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 1-17 are pending. Claims 1, 10 and 11 have been amended.
Applicant’s arguments, filed 04/15/2026, with respect to the rejection(s) of claim(s) 1-17 under 35 USC 112 have been fully considered and are persuasive. The rejection of claims 1-17 has been withdrawn.
Applicant’s arguments, filed 04/15/2026, with respect to the rejection(s) of claim(s) 1-17 under 35 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 Therefore, the rejection has been withdrawn.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 Li et al. (US 20240328001 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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 4 recites the broad recitation 0 to 7 mol per liter, and the claim also recites 4.0 to 6 mol per liter which is the narrower statement of the range/limitation.
Claims 5 and 13 recite the broad recitation 0.01 to 2 mol per liter, and the claims also recite 0.1 to 0.6 mol per liter which is the narrower statement of the range/limitation.
Claims 6 and 12 recite the broad recitation 0 to 7 mol per liter, and the claims also recite 4.5 to 6 mol per liter which is the narrower statement of the range/limitation, and also another broad recitation 0.01 to 1 mol per liter, and the claims also recite 0.1 to 0.6 mol per liter which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1 and 11 require introducing a catholyte solution comprising formate, and claims 4, 6 and 12, which depend on claims 1 and 11 allow for concentration of formate to be 0 mol per liter, therefore is not clear if the presence of formate is requires in the independent claims 1 and 11. For the purpose of further examination the claim will be interrupted as not requiring formate in the step of introducing the catholyte, because depending claims 4, 6 and 12 allow for the contractarian of 0 mol per liter.
Claims 2-10 and 12-17 are also indefinite as dependent on indefinite claims 1 and 11.
Claims 4, 6 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 4, 6 and 12 recite a range of formate concentration range including 0 mols per liter. This range encompasses an instant where the dependent claim is broader than the claim upon which it is dependent. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim(s) 1-6, 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 20240328001 A1).
Considering claims 1-4, 11 and 12, Li discloses a method to produce alkali formate, comprising: introducing a catholyte solution to an electrochemical reaction chamber having a cathode, the catholyte solution comprising alkali (potassium) bicarbonate [0025]; and introducing carbon dioxide into the electrochemical reaction chamber with a cathode [0007]; and applying electricity to the membrane (cation exchange membrane CEM) to cause positive ions to cross through the membrane into the catholyte solution, and formation and output of alkali formate ([0029] and [0031]).
Considering claims 5, 6 and 13, Li discloses the concentration of KHCO3 is 0.1 M [0064], which is within the claimed range of 0.01 to 2.0 mol per liter, and the concentration of formate in the introduced catholyte solution is 0 mol per liter.
Claim Rejections - 35 USC § 103
Claim(s) 7-9 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., as applied to claims 1 and 11 above, and further in view of Kiyota et al. (US 20230295812 A1).
Considering claims 7-9 and 14-16, Li discloses recirculating a refreshed anolyte [0042].
Li does not disclose outputting used anolyte in addition to the alkali formate to the ion selective membrane process and receiving refreshed anolyte in the electrochemical reaction chamber from the ion selective membrane process.
However, Kiyota discloses outputting the used anolyte from a carbon dioxide electrolytic device to an electrodialysis cell comprising an ion selective membrane in order to improve the carbon dioxide utilization. Some of the carbon dioxide crosses over to the anolyte in form of the catholyte in form of carbonate or bicarbonate ions, which are than regenerated to the carbon dioxide gas in the electrodialysis cell 200, and supplied again to the carbon dioxide electrolysis cell (100) ([0112]-[0113] and [0127]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to output used anolyte in addition to the alkali formate to the ion selective membrane process and receive refreshed anolyte in the electrochemical reaction chamber from the ion selective membrane process in the method of Li, because Kiyota discloses outputting the used anolyte from a carbon dioxide electrolytic device to an electrodialysis cell comprising an ion selective membrane in order to improve the carbon dioxide utilization, due to crossover of carbon dioxide from catholyte to anolyte through the membrane of the electrolysis cell.
Claim(s) 7, 10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., as applied to claims 1 and 11 above, and further in view of Lagrand (WO 2023133625 A1).
Considering claims 7, 10 and 17, Li does not disclose the catholyte solution is at least partially comprised of recycled catholyte solution from the ion selective membrane process.
However, Lartand discloses recirculating catholyte through the stack before the separation process in order to increase the formate concentration [0146].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recirculate the catholyte of Li through the electrolyzer stack before the separation process in order to increase the formate concentration in order to increase efficiency of the process.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-17 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
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