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 .
Status of the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on 08/17/2026. Claims 1, 3, 6, 12-22, and 24-28 are pending in the current Office action. Claims 4 and 23 were cancelled by Applicant. Claims 1, 12, 14-18, and 21 were amended by Applicant. Claims 24-28 are new claims.
Status of the Rejection
The rejections of claims 18 and 21 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
The rejections under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
New rejections are necessitated by Applicant’s amendments.
Specification
The use of the terms Ketjenblack®, Teflon®, Nafion®, AdBlue™, and Sustainion™, which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities:
p. 8 line 5, p. 14 line 26, and p. 18 line 6 read Ketjen black, but do not include an indication that this term is a trademark (e.g., Ketjen® black or Ketjenblack®).
Appropriate correction is required.
Claim Interpretation
The term “base metal”, recited in claim 6, is considered a term of art that a person having ordinary skill in the art would understand as indicating a metal that is not a noble metal.
Abbreviations used in this Office action:
AEM – Anion-exchange membrane
CP – Carbon paper
MEA – Membrane-electrode assembly
Claim Rejections - 35 USC § 112
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 14 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 14, claim 14 contains the trademark/trade name Ketjenblack®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe carbon black supplied by Ketjen® and, accordingly, the identification/description is indefinite.
Claim 14 is therefore indefinite.
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 1, 3, 6, 12, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jang (US Pat. Pub. 2017/0051419 A1) in view of King et al. (“Hydrogen production via urea electrolysis using a gel electrolyte” Journal of Power Sources 196 (2011) 2773–2778) and Li et al. (“Electrocatalytic Hydrogen Production Trilogy” Angew. Chem. Int. Ed. 2021, 60, 19550–19571).
Regarding claim 1, Jang teaches a hydrogen producing device (e.g., abstract) comprising:
an electrochemical cell (“anion exchange membrane water electrolyzer (cell)” para. 74 and Fig. 5) including an electrode assembly (“a membrane electrode assembly” para. 71) and an electrolyte solution (“1.0M KOH as electrolyte.” para. 89), wherein the electrode assembly has a cathode, a separator and an anode that are sequentially stacked with each other (“a schematic view illustrating an anion exchange membrane water electrolyzer” para. 93 and Fig. 5),
the electrolyte solution is an alkaline aqueous solution (“1.0M KOH as electrolyte.” para. 89 and “in alkaline solution” para. 90),
the separator is an ion exchange membrane that is an anion exchange membrane (“an anion exchange membrane water electrolyzer.” para. 93 and Fig. 5), and
a container in which the cathode, the anion exchange membrane and the anode are integrally formed with each other such that an inner space of the container is divided into an anode chamber and a cathode chamber by the anion exchange membrane, wherein the electrolyte solution is filled in the anode chamber to be in direct contact with the anode, and filled in the cathode chamber to be in direct contact with the cathode to produce hydrogen in the cathode chamber (see Fig. 5);
the electrode assembly is configured to collect the hydrogen generated at the cathode and oxygen generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other (see Fig. 5), and the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by said ammonium cations (see below).
Regarding the limitation “the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by the ammonium ions”, anion exchange membranes by definition inhibit the exchange of cations e.g., ammonium ions. Therefore, as the ion exchange membrane of Jang is an anion exchange membrane, it will necessarily inhibit the ion exchange of ammonium ions, thereby necessarily also inhibiting an increase in the electrical resistance of the membrane that would be caused by the transfer of ammonium cations (MPEP § 2112).
Jang does not teach the alkaline aqueous solution comprises urea.
However, King teaches that the addition of urea to the anolyte of a water electrolysis cell results in a reduced potential for the production of hydrogen by the cathode (see Fig. 6). This benefit was well recognized in the prior art before the effective filing date of the instant invention, as demonstrated by e.g., Li (see § 3.1. titled “Urea-Assisted Electrocatalytic Hydrogen Production”).
As Jang teaches an electrolysis cell comprising an anion exchange membrane, Jang is analogous art to the instant invention. As King and Li each teach electrolytic systems for urea oxidation, King and Li are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Jang, such that the alkaline aqueous solution comprises urea, as taught by King. A person having ordinary skill in the art would have had a strong motivation to make this modification because it predictably reduces the voltage required for the production of hydrogen, as taught by e.g., King and Li. Furthermore, combining prior art elements (i.e., adding the urea of King to the alkaline aqueous solution of Jang) according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea” and “the ammonium ions derived from the urea”, these limitations are drawn to an intended use/function of the system. I.e., they limit the system by how it is used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a function or intended use is an apparatus capable of performing the recited function or intended use (MPEP § 2114).
