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 .
Claims Status
Claims 1, 3-5 and 7-15 are pending. Claims 1, 14 and 15 have been amended. Claims 2, 6 and 16 have been canceled. Claim 13 is withdrawn.
Applicant’s arguments, filed 03/11/2026, with respect to double patenting rejection have been fully considered and are persuasive. The rejection of 1-16 has been withdrawn.
Applicant’s arguments, filed 03/11/2026, with respect to the rejection(s) of claim(s) 1-16 under 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yang et al. (Electrochimica Acta 269 ‘2018’ 441-451).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claim(s) 1, 3-5, 7-10, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (Electrochimica Acta 269 ‘2018’ 441-451).
Considering claims 1, 7, 8, 14 and 15, Yang discloses a cell (page 443, section 2.5) comprising an electrode comprising a catalyst comprising: an active particle containing a metal element (AuPd); and a porous carbon supporting the active particle (page 442, section 2.3).
The preamble reciting an organic carbonate synthesis catalyst for electrochemically synthesizing an organic carbonate from carbon monoxide is structurally not limiting. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the structure and composition of the catalyst is the same as claimed therefore will be capable of performing the claimed function.
Considering claim 5, with respect to the limitation reciting a process step, the limitation is a product by process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Considering claim 9, Yang discloses an electrolyte solution containing a redox species (NaOH) (page 443, section 2.5).
Considering claim 10, Yang discloses an anode compartment comprising alcohol (page 443, section 2.5). With respect to limitation an inlet capable to transport carbon monoxide, the cell of Yang would inherently have an inlet that would be capable to transport carbon monoxide, because the electrolyte is added to the cell. Therefore, carbon monoxide would be also be capable of entering the cell through the same inlet.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (Electrochimica Acta 269 ‘2018’ 441-451) as evidenced by Liu et al. (J. Am. Chem. Soc. 2016, 138, 4718−4721).
Considering claims 3 and 4, Yang discloses nitrided carbon was prepared according to the process in Liu et al. and Liu discloses nitrided carbon comprises pyridine (page 4719, right column).
Claim(s) 1, 5, 7, 8, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt et al. (Journal of Electroanalytical Chemistry 501 ‘2001’ 132-140).
Considering claims 1, 7, 8, 14 and 15, Schmidt discloses a cell (page 136, section 3.2) comprising an electrode comprising a catalyst comprising: an active particle containing a metal element (AuPd); and a porous carbon supporting the active particle (page 133, section 2.1.2).
The preamble reciting an organic carbonate synthesis catalyst for electrochemically synthesizing an organic carbonate from carbon monoxide is structurally not limiting. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the structure and composition of the catalyst is the same as claimed therefore will be capable of performing the claimed function.
Considering claim 5, with respect to the limitation reciting a process step, the limitation is a product by process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Claim Rejections - 35 USC § 103
Claim(s) 1, 7-10 and 15 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Yamanaka et al. (WO 2011024327 A1, machine translation).
Considering claims 1, 7, 8 and 15, Yamanaka discloses a cell for synthesizing an organic carbonate, comprising the electrode for synthesizing an organic carbonate (page 5, 2nd and 3rd paragraphs) comprising an organic carbonate synthesis catalyst wherein the organic carbonate synthesis catalyst comprises an active particle comprising a metal element and a porous carbon supporting the active particle (abstract and page 6, 2nd paragraph), wherein the metal may be an alloy of platinum group metals (page 7, 5th paragraph) selected from the group including ruthenium, palladium and iridium (page 6, 3rd paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the metal of Yamanaka be Pd and Ir or Ru and Ir, because Yamanaka teaches that the platinum group metals can be selected alone or in combination of two or more. Therefore, of ordinary skill would have been motivated to try the alloys of Pd and Ir or Ru and Ir as potential catalyst with reasonable expectation of success.
Considering claim 9, Yamanaka discloses the cell further comprises an electrolyte solution comprising a redox species (sodium chloride) (page 8, last paragraph and page 9).
Considering claim 10, Yamanaka discloses the cell further comprises: an anode compartment comprising the electrode therein and an alcohol-based compound therein; and an inlet port through which the carbon monoxide is supplied to the anode compartment (page 11, last paragraph).
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al., as applied to claim 10 above, and further in view of Kuku et al. (US 9981846 B1).
Considering claims 11 and 12, Yamanaka does not disclose a conversion portion that converts carbon dioxide to carbon monoxide; and a supply path that supplies the carbon monoxide obtained in the conversion portion to the anode compartment through the inlet port.
However, Kuku discloses electrolytic conversion of carbon dioxide from power plant exhaust gas to carbon monoxide (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use carbon monoxide in the process of Yamanaka, because Kuku discuses an apparatus and a process of electrochemical conversion of carbon dioxide into useful carbon monoxide that is used in chemical syntheses, and at the same time clean the exhaust of the power plant form carbon dioxide.
Response to Arguments
With respect to the argument of unexpected results, applicant argues that the examples are commensurate with the scope of the claims. This argument is not persuasive, because the claims merely require the catalyst, however the results of the examples require far more than a catalyst, such as solvent, salt, cell structure, ratio of metals used, etc. Furthermore, in table 1, example 1 shows selectivity of 68%, when different salt is used the same catalyst shows selectivity of 60% (example 15), in comparison to the claimed catalyst formula comprising Ir and Ru in example 32 shows selectivity of 59%. Applicant argues that the Ru and Ir when used individually show somewhat lower selectivity compared to the combination of Ru and Ir. This is not persuasive, because the difference does not have to be unexpectedly substantial, as shown by examples 1 and 12, where both use the same catalyst (Pd/C) with the same salt (NaClO4) producing the same compound (dimethyl carbonate) but having different selectivity, 68 and 61 respectively. Therefore, the showing of unexpected results is not commensurate with the scope of the claims.
Conclusion
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 Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WOJCIECH HASKE/ Examiner, Art Unit 1794
Prosecution Insights