DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Election/Restrictions
In response to the restriction dated 1/24/2024, the applicant elected group I (claims 1-14) and species 1 (Fig. 1) in reply filed 01/25/2024 without traverse. Newly submitted claim 21 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Claim(s) 1, 5, 10, drawn to originally elected invention classified in F17C 7/02
III. Claim(s) 21, drawn to another storage system classified in F17C 2250/0626
Invention I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as, inter alia, an exclusion of no three-way valve arranged in the gas removal line or in the liquid removal line, a requirement for a common line formed by the gas removal line and liquid removal line being brought together after the first controllable shut-off valve and the second controllable shut-off valve and feeding fluid to the external heat exchanger. Further, subcombination II has separate utility including a control unit that is further operable to increase pressure in the storage container when the storage container is at or close to a nominal working pressure and a drop in pressure in the storage container when the storage container is at or close to a maximum allowable working pressure as a separate operation from the operative control of the first controllable shut-off valve and the second controllable shut-off valve. See MPEP § 806.05(d).
It is rehearsed that the originally and previously claimed and presented invention does not have a control unit that is further operable to cause an increase pressure in the storage container when the storage container is at or close to a nominal working pressure and a drop in pressure in the storage container when the storage container is at or close to a maximum allowable working pressure as claimed, rather the elected invention performs pressure control by controlling the first controllable shut-off valve and the second controllable shut-off valve and not by some separate operation as claimed in claim 21.
Restriction for examination purposes as indicated is proper because the inventions are patentably distinct and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification; the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); the prior art applicable to one invention would not likely be applicable to another invention; the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. A search for a separate control operation to increase and drop pressure in the storage container from the operation of the first and second valves would require a divergent field of search and would result in prior art applicable to one invention not being applicable to another.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 5, 10 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 1, the recitation, “a control unit, operatively connected to the first controllable shut-off valve and/or the second controllable shut-off valve to selectively control pressure in the storage container by controlling the removal of the gaseous form of the cryogenic medium via the gas removal line or the removal of the liquid form of the cryogenic medium via the liquid removal line, wherein the controlled removal of the gaseous form of the cryogenic medium from the storage container causes a drop in pressure in the storage container when the storage container is at or close to a maximum allowable working pressure, and the controlled removal of the liquid form of the cryogenic medium from the storage container causes an increase in pressure in the storage container when the storage container is at or close to a nominal working pressure,” is new matter as there is no support for the previously recited “removing the gaseous form” and the presently recited “controlled removal of the gaseous form”. The disclosure only discloses the previously recited gaseous removal. Further, there is no support for some other “pressure in the storage container” as recited in association with “a drop”. The claim already introduced “pressure in the storage container” and there is no support for several pressures as claimed.
Similarly, the recitation is new matter as there is no support for both the previously recited “removing the liquid form” and the presently recited “controlled removal of the liquid form”. The disclosure only supports the previously recited liquid removal. Further, there is no support for some other “pressure in the storage container” as recited in association with “an increase”. The claim already introduced “pressure in the storage container” and there is no support for several pressures as claimed.
Further and most importantly, there is absolutely no support that liquid being removed from the storage container causes an increase in the pressure of the storage container (see spec. para. 16). The recitation is new matter for attributing to the liquid removal a function that is provided by the heating with the internal heat exchanger and there is no support that any removing of the liquid form causes the pressure in the storage container to increase.
Nothing in the specification supports that the liquid removal is the cause of the increase in the pressure. The specification only supports that an increase in the pressure can happen during a liquid removal, and this is not support for the liquid removal being or providing the cause of an increase in the pressure in the storage container. At most, the specification merely supports that an increase of the pressure of the storage container is possible even when the liquid removal is performed (“at least due to vaporization at the in-tank heat exchanger” - spec. para. 16).
Further, there is no support that some other “controlled removal of liquid” (as presently recited) causes “an increase” in the pressure of the storage container, much less causes some other “pressure” to increase.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1, 5, 10 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In regard to claim 1, the recitation, “a control unit, operatively connected to the first controllable shut-off valve and/or the second controllable shut-off valve to selectively control pressure in the storage container by controlling the removal of the gaseous form of the cryogenic medium via the gas removal line or the removal of the liquid form of the cryogenic medium via the liquid removal line, wherein the controlled removal of the gaseous form of the cryogenic medium from the storage container causes a drop in pressure in the storage container when the storage container is at or close to a maximum allowable working pressure, and the controlled removal of the liquid form of the cryogenic medium from the storage container causes an increase in pressure in the storage container when the storage container is at or close to a nominal working pressure,” is indefinite for a multitude of reasons including that the recitation is not supported by the specification and creates ambiguity.