In the instant case, the instant specification indicates that an electrochemical cell divided by a membrane electrode assembly (MEA) comprising an anion exchange membrane (AEM) and comprising an alkaline electrolyte comprising urea in contact with the anode of the MEA is capable of producing ammonia in the anode chamber by oxidizing said urea, while inhibiting an increase in electrical resistance caused by ammonium ions derived from the urea.
Therefore, as modified Jang teaches each of these structural limitations, modified Jang is capable of performing these functions or intended uses. Therefore, modified Jang renders the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea” and “the ammonium ions derived from the urea” obvious.
Regarding the limitation “the electrode assembly is configured to collect the hydrogen generated at the cathode and the ammonia generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other”, as currently drafted, this limitation is a functional limitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Jang teaches the system is configured to collect hydrogen generated at the cathode and gas i.e., oxygen, generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other (see Fig. 5). Therefore, the system of Jang (and modified Jang) is capable of collecting hydrogen generated at the cathode and ammonia generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other.
Thus, Jang (and modified Jang) read on the limitation “the electrode assembly is configured to collect the hydrogen generated at the cathode and the ammonia generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other”.
Regarding claim 3, Jang further teaches the electrode assembly separates an inner space of the electrochemical cell into a space for the anode and a space for the cathode (see Fig. 5).
Regarding claim 6, modified Jang renders the limitations of claim 1 obvious, as described above.
Jang further teaches the anode contains a base metal (“In the case of oxygen evolution reaction, the Ni/CP electrode shows the highest activity,” para. 90).
Regarding claim 12, modified Jang renders the limitations of claim 1 obvious, as described above.
The limitation “wherein the hydrogen ammonia producing device is configured to produce hydrogen and ammonia by applying a voltage between the cathode and the anode”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, the system of modified Jang is capable of producing ammonia and hydrogen by applying a voltage between the cathode and anode, as detailed in the rejection of claim 1, above.
Modified Jang therefore renders the limitation “wherein the hydrogen ammonia producing device is configured to produce hydrogen and ammonia by applying a voltage between the cathode and the anode” obvious.
Regarding claim 18, modified Jang renders the limitations of claim 1 obvious, as described above.
Jang further teaches the anion exchange membrane has a first surface and a second surface opposite the first surface, the cathode contacts the first surface of the anion exchange membrane, and the anode contacts the second surface of the anion exchange membrane (see Fig. 5).
Regarding claim 19, modified Jang renders the limitations of claim 1 obvious, as described above.
Jang further teaches no clearance is provided between the cathode and the anion exchange membrane, and no clearance is provided between the anion exchange membrane and the anode (“a membrane electrode assembly…” para. 71 and Fig. 5).
Regarding claim 20, modified Jang renders the limitations of claim 1 obvious, as described above.
Jang further teaches the cathode, the anion exchange membrane and the anode are integrally formed with each other such that hydroxide ions are directly transmitted from the cathode to the anode through the anion exchange membrane (“a membrane electrode assembly…” para. 71 and Fig. 5).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of King and Li, as applied to claim 1 above, and further in view of Motoshige (US Pat. Pub. 2020/0002827 A1).
Regarding claim 13, modified Jang renders the limitations of claim 1 obvious, as described above.
Jang further teaches the anode is an electrode comprised of Ni that is deposited on a substrate (“In the case of oxygen evolution reaction, the Ni/CP electrode shows the highest activity,” para. 90).
Modified Jang does not teach the substrate is a titanium mesh, but rather carbon paper (CP).
However, Motoshige teaches an electrolysis cell comprising an MEA (para. 51 and Fig. 3), wherein the MEA comprises an anion exchange membrane (“an anion exchange membrane was installed between the anode and the cathode,” para. 63, see also para. 45), and the anode comprises nickel deposited on a titanium mesh substrate (“The anode in Example 1 was produced as follows … the titanium mesh substrate was immersed in an aqueous solution (0.1 M) containing a nickel sulfate hexahydrate (NiSO4.6H2O)” para. 58).
