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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/10/2026 has been entered.
Status of the Claims
This is a non-final Office action in response to Applicant’s amendments and arguments filed 09/10/2026. Claims 1-7 and 10-13 are pending in the current Office action. Of these, claims 1-6 are withdrawn from consideration. Claims 7 and 10-11 were amended by Applicant. Claims 8-9 were cancelled by Applicant.
Status of the Rejection
The rejections of claims 7 and 10-13 under 35 U.S.C. § 103 are withdrawn.
New rejections of claims 7 and 10-13 are established.
Claim Rejections - 35 USC § 112
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.
Claims 7 and 10-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 7, claim 7 recites the limitation(s) “an operating power” in lines 11 and 12. A plain language reading of this claim limitation is the amount of power currently consumed by the primary and/or secondary hydrogen production systems. Specifically, recitation of the method steps “acquiring an operating power …” indicates the “operating power” is a dynamic value that needs to be measured.
However: a) under this interpretation the claim, taken as a whole, requires the controller to activate the hydrogen production systems regardless of the power produced by the renewable-energy-based power generation system (because the “operating power” of an inactive system is zero) and;
b) based on the specification (e.g., para. 75) and Applicant’s Remarks filed 09/10/2026 (see § 3.1), it appears that the term “an operating power” is intended to refer to a static power capacity of the hydrogen production systems e.g., the rated operating power of the hydrogen production systems or a fraction thereof.
Thus, the plain language meaning of the claim is not consistent with the specification.
On the other hand, interpreting the term “an operating power” as e.g., a rated or maximum power consumption of the primary and secondary hydrogen production systems, as suggested by the specification, is inconsistent with the claim language. I.e., it is unclear how a fixed value would be “acquired” as “a first threshold” or “a second threshold”.
Thus, as currently drafted, there is no reasonable interpretation of the claim limitations “acquiring an operating power of the secondary hydrogen production system as a first threshold” and “acquiring an operating power of the primary hydrogen production system as a second threshold”.
Claim 7 is therefore indefinite.
Regarding claims 10-11 and 13, claims 10-11 and 13 depend from claim 7, and therefore incorporate the indefinite language of claim 7. Claims 10-11 and 13 are therefore indefinite.
Regarding claim 12, claim 12 recites the combined limitations “an energy storage unit or grid to be turned on and charged based on whether the output electrical performance parameter being less than the first threshold” (claim 11) and “controlling the energy storage unit or grid to be turned on and discharge based on whether the output electrical performance parameter being less than an operating parameter for a hot standby condition, wherein the operating parameter for the hot standby condition is less than the first threshold” (claim 12).
Taken together, these method steps require the “energy storage unit or grid” to be both charged and discharged when the output electrical performance parameter is less than the “operating parameter for a hot standby condition”. I.e., the method as currently drafted requires the both charging and discharging steps based on the same trigger. It is unclear, in light of the specification, how this could be implemented.
Furthermore, claim 12 depends from claim 7, and therefore inherits the indefinite language of claim 7.
Claim 12 is therefore indefinite.
Claim Rejections - 35 USC § 102 or 103
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.
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 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Michelena (US Pat. Pub. 2010/0259102 A1).
Regarding claim 7, in the interest of compact prosecution, claim 7 has been interpreted as “setting a predetermined operating power of the secondary hydrogen production system as a first threshold” and “setting a predetermined operating power of the primary system as a second threshold”.