First note that, “the controlled removal of the gaseous form of the cryogenic medium” is indefinite since it is entirely unclear whether the presently recited removal is same gas removal previously introduced or if the newly recited “controlled removal of the gaseous form” is some other gaseous removal. Further, there is no support for another separate controlled gaseous removal and it is unclear what this requires structurally.
Second, “a drop in pressure” is indefinite since the pressure has already been introduced and there is no support for another separate pressure in the storage container and it is unclear what this requires structurally.
Further, “the controlled removal of the liquid form of the cryogenic medium causes an increase in pressure in the storage container” is indefinite since the removal of liquid has already been introduced and there is no support for another separate liquid removal (as claimed - controlled removal) and it is unclear what this requires structurally. Further the recitation is indefinite since the pressure of the storage container has already been introduced and there is no support for another separate pressure and it is unclear what this requires structurally.
Most importantly, the specification does not support that any removal of the liquid form of the cryogenic medium causes an increase in the pressure in the storage container. The disclosed removal of liquid does not cause the pressure in the storage container to increase. Rather, the specification only states that an increase of the pressure of the storage container is possible even when the liquid removal is performed (“at least due to vaporization at the in-tank heat exchanger” - spec. para. 16).
The recitation, “there is no controllable three way valve arranged in the gas removal line or in the liquid removal line, at least downstream of the first external heat exchanger, so that all the cryogenic medium removed through the gas removal line and/or through the liquid removal line and heated by the first external heat exchanger reaches the internal heat exchanger” is indefinite since the recitation refers to all of the cryogenic medium removed but then only includes the gas and the liquid removal lines in the alternative and therefore it is unclear if “all of the cryogenic medium” must include through both the removal lines or only one of the lines. Further it is unclear how to interpret the exclusionary recitation other than that there is no three way valve in the gas removal line or the liquid removal line.
Further, the claim states that the gas removal line and the liquid removal line are brought together to form the common line after the first controllable shut-off valve and after the second controllable shut-off valve. Therefore, the limitation of no controllable three way valve arranged downstream of the external heat exchanger in the gas removal line or in the liquid removal line is inconsistent with the claim since there is no gas removal line or liquid removal line downstream of the external heat exchanger – since these lines come together to form the common line and therefore there is no logic to excluding valves from lines that do not even exist “downstream of the external heat exchanger”.
Further, the above recitation includes the clause, “at least downstream of the external heat exchanger” which is inclusive of more than just downstream of the external heat exchanger and this is inconsistent with the claim and with the disclosure.
The recitation, “there is no controllable three way arranged in the gas removal line or in the liquid removal line” improperly removed “valve” from the claim recitation without notation and creates indefinite scope as there is no support for any structure that is a “three way”. The applicant was reminded to properly annotate the amendments to avoid notices of non-compliant amendment. Therefore to rectify this problem, the applicant is advised to add --valve-- after “three way” and before “arranged” and to notate the addition in the applicant’s remarks that the addition was errantly removed from the previously submitted claims dated 9/8/2025 and confirm that the applicant is not attempting to claim an indefinite “three way”.
Claim Interpretation
All of the claims have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, and it is considered that none of the claim recitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5, 10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bensadoun (US 2022/0146047). See the 112 rejections and note that the present prior art rejections demonstrate that the claim limitations are not patentable as far as the scope of the claims can be discerned.