As Motoshige teaches an electrolytic cell separated by an MEA comprising an anion exchange membrane, Motoshige is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the anode of Jang, such that that support for the nickel catalyst comprises a titanium mesh, as taught by Motoshige, rather than carbon paper. A person having ordinary skill in the art would have been motivated to make this modification because Motoshige teaches a titanium mesh is suitable as a substrate for a nickel catalyst in the anode of an anion exchange membrane MEA. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of King and Li, as applied to claim 1 above, and further in view of Arges (US Pat. Pub. 2015/0349368 A1).
Regarding claim 22, modified Jang renders the limitations of claim 1 obvious, as described above.
Modified Jang does not teach the anion exchange membrane is formed of a polymer having a ligand portion and a skeleton portion chemically bonded to the ligand portion, the ligand portion including at least one functional group selected from the group consisting of an imidazolium group, a pyridinium group and a phosphonium group, or a salt.
Jang is silent as to the particular polymer used to form the anion exchange membrane.
However, Arges teaches that polymers comprising a ligand portion and a skeleton portion chemically bonded to the ligand portion, the ligand portion including at least one functional group selected from the group consisting of an imidazolium group, a pyridinium group and a phosphonium group, or a salt are suitable as the anion exchange material used to form the AEM in an MEA (“TABLE 1, below, identifies different … anion exchange polymer electrolyte ( e.g., alkaline polymer electrolyte) membrane and backing layer materials, respectively, useable in reversible alkaline membrane hydrogen fuel-water electrolyzers” para. 37, Table 1, and Figs. 1-2).
As Arges teaches AEM MEAs, Arges is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the AEM of Jang, such that it comprises a polymer comprising a ligand portion and a skeleton portion chemically bonded to the ligand portion, the ligand portion including at least one functional group selected from the group consisting of an imidazolium group, a pyridinium group and a phosphonium group, or a salt, as taught by Arges. A person having ordinary skill in the art would have been motivated to make this modification because Arges teaches these classes of polymers are suitable for forming the AEM of an MEA. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jang (US Pat. Pub. 2017/0051419 A1) in view of King et al. (“Hydrogen production via urea electrolysis using a gel electrolyte” Journal of Power Sources 196 (2011) 2773–2778), Li et al. (“Electrocatalytic Hydrogen Production Trilogy” Angew. Chem. Int. Ed. 2021, 60, 19550–19571), Motoshige (US Pat. Pub. 2020/0002827 A1), and Beachy (US Pat. Pub. 2021/0036352 A1).
Regarding claim 14, the term “Ketjen black” has been interpreted as “carbon black”.
Jang teaches a hydrogen producing device (e.g., abstract) comprising:
an electrochemical cell (“anion exchange membrane water electrolyzer (cell)” para. 74 and Fig. 5) including an electrode assembly (“a membrane electrode assembly” para. 71) and an electrolyte solution (“1.0M KOH as electrolyte.” para. 89), wherein the electrode assembly has a cathode, a separator and an anode that are sequentially stacked with each other (“a schematic view illustrating an anion exchange membrane water electrolyzer” para. 93 and Fig. 5),
the electrolyte solution is an alkaline aqueous solution (“1.0M KOH as electrolyte.” para. 89 and “in alkaline solution” para. 90),
the separator is an ion exchange membrane that is an anion exchange membrane (“an anion exchange membrane water electrolyzer.” para. 93 and Fig. 5), and
a container in which the cathode, the anion exchange membrane and the anode are integrally formed with each other such that an inner space of the container is divided into an anode chamber and a cathode chamber by the anion exchange membrane, wherein the electrolyte solution is filled in the anode chamber to be in direct contact with the anode, and filled in the cathode chamber to be in direct contact with the cathode to produce hydrogen in the cathode chamber (see Fig. 5);
the anion exchange membrane partitions the anode chamber from the cathode chamber such that the hydrogen generated at the cathode and the oxygen generated at the anode are collected separately in the respective cathode chamber and anode chamber (see Fig. 5), and the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by said ammonium ions (see below);
wherein the anode comprises Ni deposited on a substrate (“In the case of oxygen evolution reaction, the Ni/CP electrode shows the highest activity,” para. 90), and the cathode comprises a mixture of carbon and Pt (“enhanced hydrogen evolution activity of Pt-Ni/CP-2 …)” para. 90 and “Carbon paper (TGPH-090, Toray) consisting of carbon fibers” para. 80).
Regarding the limitation “the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by the ammonium ions”, anion exchange membranes by definition inhibit the exchange of cations e.g., ammonium ions. Therefore, as the ion exchange membrane of Jang is an anion exchange membrane, it will necessarily inhibit the ion exchange of ammonium ions, thereby necessarily also inhibiting an increase in the electrical resistance of the membrane that would be caused by the transfer of ammonium cations (MPEP § 2112).
