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 arguments and amendments filed on 10/21/2025. Claim 1 is pending in the instant application. Claims 2-9 were cancelled by Applicant. Claim 1 was amended by Applicant.
Status of the Rejection
The objections to claim 1 are withdrawn in view of Applicant’s amendments.
The rejection of claim 1 under 35 U.S.C. § 102(a)(1) is withdrawn in view of Applicant’s amendments.
The rejection of claim 1 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments.
New rejections of claim 1 are necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement on the grounds of new matter. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 recites the limitation “the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water” in lines 12-13. Support for this limitation could not be identified in the specification as originally filed. Specifically, no reference to the electrolytic cell operating such that the clean water is electrolyzed in transit, such as a statement that the cell operates in a continuous rather than batch mode, could be identified in the specification, and Applicant did not particularly point out which portion of the specification is believed to provide support for this limitation. This limitation is therefore considered new matter not supported by the specification as originally filed.
Claim 1 is therefore rejected under 35 U.S.C. § 112(a) for failing to satisfy the written description requirement, on the grounds of incorporating new matter not supported in the specification as originally filed.
Claim 1 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 1, claim 1 recites the limitation “the clean water” in line 12. There is insufficient antecedent basis for this limitation in the claim. Specifically, while claim 1 recites “a clean water tank”, emphasis added, claim 1 does not recite “clean water” or “a clean water”. It is therefore unclear whether the limitation “the clean water” is intended to positively recite “clean water” as a component of the device, or whether the limitation is meant to refer to e.g., “water from the clean water tank”.
Furthermore, claim 1 recites the limitation "the skin of the human" in lines 20, 21, and 22. There is insufficient antecedent basis for this limitation in the claim. Specifically, while claim 1 recites “a skin” in line 6, it does not recite “a skin of a human” or “a human”. It is therefore unclear whether the limitation “the skin of the human” is intended to further limit the “a skin” to be human skin, or whether the limitation is intended to further limit the claim in some other way.
Claim 1 is therefore considered to be 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Karren (US Pat. Pub. 2019/0263691 A1) in view of Nakamura (US Pat. Pub. 2003/0062267 A1).
Regarding claim 1, Karren teaches a skin cleaning device, comprising:
a body (“vehicle 99” para. 148 and Fig. 1L),
the body is provided with a water storage tank (comprising “first electrolyte container 62” and “second electrolyte container 68” Fig. 1B-C and paras. 121-122 and “tank 46” para. 148 and Fig. 1L, see also para. 159),
the water storage tank comprises a clean water tank (“first electrolyte container 62” and “second electrolyte container 68” Fig. 1B-C and paras. 121-122) and a waste water tank (“holding tank 46” para. 158),
the body is provided with an electrolytic device (“electrolytic cells 12” para. 100 and Figs. 1A-G), wherein
a water inlet of the electrolytic device is connected with the clean water tank (para. 115 and Figs. 1B-C), and a water outlet of the electrolytic device is connected with a suction nozzle (“the electrolyzed alkaline solution is sprayed through a wand 100” para. 102 and Fig. 1A, and “wand 100 comprises … wand head 104 [i.e., a suction nozzle]” para. 185 and Fig. 2E, see also para. 201), wherein
the suction nozzle is configured for contacting with a skin (see below),
the suction nozzle is further connected with a pump body (“vacuum 44” Fig. 1A and para. 158), and
a water outlet end of the pump body is connected with the waste water tank (“vacuum 44 is then used to suck up the used fluid with any debris, with the recovered fluid and debris being sent to a holding tank 46,” para. 158 and Fig. 1A);
the electrolytic device is an electrolytic hydrogen production device (“electrolysis of Na2CO3 and NaHCO3 in the cell 12 produces … hydrogen gas (H2)” para. 171, see also equations between paras. 171 and 172 and Fig. 1C);
the electrolytic device comprises a shell (see e.g., Figs. 1A-G and 1L and paras. 103-104), and an electrolytic chamber is arranged in the shell (“cathode compartment 54” para. 101 and Figs. 1A-G), wherein
a water inlet end of the electrolytic chamber is connected with the clean water tank (Fig. 1C shows “cathode compartment 54” receives feed from the “second electrolyte container 68”, see also para. 122), and
a water outlet end of the electrolytic chamber is connected with the suction nozzle (“electrolyzed alkaline water … is released from the cathode compartment 54 into a container 40 to then be applied … via one or more dispensing tools 42 (e.g., wands,” para. 102 and Fig. 1A, and “jets 108” para. 201 and Fig. 2E), wherein