Michelena teaches a method for controlling a system for producing hydrogen from renewable energy (abstract), wherein the system comprises a renewable-energy-based power generation system (“a system for producing electric energy and hydrogen can be comprised of, at least, one wind turbine (1)” para. 77 and Figs. 2-3, see also para. 63), a primary hydrogen production system (“substantially slower dynamics electrolyzer(s) (6)” para. 80 and Figs. 2-3), a secondary hydrogen production system (“rapid dynamics electrolyzer(s) (5)” Id.), and a controller (“control device (4)” para. 77 and Figs. 2-3), an output end of the renewable-energy-based power generation system is connected to the primary hydrogen production system and the secondary hydrogen production system via an electrical conversion device (“one wind turbine (1) connected by power electronics means (2) to the hybrid electrolyzer device (3)” para. 77 and Figs. 2-3, see also para. 78); a monitoring end of the controller is connected to the output end of the renewable-energy-based power generation system, and a control end of the controller is connected to the electrical conversion device (“The control device (4) will manage the hydrogen production as a function of the requirements of the electricity network operator or the internal requirements of the wind farm” para. 88); and a capacity of the primary hydrogen production system is greater than a capacity of the secondary hydrogen production system (“rapid dynamics technology permits faster variations of its load but with a lower power capacity,” para. 37 and “substantially slower technology electrolyzer(s) feature, with higher power capacity” para. 38, see also paras. 27-28), the method comprising:
setting a predetermined operating power of the secondary hydrogen production system as a first threshold (“establishing an average production demand (15) lower than the maximum power of the substantially slower dynamics electrolyzer (11)” para. 81 and Figs. 8-9, see also para. 80);
setting a predetermined operating power of the primary system as a second threshold (“establishing an average production demand (15) lower than the maximum power of the rapid dynamics electrolyzer (11)” para. 82 and Figs. 8 and 10, see also para. 80);
monitoring, by the controller, an output electrical performance parameter of the renewable- energy-based power generation system in real time (“the control device (4) ensures that … the maximum power (11) of each electrolyzer, are not exceeded” para. 80 and Figs. 8-10, see also para. 88);
controlling the secondary hydrogen production system to be turned on or turned off based on whether the output electrical performance parameter being greater than the first threshold (“the control device (4) can control the energy in such a way that, as observed in the diagram of FIG. 6, when excess energy is generated, it is utilized to produce hydrogen (8). Conversely, when there is not sufficient energy, the hydrogen is re-converted by the energy converting means (7) into electric energy.” para. 104, see also paras. 88-89); and
controlling the primary hydrogen production system to be turned on or turned off based on whether the output electrical performance parameter being greater than the second threshold (Id.),
wherein the first threshold is less than the second threshold (“rapid dynamics technology permits faster variations of its load but with a lower power capacity,” para. 37 and “substantially slower technology electrolyzer(s) feature, with higher power capacity” para. 38).1
As currently drafted, the limitation “controlling the secondary hydrogen production system to be turned off and maintaining the primary hydrogen production system to be turned on, in a case where the output electrical performance parameter is greater than the second threshold and is less than a sum of the first threshold and the second threshold;” is a conditional limitation, i.e., this step is only performed “in a case where the output electrical performance parameter is greater than the second threshold and is less than a sum of the first threshold and the second threshold”.
Under the broadest reasonable interpretation, a method claim is only limited by a conditional step when the method requires the triggering condition to occur (MPEP § 2111.04(II)).
In the instant case, it is considered that the method may be performed without the condition “the output electrical performance parameter is greater than the second threshold and is less than a sum of the first threshold and the second threshold” occurring. Therefore, Michelena reads on the limitation “controlling the secondary hydrogen production system to be turned off and maintaining the primary hydrogen production system to be turned on, in a case where the output electrical performance parameter is greater than the second threshold and is less than a sum of the first threshold and the second threshold”.
Furthermore, in the interest of compact prosecution, even if amended to positively require the condition “the output electrical performance parameter is greater than the second threshold and is less than a sum of the first threshold and the second threshold”, it is considered that Michelena, taken as a whole, reads on or renders obvious this limitation (see paras. 80 and 104).
As currently drafted, the limitation “controlling the secondary hydrogen production system to be turned off and maintaining the primary hydrogen production system to be turned on, or controlling the secondary hydrogen production system and the primary hydrogen production system both to be turned on, in a case where the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system” is a conditional limitation, i.e., this step is only performed “in a case where the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system”.
Under the broadest reasonable interpretation, a method claim is only limited by a conditional step when the method requires the triggering condition to occur (MPEP § 2111.04(II)).
In the instant case, it is considered that the method may be performed without the condition “where the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system” occurring. Therefore, Michelena reads on the limitation “controlling the secondary hydrogen production system to be turned off and maintaining the primary hydrogen production system to be turned on, or controlling the secondary hydrogen production system and the primary hydrogen production system both to be turned on, in a case where the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system” is a conditional limitation. I.e., this step is only performed “in a case where the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system”.
Furthermore, in the interest of compact prosecution, even if amended to positively require the condition “the output electrical performance parameter is greater than a sum of the first threshold and the second threshold, and is less than a rated parameter of the primary hydrogen production system”, it is considered that Michelena, taken as a whole, reads on or renders obvious this limitation (see paras. 80 and 104).
Claim Rejections - 35 USC § 103
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Michelena (US Pat. Pub. 2010/0259102 A1) in view of Barbachano (US Pat. Pub. 2013/0093194 A1).
Regarding claim 10, Michelena anticipates or renders obvious the limitations of claim 7, as described above.
Michelena further teaches acquiring a sum of a rated parameter of the secondary hydrogen production system and a rated parameter of the primary hydrogen production system, as a third threshold (“the control device (4) ensures that the maximum power (11) of each electrolyzer, are not exceeded.” para. 80 and Fig. 8).
