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 1-15 are pending. Claim 1 has been amended. Claims 4-15 have been added.
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive. The rejections are maintained and modified as necessitated by the amendment.
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 § 102
Claim(s) 1, 3, 4, 6, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lister et al. (US 20200056292 A1) as evidenced by Giovanelli et al. (Polymer 311 ‘2024’ 127536).
Considering claims 1 and 3, Lister discloses an apparatus and a method for producing an organic hydride [0021] comprising: a cathode electrode that generates an organic hydride and hydroxide ions from a subject to be hydrogenated and water ([0021] and [0022]); an anode electrode that produces oxygen by oxidizing the hydroxide ions [0022]; and an electrolyte membrane that is composed of an anion exchange membrane and is arranged between the cathode electrode and the anode electrode so as to transfer the hydroxide ions from the cathode electrode side to the anode electrode side [0022]. Lister generally teaches anion exchange membrane and in particular discloses in Example 3 the anion exchange membrane is Fumasep FAA-3-PK-130 membrane [0047].
Lister does not disclose molecular structure of Fumasep FAA-3-PK-130 membrane.
However, Giovanelli discloses the same Fumasep FAA-3-PK-130 membrane comprises aromatic rings (page 2, first 11 lines and Fig. 1). Therefore, the Fumasep FAA-3-PK-130 membrane of Lister comprises aromatic rings as evidenced by Giovanelli.
Considering claims 4, 6 and 8, Fumasep FAA-3-PK-130 membrane comprises polyarylene, as evidenced by Giovanelli (Fig. 1).
Considering claim 10, Lister discloses the cathode electrode has a cathode catalyst [0017], wherein the anode electrode has an anode catalyst [0019], and wherein the cathode catalyst and the anode catalyst are coated with an alkaline anion-exchange ionomer ([0039] and [0040]).
Claim Rejections - 35 USC § 103
Claim(s) 2, 5, 7, 9, 11 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lister et al. (US 20200056292 A1).
Considering claim 2, Lister discloses the anode electrode is supplied with an anolyte containing water [0022], and water is not substantially transferred from the anode to the cathode through the anion exchange membrane as may be the case when the membrane comprises a cation exchange membrane or a proton exchange membrane resulting in undesired dilution of the water-soluble organic feed material [0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the anion exchange membrane of Lister, will be capable of some water transfer, even though the intent is not to have substantial water transfer compared to cation exchange membrane or a proton exchange membrane, because the Yosuke teaches that such substantial water transfer would result in undesired dilution of the water-soluble organic feed material. Therefore, one would expect that the electrolyte membrane will contain some small (non-zero) amount of water, and the cathode electrode will be able to use that small amount of water entering from the electrolyte membrane for a reaction with the substance to be hydrogenated. Furthermore, the Fumasep FAA-3-PK-130 is also used in an embodiment of the instant specification, therefore, will obviously or inherently have water transfer property.
Considering claims 5, 7 and 9, Fumasep FAA-3-PK-130 membrane comprises polyarylene, as evidenced by Giovanelli (Fig. 1).
Considering claim 11, Lister discloses the cathode electrode has a cathode catalyst [0017], wherein the anode electrode has an anode catalyst [0019], and wherein the cathode catalyst and the anode catalyst are coated with an alkaline anion-exchange ionomer ([0039] and [0040]).
Considering claims 13-15, the limitations of supplying neutral of alkaline anolyte and hydrogenating toluene to methyl cyclohexane are merely functional and are met when the claimed apparatus is capable of performing such functions. The flow paths of Lister are capable of supplying alkaline or neutral anolyte and the hydrogenated form of toluene can be easily obtained by reaction with hydrogen for example using catalyst such as nickel of platinum under appropriate temperature and pressure conduction.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Yosuke et al. (ACS Appl. Mater. Interfaces, 2018, vol. 10, no. 51, pp. 44396-44402, with supporting information) in view of Ahlfield et al. (Journal of The Electrochemical Society, 164 ,14, F1648-F1653 ‘2017’).
Considering claims 1 and 3, Yosuke discloses an apparatus and a method for producing an organic hydride (abstract) comprising: a cathode electrode (RuO2-modified particulate ZnSe:CIGS photocathode) that generates an organic hydride and hydroxide ions from a subject to be hydrogenated and water (page 44397, 1st paragraph and Fig. 1); an anode electrode (Pt coil) that produces oxygen by oxidizing the hydroxide ions (Fig. 1); and an electrolyte membrane that is composed of an anion exchange membrane (anionic ionomer) and is arranged between the cathode electrode and the anode electrode so as to transfer the hydroxide ions from the cathode electrode side to the anode electrode side (page 44397, 1st paragraph and Fig. 1).
Yosuke discloses the anionic ionomer is Tokuyama, AS-4 (Supporting Information, page S-4, last paragraph).
Yosuke does not disclose the anion ionomer comprises aromatic ring.
However, Ahlfield teaches Tokuyama AS-4 is commonly used AEM ionomer material (page F1651, right column, first 2 lines). However, because it is proprietary composition, its structure is not disclosed. Ahlfield also compares TokuyamaAS-4 to other ionomers where each of the new studied ionomers have aromatic rings (Fig. 2, page F1649 and Fig. 5, page F1651).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Tokuyama AS-4 ionomer of Yosuke would have an aromatic ring, because even though it is a proprietary material one would expect to have aromatic ring, because all the compositions that Ahlfield compared to Tokuyama AS-4 ionomer have aromatic rings and comparable performance.
Considering claim 2, Yosuke discloses the anode electrode (Pt coil) is supplied with an anolyte containing water (Fig. 1), the electrolyte membrane contains water (page 44397, 1st paragraph) and the cathode electrode uses water entering from the electrolyte membrane for a reaction with the substance to be hydrogenated, because hydrogen is generated from alkaline electrolyte at RuO2-modified photocathode, therefore water from the alkaline electrolyte must pass through the anionic ionomer to reach the cathode side.
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive. Applicant argues that the prior art of record does not disclose the anion exchange membrane (AEM) contains an aromatic ring. However, Lister discloses AEM is FAA-3-PK-130 with is the same as an example used in the instant specification, and as evidenced by Giovanelli et al.
Furthermore, Yosuke also discloses a well-known ionomer comprising aromatic ring as shown in the rejection above.
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art (Lister et al. US 20200056292 A1) is silent about the amount of water entering from the electrolyte membrane expressed as a ratio as claimed. The instant specification (page 27) teaches that this property is a function of chemical composition of the membrane material used and the thickness of the membrane. Lister discloses the AEM is FAA-3-PK-130, which is the same as in the instant specification (page 30, [0052]), however Lister is silent about the thickness of the AEM. The thickness of is FAA-3-PK-130 in the instant specification is 130 µm with the ratio of 1.05. The prior art (e.g. Kuhl et al. US 20210395908 A1) discloses AEM thickness of 25-50 µm [0177].
The prior art of record does not disclose nor suggest the instantly claimed invention as a whole.
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.
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.
/WOJCIECH HASKE/Examiner, Art Unit 1794
Prosecution Insights