the water flowing through the electrolytic chamber from the clean water tank is electrolyzed in transit (“the fluid outlets 36 … allow fluid to be transferred from … the cathode compartment 54 to any suitable location. … including … to a dispensing tool 42,” para. 128, see also para. 299 and Fig. 1D, which indicate the cathode side of the cell adopts a flow through configuration) to generate hydrogen-rich water (see para. 171 and Fig. 1C);
an anode sheet and a cathode sheet are arranged in the electrolytic chamber, and the anode sheet and the cathode sheet are matched with each other (“the anode 14 and cathode 16 each comprise a plate that has a relatively large amount of surface are on which electrolytic reactions can take place” para. 106 and Fig. 1D, and Fig. 1D shows the electrodes have the same size and shape i.e., are matched with each other, see also para. 105);
a power interface (“power supply 51” Fig. 1A) of the anode sheet and the cathode sheet are located outside the shell (Figs. 1A and 1C show the anode 14 and cathode 16 connect to the power supply externally to the shell of the electrolytic cell);
the suction nozzle including a groove (opening in “shroud 106” para. 190 and Figs. 2E-G) surrounding a discharge opening (Fig. 2E shows the opening in “shroud 106” surrounds “jets 108”, see also para. 203), the groove is configured to contact the skin of a human (see below), the groove of the suction nozzle defines a sealing cavity (“the shroud 106 is configured to extend around a portion of the head 104 so as to extend around a spray, mist, curtain, and/or other effluent 107 of the jets 108 and to form a seal (or at least a partial seal) with a flooring surface (not shown) upon which the head rests.” para. 203 and Fig. 2E) with the skin of the human (see below), the sealing cavity confining the hydrogen rich water against the skin of the human (para. 203 and Fig. 2E, and see below), the sealing cavity being connected with the pump body through the suction nozzle (Fig. 1A shows the pump body i.e., “vaccum 44”, connects to the “vacuum tube 102”, which is shown in Fig. 2E to attach to the suction nozzle i.e., “wand head 104”, which in turn connects to the groove i.e., the opening in the “shroud 106”, see also Figs. 2A-D), the pump body drawing the hydrogen-rich water from the sealing cavity and directing it to the waste water tank (“the head 104 comprise a sealed loop (or at least partially sealed loop) system in which fluid sprayed from the jets within the shroud is allowed to contact the flooring being cleaned and to then be sucked up into the vacuum port in a relatively short period of time.” para. 203).
The limitation “wherein the suction nozzle is configured for contacting with a skin”, 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, Karren teaches that the fluid produced by the system can be “applied externally to an animal … to any suitable body part” (para. 291). It is therefore considered that the suction nozzle of Karren is capable of contacting a skin. Karren therefore reads on the limitation “wherein the suction nozzle is configured for contacting with a skin”.
The limitation “the groove is configured to contact the skin of a human” and 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, Karren teaches the vacuum port(s) 110 allow “head 104” i.e., the suction nozzle, to form a seal by contacting a surface (para. 203 and Fig. 2E), and further teaches the apparatus is capable of cleaning body parts (para. 291). It is therefore considered that the groove of the suction nozzle of Karren is capable of forming a sealing cavity by contacting the skin of a human. Karren therefore reads on the limitation “the groove is configured to contact the skin of a human”.
The limitations “the groove of the suction nozzle defines a sealing cavity with the skin of the human” and “the sealing cavity confining the hydrogen rich water against the skin of the human”, as currently drafted, are recitations of intended use i.e., they define the apparatus by how it is used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to an intended use is an apparatus capable of performing the recited use (MPEP § 2115).
In the instant case, Karren teaches one intended use of the apparatus is cleaning body parts (para. 291). It is therefore considered that the suction nozzle of Karren is capable of defining a sealing cavity with the skin of a human and the sealing cavity so formed is capable of confining the hydrogen rich water against the skin of the human. Karren therefore reads on the limitations “the groove of the suction nozzle defines a sealing cavity with the skin of the human” and “the sealing cavity confining the hydrogen rich water against the skin of the human”.
Karren does not explicitly teach the anode sheet and the cathode sheet are fixed in the electrolytic chamber by locking bolts and nuts, wherein the nuts are located outside the shell. Karren does not describe how the anode sheet and the cathode sheet are fixed in the electrolytic chamber.
However, Nakamura teaches a system for applying an electrolyzed water to a surface (title and abstract), wherein the system comprises an electrolytic device comprising a shell (comprising “electrode fastener-bottom (14)” and “electrode fastener-top (15)” para. 48 and Figs. 1 and 4) with an electrolytic chamber arranged in the shell (see Figs. 1 and 4) wherein the anode and cathode are fixed in the electrolytic chamber by locking bolts and nuts, wherein the nuts are located outside the shell (see Fig. 4).
