Detailed Action
This is a Non-Final Office action based on application 18/742,822 filed on June 13, 2024. The application is a 111(a) with priority to provisional application 63/580,235 filed September 1, 2023.
Claims 40-54, 56-58, 61-66 are pending and have been fully considered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 5, 2025 has been entered.
Status of the Rejection
The §103 rejections of record are maintained
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 40-42, 45-51, 54, 56, and 58 are rejected under 35 U.S.C. 103 as being unpatentable over "Li" (Li et al, New Journal of Chemistry, 42, 15663-15670 (2018)), in view of "Lubomirsky" (US 2011/0100832 A1 to Lubomirsky et al), in further view of WO 2021/087165 A1 to Licht and Licht (hereinafter “Licht ‘165”).
Regarding claim 40, Li teaches a method for producing a graphene nanocarbon (GNC) product comprising:
(a) heating a low-lithium carbonate electrolyte to obtain a molten carbonate electrolyte, the low-lithium carbonate electrolyte comprising a strontium salt (pg 15664 left column para 3, a mix of Li2CO3, Na2CO3, K2CO3, and SrCO3 is melted at 600 °C to obtain a carbonate electrolyte containing 10 wt%, 20 wt%, or 30 wt% SrCO3; alternative embodiment of pg 15664 right column para 2, an electrolyte is composed of 90 wt% Li2CO3 and 10 wt% SrCO3 at 700 °C. Note, instant specification para [0053] defines "low-lithium" carbonate electrolyte to mean any carbonate electrolyte having a lower lithium content than neat lithium carbonate has. Therefore even Li's electrolyte comprising 90 wt% Li2CO3 and 10 wt% SrCO3 is a "low-lithium" carbonate electrolyte).
(b) positioning the molten carbonate electrolyte between an anode and a cathode in an electrolytic cell (pg 15664 left column para 3, electrolysis was conducted using a nickel anode, galvanized iron cathode, and molten carbonate electrolyte; electrolysis entails passing a current from the anode to the cathode through the electrolyte, from which it necessarily follows that the electrolyte is positioned between the anode and cathode);
(c) applying an electrical current to the cathode and the anode in the electrolytic cell (pg 15664 left column para 3, "a constant current density of 250 mA cm−2 was applied and the electrolysis was performed"); and,
(d) collecting the GNC product from the cathode, wherein the GNC product comprises graphene (pg 15664 left column para 3 - right column para 1, "Then, the galvanized iron plate covered by a thick layer of carbon products was pulled out from the carbonate melts and cooled at room temperature. The carbon deposits were washed ... purified carbon powders were collected and characterized"; pg 15667 figure 5 shows carbon nanomaterial products from electrolysis in a quaternary Li-Na-K-Sr carbonate electrolyte; pg 15669 figure 8e shows carbon nanotubes are produced from binary Li-Sr carbonate electrolyte; note that the instant specification teaches that carbon nanotubes are a GNC product that comprises graphene (see instant specification para [0002], [0018], [0101], [0111], [0113]-[0116]), therefore Li’s disclosed carbon nanotube product is a GNC product that comprises graphene as claimed).
Li discloses examples of electrolytes in which the strontium salt comprises 10 wt%, 20 wt%, or 30 wt% of the electrolyte (pg 15666 right column para 2 - pg 15667 left column para 1, "Fig. 5 shows the representative SEM images of the carbon products synthesized in ... 10% SrCO3 ... 20% SrCO3 ... 30% SrCO3; pg 15667 figure 5), and observes that the product morphology changes with changing electrolyte composition, evidenced by increases in BET surface area with increasing strontium content of the electrolyte (pg 15667 left column para 1, pg 15666 Table 1, pg 15667 figure 5, pg 15668 figure 7). However, Li does not disclose any embodiment in which the strontium salt is more than 30 wt% of the electrolyte.
