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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/06/2026 has been entered.
Status of Rejections
The rejections of claims 15 and 16 are obviated by the Applicant’s cancellation.
All other rejections have been modified.
Claims 13 and 14 are pending and under consideration for this Office Action.
Claim Objections
Claim 13 is objected to because of the following informalities: The amended claim limitations are duplicates of limitations already contained in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Molter et al (US 20040013923 A1) in view of Zeng et al (“Recent progress in alkaline water electrolysis for hydrogen production and applications”, Progress in Energy and Combustion Science 36 (2010) 307–326).
Claim 13: Molter discloses an electrolyzer (see e.g. abstract), wherein the electrolyzer comprises
a water/oxygen phase separator (see e.g. #54 on Fig 4)
a pump (see e.g. #84 on Fig 4),
an electrolyzer stack (see e.g. #41 on Fig 4 and [0046]),
a back pressure regulator (see e.g. #59 on Fig 4 and [0060]); and
wherein the electrolyzer optionally comprises a hydrogen drying system (see e.g. [0046]) or a hydrogen/water phase separator (see e.g. [0046])
While Molter does not explicitly teach that the system does not have a hydrogen drying system or a pressure vessel used as a hydrogen/water phase separator, it does teach these are optional parts of the system (see e.g. [0046]). Additionally, Molter teaches that dryer is used to remove water from the hydrogen gas specifically to prevent forming a corrosive environment in the hydrogen storage (see e.g. [0079]) Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to not have a hydrogen drying system or a hydrogen/water phase separator because Molter teaches these are optional parts, especially in situations where the issue of corrosion is not present such as further processing the hydrogen instead of storing it. KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success’.
The limitation claiming “the electrolyzer produces a two-phase flow of pressurized hydrogen gas in an alkaline aqueous solution” is an intended use/function for the electrolyzer. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Molter teaches all of the positively recited structure of the claimed system and thus it would have been obvious to a person having ordinary skill in the art that the device of Molter would function in a similar way, such as producing a two-phase flow of pressurized hydrogen gas in an aqueous solution.
Furthermore, Molter discloses producing pressurized hydrogen gas in an aqueous solution (hydrogen dissolved in water, see e.g. [0055] and [0075]). As discussed above, the hydrogen drying system and hydrogen/water phase separator used to treat the hydrogen-water stream are optional components. Therefore, separating the hydrogen from the water is not required for Molter and the stream can be untreated.
Molter does not explicitly teach that the aqueous solution is alkaline comprising NaOH or KOH. Zeng teaches the following regarding the electrolyze used for water electrolysis (see e.g. page 318, col 2):
The type and concentration of the electrolyte are also important in the electrolysis due to the ionic transfer in the electrolyte. Good conductance of an electrolyte helps ionic transfer in the solution. As indicated in Section 5.2, the electrolyte concentration also plays an important role in determining the electrical resistance of the electrolyte. 25–30% potassium hydroxide is widely adopted in commercial electrolysers.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify Molter by using KOH in the aqueous solution as taught in Zeng to provide good conductance and ionic transfer. 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 U.S. 327, 65 USPQ 297 (1945)’.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Esteves et al (US 20170314045 A1) in view of Mets (US 9428745 B2), Molter, Zeng, and Balk et al (“Thermotoga lettingae sp. nov., a novel thermophilic, methanol-degrading bacterium isolated from a thermophilic anaerobic reactor.”, International Journal of Systematic and Evolutionary Microbiology, (2002), 52, 1361-1368).
Claim 14: Esteves discloses a system for the production of a gas (methane, see e.g. abstract) comprising an electrolyzer (see e.g. “Water electrolysis unit” on Fig 1 and [0136]) capable of producing two phase hydrogen gas (hydrogen dissolved in water, see e.g. [0055] and [0075]) and wherein the system further comprises a bioreactor (see e.g. “Biomethanation unit” on Fig 1) that uses the hydrogen gas in an aqueous solution (medium containing water, see e.g. [0020]) and a carbon containing gas (carbon dioxide, see e.g. [0020]) and a biocatalyst in an aqueous solution to produce the gas (see e.g. [0029] and [0107]), wherein the gas is methane (see e.g. abstract).
