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 .
Response to Amendment
Per the Applicant’s response dated December 22, 2025, Claims 1 and 16 are amended. Claim 2 is canceled. Claims 12-14 and 20 are drawn to nonelected inventions as described in previous Office Actions. Claims 21-22 are added. Applicant’s amendments to claim 16 are accepted and overcome the 35 U.S.C. 112b rejection in the Office Action dated October 1, 2025.
Claim Interpretation
In the Office Action dated June 10, 2025, Claim Interpretations were invoked under 35 U.S.C. 112(f) for claims 1, 4, 9, and 10. No objection has been provided by the Applicant; therefore, the recited claims will continue to be interpreted under 35 U.S.C. 112(f) as previously provided.
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 1, 4-6, 8, 10, and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kishida et al. US20120171599A1, hereinafter Kishida.
Regarding Claim 1, Kishida discloses a fuel cell for producing electrical energy, said fuel cell [Kishida abstract and throughout] comprising:
an anode [Kishida 0210-0222 and throughout, Figs. 12- 17, negative electrode 15 left side with terminal 22],
a cathode [Kishida 0210-0222 and throughout, positive electrode 14 left side with terminal 21],
a separator allowing for a transfer of at least one compound capable of triggering and/or enabling a production of electrical energy, arranged between the anode and the cathode [Kishida 0210-0222 and throughout, Figs. 14-18, separator 13 and further the separation between anode and cathode within each of the cells 11 and 12 acts as a separator until the solution is inserted the cells 11 and 12], and
at least one breakable, pierceable, and/or deformable reservoir made of said compound capable of triggering and/or enabling the production of electrical energy, said reservoir having means for bringing said compound and said separator into contact with each other [Kishida 0197, 0210-0242, and throughout, Fig. 17, Reservoir cells 11 and 12 has pierceable regions/deformable regions [Kishida 0224-0227, slits 25, port 16, valve 17] and holds electrolyte solution, glucose, etc. [0215-0218]. ] for production of energy [0197 and throughout].;
said means for bringing said compound and said separator into contact with each other being means for transferring a liquid [Kishida 0215-0242, Figs. 12-17, liquid electrolyte solution, glucose etc. injected by syringe 9],
wherein the reservoir comprises a shell having an opening and retention means blocking the opening of the shell [Kishida, 0220-0221, Figs. 14-18, and throughout shell is container 10 with retention means port 16 and sheet 19 waterproofing of the container], and
wherein the anode and/or the cathode comprises an enzyme catalyzing the oxidation or reduction reactions of the fuel [Kishida 0218],
the enzyme being a glucose dehydrogenase [Kishida 0218].
Regarding claim 4, Kishida discloses the fuel cell according to claim 1, wherein the means for bringing the compound capable of triggering the production of electrical energy and the separator into contact with each other include piercing or opening means [Kishida 0223-0242, Figs. 14-18, and throughout, syringe needle 27 as a piercing or opening means through injection port 16 and slit valve 17].
Regarding claim 5, Kishida discloses the fuel cell according to claim 1, wherein said reservoir of the fuel cell comprises one or more compartments [Kishida 0210-0242, The broadest reasonable interpretation of Kishida is cells 11 and 12 are a reservoir with two compartments. Further, cylindrical member 29 could be considered part of the reservoir and an additional compartment.]
Regarding claim 6, Kishida discloses the fuel cell according to claim 1, further comprising at least one other reservoir, said at least one other reservoir comprising said compound capable of triggering the production of electrical energy or another compound [Kishida 0197, 0210-0242, and throughout, Fig. 17, Two reservoir cells 11 and 12 holding electrolyte solution, glucose, an enzyme, and a mediator [0215-0218] for production of energy [0197 and throughout. Further, the cylindrical member of syringe 29 can be considered one other reservoir.].