Lubomirsky is directed to a system and method of electrolytic reduction of molten carbonate salts (para [0002]), and, while Lubomirksy is primarily concerned with reducing the carbonate ion to carbon monoxide (para [0002], [0028]-[0029]), Lubomirsky also teaches that their molten carbonate electrolyte can also be used to electrodeposit solid carbon coatings on a cathode (para [0113]-[0116], the electrode Lubomirsky uses for carbon monoxide evolution is a titanium electrode which is coated with carbon by immersing titanium in the molten carbonate electrolyte and applying reducing voltage; para [0302]-[0303], Example 4, Lubomirsky demonstrates coating an electrode with carbon this way). Lubomirsky discloses that the electrolyte composition may be a binary mixture of Li2CO3 and alkaline carbonate, that the alkaline carbonate may be SrCO3, and that the ratio of lithium carbonate to alkaline carbonate may range from 1:1 to 0.95:0.05 by molar ratio (para [0095]-[0099]). Note that Lubomirksy's disclosure of a Li2CO3 and SrCO3 mixture with SrCO3 content ranging from 5% to 50% by mole, converted to weight percent, corresponds to a SrCO3 content range of from 9.5 wt% to 66.6 wt%.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to alter the electrolyte composition in the method disclosed by Li to a composition including greater than 30 wt% strontium salt, based on Li's demonstrations of the method using electrolytes with strontium salt content of 10 wt%, 20 wt%, and 30 wt% (pg 15667 figure 5), Li's teaching that the strontium salt content may be varied to alter the carbon product morphology (pg 15666 table 1; pg 15667 figure 5 and left column para 1), and Lubomirksy's suggestion that molten carbonate electrolyte used in the electrolytic reduction of carbonate can reasonably have a strontium salt content of as high as 66.6 wt% (para [0095]-[0099]).
It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. Similarly, a prima facie case of obviousness also exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Furthermore, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). See MPEP 2114.05(I-II).
Li and Lubomirsky do not teach the cathode is made of a material comprising copper.
Licht ‘165 is similarly directed to a method of producing a graphene nanocarbon by electrolyzing a molten carbonate salt in between an anode and cathode of an electrolysis cell, and collecting the graphene nanocarbon from the cathode (para [0006], [0061]). Licht ‘165 further teaches that a suitable cathode material for use in such a method is a material that comprises copper (para [0036], “Examples of materials used to make suitable cathodes include, but are not limited to: galvanized steel ...; Cu, Monel, and brass ... or combinations thereof”; para [0060], “Muntz brass or Monel were used as to form a cathode”; note that Muntz brass and Monel are two known alloys that each comprise copper).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to practice the method of electrolytic reduction of carbonate to graphene nanocarbons using, as the cathode material, a material comprising copper, based on Licht ‘165’s teaching that a cathode comprising copper is suitable for the electrolytic reduction of molten carbonate to form graphene nanocarbons. The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Regarding claim 41, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches employing one or more GNC facilitation elements, wherein the one or more GNC facilitation elements are enhancing transition metal nucleation (per pg 15668 right column para 4 - pg 15669 left column para 2: prior to electrolysis, Li performs a step of oxidizing nickel from the anode into the electrolyte and then electrodepositing nickel nanoparticle material on the cathode, where the nickel nanoparticles serve as nucleation sites for CNT growth).
Regarding claim 42, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches wherein the strontium salt comprises strontium carbonate (pg 15664 left column para 3; pg 15666 right column para 2 - pg 15667 left column para 1).
Regarding claim 43-44, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches the electrolyte comprises, in addition to a strontium salt, an alkali salt of carbonate (embodiment of pg 15664 left column para 3 and pg 15667 figure 5, the electrolyte comprises a mix of Li2CO3, Na2CO3, K2CO3, and SrCO3; embodiment of pg 15664 right column para 2 and pg 15669 figure 8e, electrolyte comprises a mix of Li2CO3 and SrCO3). Li does not teach the low-lithium carbonate electrolyte further comprises boric acid, boric oxide, a borate salt or any combination thereof.
