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, 3-10, 12, 13, 17, 19 and 20 are pending. Claims 2, 11, 14-16 and 18 are canceled.
Applicant’s arguments, filed 05/21/2026, with respect to double patenting rejections have been fully considered and are persuasive. The rejection of claims 1, 3-10, 12, 13, 17, 19 and 20 has been withdrawn.
The updated search has resulted in art rejection of claims 17, 19 and 20.
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) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (WO 2018170243 A1).
Considering claim 17, He discloses an electrochemical cell, comprising: a positive electrode; a negative electrode comprising a tunable catalyst formulated to selectively hydrogenate carbon dioxide, the tunable catalyst comprising a transition metal catalyst dispersed on an oxide of at least one lanthanide element, the oxide of at least one lanthanide element comprising an oxide of a first lanthanide element and a dopant including a second lanthanide element (nickel/perovskite cermet, such as ytterbium-doped bariumstrontium-niobate ‘BSNYYb’) (page 16, lines 27-31) which can have e.g. Cu particles of less than about 10 nm in size (page 18, lines 5-9), the first lanthanide element different from the second lanthanide element; and an electrolyte between the positive electrode and the negative electrode, the electrolyte comprising at least one electrolyte material exhibiting a proton conductivity of greater than or equal to about 10-2 S/cm at a temperature range of from about 150°C to about 650°C and allowing diffusion of protons generated from the positive electrode through the electrolyte to the negative electrode (page 2, lines 20-31).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (WO 2018170243 A1).
Considering claim 20, He discloses Cu catalyst less than or equal to about 10 nm particles (page 18, lines 5-9), which overlaps the claimed size of 1 angstrom to 999 nanometers.
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 recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art (He et al. WO 2018170243 A1) discloses the electrochemical cell as claimed, except the claim requires the tunable catalyst comprising a Sm2O3-doped CeO2 supported iridium catalyst.
Claims 1, 3-10, 12 and 13 are allowed.
The following is an examiner’s statement of reasons for allowance: novel and inventive over prior art of record. The closest prior art (He et al. WO 2018170243 A1) discloses the claimed hydrogenation system and electrochemical cell as claimed, except the independent claims 1 and 4 require the tunable catalyst comprising a Sm2O3-doped CeO2 supported iridium catalyst.
The prior art of record does not disclose nor suggest the instantly claimed invention as a whole.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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.
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/WOJCIECH HASKE/ Examiner, Art Unit 1794
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