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 with traverse of Group I, encompassing claims 1-6, in the reply filed on October 14, 2025 is acknowledged. The traversal is on the ground(s) that there is no substantial additional burden to search for prior art for Group II over a prior art search for Group I. This is not found persuasive because the inventions require separate field of search, particularly in view of different principles behind the patentability of apparatus and method claims.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adzic et al. (US Patent Application Publication no. 2013/0056359).
Regarding claim 1, Adzic discloses a device comprising:
(a) an electrode (12, 13, 18; figure 1; paragraph 55), and
(b) an electrolyte solution (14) comprising a plurality of microparticles wherein the microparticles comprise tin (Sn), and/or bismuth (Bi; paragraphs 13, 55 – the electrolyte contains a slurry comprised of microparticles).
The Office notes that the limitation “wherein the electrode optionally comprises a plurality of microparticles on a surface of the electrode, wherein the microparticles comprise tin (Sn), indium (In), and/or bismuth (Bi)” is optional, and has not been given patentable weight.
Regarding claim 2, Adzic further teaches wherein the electrolyte solution comprises a Sn microparticle, and/or a Bi microparticle, or any combination thereof (paragraphs 13, 67).
Regarding claim 4, the electrolyte solution of Adzic comprises a Sn microparticle, and/or a Bi microparticle, or any combination thereof (paragraphs 13, 67).
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 non-obviousness.
Claims 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Adzic as applied to claims 2 and 1 above, and further in view of Wang et al. (US Patent Application Publication no. 2013/0146446).
Regarding claim 3, Adzic teaches all of the features discussed above, but fails to disclose wherein the electrolyte solution comprises a Sn microparticle and an In microparticle.
Wang discloses a membrane reactor comprising catalyst particles in the electrode compartments, wherein the particles can be indium, tin and/or bismuth, among others (paragraph 17).
It would have been obvious to one having ordinary skill in the art at the time of filing to use particles comprising indium, tin and/or bismuth in the electrochemical reactor of Adzic because as taught by Wang, particles made of these metals are well known to act as catalysts to accelerate electrochemical reactions at electrode surfaces, and one would have a reasonable expectation of success in doing so.
Regarding claim 5, Wang discloses a membrane reactor comprising catalyst particles in the electrode compartments, wherein the particles can be indium, tin and/or bismuth, among others (paragraph 17).
Regarding claim 6, Wang further teaches wherein the device comprises a reactor configuration comprising a sandwich-type electrosynthesis cell comprising of two compartments (anodic 24 and cathodic 22) interconnected with an ionic exchange membrane (260; figure 1; abstract; paragraphs 15, 17, 24).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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