Jang does not teach the alkaline aqueous solution comprises urea.
However, King teaches that the addition of urea to the anolyte of a water electrolysis cell results in a reduced potential for the production of hydrogen by the cathode (see Fig. 6). This benefit was well recognized in the prior art before the effective filing date of the instant invention, as demonstrated by e.g., Li (see § 3.1. titled “Urea-Assisted Electrocatalytic Hydrogen Production”).
As Jang teaches an electrolysis cell comprising an anion exchange membrane, Jang is analogous art to the instant invention. As King and Li each teach electrolytic systems for urea oxidation, King and Li are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Jang, such that the alkaline aqueous solution comprises urea, as taught by King. A person having ordinary skill in the art would have had a strong motivation to make this modification because it predictably reduces the voltage required for the production of hydrogen, as taught by e.g., King and Li. Furthermore, combining prior art elements (i.e., adding the urea of King to the alkaline aqueous solution of Jang) according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea”, “the ammonia generated at the anode”, and “the ammonium ions derived from the urea”, these limitations are drawn to an intended use/function of the system. I.e., they limit the system by how it is used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a function or intended use is an apparatus capable of performing the recited function or intended use (MPEP § 2114).
In the instant case, the instant specification indicates that an electrochemical cell divided by an MEA comprising an AEM and comprising an alkaline electrolyte comprising urea in contact with the anode of the MEA is capable of producing ammonia by oxidizing said urea, while inhibiting an increase in electrical resistance caused by the ammonium ions derived from the urea.
Therefore, as modified Jang teaches each of these structural limitations, modified Jang is capable of performing these functions. Therefore, modified Jang renders the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea”, “the ammonia generated at the anode”, and “the ammonium ions derived from the urea” obvious.
Modified Jang does not teach the pH of the electrolyte solution at 25 °C is from 8 to 12.
However, Beachy teaches that a pH greater than 7 (para. 45, see also para. 114), a range encompassing the claimed range, is suitable as the pH of the electrolyte used in a water electrolyzer comprising an AEM MEA (e.g., para. 43).
As Beachy teaches an AEM MEA, Beachy is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Jang, such that the pH of the electrolyte solution is greater than 7 at 25 °C, a range encompassing the claimed range, as taught by Beachy. A person having ordinary skill in the art would have been motivated to make this modification because Beachy teaches a pH greater than 7 is suitable for the aqueous electrolyte of an AEM MEA. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). A range in the prior art encompassing a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Modified Jang does not teach the substrate the Ni is deposited on is a titanium mesh, but rather carbon paper (CP).
However, Motoshige teaches an electrolysis cell comprising an MEA (para. 51 and Fig. 3), wherein the MEA comprises an anion exchange membrane (“an anion exchange membrane was installed between the anode and the cathode,” para. 63, see also para. 45), and the anode comprises nickel deposited on a titanium mesh substrate (“The anode in Example 1 was produced as follows … the titanium mesh substrate was immersed in an aqueous solution (0.1 M) containing a nickel sulfate hexahydrate (NiSO4.6H2O)” para. 58).
As Motoshige teaches an electrolytic cell separated by an MEA comprising an anion exchange membrane, Motoshige is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the anode of Jang, such that the support for the nickel catalyst comprises a titanium mesh, as taught by Motoshige, rather than carbon paper. A person having ordinary skill in the art would have been motivated to make this modification because Motoshige teaches a titanium mesh is suitable as a substrate for a nickel catalyst in the anode of an anion exchange membrane MEA. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Modified Jang does not teach the carbon material mixed with the Pt is carbon black, but rather carbon fibers.
However, Motoshige further teaches carbon black is suitable as the carbon material mixed with Pt for the cathode of an AEM MEA (para. 31).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Jang, such that the carbon material used in the cathode is carbon black rather than or in addition to carbon fibers, as taught by Motoshige. A person having ordinary skill in the art would have been motivated to make this modification because Motoshige teaches carbon black is a suitable carbon additive for the cathode of an MEA AEM using a Pt catalyst. Combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)). Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jang (US Pat. Pub. 2017/0051419 A1) in view of King et al. (“Hydrogen production via urea electrolysis using a gel electrolyte” Journal of Power Sources 196 (2011) 2773–2778), Li et al. (“Electrocatalytic Hydrogen Production Trilogy” Angew. Chem. Int. Ed. 2021, 60, 19550–19571) and Motoshige (US Pat. Pub. 2020/0002827 A1).
