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 .
Summary
This is the second Office Action based on Application 17/772,821 and in response to Applicant Arguments/Remarks filed 11/10/2025.
Claims 1-73 are previously pending, of those claims, claims 18-73 have been withdrawn from consideration as being drawn to non-elected subject matter, claims 1, 5, 8, 10, and 17 have been amended, and claims 3, 7, 9, 11, and 14-16 have been canceled. Claims 1-2, 4-6, 8, 10, 12-13, and 17 are currently pending and have been fully considered.
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.
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.
Claims 1-2,4-6,8,10,12-13 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the anti-sedimentation agent" in lines 26 and 30 of claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 does not define an anti-sedimentation agent.
Claim 1 recites the limitation "the anti-caking agent" in line 30 of claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 does not define an anti-caking agent.
The Examiner notes that the anti-sedimentation agent and the anti-caking agent are first defined in claim 4.
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.
Claim(s) 1-2, 10, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over NAJIM (US 2010/0143240 A1) in view of ZHENG (US 2016/0325989 A1).
With respect to claim 1. NAJIM teaches a method for generating hydrogen comprising a liquid comprising water and a solid composition of a borohydride compound, and where the liquid includes a transition metal salt and an acid (paragraph 0005). The borohydride compound may be an alkali metal borohydride (claim 2). The pH of this liquid is kept at no less than 7, or alternatively, no less than 4.5 (paragraph 0009).
NAJIM therefore teaches the mixture includes an acid to maintain the pH in the range of 4.5-7 (paragraph 0009). NAJIM does not explicitly teach that this acid stabilizes the mixture.
ZHENG teaches a method of producing hydrogen gas that includes the steps of providing a stabilized aluminum hydride, a base and water, and reacting the stabilized hydride with the water to produce hydrogen gas (paragraph 0014). ZHENG then teaches the stabilized alane and water at a neutral or acidic pH can be present together, and then with the base added to the water to raise the pH and cause the water and the stabilized alane to react (paragraph 0053).
At the time the invention was filed one having ordinary skill in the art would have understood that the maintaining of the pH as taught by NAJIM has the function of stabilizing the solution, as ZHENG teaches that the neutral or acid pH can prevent the reaction, and is taken to be the claimed stabilization.
With respect to claim 2. NAJIM teaches the solid includes a powder, granules, and compressed solid material, with an average particle size of less than 177 microns (paragraph 0010). This is taken to be an overlapping range with the claimed range of 0.001-1000 microns. See MPEP 2144.05(I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to claim 10. NAJIM teaches the acid may include one of hydrochloric, sulfuric, and phosphoric acid (paragraph 0009).
With respect to claim 13. NAJIM teaches the amount of the borohydride is at least 70%, and no more than 90% (paragraph 0007).
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over NAJIM (US 2010/0143240 A1) in view of ZHENG (US 2016/0325989 A1) as applied to claim 1 above, and further in view of COLLINS (US 2018/0230007 A1).
Claim 4 is dependent upon claim 1, which is rejected above under 35 U.S.C. 103 in view of NAJIM and ZHENG. ZHENG teaches a mixing to form the aqueous solutions (paragraphs 0048-0051). However neither NAJIM nor ZHENG explicitly teaches an agitation, circulation, anti-sedimentation, and anti-caking agents.
COLLINS teaches a method of generating hydrogen that includes reactant vessels, and pumps (abstract). COLLINS then further teaches the use of suspending agents to prevent the metal from settling out of the suspension (paragraph 0055). By maintaining a stable suspension, it is possible to provide a more accurately metered amount of the reactant (paragraph 0055).
Therefore at the time the invention was filed one having ordinary skill in the art would have been motivated to include the suspending agent, taken to be analogous to the claimed anti-sedimentation substance, of COLLINS for the liquid of NAJIM, as COLLINS teaches the benefits of having such an agent are that it is possible to provide a more accurately metered amount of the reactant, and therefore this combination would have been obvious at the time the invention was filed.
Claim 12 is dependent upon claim 1, which is rejected above under 35 U.S.C. 103 in view of NAJIM and ZHENG. NAJIM teaches the method of producing hydrogen, that includes the use of a borohydride compound (paragraph 0005). Therefore NAJIM does not explicitly teach the metal is one of aluminum, zinc, iron, copper, and magnesium and their alloys.
COLLINS then teaches a method of producing hydrogen (abstract). The reactant for producing hydrogen may include a metal that reacts with an acid or an alkali to form hydrogen (paragraph 0052). Such metals then may include aluminum or zinc (paragraph 0053).