However, Licht ‘165 further teaches adding a borate salt to the electrolyte (para [0054] “electrolyte additives may include borates”; para [0082], [0086], “Example 7 ... a molten carbonate electrolysis containing 20 wt% Na2CO3 and 80 wt% Li2CO3 and an additional additive of about 8 wt % dehydrated borax”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Li by adding boric oxide and/or a borate salt to the electrolyte, based on Licht ‘165’s teaching that an electrolyte comprising borate is effective for the intended purpose of electrolyzing molten carbonate to yield graphene nanocarbons. (para [0067], [0086]). The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Regarding claim 45, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches wherein the low-lithium carbonate electrolyte comprises an alkaline earth carbonate (in the embodiment of pg 15664 right column para 2, pg 15668 right column para 2 - pg 15669 left column para 1 and figure 8e, the electrolyte comprises Li2CO3 and SrCO3), and also teaches wherein the low-lithium carbonate electrolyte comprises a combination of a non-lithium alkali carbonate and an alkaline earth carbonate (in the embodiment of pg 15664 left column para 3, pg 15666 right column para 2 - pg 15667 left column para 1 and figure 5, the electrolyte comprises a mix of Li2CO3, Na2CO3, K2CO3, and SrCO3).
Regarding claim 46, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious. In an embodiment, Li teaches the low-lithium carbonate electrolyte is a binary mixture (in the embodiment of pg 15664 right column para 2, pg 15668 right column para 2 - pg 15669 left column para 1 and figure 8e, the electrolyte comprises a binary mixture of Li2CO3 and SrCO3). In another embodiment, Li teaches the low-lithium carbonate electrolyte is a quaternary mixture (in the embodiment of pg 15664 left column para 3, pg 15666 right column para 2 - pg 15667 left column para 1 and figure 5, the electrolyte comprises a mix of Li2CO3, Na2CO3, K2CO3, and SrCO3).
Regarding claim 47, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious. In one of Li's disclosed examples (the "10% Sr2CO3" embodiment of pg 15664 left column para 3 and pg 15667 figure 5a-b), the electrolyte weighs 49.5 g total, and comprises 15 g Li2CO3 as its only lithium source; the weight basis of lithium is therefore (15 / 49.5) * (13.9 g Li / 73.9 g Li2CO3) = 5.7 wt% lithium. In another of Li's disclosed examples (the "20% Sr2CO3" embodiment of pg 15664 left column para 3 and pg 15667 figure 5c-d), the electrolyte weighs 54 g and comprises 15 g Li2CO3, for a lithium content of 5.2 wt%. In another example of Li (the embodiment of pg 15664 right column para 2 and pg 15669 figure 8e), the electrolyte is 90 wt% Li2CO3, for a lithium content of 16.9 wt%. In each of these three examples, the lithium content falls within the claimed range of between 5 wt% and 100 wt% of the electrolyte.
Regarding claim 48, Li, Lubomirsky, and Licht ‘165 render the method of claim 47 obvious, and Li further teaches wherein the lithium is present as lithium carbonate (pg 15664 left column para 3 - right column para 2).
Regarding claim 49, Li, Lubomirsky, and Licht ‘165 render the method of claim 41 obvious, and Li further teaches adding one or more oxides into the low-lithium carbonate electrolyte (pg 15668 right column para 4 - pg 15669 left column para 1, nickel from the anode is oxidized to nickel oxide which redeposits as nickel nanoparticles at the cathode; also per pg 15669 left column para 1, zinc oxide is added directly into the electrolyte). Li does not say that these oxides are defect inducing agents, however, since the oxides Li is adding are included among the defect-inducing oxide materials recited in instant claim 50, it is understood that they possess the property of being defect-inducing agents as claimed. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01(I-II)).
Regarding claim 50, Li, Lubomirsky, and Licht ‘165 render the method of claim 49 obvious, and Li further teaches wherein the one or more oxides is a metal oxide (pg 15668 right column para 4, "nickel oxide"; pg 15669 left column para 1, "ZnO").
Regarding claim 51, Li, Lubomirsky, and Licht ‘165 render the method of claim 49 obvious, and Li further teaches wherein the one or more oxides are introduced into the molten carbonate electrolyte by oxidizing the anode (pg 15668 right column para 4 - pg 15669 left column para 1, nickel oxide is introduced into the electrolyte by oxidizing the nickel anode).
