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 without traverse of Group I, claims 1-5, in the reply filed on November 7, 2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claim 6 (process) is withdrawn from consideration as being directed to a non-elected invention.
Drawings
The drawings were received on December 31, 2024. These drawings are acceptable.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3
line 3, please insert the word -- cathode -- in front of the word “catalyst”.
This is an instance to ensure proper antecedent basis for the claim terminology. Claim 1, lines 4-5 and 7, recites two catalysts.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 3 and 5 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.
Claim 3
line 1, “the average current density” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
line 2, “the current density” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
line 3, “the cathode gas diffusion electrode” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Claim 5
line 1, “the average diameter” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaczur et al. (US Patent Application Publication No. 2017/0037522 A1) in view of Li et al. (“Comparative Techno-Economic and Life Cycle Analysis of Water Oxidation and Hydrogen Oxidation at the Anode in a CO2 Electrolysis to Ethylene System,” ACS Sustainable Chemistry & Engineering (2021 Oct 28), Vol. 9, No. 44, pp. 14678-14689).
Regarding claim 1, Kaczur teaches an electrochemical process for carbon dioxide conversion comprising:
• feeding an anode reactant comprising hydrogen to an anode (= utilizes hydrogen gas as the anode reactant) [pages 10-11, [0214]] comprising a quantity of anode catalyst (= an anode comprising a quantity of anode catalyst) [page 3, [0034]];
• feeding a cathode reactant comprising carbon dioxide to a cathode comprising a quantity of cathode catalyst (= the cathode is encased in a cathode chamber and at least a
portion of the cathode catalyst is directly exposed to gaseous CO2) [page 3, [0040]];
• feeding an inlet solution feed comprising water to a central flow compartment (= solution input 422 can pass an aqueous solution into central flow compartment 420. Solution input 422 can be deionized water) [page 11, [0224]] wherein the central flow compartment comprises macroreticular resin dispersed within a void space (= the central flow compartment frame which was filled with Amberlite IR120 resin beads (strong acidic, hydrogen form, Aldrich Fine Chemicals)) [page 27, [0404]];
• applying a voltage of and less than about 3.5V between the anode and cathode (= the operating cell voltages for electrochemical cell 402 disclosed in the embodiments in this disclosure can range from about 0.5 to about 20 volts) [page 13, [0235]]; and
• recovering a product solution comprising formic acid from an outlet of said central flow compartment (= solution input 422 can pass an aqueous solution into central flow compartment 420 at various flow rates to collect the formic acid product, which can then leave central flow compartment 420 as formic acid product output 424) [page 11, [0224]].
The method of Kaczur differs from the instant invention because Kaczur does not disclose the following:
a. Feeding water to an electrolyzer to generate a first electrolyzed product stream comprising hydrogen and a second electrolyzed product stream comprising oxygen.
b. Wherein said first electrolyzed product stream comprises said anode reactant.
Kaczur teaches that:
Alternatively, the anode reaction can also include a method and system for the production of formic acid that advantageously utilizes hydrogen gas as the anode reactant (pages 10-
11, [0214]).
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Li teaches that:
Here, we assess the hydrogen oxidation reaction (HOR)15,16 at the anode as an alternative reaction to partner with the CO2 electroreduction reaction at the cathode (Figure 1). Coupling electroreduction with the hydrogen oxidation would substantially decrease the required electrical energy to power the process by ∼50% [because the reversible potential for HOR is +0.0 V vs the reversible hydrogen electrode (RHE) scale, compared to +1.23 V vs RHE for water oxidation reaction]. Moreover, hydrogen oxidation is expected to have lower kinetic and ohmic resistance losses compared to water oxidation,17 which should also lead to more stable reactor performance given the lower potentials needed to drive high currents.18 Additionally, CO2 electroreduction/hydrogen oxidation may enable a lower-capital-cost electrolyzer with
longer durability by eliminating the ion-exchange membrane since it does not produce
combustible products as CO2 electroreduction/water oxidation (page 14679, bridging paragraph; and Fig. 1(B):
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536
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).