Regarding claim 15, Jang teaches a hydrogen producing device (e.g., abstract) comprising:
an electrochemical cell (“anion exchange membrane water electrolyzer (cell)” para. 74 and Fig. 5) including an electrode assembly (“a membrane electrode assembly” para. 71) and an electrolyte solution (“1.0M KOH as electrolyte.” para. 89), wherein the electrode assembly has a cathode, a separator and an anode that are sequentially stacked with each other (“a schematic view illustrating an anion exchange membrane water electrolyzer” para. 93 and Fig. 5),
the electrolyte solution is an alkaline aqueous solution (“1.0M KOH as electrolyte.” para. 89 and “in alkaline solution” para. 90),
the separator is an ion exchange membrane that is an anion exchange membrane (“an anion exchange membrane water electrolyzer.” para. 93 and Fig. 5), and
the anode is an electrode composed of Ni deposited on a substrate (“In the case of oxygen evolution reaction, the Ni/CP electrode shows the highest activity,” para. 90),
a container in which the cathode, the anion exchange membrane and the anode are integrally formed with each other such that an inner space of the container is divided into an anode chamber and a cathode chamber by the anion exchange membrane, wherein the electrolyte solution is filled in the anode chamber to be in direct contact with the anode, and filled in the cathode chamber to be in direct contact with the cathode to produce hydrogen in the cathode chamber (see Fig. 5);
the electrode assembly is configured to collect the hydrogen generated at the cathode and oxygen generated at the anode separately from each other due to the anion exchange membrane partitioning the anode and the cathode from each other (see Fig. 5), and
the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by said ammonium ions (see below).
Regarding the limitation “the anion exchange membrane is configured to inhibit ion exchange and trapping of ammonium ions present in the alkaline aqueous solution into the anion exchange membrane thereby inhibiting an increase in electrical resistance of the anion exchange membrane during electrolysis, the increase in electrical resistance being caused by the ammonium ions”, anion exchange membranes by definition inhibit the exchange of cations e.g., ammonium ions. Therefore, as the ion exchange membrane of Jang is an anion exchange membrane, it will necessarily inhibit the ion exchange of ammonium ions, thereby necessarily also inhibiting an increase in the electrical resistance of the membrane that would be caused by the transfer of ammonium cations (MPEP § 2112).
Jang does not teach the alkaline aqueous solution comprises urea.
However, King teaches that the addition of urea to the anolyte of a water electrolysis cell results in a reduced potential for the production of hydrogen by the cathode (see Fig. 6). This benefit was well recognized in the prior art before the effective filing date of the instant invention, as demonstrated by e.g., Li (see § 3.1. titled “Urea-Assisted Electrocatalytic Hydrogen Production”).
As Jang teaches an electrolysis cell comprising an anion exchange membrane, Jang is analogous art to the instant invention. As King and Li each teach electrolytic systems for urea oxidation, King and Li are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Jang, such that the alkaline aqueous solution comprises urea, as taught by King. A person having ordinary skill in the art would have had a strong motivation to make this modification because it predictably reduces the voltage required for the production of hydrogen, as taught by e.g., King and Li. Furthermore, combining prior art elements (i.e., adding the urea of King to the alkaline aqueous solution of Jang) according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea”, “the ammonia generated at the anode”, and “the ammonium ions derived from the urea”, these limitations are drawn to an intended use/function of the system. I.e., they limit the system by how it is used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a function or intended use is an apparatus capable of performing the recited function or intended use (MPEP § 2114).
In the instant case, the instant specification indicates that an electrochemical cell divided by an MEA comprising and AEM and comprising an alkaline electrolyte comprising urea in contact with the anode of the MEA is capable of producing ammonia by oxidizing said urea, while inhibiting an increase in electrical resistance caused by ammonium ions derived from the urea.
Therefore, as modified Jang teaches each of these structural limitations, Jang is capable of performing these functions. Therefore, modified Jang renders the limitations “a hydrogen ammonia producing device”, “to produce ammonia in the anode chamber by oxidizing the urea”, “the ammonia generated at the anode”, and “the ammonium ions derived from the urea” obvious.
Modified Jang does not teach the substrate the Ni is deposited on is a titanium mesh, but rather carbon paper (CP).
