DETAILED ACTION
This action is filed in response to the Request for Continued Examination filed on 2/04/2026.
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timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR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 2/04/2026 has been entered.
Response to Arguments
Applicant's arguments regarding the 35 USC 101 rejection, filed on 2/04/2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 101 rejections, Applicant argues that Claim 1 is eligible because it is analogous to Example 25 of the USPTO 101 Examples from July 2015. However Applicant fails to enumerate specific rationales under the 2-prong analysis that render Claim 1 allowable. Example 25 from the USPTO 101 guidance discloses a method of manufacturing rubber that includes specific implementations of the abstract ideas found including initiating a timer and opening a press after a specific event. Conversely, Claim 1 of the instant application, as amended, discloses determining different values based on the minimization of a function, and then applying those values. Examiner notes there are no specific applications that ground the abstract mathematical ideas and mental processes into a practical application.
Applicant further argues Examiner does not properly consider limitation d) in the 101 analysis. Examiner notes limitation d) is mere instructions to “apply it.” See MPEP 2106.05(f) “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it.’”
Furthermore Applicant argues is distinguishable from Example 24 of the Guidance but does not explain further. Examiner finds that both Example 24 and Claim 1 of the instant application do not contain significantly more than the abstract ideas because “Determining the value of an unspecified process variable is mere data gathering and the claimed adjusting the alarm limit to an updated limit is mere post‐solution activity that could be attached to almost any formula. By failing to explain how the process variable is selected, integrate the formula into any specified chemical processes at work in the catalytic conversion, or specify the means of setting off an alarm or adjusting the alarm limit, the claim fails to improve the recited technological field. The steps merely calculate a result using a novel equation and do not add any meaningful limits on use of the equation” (July 2015 USPTO 101 Guidance, pg. 53 Example 24).
Therefore the 101 Rejections are maintained.
Applicant's arguments regarding the 35 USC 102 and 103 rejections, filed on 2/04/2026 have been fully considered but they are not persuasive. In light of the amendments new grounds of rejection are set forth below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 4-7 and 9-14 are rejected under 35 U.S.C. 101. The claimed invention is directed to the abstract concept of performing mental steps without significantly more. Claim 1 recites the following abstract concepts in BOLD of:
A method for obtaining a product by electrolysis, comprising: a) determining and utilizing a set point for a production output by minimizing a first mathematical function, which depends on the production output and on a predicted product demand, wherein market trends and behavior predictive models are used to predict fluctuations in the product demand thereby optimizing the supply chains and schedule of production,
b) determining and utilizing respective set points for multiple process parameters by minimizing a second mathematical function, which depends on the set point for the production output determined in a), on the process parameters and on predicted degradation effects, thereby realizing the desired production output,
c) determining and utilizing respective set points for changes of multiple control parameters by minimizing a third mathematical function, which depends on the set points for the process parameters determined in b) and on the changes of the control parameters, thereby determining how the desired process parameters can be brought to the respective set points, and
d) obtaining the product by performing the electrolysis using the set points for the changes of the control parameters determined in c) wherein in a) a production schedule is determined the second mathematical function depends on an actual production output provided in terms of the process parameters; and a) to d) are performed periodically.
Under Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: process, machine, manufacture, or composition of matter. The above claim is considered to be in a statutory category as Claim 1 teaches a method.
Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers performing mathematics or mental steps. The steps of determining set points can be interpreted as a mental process that can be performed in the human mind, while the steps of basing those determinations off of mathematical functions can be interpreted as performing mathematics.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because there is no improvement to another technology or technical field; improvements to the functioning of the computer itself; a particular machine; effecting a transformation or reduction of a particular article to a different state or thing. Examiner notes that since the claimed methods and system are not tied to a particular machine or apparatus, they do not represent an improvement to another technology or technical field. Similarly there are no other meaningful limitations linking the use to a particular technological environment. Finally, there is nothing in the claims that indicates an improvement to the functioning of the computer itself or transform a particular article to a new state.
Under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
The last limitation of step a) discloses types of data gathered for predicting market fluctuations which recites necessary data gathering and does not integrate the abstract idea into a practical application. The limitation amounts to necessary data gathering and outputting. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because step d) of Claim 1 recites obtaining the product by performing electrolysis which amounts to mere instructions to apply the abstract idea to a generic computer process. Additionally “utilizing” the set points that are determined also amounts to mere instructions to apply the abstract idea. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art") (see MPEP 2106.05(f)).