H2 sources for the H2 oxidation reaction (HOR) at the anode include water electrolysis:
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443
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(page 14680, Fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method described by Kaczur by feeding water to an electrolyzer to generate a first electrolyzed product stream comprising
hydrogen and a second electrolyzed product stream comprising oxygen, wherein said first electrolyzed product stream comprises said anode reactant because Kaczur teaches that the
anode reaction can utilize hydrogen gas as the anode reactant where a source of hydrogen gas for the hydrogen oxidation reaction at the anode, that is an alternative reaction to partner with the CO2 electroreduction reaction at the cathode, is from water electrolysis.1
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 2, Kaczur teaches an anion exchange membrane interposed between said central flow compartment and said cathode (= an anion exchange membrane can be
directly positioned between a gas diffusion electrode (GDE) cathode structure and the central
flow compartment) [page 3, [0027]], wherein the anion exchange membrane comprises a KOH treated polybenzimidazolium (= the PVBC/PBI membrane was soaked in 1-methylimidazole
solution for 2 days. (9) The membrane was rinsed with DI water and the membrane was then soaked in a 1 M KOH (Fisher Scientific) bath) [page 24, [0364]].
Regarding claim 3, Kaczur teaches wherein the average current density at the anion
exchange membrane is at least about 20 mA/cm2, wherein the area in the denominator of the
current density is the area of the cathode gas diffusion electrode on which the catalyst is disposed (= determining that the device has satisfied the test if the average current density at
the membrane is at least 20 mA/cm2, where the cm2 is measured as the area of the cathode gas diffusion layer on which the catalyst is disposed) [page 4, [0048]].
Regarding claim 4, Kaczur teaches wherein the cathode catalyst comprises a metal comprising Sn and Bi (= the GDE cathode electrocatalyst layer in electrochemical cell 402 can include compositions containing Au, Ag, Bi, Cu, Ga, Pb, Pd, In, Sb, Sn, Zn, W, as well as transition metals, their oxides, and their metal alloys including binary, ternary, and quaternary alloys and higher and the like) [page 13, [0236]].
Regarding claim 5, the method of Kaczur differs from the instant invention because Kaczur does not disclose wherein the average diameter of said macroreticular resin is greater than about 120% of and less than about 170% of the width of said void space.
Kaczur teaches that:
Electrochemical cell 402 has a central flow compartment or flow channel 420, bounded by cation exchange membrane 414 and anion exchange membrane 428. Central flow
compartment 420 can contain a porous media, such as cation exchange resins and the like to enhance the conductivity of the aqueous solution in the channel where formic acid solution product can be formed. In the central flow compartment, H+ ions enter the compartment through the cation exchange membrane and formate ions enter the compartment through the anion exchange membrane. The ionic combination of the H+ ions and formate ions can form formic acid in the compartment. Solution input 422 can pass an aqueous solution into central flow compartment 420 at various flow rates to collect the formic acid product, which can then leave central flow compartment 420 as formic acid product output 424. Solution input 422 can be deionized water or a weak acid solution, or can be a recycle of formic acid output stream 424 in order to form a more concentrated formic acid solution product (page 11, [0224]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the macroreticular resin described by Kaczur with wherein the average diameter of said macroreticular resin is greater than about 120% of and less than about 170% of the width of said void space because the porous media, such as cation exchange resins and the like, enhances the conductivity of the aqueous solution in the channel where formic acid solution product can be formed. It appears that the material choice or the average diameter of the macroreticular resin that results in this behavior would be based on the design of the channel, e.g., dependent upon the overall size of the apparatus and orientation of the apparatus.
MPEP § 2144.05(II)(A)) states that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
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/EDNA WONG/Primary Examiner, Art Unit 1795 December 16, 2025
1 Water electrolysis is a chemical process that uses an electrical current to split water (H₂O) into hydrogen (H₂) and oxygen (O₂) gases.