Esteves discloses that the biocatalyst is methanogen (see e.g. [0107] of Esteves). Among the list of potential methanogens taught in Esteves is Methanothermobacter thermautotrophicus. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to specifically select Methanothermobacter thermautotrophicus because KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success’ and 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 U.S. 327, 65 USPQ 297 (1945)’.
Additionally, Mets teaches that Methanothermobacter thermautotrophicus (see e.g. abstract) specifically “exhibits a high methane production efficiency” (see e.g. col 2, lines 40-48) “capable of continuously maintaining a methane pro duction efficiency of (3) for at least 30 days” and “capable of returning to at least 80% (e.g., 90%. 95%, 98%) of the methane productivity in the operating state within 20 minutes of re-supplying hydrogen (H) gas or electricity, after being in a dormant state for at least 2 hours as induced by interrupting or ceasing H gas Supply or electricity” (see e.g. col 3, lines 17-51). Therefore, it would have additionally been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to specifically select Methanothermobacter thermautotrophicus because Mets teaches that Methanothermobacter thermautotrophicus has a high methane production efficiency.
Esteves does not explicitly teach that the electrolyzer is capable of producing pressurized hydrogen gas in an aqueous solution wherein the electrolyzer comprises a water/oxygen phase separator, a pump, an electrolyzer stack, and a back pressure regulator and wherein the electrolyzer does not comprise a hydrogen drying system or a hydrogen/water phase separator. Rather, Esteves does not require any particular electrolyzer as long as it generates hydrogen (see e.g. [0136]). Therefore, a person having ordinary skill in the art before the effective filing date of the instant invention would be motived to find a specific electrolyzer for this purpose.
Molter discloses an electrolyzer (see e.g. abstract), wherein the electrolyzer comprises
a water/oxygen phase separator (see e.g. #54 on Fig 4)
a pump (see e.g. #84 on Fig 4),
an electrolyzer stack (see e.g. #41 on Fig 4 and [0046]), and
a back pressure regulator (see e.g. #59 on Fig 4 and [0060]).
The electrolyzer of Molter generates hydrogen and is specifically designed to feed the hydrogen to another system for use (in the case of Molter, this is a fuel cell, see e.g. abstract) and thus satisfies the requirements of Esteves. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that modify Esteves by using the electrolyzer taught in Molter because Molter teaches an electrolyzer that generates hydrogen and is specifically designed to feed the hydrogen to another system for use.
While Molter does not explicitly teach that the system does not have a hydrogen drying system or a pressure vessel used as a hydrogen/water phase separator, it does teach these are optional parts of the system (see e.g. [0046]). Additionally, Molter teaches that dryer is used to remove water from the hydrogen gas specifically to prevent forming a corrosive environment in the hydrogen storage (see e.g. [0079]) Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to not have a hydrogen drying system or a hydrogen/water phase separator because Molter teaches these are optional parts, especially in situations where the issue of corrosion is not present such as further processing the hydrogen instead of storing it. KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success’.
The limitation of the claiming “electrolyzer that produces a two-phase slow pressurized hydrogen gas in an aqueous solution” is an intended use for the electrolyzer. MPEP § 2114 II states ‘A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Esteves in view of Molter teaches all of the positively recited structure of the claimed electrolyzer and thus renders the limitation obvious and thus it would have been obvious to a person having ordinary skill in the art that the device of Molter would function in a similar way, such as producing a two-phase flow of pressurized hydrogen gas in an aqueous solution.
Furthermore, Molter discloses producing pressurized hydrogen gas in an aqueous solution (hydrogen dissolved in water, see e.g. [0055] and [0075]). As discussed above, the hydrogen drying system and hydrogen/water phase separator used to treat the hydrogen-water stream are optional components. Therefore, separating the hydrogen from the water is not required for Molter and the stream can be untreated. Furthermore, Esteves in view of Molter teaches producing pressurized hydrogen gas in an aqueous solution (hydrogen dissolved in water, see e.g. [0055] and [0075]).