Regarding claim 54, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches. Li further teaches that, after a period of electrolysis at a given current density, they carry out an operation of removing an electrical conductivity impediment which includes reducing the current density (pg 15664 left column para 3 - right column para 1, "a constant current density of 250 mA cm−2 was applied and the electrolysis was performed for 60 min ... Then, the galvanized iron plate covered by a thick layer of carbon products was pulled out from the carbonate melts and cooled at room temperature. The carbon deposits were washed with sufficient hydrochloric acid (6 M) to remove the frozen electrolyte attached on the carbon surface. Subsequent to ultrasonic treatment, filtration, washing with ultrapure water and desiccation in an air drying oven, the purified carbon powders were collected and characterized").
Regarding claim 56, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious. The equilibrium constant of Li's electrolyte for CO2 binding is comparable to the equilibrium constant of lithium carbonate for binding CO2, because these two values (whatever they may be) are inherently capable of being compared to one another.
Regarding claim 57, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 40. Li and Lubomirsky do not teach a step of adding an oxidative agent to induce structural defects within the GNC product.
However, Licht '165 further teaches adding an oxidative agent to induce structural defects within the GNC product (claims 2, 8, 9, para [0054]-[0056], [0070]-[0071]). Licht '165 teaches that the effect of adding an oxidative agent to induce structural defects in the GNC product is, the GNC product can be formed as twisted or helical carbon nanostructure (para [0010], [0054]), and that such helical carbon nanostructures, which are difficult to synthesize by other means (para [0037]), are materials of considerable research interest for applications such as nano-antennae and MEMS (para [0040]-[0043]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify Li by adding an oxidative agent to induce structural defects within the GNC product, in order to form deformed GNC structures such as carbon nanohelices which are materials of significant research interest, based on the teachings of Licht '165 (para [0040]-[0043], [0054]-[0056], [0070]-[0071]). Furthermore, the claimed limitations are obvious because all 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 yielded nothing more than predictable results [MPEP 2143(A)].
Regarding claim 58, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, and Li further teaches a step of introducing a nanomaterial selection component in the electrolytic cell wherein the nanomaterial selection component selects for the GNC product to comprise a desired purity of carbon nanotubes (CNTs; pg 15668 right column para 4 - pg 15669 left column para 1, prior to deposition, Li adds 1 wt% ZnO to the electrolyte to select for CNT formation).
Regarding claim 63, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 40, and Licht ‘165 teaches that materials comprising steel are suitable materials for use as the anode material (para [0047], “Examples of suitable materials for forming the anode include Nichrome (nickel chromium based alloys) including stainless steels such as SS 304 or SS 316”; para [0060]). The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Regarding claim 64, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 40. Licht ‘165 teaches that the cathode may be composed of “steel ... Cu ... or combinations thereof” (para [0036]) and that the cathode may be shaped as “planar structure ... a conductive plate” (para [0046]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the cathode as a combination of a flat copper plate and a steel plate, based on Licht ‘165’s teaching that the cathode materials are suitably formed of a combination of copper and steel and are suitably formed as flat plates. The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Regarding claim 65, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 63. Licht ‘165 teaches making both the anode and the electrolytic cell casing out of steel (para [0049], [0060]), and also teaches that the inner walls of the electrolytic cell casing can act as the anode (para [0047], “the anode can form at least part of the inner sides of the case”). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the electrolytic cell casing out of a material comprising steel and use the inner wall of the casing as the anode, based on Licht ‘165’s teaching that these materials are suitable for these purposes. The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Claims 43, 44, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Li, Lubomirsky, and Licht ‘165 as applied to claim 40 above, in view of "Licht '404" (US 2020/0032404 A1 to Licht).
Regarding claim 61, Li, Lubomirsky, and Licht ‘165 render the method of claim 40 obvious, but do not teach a step of introducing a doping component for making a doped GNC product.
Licht '404 is similarly directed to a method for producing a graphene nanocarbon (GNC) product comprising providing an anode, a cathode, and a molten lithium carbonate electrolyte, and performing electrolysis to form a carbon nanomaterial product on the cathode (para [0013]-[0015]). Licht '404 further teaches adding a doping component into the electrolyte for making a doped GNC product boric oxide, a borate salt, or combination thereof to the carbonate electrolyte (para [0052]-[0056], Licht '404 adds lithium metaborate, LiBO2, to the electrolyte to produce boron-doped GNC products). Licht '404 teaches that the addition of the doping component to the electrolyte is effective to impart boron doping to the carbon nanostructure, which improves the electrical conductivity of the product (para [0055]-[0059]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Li by adding a doping component to the electrolyte, in order to impart doping to the carbon nanomaterial product and thereby improve the electrical properties of the produced material, based on teachings from Licht '404 (para [0052]-[0059]). Furthermore, the claimed limitations are obvious because all 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 yielded nothing more than predictable results [MPEP 2143(A)].
