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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/12/2026 has been entered.
Response to Amendment
Per Applicant’s response dated 5/12/2026, claims 1 and 16 are amended. Claims 23-25 are added. Claims 12-14 and 20 are drawn to a nonelected invention and are withdrawn. Claims 1, 4-10, 15-19, and 21-25 are pending and examined. In view of Applicant amendments, the previous anticipation and obviousness rejections are withdrawn.
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, 4-5, 10, and 23-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mita et al. US20130011749A1, hereinafter Mita.
Regarding Claim 1, Mita discloses a fuel cell for producing electrical energy [Mita throughout], said fuel cell comprising:
an anode, a cathode, 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 [Mita 0010-0015, 0031-0040 and throughout, Mita teaches a cell unit with anode and cathode separated by a proton conductor where the one compound is fuel with any required additional compounds or additives as discussed throughout.],
at least one breakable, pierceable, and/or deformable reservoir made of said compound capable of triggering and/or enabling the production of electrical energy [Mita 0015, 0041-0062 and throughout, Figs. 1, 3, 4, fuel storage units 2 or 12, specifically Fig. 4 shows a deformable reservoir], said reservoir having means for bringing said compound and said separator into contact with each other [Mita 0015, 0041-0062 discussed throughout]; said means for bringing said compound and said separator into contact with each other being means for transferring a liquid [Mita 0015, 0041-0062, Figs. 1, 3, 4 transferring a fuel solution is taught throughout], wherein the reservoir comprises a deformable shell having an opening and retention means blocking the opening of the shell [Mita 0015, 0056-0062 and throughout, embodiment of Fig. 4, where the shell 12 is deformable due to flexibility by bending and the retention means is the separator film 13, which retains the fuel solution 14 within the shell 12 until the deformation forms opening 13a creating the fuel supply hole 15], said retention means comprising a separating layer or a film blocking said opening such that the shell and the separating layer or the film together form a closed receptacle [Mita 0056-0062 and throughout, Fig. 4, the receptacle is closed in the isolated state of Fig. 4A due to separating layer 13], wherein the reservoir is configured such that the contents thereof can be released under a mechanical action applied by a user [Mita 0056-0062 and throughout, Fig. 4, Mita teaches bending], and wherein the anode and/or the cathode comprises an enzyme catalyzing the oxidation or reduction reactions of the fuel [Mita 0032-0033] , the enzyme being a glucose dehydrogenase [Mita 0033, 0037].
Regarding Claim 4, Mita 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 [Mita 0056-0062, opening means by bending to create 13a broken area].
Regarding Claim 5, Mita discloses the fuel cell according to claim 1 wherein said reservoir of the fuel cell comprises one or more compartments [Mita Fig. 4 shows one compartment and thus meets the claim.].
Regarding Claim 10, Mita discloses the fuel cell according to claim 1 further comprising one or more activation means [Mita 0056-0062, activation means is supplying the fuel solution to the unit cell].
Regarding Claim 23, Mita discloses the fuel cell according to claim 1 wherein the fuel cell is stand-alone, and/or independent of external inputs other than gas [Mita 0003, 0056-0062, The broadest reasonable interpretation of Mita’s embodiment of Fig. 4 is that no additional inputs are required other than oxygen.].
Regarding Claim 24, Mita discloses the fuel cell according to claim 23, wherein the external inputs are liquid, fuel, or both [Mita abstract and throughout, fuel].
Regarding Claim 25, Mita discloses the fuel cell according to claim 1 where the closed receptacle is liquid impermeable [Mita 0058 and throughout].
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 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mita as applied to claim 1 in view of Kishida et al. US20120171599A1, hereinafter Kishida.
Regarding Claim 16, Mita discloses the fuel cell according to claim 1 wherein said compound capable of triggering the production of electrical energy is an aqueous liquid [Mita 0033-0037, 0057-0062, Mita discloses various fuel solutions such as glucose but does not explicitly disclose the fuel solution is an aqueous liquid. Kishida discloses a fuel cell 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]. It would be within the ambit of the skilled artisan to combine Kishida’s reference of aqueous glucose with Mita’s fuel cell such that Mita’s fuel is an aqueous liquid. 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 to provide electrical power as a fuel cell. See MPEP 2143 (A).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mita et al. US20130011749A1, hereinafter Mita, 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, Mita 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 Mita’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, Mita discloses the fuel cell according to claim 1. Mita 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 Mita’s fuel cell by using Gross’ multiwalled carbon nanotube papers with the PLQ redox mediator and FAD-GDH enzyme as Mita’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].
Allowable Subject Matter
Claims 6, 8-9, 15, and 17-19 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 depends on claim 1 and requires one other reservoir comprising said compound or another compound. Mita does not teach an other reservoir. It would not be obvious to add an additional reservoir as there would be no know reason for such modification. Further, it is unclear how to add an additional reservoir to Mita’s fuel cell.
Claim 8 depends on claim 1 and requires a duct and or an extension of the separator. Mita does not teach the claimed structure. It would not be obvious to add a duct or an extension of the separator as there would be no know reason for such modification. Further, it is unclear how to modify Mita’s fuel cell in this way. Claim 17 depends on claim 8 and therefore also includes allowable subject matter with the limitation of claim 8.
Claim 9 depends on claim 1 and requires a means for increasing, decreasing, deactivating, and or reactivating the production of electrical energy. Mita does not teach the claimed structure. It would not be obvious to modify Mita in this way since it would be unclear how to do so.
Claim 15 depends on claim 4 and 1. Claim 15 requires that the piercing or opening means comprises a component with a cutting or pointed end. Mita does not teach the claimed structure. It would not be obvious to modify Mita in this way since it would be unclear how to do so.
Claim 18 depends on claim 10 and requires the activation means comprises a switch. Mita does not teach a switch. It would not be obvious to modify Mita this way since it would be unclear how to do so. Claim 19 depends on Claim 18.
The Examiner consulted with Brian Ohara regarding allowable subject matter.
Response to Arguments
In view of Applicant amendments the rejections over Kishida are withdrawn; however, Mita as provided above was found to anticipate claims 1, 4, 5, 10, and 23-25. Claim 16 is obvious over Mita. Claims 21-22 are obvious over Mita in view of Gross. Applicant’s arguments with respect to claim(s) 1 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.
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 Monday, Wednesday, Thursday 9:00-5:00 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 /BRIAN R OHARA/Examiner, Art Unit 1724
Prosecution Insights