The last limitation of step d) teaches a production schedule and performing steps periodically which is extra solution activity that does not integrate abstract ideas. The limitation also teaches the second mathematical function being dependent on an output which The last limitation of step a) discloses types of data gathered for predicting market fluctuations which recites necessary data gathering and does not integrate the abstract idea into a practical application. The limitation amounts to necessary data gathering and outputting. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
Additionally, the last limitation in steps a), b), and c) all teach obtaining an optimized and desired output which does not integrate the judicial exceptions into a practical application, while step d) merely teaches applying the abstract idea to obtain a result. See MPEP 2106.05(f), “(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.”
Claims 4-7 and 9-14 further limit the abstract ideas without integrating the abstract concept into a practical application or including additional limitations that can be considered significantly more than the abstract idea:
Claims 7, and 12 further limit the abstract idea determining set points.
Claims 4, 5 and 9-10 further define the data gathered and limitations amounting to necessary data gathering and outputting do not integrate the abstract idea into a practical application. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
Claims 6 and 11 further limit the abstract idea of performing mathematics in an effort to make set point determinations.
Claims 13-14 recite generic computer elements and are not considered significantly more than the abstract idea. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
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.
Claims 1, 4-6, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Doland (US20080127646A1) in view of Cai, Q. et al., Optimal control strategies for hydrogen production when coupling solid oxide electrolyzers with intermittent renewable energies, Journal of Power Sources, 268 (2014) 212- 224(hereinafter “Cai et al”) and in further view of Griffin (US20090152156 A1) .
Regarding Claim 1, Doland discloses a method for obtaining a product by electrolysis, comprising: a) determining and utilizing a set point for a production output by minimizing a first mathematical function (e.g. see [0035] “Using Such an algorithm to improve the overall performance of integrated hardware system provides for optimum systems performance and matches that performance to the demand and profit margins desired by operators and energy users” Examiner notes it would be obvious to one of ordinary skill in the art to interpret optimizing production to mean either minimizing or maximizing the mathematical function) which depends on the production output and on a predicted product demand, wherein market trends and behavior predictive models are used to predict fluctuations in the product demand, thereby optimizing the supply chains and schedule of production (e.g. see [0009] “As an example, we adjust some parameters to meet requirements for hydrogen demand, costs and available raw materials… For instance, if the tide is coming in for a wave energy plant, so water is available and electricity is plentiful, then while the income for the produced hydrogen is high, the cell current will be raised even though there may be higher IR losses. In contrast, low water and electric availability, combined with low market price for hydrogen, may call for operating the cells at lower current densities or reducing the number of cells operating to produce the hydrogen product (examiner notes the changing price in response to the availability of water constitutes a market trend),” and [0010] “The apparatus and method presented here is a dynamic, real time, system which adjusts or controls the generation of energy from renewable sources, the production of fuel and energy, the transmission of energy and the conversion of energy to the requirements of the hydrogen/fuel conversion equipment. Historical, current and predicted future data (i.e. a predictive model) is used to optimize the complete system”)
b) determining and utilizing respective set points for multiple process parameters by minimizing a second mathematical function, which depends on the set point for the production output determined in a), on the process parameters and on predicted degradation effects, thereby realizing the desired production output (e.g. see [0036] “The power controller conditions and regulates the electrical energy to maximize hydrogen 40 produced and to minimize the overall system losses. The renewable energy controller can include a mean s to adjust the voltage 71. It can also convert the AC power generated by the renewable electric generator to the DC power required by the electrolyzer cell using an AC/DC power converter 72. Then the DC electrical energy can be filtered to produce smooth DC power which is constantly adjusted by the DC controller 73 to meet the exact and optimal needs of the electrolyzers 30”),
c) determining and utilizing respective set points for changes of multiple control parameters by minimizing a third mathematical function, which depends on the set points for the process parameters determined in b) and on the changes of the control parameters, thereby determining how the desired process parameters can be brought to the respective set points (e.g. see [0038] “The integrated systems approach of this invention uses this existing DAS or SCADA to monitor the wind/weather conditions as well as the WTG operating conditions and make changes to the WTG's adjustable parameters through signal line 28. These parameters include but are not limited to turbine blade pitch, generator excitation, generator speed, frequency, etc. Likewise, supervisory control is used to monitor and control the electrolyzer's controller and power converter 31 through signal line 32. The system controller 20 monitors and controls such parameters as cell current density and hydrogen output and sends commands such as the voltage to apply to the electrolyzer cells, etc.”),
d) obtaining the product by performing the electrolysis using the set points for the changes of the control parameters determined in c) (e.g. see [0035] “the results of the algorithm adjust the components of the system to optimize power throughput and hydrogen production. The algorithm sends commands or supervisory signals 27 to adjust such parameters as generator frequency constraints, generator excitation voltage level, shutdown commands, etc. Using such an algorithm to improve the overall performance of integrated hardware system provides for optimum systems performance and matches that performance to the demand and profit margins desired by operators and energy users”).