Michelena does not teach controlling an energy storage unit or grid to be turned on and charged based on whether the output electrical performance parameter being greater than the third threshold.
However, Barbachano teaches a method for controlling a system for producing hydrogen from renewable energy (e.g., abstract), wherein an energy storage unit (“battery system (6)” para. 60 and Fig. 9) is turned on and charged when the electrical output of the renewable energy system (“wind farm (2)” Id.), exceeds the maximum power consumption of the hydrogen production system (“battery charging (6) is carried out when control of withdrawal is required, i.e. when the power injected into the grid (3) must be reduced as a consequence of an increase in frequency thereof” para. 61 and Fig. 9), which provides the predictable benefit of allowing a backup to the use of the hydrogen electrolyzers as a source of grid stabilization (“battery system (6) is also provided to back up the primary control service of part of the frequency bands. … battery system (6) provides support both if primary control is provided only by the hydrogen production system (4) and if it is provided jointly by the wind farm (2) and the hydrogen production system (4)” para. 60 and Fig. 9).
As Michelena and Barbachano each teach methods for balancing the load on the power grid generated by renewable power sources, Michelena and Barbachano are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Michelena by adding an energy storage unit configured to be turned on and charged based on whether the output electrical performance parameter is greater than the third threshold, as taught by Barbachano. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of providing a backup for balancing the load on the grid, as taught by Barbachao. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 11, Michelena anticipates or renders obvious the limitations of claim 7, as described above.
Michelena does not teach controlling an energy storage unit or grid to be turned on and charged based on whether the output electrical performance parameter being less than the first threshold.
However, Barbachano teaches a method for controlling a system for producing hydrogen from renewable energy (e.g., abstract), wherein an energy storage unit (“battery system (6)” para. 60 and Fig. 9) is turned on and charged when the electrical output of the renewable energy system (“wind farm (2)” Id.), is below a minimum value required by the hydrogen production system, which provides the predictable benefit of allowing the hydrogen production system to have a smaller overall capacity (“the battery system (6) may be used to control the extreme frequencies of the primary control range. In current power systems, grid (3) frequency oscillates around its nominal value within a range considerably lower than that established by the primary control limits. Given that electrolysis systems are expensive, the battery system (6) may be used to cover extreme frequencies and carry out primary control in frequencies close to the nominal frequency with the hydrogen production system (4), thereby reducing its size.” para. 61 and Fig. 9).
As Michelena and Barbachano each teach methods for balancing the load on the power grid generated by renewable power sources, Michelena and Barbachano are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method of Michelena, by adding an energy storage unit or grid to be turned on and charged based on whether the output electrical performance parameter being less than the first threshold, as taught by Barbachano. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing the hydrogen production systems to have a smaller overall capacity, as taught by Barbachano. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 12, in the interest of compact prosecution, the cumulative limitations of claim 12 have been interpreted as requiring the “energy storage unit or grid” to be operated in a charging mode if the “output electrical performance parameter” is between “an operating parameter for a hot standby condition” and “the first threshold”, and to be operated in a discharging mode if the “output electrical performance parameter” is below both the “operating parameter for a hot standby condition”.
Under this interpretation, claim 12 is a conditional step i.e., it requires method steps to be executed if the “output electrical performance parameter” falls within certain specified ranges. Under the broadest reasonable interpretation, a method claim is only limited by a conditional step when the method requires the triggering condition to occur (MPEP § 2111.04(II)).
In the instant case, it is considered that the method may be performed without the “output electrical performance parameter” falling below the “first threshold”. Therefore, modified Michelena reads on the limitations of claim 12 as currently interpreted.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Michelena (US Pat. Pub. 2010/0259102 A1).
Regarding claim 13, Michelena anticipates or renders obvious the limitations of claim 7, as described above.
Michelena further teaches a power generation capacity of the renewable-energy-based power generation system is greater than the rated parameter of the primary hydrogen production system (“Furthermore, the control device (4) ensures that the limits of maximum power export to the electricity network released (10) and maximum hydrogen production, determined by the maximum power (11) of each electrolyzer, are not exceeded.” para. 80 and Fig. 8. I.e., the maximum power output of the power generation is greater than the maximum power of each of the hydrogen production systems), a range encompassing the claimed range. A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Response to Arguments
Applicant’s arguments with respect to claim(s) 7 and 10-13 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
1 As the first threshold corresponds to the system with the lower maximum operating capacity, it is considered that the first threshold is implicitly less than the second threshold. Alternatively, because the first threshold corresponds to the system with the lower maximum operating capacity, a person having ordinary skill in the art would have found it obvious to use a first threshold lower than the second threshold.
