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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2022-136092, filed on 08/29/2022.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lister et al. (US 20200056292 A1).
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].
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yosuke et al. (ACS Appl. Mater. Interfaces, 2018, vol. 10, no. 51, pp. 44396-44402).
Considering claims 1 and 3, Lister 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).
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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lister et al. (US 20200056292 A1).
Considering claim 2, Yosuke 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 Yosuke, 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. Therefor, 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.
Conclusion
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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