Examiner notes Cai et al also teaches minimizing a first mathematical function (e.g. see [Section 2.3.1.1.2] “When the available electricity for hydrogen production is low, it is desirable to operate the SOEC system such that the electrical energy consumption is minimized to reduce operating cost…The objective function for minimizing the electrical energy consumption of the SOEC stack within a given time horizon is given in Table 4”).
It would have been obvious to one of ordinary skill in the art before the effective filling date to combine the function optimization of Doland with the express minimization of Cai et al for the purpose of performing electrolysis with the advantage of conforming the production to the market demands.
Doland does not explicitly teach wherein in a) a production schedule is determined; the second mathematical function depends on an actual production output provided in terms of the process parameters; and a) to d) are performed periodically.
In the same field of endeavor, Griffin teaches wherein in a) a production schedule is determined (e.g. see [0031] “Electrolysis takes place in the chemical bath 30, so that oxygen out-gasses at electrode 10 while hydrogen out-gasses at electrode 20. This gas production continues for a time period that extends beyond the time when the controller 100 relay switch 80 opens (disconnects from electrode 20) and closes relay 81 (not shown). The controlled process of timed opening and closing of relays according to a predetermined schedule is repeated sequentially for each electrode from 20 through 20n, and then the cycle repeats starting at electrode 20”); and
wherein a) to d) are performed periodically (e.g. see [0031] “The controlled process of timed opening and closing of relays according to a predetermined schedule is repeated sequentially for each electrode from 20 through 20n, and then the cycle repeats starting at electrode 20”).
It would have been obvious to one of ordinary skill in the art before the effective filling date to combine the method of Doland with the repetition of Griffin for the purpose of obtaining a product by electrolysis with the advantage of continuous monitoring to ensure product demand is met.
Also in the same field of endeavor, Cai et al teaches wherein the second mathematical function depends on an actual production output provided in terms of the process parameters (e.g. see [Table 4] and [Section 2.3.1.1.2] “The power consumed by the SOEC per unit time PSOEC is calculated as the product of the cell voltage and the average current density of the SOEC stack,” and [Section 2.3.2]).
It would have been obvious to one of ordinary skill in the art before the effective filling date to combine the second mathematical function embodiment of Doland with the dependencies of Cai et al for the purpose of obtaining a product with the advantage of using the experimentally obtained data to establish subsequent information.
Regarding Claim 4, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein in a) a supply chain is taken into account (e.g. see [0032] “On the electrolyzer side, the integrated system makes similar improvements in efficiency. The electrical energy 12 is used to supply energy to the fans, heaters and pumps as well as the energy converter for the cells. As stated previously, this electrical energy is one of several discrete levels such as 240 VAC or 480 VAC operating at 60 Hz”).
Regarding Claim 5, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein the first mathematical function further depends on a capacity of storage for the product (e.g. see [0045] “The hydrogen can be placed in storage 61 for use by all of the hydrogen users. This storage 61 is a method of storing renewable energy for use when it has a higher value or is needed in the future. The hydrogen can feed the electric generator 25 which in turn make electricity which is placed on the power grid… The process is managed by the system controller 20, which interacts with each component to produce the desired outputs most efficiently. It is this ability of this invention's integrated system of electric, hydrogen and fuels which make it an advantage over systems like Shaw application #2006/0010867, by allowing market price and demand to determine which energy products are produced”).
Regarding Claim 6, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein a) comprises using a first model configured for predicting a respective availability of multiple sources of electricity (e.g. see [0009] ; [0035] “Referring to the diagram, information about the wave energy available such as wave height and frequency are measured by instrumentation in the wave generator 13 and conveyed to the renewable power controller 20 via signal 24… Similar information from the electrolyzer instrumentation is conveyed down signal line 22. The information from these inputs is processed by an algorithm in the controller 20 and used to adjust electrolyzer 30 via signal line 22 and generator 13 via signal line 27”).