In regard to claim 1, Bensadoun teaches a storage system (see whole disclosure, including Fig. 2) for storing a cryogenic medium (hydrogen, para. 34) that is partially in liquid form (liquefied fuel, para. 34) and partially in gaseous form (“with a gas phase”, para. 34), the storage system comprising:
a storage container (2, 3) for receiving the cryogenic medium (hydrogen), the storage container (2, 3) including an inner container (2) and an outer container (3) which surrounds the inner container (2) to form a double-walled container (para. 35);
a gas removal line (7) for removing the gaseous form (gas H2) of the cryogenic medium (hydrogen) from the storage container (2, 3);
a liquid removal line (16) for removing the liquid form (liquefied fuel) of the cryogenic medium (hydrogen) from the storage container (2, 3);
a first external heat exchanger (12) arranged outside of the storage container (2, 3) for heating the gaseous form (gas H2) of the cryogenic medium (hydrogen) and the liquid form (liquefied fuel) of the cryogenic medium (hydrogen);
a common line (combined line entering 12 and at least portion of line exiting 12, hereafter “combined line”) formed by the gas removal line (7) and the liquid removal line (16) for fluidic connection to the first external heat exchanger (12);
an internal heat exchanger (28), fluidically connected to the common line (combined line) and arranged inside of the storage container (2, 3) downstream of the first external heat exchanger (12) to heat the liquid form of the cryogenic medium (see that hydrogen in 2, 3 is heated by 28) in the storage container (2, 3);
a second external heat exchanger (see box on line 9) arranged downstream of the internal heat exchanger (28) and outside the storage container (2, 3) for heating the cryogenic medium (sent therein);
a first controllable shut-off valve (18) arranged in the gas removal line (7);
a second controllable shut-off valve (13) arranged in the liquid removal line (16);
a control unit (26, para. 52), operatively connected to the first controllable shut-off valve (18) and the second controllable shut-off valve (13) to selectively control pressure in the storage container (2, 3) by controlling the removal of the gaseous form (gas H2) of the cryogenic medium (H2) via the gas removal line (7) or the removal of the liquid form (liquefied fuel) of the cryogenic medium (H2) via the liquid removal line (16), wherein the removal of the gaseous form (gas H2) of the cryogenic medium (H2) from the storage container (2, 3) causes a drop in the pressure in the storage container (2, 3; removal of gas is directly able to cause a decrease in the pressure in the container 2, 3, para. 68, regardless of the vapor destination) when the storage container (2, 3) is close to a maximum allowable working pressure (see that the removing of gas can cause a decrease in the pressure of the container 2, 3 at any elevated pressure), and the removal of the liquid form (liquefied fuel) from the storage container (2, 3) (and the provision thereof to the internal heat exchanger 28 provides heat to the internal heat exchanger 28 and the heating causes an increase in the pressure in the storage container 2, 3 due to the vaporization of the liquid form (liquefied fuel) of the cryogenic medium (H2) inside the storage container 2, 3) when the storage container (2, 3) is at or close to a nominal working pressure (see that the heating of liquid in the container 2, 3 by the internal heat exchanger is able to cause an increase in the pressure at any elevated pressure),
wherein: there is no controllable three way valve arranged downstream of the external heat exchanger (12) in the common line (combined line) that prevents all of the cryogenic medium removed through the gas removal line (7) and through the liquid removal line (16) and heated by the first external heat exchanger (12) from reaching the internal heat exchanger (28) (see that there is no three way valve; further see that there is no three way valve that prevents all of the cryogenic medium from being sent to the internal heat exchanger; structure is fully capable of sending all of the cryogenic medium from the gas removal line 7 and the liquid removal line 16 to the internal heat exchanger 28 such that there is no valve that prevents this functional capability),
the gas removal line (7) and the liquid removal line (16) are brought together after the first controllable shut-off valve (18) and the second controllable shut-off valve (13) to form the common line (combined line), and
the common line (combined line) is operable to return the gaseous form of the cryogenic medium and the liquid form of the cryogenic medium heated by the first external heat exchanger (12) to the internal heat exchanger (28) to cool the liquid form of the cryogenic medium (inside 28) that is returned to the internal heat exchanger (28) (see that fluid from 12 to 28 is cooled by the stored fluid in 2, 3).
In regard to claim 5, Bensadoun teaches that the storage container (2, 3) comprises a double-walled storage container (para. 35) for receiving the cryogenic medium (hydrogen) that includes an inner container (2) and an outer container (3) which surrounds the inner container (2).
In regard to claim 10, Bensadoun teaches that the common line (combined line to 12) feeds the cryogenic medium (hydrogen) heated by the internal heat exchanger (28) to a fuel cell (27, para. 54).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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) 1, 5, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bensadoun (US 2022/0146047) in view of Dana (US 1943059). See the 112 rejections and note that the present prior art rejections demonstrate that the claim limitations are not patentable as far as the scope of the claims can be discerned.