At the time the invention as filed one having ordinary skill in the art would have been motivated to use the metal of COLLINS for the method of NAJIM as this is a simple substation of one known prior art reactants in order to achieve predictable results. Specifically both COLLINS and NAJIM teaches method of producing hydrogen, and therefore one of ordinary skill in the art would have been able to make the substitution.
Claim(s) 5-6, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over NAJIM (US 2010/0143240 A1) in view of ZHENG (US 2016/0325989 A1) and COLLINS (US 2018/0230007 A1) as applied to claims 4 above, and further in view of WRIGHT (WO 90/07276 A2).
Claim 6 is dependent upon claim 4 which is rejected above under 35 U.S.C. 103 in view of NAJIM, ZHENG, and COLLINS. COLLINS teaches a suspending agent or stabilizer (paragraph 0055). However, COLLINS does not explicitly teach the suspending agent is a mineral type, such as magnesium aluminum silicate.
WRIGHT teaches a composition to form an aqueous suspension (page 2 lines 17-19. The formulation may contain magnesium aluminum silicate as an anticaking and resuspension aid (page 2 lines 24-25).
At the time the invention was filed one having ordinary skill in the art would have been motivated to substitute the suspending agent of COLLINS with the magnesium aluminum silicate of WRIGHT, as this is a simple substitution of one known prior art element for another in order to achieve predictable results. Specifically both COLLINS and WRIGHT teach forming suspensions, and the use of suspension aids, and therefore is analogous art as it is pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention. See MPEP 2141.01(a)I.
Claim 17 is dependent upon claim 1 which is rejected above under 35 U.S.C. 103 in view of NAJIM and ZHENG. However, neither NAJIM nor ZHENG explicitly teaches that the liquid contains antifreeze.
The teachings of WRIGHT from above are repeated here. WRIGHT further teaches an antifreeze agent can be added to prevent separation and inversion of the emulsion at cold temperatures (page 9 lines 1-3).
At the time the invention as filed one having ordinary skill in the art would have been motivated to combine the antifreeze agent of WRIGHT for the suspension of NAJIM as this is a combination of known prior art elements in order to achieve predictable results. Specifically WRIGHT teaches the benefits of the antifreeze is to prevent the suspension form separating at cold temperatures.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over NAJIM (US 2010/0143240 A1) in view of ZHENG (US 2016/0325989 A1) as applied to claim 1 above, and further in view of YOWS (US 2016/0322660 A1).
Claim 8 is dependent upon claim 1 which is rejected above under 35 U.S.C. 103 in view of NAJIM and ZHENG. However, neither NAJIM nor ZHENG explicitly teaches the particles are encapsulated with the suspension stabilizers.
YOWS teaches a process of generating a gas which includes providing an encapsulation of reactive metal particles (abstract). The process of generating the gas includes releasing the reactive metal particles from the encapsulation, mixing it and reacting it with water to generate hydrogen (paragraph 0003). The encapsulation includes a shell which is non-reactive to the water (paragraph 0004). The shell may then be a ceramic (paragraphs 0005-0006) which is taken to be the claimed mineral type. The shell then protects the reactive metal particles from oxidation and facilitates handling of the reactive metal particles for loading into the gas generator (paragraph 0041).
At the time the invention was filed one having ordinary skill in the art would have been motivated to form the encapsulation over the metal particles as taught by YOWS for the active material metal particles of NAJIM, as YOWS teaches that such encapsulations are beneficial as they protect the shell from oxidation and facilitates handling of the metal particles for loading (see YOWS paragraph 0041).
Response to Arguments
Applicant’s arguments, see pages 27-29 of Applicant Arguments/Remarks, filed 11/10/2025, with respect to the rejection(s) of claim(s) 1, 3-5, 9-12, and 14 under 35 U.S.C. 102 or 103 in view of COLLINS (US 2018/0230007) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of NAJIM (US 2010/0143240 A1) in view of ZHENG (US 2016/0325989 A1).
Applicant argues that claim 1 has been amended to recite that the medium is an acid which allows it to stabilize and avoid decomposition. Applicant Argues that COLLINS does not teach this. This argument is persuasive, however, new grounds of rejection are made in view of NAJIM and ZHENG.
Specifically NAJIM teaches a method of generating hydrogen (paragraph 0005). There is included a liquid comprising water and a solid composition, further an acid is included to maintain the pH at a value of 4.5-7 as an example (paragraph 0009).
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 JONATHAN G JELSMA whose telephone number is (571)270-5127. The examiner can normally be reached Monday through Friday 9:00 AM to 4:00 PM EST.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722