Regarding Claim 11, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein in c) for the process parameters respective dynamic responses to respective changes of the control parameters are calculated (e.g. see [0010] “The apparatus and method presented here is a dynamic, real time, system which adjusts or controls the generation of energy from renewable sources, the production of fuel and energy, the transmission of energy and the conversion of energy to the requirements of the hydrogen/fuel conversion equipment”).
Regarding Claim 12, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein the changes of the control parameters are determined in c) such that the process parameters are set to the respective set points (e.g. see [0033] and [0038]).
Regarding Claim 13, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses an electrolysis installation having at least one electrolysis stack (e.g. see Fig. 3 element 30) and a supply installation for supplying an electrolysis medium (e.g. see [Fig. 3 element 50] and electric energy to the at least one electrolysis stack (e.g. see [Fig. 3 element 51]),
a control unit configured for controlling the electrolysis installation so as to obtain a product by electrolysis (e.g. see [Fig. 1 element 20]).
Claims 7, 9-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Doland (US20080127646A1) in view of Cai, Q. et al., Optimal control strategies for hydrogen production when coupling solid oxide electrolyzers with intermittent renewable energies, Journal of Power Sources, 268 (2014) 212- 224(hereinafter “Cai et al”) and in further view of Griffin (US20090152156 A1) and Ono (US20200002823A1).
Regarding Claim 7, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland further discloses wherein b) comprises an interaction of - a second model configured for predicting operational information based on current and past measured operational information (e.g. see [0010] “Historical, current and predicted future data is used to optimize the complete system”).
Doland does not explicitly disclose a third model configured for describing physical effects of the electrolysis. In the same field of endeavor, Ono teaches a third model configured for describing physical effects of the electrolysis (e.g. see [0030] and [0060] “The data defining the operation states of the electrolysis cell 2 in may further contain data indicating a temperature the tank and data indicating a pressure in the tank of the compressor”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the electrolysis of Doland with the model of physical effects from Ono for the purpose of determining the correct output of product from the system with the advantage of incorporating additional data into that determination in order to maintain the proper operation of the system while also meeting product demands.
Regarding Claim 9, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland does not explicitly disclose wherein in b) safety boundary conditions are adhered to. In the same field of endeavor, Ono teaches wherein in b) safety boundary conditions are adhered to (e.g. see [0091] “The cell performance collected by the electrolytic regulator 502 is defined by parameters such as, for example, an upper limit value of a cell voltage when a constant current is made to flow through the electrolysis cell 2, a lower limit value of a cell current when a constant voltage is applied to the electrolysis cell 2”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the electrolysis of Doland with the boundary conditions from Ono for the purpose of determining the correct output of product from the system with the advantage of maintaining the proper operation of the system while also meeting product demands.
Regarding Claim 10, Doland, Cai et al, and Griffin teach the limitations of Claim 1. Doland does not explicitly disclose wherein in b) respective set points are determined at least for an operation temperature and an operation pressure as the process parameters. In the same field of endeavor, Ono teaches wherein in b) respective set points are determined at least for an operation temperature and an operation pressure as the process parameters (e.g. see [0060] “The data defining the operation states of the electrolysis cell 2 in may further contain data indicating a temperature the tank and data indicating a pressure in the tank of the compressor”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the electrolysis of Doland with the temperature and pressure conditions from Ono for the purpose of determining the correct output of product from the system with the advantage of maintaining the proper operation of the system while also meeting product demands.
Regarding Claim 14, Doland, Cai et al, Griffin, and Ono teach the limitations of Claim 13. Doland further discloses wherein the control unit is configured for frequently receiving information from the electrolysis installation and for frequently providing control signals to the electrolysis installation (e.g. see [0010], [0033] and [0035]).
Furthermore, in the same field of endeavor Ono teaches wherein the control unit is configured for frequently receiving information from the electrolysis installation and for frequently providing control signals to the electrolysis installation (e.g. see [0030] and [0090]).
It would have been obvious to one of ordinary skill in the art before the effective filling date to combine the control unit adjustments and measurements of Doland with that of Ono for the purpose of obtaining a product from electrolysis with the advantage of a continuous cycle as claimed in Doland to ensure demand is met.
Conclusion
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/NYLA GAVIA/
Examiner, Art Unit 2863 /Catherine T. Rastovski/Supervisory Primary Examiner, Art Unit 2857