrodes.
Replacing the ITO of the photoelectrode of Yang with reduced graphene oxide, as taught by Ramuz, teaches the limitations of Claim 17, wherein the photoelectrode consists of a graphene substrate (corresponding to the reduced graphene oxide layer of modified Yang) functionalized with carbon quantum dots as a photoactive material.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
It is noted that “for use in a photocell” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (Phys. Chem. Chem. Phys., 2015, 17, 32283, and its supplemental information) in view of Ramuz, et al. (ACS Nano 2012, vol. 6, no. 11, 10384-10395), and further in view of Ha, et al. (U.S. Patent Application Publication 2017/0133690 A1).
In reference to Claim 2, modified Yang does not teach that the graphene substrate consists of carbon paper and graphene oxide deposited thereon.
Instead, the substrate corresponds to the reduced graphene oxide layer.
However, Ramuz further teaches that exposing the reduced graphene oxide to an oxygen plasma increases its work function (paragraph 1, column 1, page 10390).
To solve the same problem of providing conductive carbon materials for use in electrodes of electrochemical cells (Abstract), Ha teaches that conductive carbon materials suitable for use as a conductive carbon layer in an electrode of an electrochemical cell include both graphene oxide and carbon paper (paragraph [0019]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used both carbon paper and graphene oxide as the substrate of the photoelectrode of modified Yang, based on the disclosure of Ha, and on Ramuz’s disclosure that reduced graphene oxide may be suitably oxidized/exposed to an oxygen plasma, to increase its work function. Using both carbon paper and graphene oxide in the photoelectrode of modified Yang teaches the limitations of Claim 2, wherein the graphene substrate consists of carbon paper and graphene oxide deposited thereon.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (Phys. Chem. Chem. Phys., 2015, 17, 32283, and its supplemental information), in view of Ramuz, et al. (ACS Nano 2012, vol. 6, no. 11, 10384-10395), and further in view of Nocera, et al. (U.S. Patent Application Publication 2010/0133110 A1).
In reference to Claim 4, modified Yang does not teach that the electrolyte is a solid polymer electrolyte.
Instead, Yang teaches that the electrolyte is a liquid (Fig. S3, Supplemental Information section 1.4).
To solve the same problem of providing a photoelectrochemical device comprising a photoelectrode immersed in an electrolyte, Nocera teaches that electrolytes suitable for such a device include liquid electrolytes (as in Yang) and polyethylene oxide or NAFION-based electrolytes (paragraph [0181]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a polyethylene oxide or NAFION-based electrolyte in the device of Yang, based on the teachings of Nocera.
Further, forming the electrolyte to comprise a polymer would provide the benefit of decreasing the likelihood of electrolyte leakage.
Paragraph [0026] of the instant invention recognizes polyethylene oxide and NAFION as polymer electrolyte materials of the instant invention.
Therefore, using a polyethylene oxide or NAFION-based electrolyte (as taught by Nocera) in the device of modified Yang teaches the limitations of Claim 4, wherein the electrolyte is a solid polymer electrolyte.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
In reference to Claim 9, modified Yang does not teach that the electrolyte is a solid, flexible polymer electrolyte.
Instead, Yang teaches that the electrolyte is a liquid (Fig. S3, Supplemental Information section 1.4).
To solve the same problem of providing a photoelectrochemical device comprising a photoelectrode immersed in an electrolyte, Nocera teaches that electrolytes suitable for such a device include liquid electrolytes (as in Yang) and polyethylene oxide or NAFION-based electrolytes (paragraph [0181]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a polyethylene oxide or NAFION-based electrolyte in the device of modified Yang, based on the teachings of Nocera.
Further, forming the electrolyte to comprise a polymer would provide the benefit of decreasing the likelihood of electrolyte leakage.
Paragraph [0026] of the instant invention recognizes polyethylene oxide and NAFION as polymer electrolyte materials of the instant invention.
