DETAILED ACTION
Response to Amendment
1. In response to the amendment received on 11/5/25:
claims 1-3 and 5-25 are presently pending
claims 7, 13, 16, 17, 23 and 25 are treated as withdrawn
the objection to the specification is withdrawn in light of the amendment to the specification
the objection to claim 4 is withdrawn in light of the amendments to the claims
the rejection of claim 17 under 35 USC 112(d) is withdrawn in light of the amendments to the claims
all prior art grounds of rejection are withdrawn in light of the amendments to the claims
new grounds of rejection are presented herein
Claim Objections
Claims 16 and 17 are objected to because of the following informalities:
Claim 7 has been amended to be directed to an “electrochemical cell” supposedly of claim 24; however, claim 24 is not directed towards an electrochemical cell but instead further limits the elected process of claim 1. It appears claim 7 contains a typographical error and instead of depending from claim 24 was meant to depend from newly added claim 25. As such, the examiner will be treating the claim as though it depended from newly added claim 25.
Claims 16 and 17 depend either directly or indirectly from amended claim 7 which, as noted previously, has been amended to depend from claim 24 and amended to further limit an “electrochemical cell”. The preambles of claims 16 and 17; however, were not amended so as to also denote the claims further limiting the “electrochemical cell” of claim 7, but both still mistakenly refer to “The process …” respectively. As such, the examiner will be treating the claims as further limiting the electrochemical cell since that appears most in keeping with applicant’s intent.
Appropriate correction is required.
Election/Restrictions
It is noted that since amended and newly added claims 7, 16, 17 and 25 appear to be all directed towards a nonelected invention, that they are withdrawn in accordance with the earlier made election (see Restriction Requirement mailed 5/12/25 & Election received 6/5/25).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 & 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, it is noted that the amendments to independent claim 1 now require the catalyst to be one of “a ferromagnetic metal, ferromagnetic intermetallic compound, ferromagnetic transition metal sulfide, ferromagnetic Heusler alloy, paramagnetic metal, paramagnetic intermetallic compound or paramagnetic transition metal phosphide” (see claim 1 at lines 5-7). As such, the limitations of dependent claim 3 requiring the catalyst to either be a ferromagnetic or paramagnetic material fail to further limit the limitations of claim 1 as amended. Likewise, the limitations of claim 2 which require the catalyst to be a “metal or compound with partially filled d-orbitals” appears to also fail to further limit since amended claim 1 is already limited to the recited metals or compounds as listed. Additionally, it would seem that the limitation requiring a “compound with partially filled d-orbitals” could also be viewed to cover compounds that meet the limitation without being ferromagnetic or paramagnetic as previously required. So, therefore, failing to include all the limitations of an earlier claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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(s) 1-3, 5, 6, 8-12, 14, 15 and 18-22 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by US Pat. No. 8,241,471 to Griffin (hereinafter referred to as “GRIFFIN”).
Regarding claims 1-3, GRIFFIN teaches a process for enhancing a catalytic effect of a catalyst for an electrochemical hydrogen evolution reaction (see GRIFFIN at Abstract and col. 1 lines 51-67), comprising exposing the catalyst to an external magnetic field of between 65×10-3 mT and ≤170 mT during the hydrogen evolution reaction (see GRIFFIN at Fig. 1 and col. 3 lines 29-47 teaching the adjustment of the location of magnetic element 50 so as to control the magnetic field strength to be applied ranging from non-existent, i.e. zero, to its maximum when the magnetic element is fully inserted into the conductive portion. While it is noted that the reference doesn’t explicitly recite the magnetic field strength, the range of strengths taught by GRIFFIN would necessarily have to include the range as claimed which at its low end is the approximate average magnetic field strength of the earth (see Specification at ¶21) which when the magnetic element is additionally exposed to increase hydrogen production would necessarily then increase from the average magnetic field strength on earth up to higher values which would of necessity pass through the range as claimed, wherein the catalyst is a ferromagnetic metal, ferromagnetic intermetallic compound, ferromagnetic transition metal sulfide, ferromagnetic Heusler alloy, paramagnetic metal, paramagnetic intermetallic compound or paramagnetic transition metal phosphide (see GRIFFIN at col. 4 lines 16-17 teaching the nano-particles being nano-nickel, i.e. a ferromagnetic metal).
Regarding claim 5, GRIFFIN teaches the process wherein the ferromagnetic metal is selected from the group consisting of Fe, Co, and Ni (see GRIFFIN at col. 4 lines 16-17 teaching the ferromagnetic metal being Ni as claimed).
Regarding claims 6, 8-12, 14, 15 and 18-22, it is noted that each of these dependent claims further limits an optionally present catalyst material. As such, since GRIFFIN teaches the catalyst material being a ferromagnetic metal as set forth in the rejection of claim 1 above, these claims are met by the teachings of GRIFFIN for the reasons as set forth above.
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.
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.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over GRIFFIN in view of US Pub. No. 2021/0198782 to Wei (hereinafter referred to as “WEI”).
Regarding claim 24, while GRIFFIN teaches the magnetic field strength being controllable via the insertion of the magnet or its removal behind a shielded portion of the device (see GRIFFIN at col. 3 lines 29-47), GRIFFIN fails to explicitly teach the external magnetic field ranging between 39 mT and 170 mT as claimed.
However, WEI teaches the use of an external magnetic field to enhance hydrogen evolution of a Nickel catalyst in a water splitting cell (see WEI at Abstract, ¶5-¶6 and ¶67; see also WEI at ¶68). Furthermore, WEI teaches the strength of the magnetic field being applied ranging from 0.1 to 1,000 mT (see WEI at claims 20-21, ¶10 and ¶68). As such, WEI teaches an overlapping range for the magnetic field strength and that those ranges of magnetic field strengths are known to enhance/improve the reaction efficiency of the hydrogen evolution reaction (see teachings of WEI cited above).
As a result, one of ordinary skill in the art would have been motivated to have applied a magnetic field strength within the range of values as claimed since it was known that magnetic field strengths in the range of 0.1 to 1,000 mT could be effective to increase the hydrogen evolution reaction.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the magnetic field strength of the device of GRIFFIN so as to have the magnetic field strength within the ranges taught by WEI as a means of enhancing the hydrogen evolution reaction.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5, 6, 8-12, 14, 15, 18-22 and 24 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
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 Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794