However, Motoshige teaches an electrolysis cell comprising an MEA (para. 51 and Fig. 3), wherein the MEA comprises an anion exchange membrane (“an anion exchange membrane was installed between the anode and the cathode,” para. 63, see also para. 45), and the anode comprises nickel deposited on a titanium mesh substrate (“The anode in Example 1 was produced as follows … the titanium mesh substrate was immersed in an aqueous solution (0.1 M) containing a nickel sulfate hexahydrate (NiSO4.6H2O)” para. 58).
As Motoshige teaches an electrolytic cell separated by an MEA comprising an anion exchange membrane, Motoshige is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the anode of Jang, such that that support for the nickel catalyst comprises a titanium mesh, as taught by Motoshige, rather than carbon paper. A person having ordinary skill in the art would have been motivated to make this modification because Motoshige teaches a titanium mesh is suitable as a substrate for a nickel catalyst in the anode of an anion exchange membrane MEA. Simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tampucci (US Pat. Pub. 2012/0103829 A1) in view of King et al. (“Hydrogen production via urea electrolysis using a gel electrolyte” Journal of Power Sources 196 (2011) 2773–2778) and Li et al. (“Electrocatalytic Hydrogen Production Trilogy” Angew. Chem. Int. Ed. 2021, 60, 19550–19571).
Regarding claim 16, Tampucci teaches a hydrogen producing device (abstract), comprising:
an electrochemical cell (“an electrolytic device” para. 11) including an electrode assembly (“a membrane-electrode assembly (MEA) (2)” para. 12 and Fig. 1) and an electrolyte solution (“an aqueous alkaline solution” para. 11), wherein the electrode assembly has a cathode, a separator and an anode that are sequentially stacked with each other (“two half-cells, anodic (4) and cathodic (1), separated by an anion exchange membrane (AEM)” para. 12 and Fig. 1),
the separator is an ion exchange membrane that is an anion exchange membrane (“an anion exchange membrane (AEM)” para. 12),
a container in which the cathode, the anion exchange membrane and the anode are integrally formed with each other such that an inner space of the container is divided into an anode chamber and a cathode chamber by the anion exchange membrane (see Fig. 1), and
one of the anode and the cathode is in contact with the electrolyte solution and the other of the anode or the cathode is exposed to a dry environment (“the alkaline solution is present only in the anodic half-cell (4).” para. 13 and Fig. 1).
Tampucci does not teach the alkaline aqueous solution comprises urea.
However, King teaches that the addition of urea to the anolyte of a water electrolysis cell results in a reduced potential for the production of hydrogen by the cathode (see Fig. 6). This benefit was well recognized in the prior art before the effective filing date of the instant invention, as demonstrated by e.g., Li (see § 3.1. titled “Urea-Assisted Electrocatalytic Hydrogen Production”).
As Tampucci teaches an electrolysis cell comprising an anion exchange membrane, Tampucci is analogous art to the instant invention. As King and Li each teach electrolytic systems for urea oxidation, King and Li are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Tampucci, such that the alkaline aqueous solution comprises urea, as taught by King. A person having ordinary skill in the art would have had a strong motivation to make this modification because it predictably reduces the voltage required for the production of hydrogen, as taught by e.g., King and Li. Furthermore, combining prior art elements (i.e., adding the urea of King to the alkaline aqueous solution of Jang) according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 17, the limitation “wherein the cathode is in contact with the electrolyte solution and the anode is exposed to a dry environment”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. Specifically, it limits the side of the MEA exposed to the dry environment as the side to which a positive potential is intended to be applied, and the side of the MEA exposed to the aqueous solution is the side to which a negative potential is intended to be applied. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Tampucci teaches that both electrodes are conductive (paras. 22-23). It is therefore considered that the side of the MEA exposed to the dry environment in Tampucci is capable of having a positive potential applied thereto, and the side of the MEA exposed to the aqueous solution is capable of having a negative potential applied thereto.
Tampucci therefore reads on the limitation “wherein the cathode is in contact with the electrolyte solution and the anode is exposed to a dry environment”.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Tampucci in view of King and Li, as applied to claim 16 above, and further in view of Ma (US Pat. Pub. 2020/0220185 A1).
Regarding claim 28, modified Tampucci renders the limitations of claim 16 obvious, as described above.