In regard to claim(s) 1, 5, 10, see the detailed evidence as outlined above, and further supposing that Bensadoun is not relied upon for the claimed negative limitation of no controllable three way valve after the first external heat exchanger, for any reason, it is noted that Dana explicitly teaches it is well known to provide a first external heat exchanger (20) which feeds to an internal heat exchanger (21) and even further teaches a second external heat exchanger (23) and shows no controllable three way valve downstream of the first external heat exchanger (20) so that all of the cryogenic medium removed from the storage container (10) heated by the first external heat exchanger (20) reaches the internal heat exchanger (21). Therefore, in situations where there is no desire to interrupt or close flow from the first external heat exchanger (12) to the internal heat exchanger, it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Bensadoun by removing the valve on line (32) for the purpose of simplifying the system and saving the cost of the valve when the valve is not needed.
Response to Arguments
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive as outlined in the detailed rejection above.
Applicant's arguments (page 7-8) are an allegation that new matter rejection only provides “conclusory statements and nothing more”.
In response, the allegation is unpersuasive as it is not persuasive to ignore the grounds of rejection and make false allegations.
Applicant's arguments (page 9) are an allegation that the specification supports the claimed limitations because specification paragraph 13 states “when liquid is removed from the storage container, there is an increase in pressure in the storage container”.
In response, the citation from the specification does not support the claimed limitations as explicitly laid out in the new matter rejection as there is no support from the cited section of the disclosure that the liquid removal is the “cause” of the increase in the pressure in the storage container. The allegation is unpersuasive for entirely ignoring the scope of the actual claim recitations.
Applicant's arguments (page 9-10) are an allegation that there is support for the recitations in specification paragraph 15.
In response, the allegation is unpersuasive as there is nothing in specification paragraph 15 that supports separately recited “controlled removal” as claimed.
Applicant's arguments (page 10) are an allegation that there is explicit support for the recitation that excludes a three way valve.
In response, the allegation is unpersuasive as failing to respond to the position of the rejection. There is no new matter rejection concerning “the absence of a three way valve”. The applicant has not even properly claimed a three way valve but merely a “three way”. The three way valve recitation is merely indefinite for the reasons set forth above.
Applicant's arguments (page 11) are an allegation that the specification supports gas and liquid removal.
In response, the allegation is unpersuasive for mischaracterizing the new matter rejection and failing to respond to the position of the rejection. The new matter rejection is concerned with the recitation of separate “controlled removals” which have no support as the disclosure only supports the previously recited gas and liquid removals not some other “controlled removals” as claimed.
Applicant's arguments (page 11-12) are an allegation that the rejection has misconstrued the claims and that the claims do not require separate gas and liquid removals and pressures.
In response, the allegation is unpersuasive since the grounds of rejection are based on the scope of the claims as recited. It is the applicant that has claimed several gas and liquid removals by reciting gas and liquid removals and then later claiming controlled gas removal and controlled liquid removal. The scope of these recitations are not fully supported as explained in the new matter rejection. The fact that the applicant agrees that the disclosure does not disclose several removals as recited is further evidence of new matter. The applicant should amend the claims to eliminate the improper new matter scope to eliminate the issues.
Applicant's arguments (page 13) are an allegation that no “additional structure, event, or process is introduced or implied” and that the claims “simply articulate these operational consequences”.
In response, the allegation is unpersuasive for wholly failing to respond to the indefiniteness issues that the claim recitations create by failing to reference the removals consistently within the claims.
Applicant's arguments (page 14) are an allegation that the prior art fails to teach the claimed control unit. In response, the allegation is unpersuasive since the system of Bensadoun fully provides the claimed structure. Further Bensadoun’s system is fully capable of performing the operational consequences claimed including effecting a drop in the pressure in the storage container by removing gas through opening the first controllable shut-off valve and fully capable of achieving an increase in the pressure in the storage container by removing liquid through the second controllable shut-off valve and the heating of the internal heat exchanger with the removed liquid. Therefore the allegations of the applicant are entirely unpersuasive.
Applicant's arguments (page 16) are an allegation that Bensadoun teaches a valve (32). In response, the allegation is unpersuasive since there are no claim limitations excluding “a valve” and further Bensadown does not teach a three way valve and therefore the recited exclusion is met and the allegation fails to overcome the probative evidence of the reference. Further, the claims do not explicitly exclude “bypassing” as broadly alleged by the applicant. Therefore the allegations are unpersuasive.
Conclusion
Applicant's amendment necessitated the any of 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.
The prior art made of record on the 892 and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. 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): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
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