Therefore, using a polyethylene oxide or NAFION-based electrolyte (as taught by Nocera) in the device of modified Yang teaches the limitations of Claim 9, wherein the electrolyte is a solid, flexible polymer electrolyte.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (Phys. Chem. Chem. Phys., 2015, 17, 32283, and its supplemental information) in view of Ramuz, et al. (ACS Nano 2012, vol. 6, no. 11, 10384-10395), and further in view of Son, et al. (Composites: Part B, 2015, vol. 69, pages 154-158) and Nocera, et al. (U.S. Patent Application Publication 2010/0133110 A1).
In reference to Claim 5, modified Yang does not teach that the photocell is flexible.
To solve the same problem of providing a photocell, Son teaches a photocell comprising graphene disposed on a flexible PET substrate (Son, Fig. 1). Son further teaches that the graphene substrate/PET electrode substrate provides the benefit of allowing formation of devices that have large area, good mechanical flexibility, high transparency, and low cost (column 1, last line, and column 2, first two lines, page 154).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a flexible PET substrate in the device of Yang, as taught by Son, in place of the glass layer of the device of Yang, in order to achieve the benefits of giving the resulting photocell good mechanical flexibility, high transparency, and low cost (Son, column 1, last line, and column 2, first two lines, page 154).
Yang does not teach that the electrolyte is flexible.
Instead, Yang teaches that the electrolyte is a liquid (Fig. S3, Supplemental Information section 1.4).
To solve the same problem of providing a photoelectrochemical device comprising a photoelectrode immersed in an electrolyte, Nocera teaches that electrolytes suitable for such a device include liquid electrolytes (as in Yang) and polyethylene oxide or NAFION-based electrolytes (paragraph [0181]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a polyethylene oxide or NAFION-based electrolyte in the device of modified Yang, based on the teachings of Nocera.
Further, forming the electrolyte to comprise a polymer would provide the benefit of decreasing the likelihood of electrolyte leakage.
Paragraph [0026] of the instant invention recognizes polyethylene oxide and NAFION as polymer electrolyte materials of the instant invention.
Therefore, using a polyethylene oxide or NAFION-based electrolyte (as taught by Nocera) in the device of Yang, and using a flexible PET substrate in the device of Yang, as taught by Son, in place of the glass substrate and container layers of the device of Yang, teaches the limitations of Claim 5, wherein the device is flexible.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (Phys. Chem. Chem. Phys., 2015, 17, 32283, and its supplemental information) in view of Ramuz, et al. (ACS Nano 2012, vol. 6, no. 11, 10384-10395), and further in view of Lee, et al. (Organic Electronics 39 (2016) 250-257), and Fujishima, et al. (U.S. Patent 6,387,844 B1).
In reference to Claim 7, modified Yang does not explicitly teach that the sensor is able to quantify an intensity of UV radiation incident on the sensor.
However, Yang teaches quantifying a current density of UV radiation (i.e. mA/cm2) using the photocell of his invention (Fig. S5).
Fig. 10 of the instant specification teaches that the power density is derived from a plot of current density/cm2, like the data measured by Yang.
Therefore, it is the Examiner’s position that, because the method of Yang measures the current density of the impinging UV radiation (i.e. mA/cm2), and because the power density is directly determined from the current density, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have calculated the power density from the data of Yang, because calculation of the power density is one of several derived values that are directly determinable from the measured current density.
This would have been particularly obvious in light of the teachings of Fujishima.
Fujishima teaches a UV sensor that can determine the power density (i.e. intensity) of UV light (“Method of Measuring Ultraviolet Light Intensity,” column 19, lines 29-39).
Therefore, Fujishima teaches that power density (i.e. intensity) is a suitable type of data that is obtainable from a UV sensor.
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have calculated the intensity of UV radiation from the data of Yang, because calculation of the power density/light intensity is one of several derived values that are directly determinable from the measured current density, and because Fujishima teaches that power density is a suitable type of data that is obtainable from a UV sensor.
It is noted that “able to quantify an intensity of UV radiation incident on the sensor” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
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 ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SADIE WHITE whose telephone number is (571)272-3245. The examiner can normally be reached M-F 6am-2:30pm.
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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