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, Species A in the reply filed on 6/29/2026 is acknowledged.
Claims 1-17 and 21-27 are pending with claims 18-20 and 28 withdrawn from consideration.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0308718 of Patru et al in view of US 2018/0111083 of Masel and/or US 2018/0171492 of Salehi-Khojin et al (herein Salehi).
As to claims 1, 5-8 and 15, Patru teaches of a system comprising:
(a) a membrane electrode assembly (MEA) (Patru, [0019] and Fig. 1) comprising:
(i) a cathode layer comprising a carbon oxide reduction catalyst that promotes reduction of a carbon oxide and the cathode layer comprises an anion conducting polymer (Patru, [0020]),
(ii) an anode layer comprising a catalyst that promotes oxidation of a water (Patru, [0020]), and
(iii) a polymer electrolyte membrane (PEM) layer disposed between, and in contact with, the cathode layer and the anode layer (Patru, [0020]); and
(b) a source of anode water wherein the source of anode water is connected to the MEA in a manner allowing the anode water to contact the anode layer (Patru, [0004] and [0062]).
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In specific to claims 5 and 8, Patru teaches the MEA has at least one layer of a cation conducting polymer and at least one layer of an anion conducting polymer (Patru, [0060] and [0021] – [0022]).
In specific to claim 6, Patru teaches the PEM layer comprising a polymer electrolyte layer and a cathode buffer layer (Patru, [0025] – [0029]).
In specific to claim 7, Patru teaches the PEM layer is a cation conducting polymer and the cathode buffer layer is an anion conducting polymer (Patru, [0025] – [0029]).
Patru does not teach that the anode water has a salt concentration therein, although it is noted that Patru teaches that water can be supplied to the anode (Patru, [0004]).
Masel teaches of carbon dioxide reduction electrolysis systems (Masel, [0010]).
Masel teaches that within system that utilize anion conducting polymers between the electrodes, the anode of the system for CO2 reduction is fed with 10 mM KHCO3 which allows for oxygen generation within the system as well as other reactions (Masel, [0014] and [0102] – [0106]).
Salehi teaches of carbon dioxide reduction electrolysis systems (Salehi, Abstract).
Salehi teaches that within system that utilize cation conducting polymers between the electrodes, the anode of the system for CO2 reduction is fed with salt solutions including salts of concentration between 0.01 mM (10 µM) to 100 mM which allows for the desired products to be produced at the anode (like oxygen) as well as buffer the solution or provide conductivity to the solution as required by the system (Salehi, [0125] – [0127]).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Patru as per Masel and/or Salehi so as to utilize a salt solution at the anode in producing a desired product (in oxygen) or other products.
As to claims 2 and 3, Patru in view of Masel and/or Salehi teaches to the system of claim 1.
Patru teaches the reduction catalyst is gold, silver, copper or a combination thereof (Patru, [0035]).
As to claim 4, Patru in view of Masel and/or Salehi teaches to the system of claim 1.
Patru also teaches/shows the anode layer comprises a cation conducting polymer (Patru, [0025] and Fig. 1).
As to claims 9-14 and 16, Patru in view of Masel and/or Salehi teaches to the system of claim 1.
Patru teaches the reduction catalyst comprises copper or gold (Patru, [0035]).
As to the type of salt or the type of carbon oxide, these limitations do not further define the apparatus at hand.
With that said, it is noted that Masel teaches potassium bicarbonate (Masel, [102] – [0106]).
As to claim 14, Patru in view of Masel and/or Salehi teaches to the system of claim 1.
Patru teaches that the catalytic compositions are metallic or metal oxides, thus not transition metal ions (Patru, [0035] and [0051]).
Claims 21-22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Patru in view of Masel and/or Salehi as applied to claim 1 above, and further in view of US 2017/0321334 of Kuhl et al.
As to claims 21, 22 and 25, Patru in view of Masel and/or Salehi teaches to the system of claim 1.
Patru in view of Masel and Salehi do not teach a recirculation loop for the anode water.
Kuhl teaches of a carbon oxide reduction reactor comprising MEA (Kuhl, [0017]).
Kuhl teaches that the system comprises a recirculation loop including a reservoir for receiving and storing the anode water that is then resupplied to the reactor (Kuhl, [0083] and Fig. 8).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Patru as per Kuhl so as to utilize an anode water recirculation system in order to resupply unreacted water to the reactor.
Claims 23-24 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Patru in view of Masel and/or Salehi and Kuhl as applied to claim 21 above, and further in view of WO 2017/144395 of Stark et al. US 2019/0062931 of Stark is going to be used as the English equivalent in these rejections.
As to claims 23-24, Patru in view of Masel, Salehi and Kuhl teach to the system of claim 21.
Patru in view of Masel, Salehi and Kuhl do not teach a purification element for the anode water.
Stark teaches to the electrolytic reduction of carbon dioxide (Stark, Abstract).
Stark teaches that the anode water passes through a separation apparatus to remove water from the gas, thus removing impurities (or products) from the water which is then recycled back into the anode chamber (Stark, [0043] and Fig. 1).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Patru in view of Masel, Salehi and Kuhl as per Stark so as to utilize a purification element to remove unwanted components from the water stream prior to reintroducing it to the anode chamber.
As to claims 26-27, Patru in view of Masel, Salehi and Kuhl teach to the system of claim 21.
Patru in view of Masel, Salehi and Kuhl do not teach a cathode water recirculation system.
Stark teaches to the electrolytic reduction of carbon dioxide (Stark, Abstract).
Stark additionally teaches that the reduction product can be stripped of excess water such that the excess water is recycled to the anode chamber and cathode chamber, thus reducing the water requirement to the overall system (Stark, [0039]- [0044] and Fig. 1).
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Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to Patru in view of Masel, Salehi and Kuhl as per Stark so as to strip excess water from the reduction product gas and provide the water to the anode chamber and cathode chamber to recycle the water and reduce the water requirement of the overall system.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,043,912. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same structure of the apparatus at hand.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759