Esteves in view of Molter does not explicitly teach that the aqueous solution is an alkaline solution comprising KOH or NaOH. Zeng teaches the following regarding the electrolyze used for water electrolysis (see e.g. page 318, col 2):
The type and concentration of the electrolyte are also important in the electrolysis due to the ionic transfer in the electrolyte. Good conductance of an electrolyte helps ionic transfer in the solution. As indicated in Section 5.2, the electrolyte concentration also plays an important role in determining the electrical resistance of the electrolyte. 25–30% potassium hydroxide is widely adopted in commercial electrolysers.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify Molter by using KOH in the aqueous solution as taught in Zeng to provide good conductance and ionic transfer. 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 U.S. 327, 65 USPQ 297 (1945)’.
Furthermore, Both Esteves and Mets teaches the important of maintaining the pH (see e.g. Esteves – [0155]; Mets - col 35, lines 12-30). Mets includes a base hydroxide to maintain the pH (see e.g. col 35, lines 12-30). An exemplary hydroxide compatible with Methanothermobacter thermautotrophicus is KOH (see e.g. Balk - page 1362, col 1, “Culture media”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to also use the KOH as the material in the bioreactor to help maintain optimal pH for the Methanothermobacter thermautotrophicus. 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 U.S. 327, 65 USPQ 297 (1945)’.
Response to Arguments
Applicant's arguments filed 03/06/2026 have been fully considered but they are not persuasive.
On page(s) 5-6, the Applicant argues that previous Office Action relies “common sense” for rejecting claim 13 with regard to the limitation claiming ‘the system does not have a hydrogen drying system or a pressure vessel used as a hydrogen/water phase separator’. This is not considered persuasive. This argument was addressed in the previous Office Action and is restated. Molter explicitly discloses an electrolyzer that can include optional components, such as a hydrogen drying system or a pressure vessel used as a hydrogen/water phase separator (see e.g. [0046]). It is clear from the disclosure that these parts do not have to be included. For example, the drying unit is included to prevent corrosion of the hydrogen storage tank (see e.g. [0079]). However, other means of corrosion protection can be included (see e.g. [0056]). Additionally, if the hydrogen is not stored, the issue is moot. There is sufficient information in the reference that makes the decision to include them or to not include them obvious with reasonable expectation of success. It is more than just “common sense” to support an argument of obviousness for choosing to use or not use parts explicitly described in the reference as optional.
On page(s) 5-7, the Applicant argues that are directed towards claim 13 (see page 5). However, page 7 discusses the unpredictability of using an Archael organism, which is not claimed in claim 13. Therefore, the arguments are considered unpersuasive.
On page(s) 7, the Applicant argues that previous Office Action ignored the limitations of claim 13 and 14 claiming the biocatalyst is Methanothermobacter thermautotrophicus and/pr the solution is NaOH or KOH. This is not considered persuasive. First, Methanothermobacter thermautotrophicus is only claimed in claim 14. This limitation was disclosed in Esteves. Additionally, both rejections of claim 13 and 14 contained obviousness rejections for the NaOH or KOH limitations.
On page(s) 7-9, the Applicant argues that using Methanothermobacter thermautotrophicus is not predictable. This is not considered persuasive. The primary reference Esteves explicitly teaches that the biocatalyst can be Methanothermobacter thermautotrophicus (see e.g. [0107] of Esteves). For the purposes of compact prosecution, the rejection also included Mets to teach the predictability and obviousness of using Methanothermobacter thermautotrophicus for the reaction done in Esteves. The Applicant’s arguments about hindsight reconstruction are not persuasive because is shown in Esteves as a suitable biocatalyst Methanothermobacter thermautotrophicus.
On page(s) 10, the Applicant argues that KSR rationale E was incorrectly applied. This is not considered persuasive. The applicant points to case law where “no direction as to which of many possible choices is likely to be successful”. This is not the case of Esteves, which explicitly discloses Methanothermobacter thermautotrophicus as being a suitable biocatalyst. For the purposes of compact prosecution, the rejection also included Mets to teach the predictability and obviousness of using Methanothermobacter thermautotrophicus for the reaction done in Esteves.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 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, Luan Van can be reached at 571-272-8521. 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.
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
Prosecution Insights