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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 23 September 2025 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 550 and 184 (See Figure 10), 50 (See Figure 11A) and 627 (See Figure 12C). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claim 2 is 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.
As to claim 2, the claim recites that the first electrode, the electrode adjacent to the orifice, is a cathode, and the second electrode, the electrode on the printed circuit board is an anode. However, the disclosure as a whole specifically refers to these electrodes as the opposite.
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.
As to claim 2, the claim recites the limitation “the second electrode comprises and anode”. The use of “comprises” and “and” together is unclear.
As to claim 3, the claim recites the limitation "the cathode". There is insufficient antecedent basis for this limitation in the claim.
As to claim 8, the claim recites the limitation “the membrane comprises a minimum cell operation of 1.23 V”; however it is unclear as to how a membrane can comprise a voltage.
As to claim 23, the claim recites the limitation "the cathode". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-6, 8-10, 20, 21, 25, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0403349 A1 to Lee et al. (Lee) in view of KR 2018-0131901 A to Lee Young (Young) in view of US 2009/0120863 A1 to Salama et al. (Salama).
As to claims 1 and 4, Lee teaches an electrolytic generator (3) comprising a housing including a first end including an orifice (opening part) (36), a second end opposite the first end and side walls connecting the first end and the second end, a first electrode (31) positioned adjacent the orifice (36), a second electrode (32) positioned within the housing and facing the first electrode (31), a membrane (35) positioned between and separating the first electrode (31) and the second electrode (32) (Paragraph 0043; Figure 3).
Lee further teaches that the electrodes (31 and 32) are connected to an electrical power supply part provided in the housing below the second electrode (32) (Paragraph 0060; Figure 3); however, is silent as to the specific formation of the connections.
However, Young also discusses a compact electrolysis apparatus of electrolytic sterilization with planar electrodes and teaches that the connections to the electrodes (30 and 40) are made with a pair of conductive fasteners (52) contacting and extending through each of the electrodes (30 and 40) and the separator (60) (Paragraphs 0032 and 0033; Figure 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to connect the electrodes of Lee with a pair of conductive fasteners contacting and extending through each of the first electrode, second electrode and membrane, to contact the power supply, with the expectation of effectively powering the cell of Lee as taught by Young.
However, the combination fails to further teach that the apparatus comprises a printed circuit board to which the second electrode and the conductive fasteners are attached. However, Lee teaches that the electrolytic apparatus comprises a control circuit of some sort, i.e. for polarity reversal, and is intended for portability; however, fails to discuss the circuit details (Paragraphs 0007 and 0044). Salama also discusses electrolytic water sterilization and teaches that a printed circuit board onto which the circuit and power supplies can be integrated as well as the electrodes printed allows for making the apparatus miniature and easily portable (Paragraphs 0004, 0005 and 0014). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the control circuit and power supply through a printed circuit board in order to allow for a miniature and easily portable apparatus as taught by Salama. Salama further teaches that the electrodes are printed on the printed circuit board, the power supply of the Lee is provided below the second electrode, with the membrane and first electrode stacked on the second electrode, thus is would have been obvious to maintain this location, and directly print the second electrode to the printed circuit board to further ensure miniaturization and portability as taught by Salama. Thus, when the second electrode is printed on to the printed circuit board and considered part of the printed circuit boat, the conductive fasteners further extending through at least part of this printed circuit board (i.e. at least the electrode layer).
As to claim 2, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee teaches that the electrodes are configured for polarity reversal, thus each of the first and second electrodes operate alternatively as a cathode and an anode (Paragraph 0044).
As to claim 3, the combination of Lee, Young and Salama teaches the apparatus of claim 1. As discussed above, the combination teaches that the second electrode is printed on the printed circuit board. Lee further teaches that the second electrode can be, for example, a cathode (Paragraph 0044).
As to claim 5, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the first end comprises affixing means to affix the apparatus (3) to a liquid container (38) (Paragraph 0043; Figure 4C).
As to claim 6, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the membrane is a cation exchange membrane (Paragraph 0043).
As to claim 8, the combination of Lee, Young and Salama teaches the apparatus of claim 6. Lee further teaches that the voltage under operation is, for example, 5 to 24 V, the membrane thus passing, and comprising, this voltage during operation (Paragraph 0042).
As to claim 9, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the apparatus comprises a vent orifice (gas discharge channel (37) outlet hole to outside the apparatus) on the second end of the housing, for releasing, for example, hydrogen gas (Paragraphs 0043 and 0044; Figure 3). Lee fails to specifically teach a plurality of these vent orifices; however, the duplication of parts is not patentably significant (MPEP 2144.04 VI B).
As to claim 10, the combination of Lee, Young and Salama teaches the apparatus of claim 9. Lee further teaches that the vent orifice, and thus each vent orifice with a plurality of orifices, is attached with an adjacent vent (gas discharge channel (37)) (Paragraphs 0043 and 0044; Figure 3).
As to claim 20, the combination of Lee, Young and Salama teaches the apparatus of claim 5. Lee further teaches that the affixing means is a set of threads that interlock with another set of thread associated with the liquid container (Paragraph 0043).