Claims 52-53 are rejected under 35 U.S.C. 103 as being unpatentable over Li, Lubomirsky, and Licht ‘165 as applied to claim 41 above, in view of "Licht '183" (US 2018/0044183 A1 to Licht and Ren).
Regarding claims 52 and 53, Li, Lubomirsky, and Licht ‘165 render the method of claim 41 obvious. However, Li brings the transition metal nucleation agent into solution by oxidizing nickel from the anode to nickel oxide, and subsequently depositing nickel as nanoparticles at the cathode (pg 15668 right column para 4 - pg 15669 left column para 1). Li does not teach the step of adding a transition metal nucleation agent comprises adding a transition metal salt to the low-lithium carbonate electrolyte.
Licht '183 is similarly directed to a method for producing a graphene nanocarbon (GNC) product comprising providing an anode, a cathode, and a molten lithium carbonate electrolyte, and performing electrolysis to form a carbon nanomaterial product on the cathode (para [0008]-[0010]), the method further comprising adding a transition metal nucleation agent (para [0009]-[0010], [0041]. Licht '183 teaches that the addition of a transition metal nucleation agent may be accomplished either by oxidizing a nickel anode to dissolve nickel into the electrolyte and depositing nickel nuclei onto the cathode, or by adding a transition metal salt to the low-lithium carbonate electrolyte (para [0041], [0044], [0054], [0097], claim 10) as required by claim 52, wherein the transition metal of the salt is selected from nickel, iron, chromium, nickel, copper, manganese, titanium, zirconium, molybdenum, silver, cadmium, tin, ruthenium, vanadium, cobalt, or a combination thereof (para [0041], [0097]), as required by claim 53.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify Li by carrying out the addition of transition metal nucleating agent to the solution by adding a transition metal salt to the electrolyte, rather than by oxidizing the nickel anode to dissolve nickel into the electrolyte, based on Licht '183's suggestion that these two operations are effectively interchangeable ways to incorporate a transition metal nucleating agent into a method of electrodepositing carbon nanostructures from molten carbonate electrolyte onto a cathode. The simple substitution of one known element for another (i.e., transition metal nucleating agent for another) is likely to be obvious when predictable results are achieved (i.e., the modified method is effective for nucleating carbon nanostructures) [MPEP § 2143(B)]. Furthermore, 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 [MPEP § 2144.07].
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Li, Lubomirsky, and Licht ‘165 as applied to claim 40 above, in view of "Licht '282" (US 2021/0348282 A1 to Licht).
Regarding claim 62, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 40, but do not teach a step of introducing a magnetic additive component for making a magnetic GNC product.
Licht '282 is similarly directed to a method of forming GNC product by cathodic electrodeposition of carbon nanomaterials from a molten lithium carbonate electrolyte (para [0005]-[0006], [0041]-[0044]). Licht '282 further teaches introducing a magnetic additive component into the electrolyte for the purpose of making a magnetic GNC product (para [0005], [0030], [0045]-[0046], [0067]). Licht '282 teaches there is motivation to synthesize magnetic GNC materials because these materials are of research interest for a variety of applications including medical imaging and catalysis (para [0034]-[0039]).
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 method of Li by introducing a magnetic additive to make the GNC products magnetic, based on teachings from Licht '282 that magnetic GNCs can be forming by adding a magnetic additive to the electrolyte in the molten carbonate electrolytic synthesis of GNCs (para [0030], [0045]-[0046], [0067]) and that such magnetic GNC materials have utility (para [0034]-[0039]). The claimed limitations are obvious because all 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 yielded nothing more than predictable results [MPEP 2143(A)].
Claim 66 is rejected under 35 U.S.C. 103 as being unpatentable over Li, Lubomirsky, and Licht ‘165 as applied to claim 40 above, in view of “Licht ‘040” (US 2019/0039040 A1 to Licht).
