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 .
Status of Amendment
The amendment filed on 6 August 2025 fails to place the application in condition for allowance.
Claims 16-34 are currently pending.
Claims 16-28 and 31-34 are currently under examination.
Claims 29 and 30 are currently withdrawn.
Status of Rejections
All previous rejections are withdrawn in light of Applicant’s amendment filed 6 August 2025. New rejections are provided herein.
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.
Claims 16, 19-23, 26, 27, 31, and 32, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ji et al (Ji, Ya, et al. "Spatially decoupled hydrogen evolution in alkaline conditions with a redox targeting-based flow battery." International Journal of Hydrogen Energy 45.38 (2020): 18888-18894).
As to claim 16, 22, 23, 31, and 32, Ji discloses a system to generate hydrogen gas, comprising:
an electrochemical cell (Fig. 1 See annotation below) comprising;
an anode (Fig. 1 anode below) and
an anode electrolyte having a pH of 9 or more wherein the anode electrolyte comprises a metal oxyanion with a metal ion in a lower oxidation state (pg. 18889 “RFB Single cell test” “The positive electrolyte was 0.2 M K2MnO4 in 3 M NaOH” which equates to a pH of about 14 of 3M NaOH, further reading on instant claims 31 and 32 where the ion [MnO4]2- is in a lower oxidation state as required by instant claim 22 and [MnO4]- is in a higher oxidation state as required by instant claim 23) wherein the anode is configured to oxidize the metal oxyanion with the metal ion in the lower oxidation state to a metal oxyanion with metal ion in a higher oxidation state (See Fig. 1); and
a cathode and a cathode electrolyte comprising water wherein the cathode is configured to reduce water to form hydroxide ions and hydrogen gas( Fig. 1 See annotation below pg. 18889 “RFB Single cell test” the negative electrolyte was 0.2 M Fe(III)TEA (by mixing 0.2 M FeCl3, 1 M TEA) in 1.5 M NaOH and reaction2 in Scheme 1 pg. 18890 thus inherently having water).
As to claim 19, the recitation “wherein the electrochemical cell is configured to maintain a steady-state pH differential of between about 1-6 between the anode electrolyte and the cathode electrolyte” is drawn towards how the cell is being used. Since hydrogen is formed in only once cell, the hydrogen concentration necessarily rises thus altering the pH. Since a differential exists, the recitation does not imply any particular structural modification to be deemed capable of said function of operating at a pH differential absent the contrary. See MPEP 2114.
As to claim 20, Ji discloses anode materials (Pt/C in Fig.) which overlap those materials disclosed at [0199]-[0201] of the as filed specification thus deemed to be “configured to oxidize the hydroxide ions to form oxygen gas” absent further recitation or structure to explicitly enable the configuration of the electrode materials.
As to claim 21, Ji discloses the metal ion is manganese (See Fig. 1).
As to claim 26, since the device as claimed is substantially the same as the device in the prior art, such “configured” language is necessarily met absent evidence the language imparts further structural limitation to the device.
As to claim 27, the recitation “the anode is configured to form no oxygen gas or so that less than 25% of a Faradaic efficiency is for the oxygen evolution reaction” is a recitation of a property of the anode not tied to any particular structure or material in the instant specification. Since the material of the anode of Cable is the same as that claimed, the prior art is presumed to be configured as such absent evidence the instant claim limitation imparts particular structural limitation to the anode.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ji.
As to claim 18, Ji discloses a membrane between the anode and cathode electrolyte (Fig. 1 “membrane”) but fails to explicitly disclose the use of an anion exchange membrane disposed configured for the migration of hydroxide ions from the cathode electrolyte to the anode electrolyte.
However, Ji discloses using an anion exchange membrane modification in place of the Nafion membrane (pg. 18893 Conclusions). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used an anion exchange membrane as suggest by Ji because OH- is the charge balancing species for overall water splitting.
Allowable Subject Matter
Claims 17, 25, 28, 33, and 34, 3 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to the claims above have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, with respect to Wang see pgs. 14-15, filed 6 August 2025, have been fully considered and are persuasive. The rejections over Wang has been withdrawn.
No further arguments presented.
Conclusion
Applicant's amendment necessitated 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 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.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795