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 .
Response to Argument
Applicant’s arguments filed on 26 June 2025 have been fully considered but they are not persuasive. The respective arguments are addressed below:
Applicant argues that “Rosenzwieg has no recognition of the need for cleaning a reservoir” and “no need for circulation of a cleaning agent inside a dihydrogen generator” and “thus provides no suggestion of needing a drain valve”. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a cleaning agent) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as stated in the non-final office action, the secondary reference offers motivation for using a drain valve.
Applicant argues that the drain valve taught by Reeh differs from the claimed drain valve because it “does not drain liquid from a reservoir being fluid tight with respect to a liquid and permeable to dihydrogen”. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that there is no suggestion by Reeh to add a drain valve to Rosenzwieg. As pointed out in the non-final, Reeh does offer motivation for using a drain valve.
Applicant argues that “the generator of Rosenzwieg is configured very differently and is not compatible with the drain valves of Reeh”. In response to applicant's argument that the drain valves of Reeh are incompatible with Rosenzwieg, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenzweig (WO-2010051557-A1) in view of Reeh et al. (US-20180342745-A1), hereinafter “Reeh”.
Regarding Claim 1, Rosenzweig discloses a dihydrogen generator (The gas generating apparatus generates hydrogen; [0027]) comprising: an enclosure (housing 12; see [0054]), and a reservoir for containing a reagent and a catalytic system (within reaction chamber 28 are solid fuel component and liquid reactant; see [0054] and “catalyst sealing mechanism disposed at least partially within the reaction chamber”; see [0027]), the enclosure being fluid-tight with respect to the dihydrogen and defining an enclosure interior space (sidewalls 30 are preferably made of a fluid-impenetrable material; see [0054]), the reservoir being housed inside the enclosure interior space (within housing 12 is disposed a reaction chamber 28; see [0054]) and comprising a reservoir wall that is fluid-tight with respect to a liquid and permeable to dihydrogen (hydrogen-permeable liquid-impermeable membranes 32; see [0054]), the catalytic system being placed at least in part in the reservoir (catalyst sealing mechanism remains at least partially within the reaction chamber; see [0050]) and comprising a catalyst for a reaction of generating dihydrogen from the reagent (wherein the fuel mixture may react to produce a gas in the presence of a catalyst; see [0027]), and the enclosure comprising a discharge valve (outlet 20 comprises a valve 21; see [0051]) for extracting the dihydrogen from the enclosure interior space (outlet 20 to connect hydrogen-generating apparatus 10 to a fuel cell or other hydrogen consumer; see [0051]), and an injection valve for injecting the liquid into the reservoir (a check valve 18 connects liquid fuel bladder; see [0051]).
Rosenzweig fails to teach a drain valve. However, Reeh discloses a drain valve (drain valve 916; see [0106] and drain valve 907; see [0107]) for draining the liquid from the reservoir (liquid waste is transferred… drain valve opens once the water level in the separator reaches a predetermined point; see [0106]).
Rosenzweig and Reeh are both considered to be analogous to the claimed invention because they are in the same field of catalytic hydrogen generators. Therefore, it would have been obvious to a person of ordinary skill in the art to modify Rosenzweig by incorporating the teachings of Reeh and including a drain valve. Doing so would allow for control of the water level in the reservoir (see e.g. Reeh [0108]).
Regarding Claim 2, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. Rosenzweig further discloses the injection valve comprising a nonreturn check valve (a check valve 18 connects liquid fuel bladder; see [0051]).
Regarding Claim 3, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. Rosenzweig further discloses the injection valve being self-sealing (see Rosenzweig [0051] Part 18]). It should be noted that check valves are, by design, self-sealing valves.
Regarding Claim 4, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. Reeh further discloses the drain valve being configured to place the reservoir in fluidic communication with an environment of the generator (the drain valve opens once the water level reaches a predetermined set point; see [0107]) when the pressure in the reservoir is higher than or equal to a drain pressure and to hermetically isolate the reservoir from the environment of the generator when the pressure in the reservoir is lower than the drain pressure (a differential pressure transducer will be used in order to determine the difference between the water column pressure at the bottom of the reservoir and the pressure in the headspace of the reservoir, and the differential pressure will be used to calculate the water level; see [0108]). Doing so would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because it would maintain the water level at or below a predetermined setpoint (see Reeh [0107]).