Regarding claim 66, Li, Lubomirsky, and Licht ‘165 render obvious the method of claim 40, and Licht ‘165 teaches the anode may be made of nickel (para [0060], “Inconel, Nichrome, or stainless steel were used to form an oxygen generating anode”). Licht ‘165 does not teach that the electrolytic cell casing is made of nickel.
Licht ‘040 is directed to a method of producing a graphene nanocarbon by electrolyzing a molten carbonate salt in between an anode and cathode of an electrolysis cell, and collecting the graphene nanocarbon from the cathode (para [0009], [0061]). Licht ‘040 teaches that a suitable anode material comprises nickel, that the electrolytic cell casing may be made of nickel, and that the inner walls of the electrolytic cell casing may act as the anode (para [0058], “In this example, the anode is the inner wall of a 50 ml Ni crucible”; para [0059], [0061], [0068]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to carry out the method of modified Li using an anode made of nickel and an electrolytic cell casing made of nickel, based on Licht ‘040’s teaching that an anode made of nickel and an electrolytic cell casing made of nickel are suitable for the electrolytic reduction of molten carbonate to form graphene nanocarbons. The selection of a known material based upon its suitability for the intended use is within the ambit of one of ordinary skill in the art (MPEP § 2144.07).
Response to Arguments
Applicant’s arguments, see Remarks filed December 5, 2025 with respect to the rejections of the claims under §103, have been fully considered but are not persuasive. The previous grounds of rejection is maintained.
At Remarks pg 7-8, Applicant argues that the Li reference fails to disclose a method of producing graphenic nanocarbons (GNCs), because Li’s method as disclosed in pg 15667-15668 of the reference results in amorphous carbon products rather than GNCs.
Examiner respectfully disagrees. Li does disclose that deposition from Li-Na-K-Sr carbonate electrolyte at 600 °C results in an amorphous carbon product. Li also discloses at pg 15668-15669 and figure 8 that a lithium-strontium carbonate electrolyte electrolyzed at 750 °C results in carbon nanotubes, a product which the instant specification teaches is a type of GNC. Li therefore contains each of the claim limitations, and taken together the teachings of Li provide an obvious suggestion of a method that produces GNCs.
At Remarks pg 8-9, Applicant argues that the Lubomirsky reference fails to suggest use of an alkaline-earth-metal-containing electrolyte for deposition of carbonaceous solids on an electrode. Applicant points out that Lubomirsky discloses two distinct processes, one for production of carbon monoxide gas and the other for deposition of a carbon coating on an electrode. Applicant argues that Lubomirsky’s suggestion of an alkaline-earth-containing electrolyte is pertinent only to the gas-evolving process, and not to the coating-forming process.
Examiner respectfully disagrees. Lubomirsky at para [0114] says that the electrolyte employs in the coating-forming process is “molten carbonate”. Lubomirsky at para [0096] says “A molten carbonate of this invention refers to molten alkaline metal carbonate salt or to a mixture of molten alkaline metal carbonate and alkaline-earth metal carbonate salt”. Therefore the reference contains the allegedly absent teaching, of using a mixture of molten alkaline metal carbonate and alkaline-earth metal carbonate salt when electrodepositing a carbon coating on an electrode.
Applicant argues that the combination of the Li, Lubomirsky, and Licht ‘165 references does not suggest the claimed subject matter, particularly because Licht ‘165, which is relied upon for teaching of a copper-containing cathode, does not teach the claimed electrolyte composition comprising >30 wt% Sr salt, and the Li and Lubomirsky arts, which are relied upon to show other features of the claim including the electrolyte composition, do not teach the use of a copper-containing cathode. Applicant argues there is no apparent motivation to use the cathode disclosed by Light ‘165 in the process of Li and Lubomirsky.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. The test of obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Li and Lubomirsky references are directed to deposition of GNCs on a cathode from molten carbonate electrolyte, and Licht ‘165 teaches that a copper-containing cathode is suitable for the purpose of depositing GNCs on a cathode from molten carbonate 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 [MPEP § 2144.07].
The rejection presented in the previous action is therefore maintained.
Conclusion
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/ANDREW KOLTONOW/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795