Tampucci further teaches the anode is in contact with the electrolyte solution and the cathode is exposed to a dry environment (“the alkaline solution is present only in the anodic half-cell (4).” para. 13 and Fig. 1),
the electrolyte solution is filled in the anode chamber to be in direct contact with the anode to produce oxygen captured in the anode chamber (“the alkaline solution is present only in the anodic half-cell (4).” para. 13 and Fig. 1), and
the cathode chamber is in a dry environment to generate and collect hydrogen generated at the cathode (“the alkaline solution is present only in the anodic half-cell (4).” para. 13 and Fig. 1 and “Said device can operate discontinuously and provide directly dry pressurized hydrogen, with high purity” para. 14).
Modified Tampucci does not teach the cathode chamber is configured to introduce an inert gas from outside such that the generated hydrogen is collected from the dry environment at the cathode, so as to prevent the generated hydrogen gas from covering a surface of the cathode and inhibiting the reaction.
However, Ma teaches a method for operating an AEM MEA (“An AEM-only MEA” para. 141 and Fig. 5), wherein an inert gas is used to introduced to the cathode chamber to prevent produced reduction products from covering the surface of the cathode and inhibiting the reaction (“Another component that may be disposed on the flow path is a purge gas inlet coupled to a purge gas source 117. In certain embodiments, purge gas source 117 is configured to provide purge gas during periods when current is paused to the cell(s) of reduction reactor 103. In some implementations, flowing a purge gas over an MEA cathode facilitates recovery of catalyst activity and/or selectivity. This may be due, at least in part, to flushing certain reaction intermediates off catalyst active sites and/or remove water from the cathode. Examples of purge gases include carbon dioxide, carbon monoxide, hydrogen, nitrogen, argon, helium, oxygen, and mixtures of any two or more of these.” para. 81 and Fig. 1D).
As Ma teaches an AEM MEA, Ma is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Tampucci by configuring the cathode chamber to introduce an inert gas from outside such that the generated hydrogen is collected from the dry environment at the cathode, so as to prevent the generated hydrogen gas from covering a surface of the cathode and inhibiting the reaction, as taught by Ma. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of preventing the produced hydrogen from inhibiting the reaction, as taught by Ma. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Allowable Subject Matter
Claims 24-27 are allowed.
Furthermore, claim 21 is 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:
Regarding claim 21, the prior art of record, alone or in combination, does not reasonably teach or render obvious the cumulative limitations of claim 21, with a particular emphasis on the limitations “the electrolyte solution is filled in the anode chamber to be in direct contact with the anode, and the cathode in the container is exposed to a dry environment”, “a first tube inserted into the electrolyte solution”, and “a second tube inserted into the cathode chamber and fluidly connected to a second gas outlet defined in an upper part of the cathode chamber in the vertical direction, in order to send out hydrogen generated at the cathode, wherein the second tube has a length extended to a depth between an upper end and a lower end of the cathode in the vertical direction”.
The closest prior art is considered to be Tampucci (US Pat. Pub. 2012/0103829 A1), Beachy (US Pat. Pub. 2021/0036352 A1), and Ma (US Pat. Pub. 2020/0220185 A1).
The teachings of Tampucci are detailed above. Tampucci does not teach “a first tube inserted into the electrolyte solution” or “a second tube inserted into the cathode chamber” (see Fig. 1).
Beachy teaches an AEM MEA for water oxidation (abstract), wherein the cathode is exposed to a dry environment (“Example 8 – Flooded Oxygen Electrode Electrolysis” paras. 103-108). However, the system of Beachy uses flow fields for the anolyte and dry cathode (see Figs. 2A-B), and therefore cannot reasonably be considered to teach “a tube” inserted into either the anode or cathode chambers.
Ma teaches an AEM MEA (described above), but also uses flow fields to introduce and remove materials from the anode and cathode chambers (e.g., para. 283), and therefore cannot reasonably be considered to teach tubes as claimed.
It is therefore considered that the prior art of record does not reasonably teach or render obvious the cumulative limitations of claim 21. Claim 21 would therefore be allowable if amended in independent form including all limitations of the base claim.
Regarding claim 24, the prior art of record, alone or in combination, does not reasonably teach or render obvious the cumulative limitations of claim 24, with a particular emphasis on the limitation “solid urea arranged in the anode chamber”.
The closest prior art is considered to be Botte ‘909 (US Pat. Pub. 2011/0302909 A1), King et al. (“Hydrogen production via urea electrolysis using a gel electrolyte” Journal of Power Sources 196 (2011) 2773–2778), and Li et al. (“Electrocatalytic Hydrogen Production Trilogy” Angew. Chem. Int. Ed. 2021, 60, 19550–19571).
The teachings of King and Li are described above. Neither Kin nor Li suggests using solid urea in the anode chamber, but only aqueous solutions thereof.