Regarding Claim 5, Rosenzweig and Reeh together disclose the generator as claimed in claim 4. Reeh further discloses the drain pressure being higher than 1 bar (see Reeh Fig 20b Part 907). In Figure 20b, the drain valve 907 is shown at the bottom of the reservoir, draining to the atmosphere. It is known that atmospheric pressure is 1 bar, therefore the observed pressure at the drain valve would be atmospheric pressure of 1 bar summed with the pressure caused by the hydrostatic head of the fluid above the drain valve. Additionally, for safety reasons, hydrogen generation does not occur under vacuum. The laws of physics govern that if vacuum is not present within an apparatus, the pressure within the system will always be at least atmospheric pressure, which is 1bar.
Regarding Claim 6, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. While Reeh does not explicitly disclose the drain valve being a self-sealing check valve, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make it such. It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Rosenzweig with the drain valve taught by Reeh, as explained previously. Rosenzweig teaches every valve associated with the hydrogen generator as being a check valve. Therefore, when modifying Rosenzweig with the drain valve of Reeh, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the pattern of Rosenzweig and make the drain valve a self-sealing check valve.
Regarding Claim 7, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. Rosenzweig further discloses the discharge valve being configured to place the enclosure interior space in fluidic communication with an environment of the generator when the pressure in the interior space is higher than or equal to a discharge pressure (valve 21 may also optionally be an exit pressure control valve… no hydrogen can be transferred until pressure inside housing reaches a threshold pressure; see [0052]) and to hermetically isolate the enclosure interior space from the environment of the generator when the pressure in the interior space is lower than the discharge pressure (a shut off valve may also be included; see [0052]).
Regarding Claim 8, Rosenzweig and Reeh together disclose the generator as claimed in claim 4. Regarding the limitation claiming “the drain pressure being higher than the discharge pressure”, this is a functional limitation and does not limit the structure of the apparatus. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Hence, the limitation of the drain pressure being higher than the discharge pressure does not further define the actual structure of the dihydrogen generator, but merely sets forth a manner of operating the dihydrogen generator. Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
Regarding Claim 9, Rosenzweig and Reeh together disclose the generator as claimed in claim 1. Rosenzweig further discloses the discharge valve being a self-sealing, nonreturn check valve (a check valve or a duckbill valve; see [0052]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenzweig (WO-2010051557-A1) in view of Reeh et al. (US-20180342745-A1), hereinafter “Reeh”, as applied to claim 1 above, and further in view of Marsh (WO-2013166424-A1).
Regarding Claim 10, Rosenzweig and Reeh disclose the generator as claimed in claim 1. Rosenzweig further discloses the enclosure comprising a vessel (Reactor buoy 36 comprises an elastomeric chamber 38; see [0055] part 36) and a lid fixed rigidly and removably to the vessel and plugging the vessel (a first end cap 40 and a second end cap 44; see [0055], and “first end cap 40 and cup 42 come together, and seal catalyst 48”; see [0058]).
Modified Rosenzweig does not explicitly teach the vessel comprising the injection and drain valve. However, Marsh discloses a vessel (chemical supply chamber 41; see Pg. 24 Line 1) and a lid fixed rigidly and removably to the vessel and plugging the vessel (fitted with a removable screw cap; see Pg. 24 Line 2), the vessel comprising the injection valve and the lid comprising the drain valve, or vice versa (a positive displacement injection port can be provided on the chemical supply chamber 41; see Pg. 24 Lines 4-7).
Marsh discloses a positive displacement injection port, which most typically includes a self-sealing valve mechanism that controls fluid flow. So, while Marsh does not explicitly teach the injection valve, it is understood by a person of ordinary skill in the art that the positive displacement injection port includes a check valve. Additionally, Marsh states that the removable screw cap may be unscrewed and spent solution emptied (see Pg. 24 Lines 2-3), indicating that the opening that the screw cap seals is a drainage port, and that the positive displacement injection port is designed to allow displacement of spent solution with fresh solution (see Marsh Pg. 24 Lines 4-7).
Rosenzweig and Marsh are both considered analogous to the claimed invention because they are in the same field of catalytic hydrogen generators. Therefore, based on the motivations described in the previous paragraph, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified Rosenzweig by incorporating the teachings of Marsh and including a vessel comprising injection and drain ports. As previously established, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Rosenzweig with the drain valve taught by Reeh. It logically follows that the drain valve would be located at the position of the drain port, and therefore the drain valve would be disposed at the lid or cap of the vessel taught by Marsh, which is used to modify Rosenzweig.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALYSSA LEE KUYKENDALL whose telephone number is (571)270-3806. The examiner can normally be reached Monday- Friday 9:00am-5:00pm.
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/A.L.K./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
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