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 .
Priority
Claims 1, 2, 4 and 8-24 are pending. Claims 1, 4, 8 and 13 have been amended. Claims 3 and 5-7 have been canceled. Claims 14-24 have been added.
Applicant’s arguments, filed 10/31/2025, with respect to double patenting rejection have been fully considered and are persuasive. The rejection of claims 1-13 has been withdrawn.
Applicant’s arguments, filed 07/31/2025, with respect to the rejection(s) of claim(s) 1-13 under 25 USC 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 Therefore, the rejection has been withdrawn.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 Fujinuma (US 20190292668 A1).
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 § 103
Claim(s) 1, 2, 4, 8-11 and 14-24 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Yu et al. (Ind. Eng. Chem. Res. 2013, 52, 6901−6907) in view of Fujinuma (US 20190292668 A1).
Considering claim 1, 2, 4, 8-10 and 14-23, Yu discloses an electrochemical cell (page 6902, left column) capable of electrochemically synthesizing at least one carbonyl compound selected from the group consisting of organic carbonates and organic oxalates from carbon monoxide (abstract), the electrochemical cell comprising: an electrolyte solution comprising a redox species (supporting electrolyte) (page 6904, Table 2) and a catalyst (CuCl2) (page 6902, left column); and an electrode (anode) (page 6902, left column), an electrode that comprises no catalyst (carbon rod) and a ion exchange membrane (6902, left column);
an anode compartment comprising the anode disposed therein and containing the electrolyte solution therein; and an inlet port through which carbon monoxide is supplied to the anode compartment (page 6902, Fig. 1).
Yu also teaches prior research where Pd catalyst on vapor-grown carbon fiber (VGCF) anode have been used (page 6901, introduction, right column).
Furthermore, Fujinuma discloses a substantially similar electrochemical cell for the same purpose as Yu, where the homogeneous catalyst dispersed in the electrolyte can be a metal halide [0100], and the metal mab be Pd [0099] and the electrode is mesoporous carbon, carbon fiber, carbon paper or carbon whiskers [0092]. Moreover, Fujinuma teaches adding an electrolyte salt such as alkali metal salt (redox species) (LiBr, LiCl) in order to improve reaction efficiency ([0063]-[0064]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Pd as a catalyst in place of Cu, because Yu discloses that Pd, Au and Cu have been successfully used in the electrolytic synthesis of carbonates with varied specificity. Furthermore, Fujinuma teaches a catalyst dispersed in the electrolyte can be a metal halide, and the metal mab be Pd [0099] and the electrode is mesoporous carbon, carbon fiber, carbon paper or carbon whiskers. Therefore, one would have been motivated based on Yu, and explicit disclosure of Fujinuma to use for example a Pd halide such as PdCl2, in a liquid electrolyte. Furthermore, Fujinuma teaches adding an electrolyte salt such as alkali metal salt (LiBr, LiCl) in order to improve reaction efficiency.
Considering claim 11, Yu discloses the electrolyte solution comprises an alcohol-based compound (methanol) (abstract).
Considering claim 24, Yu discloses a specific example of the content of the catalyst is 0.07 mol/L (7 g/L) (page 6902, Table 1).
Furthermore, Fujinuma discloses a preferred range of the concentration of the catalyst from 0.001 to 1 mol/L [0104]. For example, for PdCl2 (MW: 177), the range would be 0.177 to 177 g/L, which is overlaps the claimed range of 0.05 g/L to 1g/L.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the concentration of the catalyst from the claimed range, because Yu only discloses an example and Fujinuma farther teaches an acceptable range that overlaps the claimed range.
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.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. and Fujinuma as applied to claim 1 above, and further in view of Anastasiadou et al. (Chem. Commun., 2020, 56, 13082).
Considering claims 8 and 9, Yu discloses the catalyst is CuCl2 combined with bipyridyl ligand dissolved or dispersed in the electrolyte solution (Page 6902, section 3.1).
Yu does not disclose the catalyst selected from the group as claimed.
However, Anastasiadou discloses several catalysts used for the same purpose, including CuCl2 with bipyridyl ligand and PdCl2 with bipyridyl ligand (page 13088, Table 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute CuCl2 of Yu with PdCl2 of Anastasiadou, as known catalysts for the same purpose, in order to compare their performance in the same conditions with reasonable expectations of success.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. and Fujium, as applied to claim 1 above, and further in view of Fujinuma et al. (US 2020/0095692 A1).
Considering claim 12, Yu does is silent about the source of carbon monoxide used in the electrochemical cell.
However, Fujinuma discloses a synthesis system comprising an electrochemical cell for synthesizing organic carbonate from carbon monoxide, wherein the synthesis system comprises a conversion portion which converts carbon dioxide to carbon monoxide and a supply path which supplies the carbon monoxide obtained by the conversion portion to the anode compartment [0239].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of providing carbon monoxide of Fujinuma to provide carbon monoxide to the anode of the electrochemical cell of Yu, because Fujinuma teaches production of valuable chemicals by electrical reduction of carbon dioxide the purposes of suppression of global warming [0002].
Considering claim 13, in Yu as modified by Fujinuma, Fujinuma discloses the carbon dioxide is obtained from any one of exhaust gases of electric power plants, ironworks, cement factories and waste incineration plants [0002].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/WOJCIECH HASKE/Examiner, Art Unit 1794