Botte ‘909 teaches a system for urea oxidation to ammonia (abstract) comprising a membrane electrode assembly (see Fig. 7), wherein solid urea is used in the anode chamber (“a supply of solid urea in a urea cartridge 120” para. 53 and Fig. 9). However, the system of Botte ‘909 dissolves the urea in an aqueous solution prior to introduction to the anode chamber (“urea may be transferred from the cartridge 120 via supply line 122 and mixed with water in a rotary mixing valve 12 prior to being added to the electrolytic cell 130” Id.). I.e., the anode chamber does not comprise dry solid urea.
No prior art reference reasonably suggesting the use of dry, solid urea in the anode chamber of an AEM MEA could be identified. It is therefore considered that the cumulative limitations of claim 24 are patentably distinguished over the prior art.
Claim 24 is therefore allowed.
Regarding claims 25-27, claims 25-27 depend from claim 24, and therefore incorporate the allowable subject matter of claim 24.
Claims 25-27 are therefore allowable for at least the same reasons enumerated for claim 24 above.
Response to Arguments
Applicant’s arguments, see Remarks p. 11-12, filed 08/17/2026, with respect to the rejection of claims 12 and 18 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 12 and 18 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 12-18, filed 08/17/2026, with respect to the rejections under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. The rejections under 35 U.S.C. § 102(a)(1) have been withdrawn.
Applicant's arguments, see Remarks p. 18-22, filed 08/17/2026, regarding the rejections under 35 U.S.C. § 103 have been considered and are persuasive in part. Therefore, the rejections under 35 U.S.C. § 103 have been withdrawn.
The new grounds of rejection necessitated by Applicant’s amendments are considered to render many of Applicant’s arguments moot. Those arguments still considered applicable to the new grounds of rejection are addressed below.
Applicant’s Argument #1
Applicant argues on p. 20 that the system of Tampucci cannot reasonably be modified to read on the limitations of claim 16 by adding urea.
Specifically, Applicant argues that adding urea to the anolyte of Tampucci would change the products produced by the electrochemical cell i.e., such that ammonia is produced, and there is no reason a person having ordinary skill in the art would have been motivated to generate ammonia using the system of Tampucci.
Examiner’s Response #1
Examiner respectfully disagrees. While Applicant frames the issue as whether or not a person having ordinary skill in the art would have been motivated to add urea to the anolyte of Tampucci in order to generate ammonia, this framing is inaccurate. Rather, the issue is whether a person having ordinary skill in the art would have had a reason to modify the system of Tampucci by adding urea to the anolyte for any art recognized reason (MPEP § 2144(IV)).
In the instant case, it was well known before the effective filing date of the instant invention that the addition of urea as a sacrificial oxidant to the anolyte of a water electrolyzer reduces the potential (or, equivalently, increases the current) for hydrogen production (see e.g., Lin § 3.1.). Therefore, it is considered that a person having ordinary skill in the art would have had a strong motivation to make this modification (MPEP § 2144(II)).
Such a modification of Tampucci reads on each of the structural components recited in claim 16. Therefore, as claim 16 is an apparatus claim, the prior art renders claim 16 obvious.
Applicant’s argument is thus not persuasive.
Applicant’s Argument #2
Applicant argues on p. 20 that, as Tampucci teaches the cathode is dry and the anode is in contact with the electrolyte, Tampucci cannot read on the limitation “the cathode is in contact with the electrolyte solution and the anode is exposed to a dry environment” in claim 17.
Examiner’s Response #2
Examiner respectfully disagrees. At issue is the broadest reasonable interpretation of the terms “cathode” and “anode”.
Claim 17 is drawn to an apparatus. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a function is a system capable of performing that function (MPEP § 2114).
In the instant case, the terms “cathode” and “anode” refer to electrodes to which a negative or positive bias is applied, respectively. I.e., a cathode is an electrode to which a negative bias is applied during operation, and an anode is an electrode to which a positive bias is applied during operation.
While Tampucci teaches the electrode in contact with the aqueous solution is intended to be used as the anode and the dry electrode is intended to be used as the cathode, there does not appear to be any structural reason that the applied bias could not be applied in the opposite direction, and Applicant has not provided any argument or evidence as to why this would not be possible.
Therefore, the structure of Tampucci is considered to read on the limitation “the cathode is in contact with the electrolyte solution and the anode is exposed to a dry environment”.
Applicant’s argument is therefore not persuasive.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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