As to claim 21, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the apparatus comprises a plurality of holes (gas discharge channel (37), orifice (36), electrode through holes (13/14) and conductive fastener through holes of the combination in view of Young), which together extend from the first end of the housing to the second end of the housing (Paragraphs 0038 and 0043, Figure 3).
As to claim 25, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the electrodes are porous and coated with platinum, a catalyst, and thus that the electrodes are at least partially impregnated with catalysts (Paragraphs 0037 and 0038).
As to claim 27, the combination of Lee, Young and Salama teaches the apparatus of claim 9. Lee further teaches that the apparatus comprises a vent channel (37) connecting the second electrode (32) to the orifice, and thus a plurality of vent channels in the obvious embodiment with a plurality of orifices (Paragraphs 0043 and 0044; Figure 3).
As to claim 28, the combination of Lee, Young and Salama teaches the apparatus of claim 1. As discussed above, the combination teach a printed circuit board onto which a second electrode is printed, upon which a membrane and a first electrode is stacked and connected with conductive fasteners, thus forming a microchip that is semi submersed.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee, Young and Salama as applied to claim 6 above, and further in view of KR 101907858 B1 to Choi et al. (Choi).
As to claim 7, the combination of Lee, Young and Salama teaches the apparatus of claim 6. Lee further teaches that the membrane can be a Nafion membrane (Paragraph 0038), but is silent as to the conductivity of the membrane. However, Choi also discusses an electrolytic apparatus for generating sterilizing water and teaches that the conductivity of a Nafion membrane used therein is, for example, 0.083 S/cm (8.3 S/m) (Paragraphs 0003 and 0063). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide a Nafion membrane with a conductivity of, for example, 8.3 S/m with the reasonable expectation of forming the apparatus of Lee as taught by Choi.
Claims 19 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee, Young and Salama as applied to claims 1 and 10 above, and further in view of US 2018/0065868 A1 to Anderson et al. (Anderson).
As to claim 19, the combination of Lee, Young and Salama teaches the apparatus of claim 1. However, Lee is silent as to the specific material of the housing. However, Anderson also discusses electrolytic disinfection solution apparatus and teaches that the housing should comprises a lightweight non-reactive material such as a polymer (Paragraph 0017). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filling to form the housing of Lee of a polymeric material in order to ensure the housing is non-reactive and lightweight as taught by Lee.
As to claim 26, the combination of Lee, Young and Salama teaches the apparatus of claim 10. However, the combination fails to further teach that the vents comprise one-way valves. However, Anderson also discusses electrolytic disinfection apparatus and teaches that the hydrogen vent should be provided with a one-way valve to prevent hydrogen from reentering the housing (Paragraph 0034). Therefore, it would have bene obvious to one of ordinary skill in the art at the time of filing to modify the vents of the combination each with a one-way valve in order to prevent hydrogen from reentering the housing as taught by Anderson.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee, Young and Salama as applied to claim 1 above, and further in view of JP H10189154 A to Kawate (Kawate).
As to claim 22, the combination of Lee, Young and Salama teaches the apparatus of claim 1. Lee further teaches that the power supply can comprise connecting to a supply external to the housing, thus a power supply part that extends outside of the housing (Paragraph 0042). However, the combination fails to specifically teach how the printed circuit board is connected to this external power supply. However, Kawate teaches that a PCB is connected to a power supply through a pinheader affixed to the printed circuit board extending to the power source (Paragraph 0011). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the PCB of the combination with a pinheader that extends outside the housing to the external power source with the reasonable expectation of effectively powering the apparatus as taught by Kawate.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee, Young and Salama as applied to claim 1 above, and further in view of US 5,928,505 to Inakagata et al. (Inakagata).
As to claim 23, the combination of Lee, Young and Salama teaches the apparatus of claim 1. As discussed above, the combination teaches that the second electrode is printed on one side of the printed circuit board with the control circuitry on the other side. Lee teaches that the second electrode can comprise a cathode (Paragraphs 0043 and 0044). Lee further teaches that the power supply, connected to the PCB can comprise a battery (Paragraph 0042). Lee further teaches that the control circuity would comprise a power supply means to the electrode and a switching mechanism for reversing the polarity of the power supply means, thus power supply and switching circuits of some sort (Paragraphs 0042-0044). However, Lee is silent as to the specific components of the power supply and switching circuits. However, Inakagata also discusses electrolytic water sterilizing apparatus and teaches that the power supply and switching circuits comprise, capacitors, resistors, transistors and a timer circuit (Column 8, Line 57 to Column 9, Line 13). Therefore, it would have been obvious to provide the PCB with, in addition to the switch, battery and cathode, a timer circuit, transistors, capacitors and resistors with the reasonable expectation of forming the power supply and switching circuits as taught by Inakagata.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee, Young and Salama as applied to claim 1 above, and further in view of US 5,342,494 to Shane et al. (Shane).
As to claim 24, the combination of Lee, Young and Salama teaches the apparatus of claim 1. However, the combination further fails to teach that the membrane is impregnated with catalysts. However, Shane also discusses water electrolysis with membrane such as Nafion and teaches that the membrane should be impregnated with catalysts in order to maintain purity of the products (Column 1, Lines 14-54 and Column 3,Lines 3 to 24). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to impregnate the membrane of Lee with catalysts in order to maintain the purity of the products as taught by Shane.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794