Regarding claim 8, Kishida discloses the fuel cell according to claim 1, wherein said means for bringing said compound and the separator into contact with each other comprises a duct and/or an extension of said separator [Kishida 0226 and throughout, Fig. 16, narrow tube of syringe 27 shown in Fig. 16 reads on duct and the opening of slits 25 reads on extension of separator].
Regarding claim 10, Kishida discloses the fuel cell according to claim 1, further comprising one or more activation means [Kishida 0229, 0239, and throughout, Figs. 12-17, Activation means include filling cylindrical member 29, insertion of piston 28, pressing needle portion 27 through 16 and 17, and pressing piston 28; and further, the permeation of oxygen through sheet 19 to react with the positive electrode 14 to produce water.].
Regarding claim 15, Kishida discloses the fuel cell according to claim 4 wherein said piercing or opening means comprises at least one component having a cutting or pointed end [Kishida 0229 and throughout, Figs. 12-17, end of syringe 27 reads on pointed end].
Regarding claim 16, Kishida discloses the fuel cell according to claim 1 wherein said compound capable of triggering the production of electrical energy is an aqueous liquid [Kishida 0114, 0210, Kishida discloses aqueous glucose in describing the state of the art of fuel cells [Kishida 0114] and further discloses an liquid electrolyte solution including glucose [Kishida 0210] used for the invention described in claim 1 above; therefore, the broadest reasonable interpretation of Kishida is the term glucose used as an injectable fuel resources throughout references aqueous glucose fuel.].
Regarding claim 17, Kishida discloses the fuel cell according to claim 8 wherein said extension or said duct is configured to come into contact with a part of the reservoir [Kishida Figs. 14-17].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kishida, as applied to claim 1 above.
Regarding claim 9, Kishida discloses the fuel cell according to claim 1. Kishida does not explicitly disclose the fuel cell further comprising means for increasing, decreasing, deactivating, and/or reactivation production of energy; however, it would be obvious to the skilled artisan that Kishida’s activating means [Kishida 0229, 0239 and throughout, Figs. 12-17, filling cylindrical member 29, insertion of piston 28, pressing needle portion 27 through 16 and 17, and pressing piston 28; permeation of oxygen through 19] can also be used to increase, decrease, deactivate, or reactivate production of energy. For example, the production of energy can be increased or decreased through control of the injection dosage or strength of the electrolyte solution, etc. or the altering the permeability of oxygen through 19. The production of energy can be deactivated by injecting a dilutant to stop the oxidation/reduction process. The production of energy can be reactivated by the addition of electrolyte solution, etc. in the cells by injecting more or fresh fuel. It would have been obvious to one of ordinary skill in the art before the effective filing date to use Kishida’s activation means for increasing, decreasing, deactivating, or reactivating the production of energy for the predictable result of controlling power provided by the fuel cell. See MPEP 2143 (A) Combining prior art elements according to known methods to yield predictable results.
Claim 16, in an effort to expedite prosecution, alternative rejection to the 102 rejection provided above:
Regarding claim 16, Kishida discloses the fuel cell according to claim 1 wherein said compound capable of triggering the production of electrical energy is an aqueous liquid [Kishida 0114, 0210, Kishida discloses aqueous glucose in describing the state of the art of fuel cells [Kishida 0114] and further discloses an liquid electrolyte solution including glucose [Kishida 0210] used for the invention described in claim 1 above; therefore, the broadest reasonable interpretation of Kishida is the term glucose used as an injectable fuel resources throughout references aqueous glucose fuel. If not, it would be within the ambit of the skilled artisan to combine Kishida’s reference of aqueous glucose to the electrolyte solution containing glucose and use aqueous glucose as part of the electrolyte solution. It would have been obvious to one of ordinary skill in the art before the effective filing date to used aqueous glucose for the predictable result of a fuel sources that can be injected with Kishida’s syringe 9 as described in claim 1 above to provide electrical power as a fuel cell.
Claims 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kishida as applied to claim 10 above, and further in view of Finkelshtain et al [US20080003468A1, provided previously], hereinafter Finkelshtain.
