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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 25 November 2025 is acknowledged.
Claim Objections
Claim 4 is objected to because of the following informalities: the claim reads “mehtyl ethylamine viologen” when it appears the limitation should read “methyl ethylamine viologen”. Appropriate correction is required.
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.
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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2022-0141146 A to Kim et al. (Kim) in view of US 2020/0056298 A1 to Voskian et al. (Voskian).
As to claims 1 and 4, Kim teaches an apparatus comprising a reactor including a reduction cell, the reduction cell partitioned into an anode compartment comprising an anode (Pt wire) and an anode solution and a cathode compartment comprising a cathode (carbon felt) and a cathode solution by a proton exchange membrane, a voltage source connected across the anode and the cathode, wherein the cathode solution comprises a charge carrier (ethyl viologen) and immobilized formate dehydrogenase, the apparatus operating such that the charge carrier is reduced and re-oxidized to convert carbon dioxide to a product, formic acid (Paragraphs 0022, 0033, 0041, 0048, 0051, 0058, 0080, 0105 and 0109; Figure 9).
However, Kim fails to teach that the apparatus comprises a production cell, instead teaching that the entire process occurs in the reduction cell. However, Voskian also teaches electrochemical reactions utilizing a redox charge carrier including the reaction of carbon dioxide to formic acid (Paragraphs 0040 and 0073). Voskian further reaches that rather than transferring the protons from the redox charge carrier within the electrochemical cell itself the apparatus should include a separate module (110) (a production cell) receiving a reactant source (160) and the reduced charge carrier from the cathode compartment (146) of the electrochemical cell in order to decouple the electrochemical process from the chemical product production process to allow for enhanced efficiency and selectivity (Paragraphs 0040, 0054 and 0082; Figure 1B and 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the apparatus of Kim with the addition of a production cell for receiving the reduced charge carrier from the cathode compartment and re-oxidizing the charge carrier and reducing the carbon dioxide, thus locating the immobilized catalyst catalyzing this reaction within the production cell, in order to enhance the efficiency and selectivity as taught by Voskian.
Voskian further teaches that the decoupled system operates via recycle and comprises a first circuit for circulating anode solution through the anode compartment (144) and a second circuit for circulating the cathode solution from the cathode compartment (146) to the production cell (110) and back to the first compartment (146) (Paragraphs 0040, 0076, 0125; Figure 2C).
Kim fails to specifically contemplate forming formate, instead teaching formic acid; however, the apparatus of the combination, teaching the same structure, charge carrier and immobilized catalyst as in the present disclosure, would be capable of performing the claimed function (MPEP 2114).
As to claim 2, the combination of Kim and Voskian teaches the apparatus of claim 1. Kim further teaches that the formate dehydrogenase catalyst is formate dehydrogenase 1 from methylobacterium extorquens AM1 (Paragraphs 0022, 0033, 0041, 0048, 0051, 0058).
As to claim 3, the combination of Kim and Voskian teaches the apparatus of claim 2. Kim further teaches that the methylobacterium extorquens AM1 is immobilized on agarose beads (Paragraphs 0022, 0033, 0041, 0048, 0051, 0058).
As to claims 7 and 8, the combination of Kim and Voskian teaches the apparatus of claim 1. Kim further teaches that the cathode solution further includes a buffer solution, potassium phosphate, to maintain a pH of 6.3 (Paragraphs 0053, 0054, 0099).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Voskian as applied to claim 1 above, and further in view of KR 2014-0039910 A to Lee et al. (Lee).
As to claims 5 and 6, the combination of Kim and Voskian teaches the apparatus of claim 1. Kim further teaches that residual activity of the enzyme decreases when exposed to oxygen (Paragraph 0115). However, Kim fails to teach an oxygen scavenger. However, Lee also discusses carbon dioxide containing solutions when oxygen concentration is not desired and teaches that oxygen content can be minimized by providing an oxygen scavenger, such as hydrazine, diethylhydroxylamine or ascorbic acid, to the solution (Abstract, Translation Page 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the cathode solution, where the enzyme is located and thus where the oxygen content is desired to be minimal, with an oxygen scavenger such as hydrazine, diethylhydroxylamine or ascorbic acid in order to ensure minimal oxygen content as taught by Lee.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Voskian as applied to claim 1 above, and further in view of CN 117026247 A to Xia (Xia).
As to claim 9, the combination of Kim and Voskian teaches the apparatus of claim 1. Kim teaches that the anode is a platinum wire, but fails to specifically discuss the structure of this wire (Paragraph 0105; Figure 9). However, Xia also discusses wire anodes and teaches that the anode wire should be in the form of a mesh for optimizing performance (Paragraph 0045). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the platinum wire anode of Kim as a platinum wire mesh in order to allow for optimizing performance as taught by Xia.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Voskian as applied to claim 1 above, and further in view of US 2012/0288898 A1 to Lovley et al. (Lovley).
As to claim 10, the combination of Kim and Voskian teaches the apparatus of claim 1. However, Kim fails to teach a cathode as specifically claimed, Kim teaching a carbon felt cathode (Figure 9). However, Loverly also discusses cathodic reduction of carbon dioxide utilizing charge carriers and teaches that in addition to carbon felt an effective cathode comprises a copper cathode (Paragraphs 0032 and 0033; Figure 7). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the carbon felt cathode of Kim with a copper cathode as a known equivalent as taught by Lovley (MPEP 2144.06 II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794