Looking at Patent Law: Patenting an Invention for Electroreduction of Carbon Dioxide and Electrooxidation of Hydrocarbons: A Case Study…Procedure for Continuing Prosecution of a Patent Application After Final Rejection…

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution events of U.S. Patent No. 11,788,193 directed towards simultaneous “Electroreduction of Carbon Dioxide and Electrooxidation of Hydrocarbons." The subject invention aligns with the research interest in sustainability matters by The Electrochemical Society and its members. The case study begins with a brief synopsis of the background of the invention followed by 1) summary of the drawing and the specification of the invention, 2) inventor assignment and power of attorney designations, 3) submission of the Invention Disclosure Statement (IDS) and associated Duty of Candor, 4) summary of the multiple non-final/final office actions rejecting the patent application, and 5) applicant response and allowance of the patent application. The case study illustrates the use of Request for Continued Examination (RCE) to continue the prosecution of the subject patent application after the USPTO issues a final rejection. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.