Regarding Claim 18 and 19, Kishida discloses the fuel cell according to claim 10 but is silent to a switch. Finkelshtain disclose a fuel cell wherein said one or more activation means comprises a switch. Finkelshtain disclose an activation means for a fuel cell where a switch is used to control the activation of the fuel cell [Finkelshtain 0170-0171, Figs. 5, 17, and 74]. Finkelshtain discloses an activation structure where when removable tab 40, which reads on the claimed switch (claim 18) and removable tab (claim 19), is in place, the fuel cell is inactive. When the tab is removed, Finkelshtain’s activating liquids are enabled to activate the fuel cell. It would be within the ambit of the skilled artisan to modify Kishida’s fuel cell by adding an additional activation means of a switch/ removable tab on Kishida’s syringe to prevent premature leakage of the liquid electrolyte solution/glucose from the syringe or by adding a switch/ removable tab as an impermeable membrane over oxygen permeable sheet 19. It would have been obvious to one of ordinary skill in the art before the effective filing date that adding a removable tab to Kishida’s fuel cell would provide a safety mechanism to prevent premature activation of the fuel cell [Finkelshtain 0011, 0028, 0035, 0170]. The addition of a safety device would be considered an improvement on Kishida’s fuel cell. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Claim 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kishida, as applied to claim 1 above, and further in view of Gross et al. [A High Power Buckypaper Biofuel Cell: Exploiting 1,10 Phenanthroline-5,6-dione with FAD-Dependent Dehydrogenase for Catalytically-Powerful Glucose Oxidation, as provided on the IDS dated 5/13/2022].
Regarding Claim 21, Kishida discloses the fuel cell according to claim 1 but is silent to wherein the glucose dehydrogenase is Flavin Adenine Dinucleotide-Glucose Dehydrogenase (FAD-GDH). Gross teaches an enzymatic biofuel cell wherein the glucose dehydrogenase is Flavin Adenine Dinucleotide-Glucose Dehydrogenase (FAD-GDH) [Gross abstract and throughout]. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Gross’ teachings in Kishida’s fuel cell by using FAD-GDH as the specific type of glucose dehydrogenase for the predictable result of a fuel cell with improved performance due to FAD-GDH being less oxygen sensitive [Gross p. 4408, second paragraph].
Regarding Claim 22, Kishida discloses the fuel cell according to claim 1. Kishida is silent to wherein the anode and/or cathode comprises a sheet of nanotubes impregnated with the enzyme and a redox mediator. Gross teaches an enzymatic biofuel cell with multiwalled carbon nanotube buckypapers functionalized with 1,10-phenanthroline-5,6-dione (PLQ) as a small electron redox mediator on the buckypaper anode [Gross abstract, p.4409 and throughout] impregnated with FAD-GDH [Gross abstract, p. 4409 and throughout]. It would be within the ambit of the skilled artisan to combine Gross’ teachings to Kishida’s fuel cell by using Gross’ multiwalled carbon nanotube papers with the PLQ redox mediator and FAD-GDH enzyme as Kishida’s anode. It would have been obvious to one of ordinary skill in the art before the effective filing date for a biofuel cell with high catalytic performance [Gross p. 4415, conclusion, and throughout].
Response to Arguments
Due to applicant’s amendments to claim 1 the rejections in the Office Action dated October 1, 2025 are withdrawn. Applicant’s arguments with respect to the previous rejections 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. After further search and consideration, the prior art of Kishida anticipates claims 1, 4-6, 8, 10, and 15-17, Kishida obviates claims 9 and 16 (alternative rejection), Kishida in view of Finkelshtain obviates claims 18 and 19, and Kishida in view of Gross obviates new claims 21-22 as provided above.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Mon-Fri 8:30-5 EST.
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, Miriam Stagg can be reached at (571)270-5256. 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.
/M. T. LEONARD/ Examiner, Art Unit 1724
/MIRIAM STAGG/ Supervisory Patent Examiner, Art Unit 1724