As Karren and Nakamura each teach systems for applying electrolyzed water to surfaces, Karren and Nakamura 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 Karren, by fixing the anode sheet and cathode sheet using locking bolts and nuts, wherein the nuts are located outside the shell, as taught by Nakamura. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of fixing the anode and cathode in the electrolytic chamber, as taught by Nakamura. Combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Daiyikoskao (CN 109008741 A) in view of Nakamura (US Pat. Pub. 2003/0062267 A1) and Zhang (CN 209422681 U).
Regarding claim 1, Daiyikoskao teaches a skin cleaning device (title) comprising:
a body (comprising “front cover 3” and “back cover 9” para. 33 and Fig. 5),
the body is provided with a water storage tank (“sewage tank 24” para. 57 and Fig. 5),
the water storage tank comprises a waste water tank (“sewage tank 24” para. 57 and Fig. 5),
the body is provided with an electrolytic device (comprising “water tank 18” paras. 30 and 52, and see Figs. 3 and 5), wherein
a water outlet of the electrolytic device is connected with a suction nozzle (“atomizes the water in the water tank 18 and delivers it to the outlet of the suction nozzle 2” para. 41 and Fig. 5),
wherein the suction nozzle is configured for contacting with a skin (“suction nozzle 2 is in direct and close contact with human skin” para. 32),
the suction nozzle is further connected with a pump body (“vacuum pump 6” para. 55 and Fig. 5), and
a water outlet end of the pump body is connected with the waste water tank (“The sewage tank 24 is sealed and connected to the outlet of the vacuum pump 6.” para. 57 and Fig. 5);
the electrolytic device is an electrolytic hydrogen production device (“in the alkaline water tank where the cathode 14 is located gains electrons and turns into hydrogen,” para. 54);
the electrolytic device comprises a shell (comprising “water tank sealing cover 17” and “water tank 18” para. 29 and Fig. 3), and an electrolytic chamber is arranged in the shell (the interior of “water tank 18” see para. 48 and Fig. 3), and a water outlet end of the electrolytic chamber is connected with the suction nozzle (para. 41 and Fig. 5);
an anode (“anode 15” Fig. 3) and a cathode (“cathode 14” Fig. 3) are arranged in the electrolytic chamber (see Fig. 3), and the anode and cathode are matched with each other (Fig. 3 shows the anode and cathode have the same dimensions, and are thus matched with each other);
a power interface of the anode sheet and a power interface of the cathode sheet are located outside the shell (Fig. 5 shows “battery 8” is located outside of the “water tank 18”);
the suction nozzle including a groove surrounding a discharge opening (“the channel [i.e., groove] inside the suction nozzle 2 is divided into an incoming water channel 202 [a discharge opening] and a drainage channel 201 by a partition” para. 57 and see Fig. 5), the groove is configured to contact the skin of a human (“a vacuum can be formed on the skin surface near the suction nozzle 2” para. 57 and Fig. 5), the groove of the suction nozzle defines a sealing cavity with the skin of the human (“a vacuum can be formed on the skin surface near the suction nozzle 2” Id.), the sealing cavity confining the hydrogen-rich water against the skin of the human (Id.), the sealing cavity being connected with the pump body through the suction nozzle (“After the vacuum pump 6 draws a vacuum, a vacuum can be formed on the skin surface near the suction nozzle 2, and a vacuum can also be formed in the water tank 18,” Id.), the pump body drawing the hydrogen-rich water from the sealing cavity and directing it to the waste water tank (“forcing the water to flow along the water pipe 10, the water channel 202, the drainage channel 201, and the drainage pipe 25 into the sewage tank 24.” Id.).
Daiyikoskao does not teach the water storage tank comprises a clean water tank, wherein a water inlet end of the electrolytic chamber is connected with the clean water tank, and clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water.
However, Nakamura teaches a system for applying an electrolyzed water to a surface (title and abstract), wherein a clean water tank (“solution container 18” Fig. 1 and para. 23) is connected with a water inlet of the electrolytic device (“feed connection 19” Fig. 1 and para. 23, see also Fig. 2), and the water flowing from the clean water tank through the electrolytic chamber is electrolyzed in transit (“The electrolysis is controlled by the control board so that it is carried out while the valve is open and the solution is fed” para. 53, see also para. 70), which provides the predictable benefit of allowing the clean water supply to the system to be efficiently replaced (para. 50).
As Daiyikoskao teaches a system for applying electrolysis water to skin, Daiyikoskao is analogous art to the instant invention. As Nakamura teaches a portable system for applying electrolyzed water, Nakamura 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 Daiyikoskao by adding a clean water tank to the water storage tank, wherein a water inlet end of the electrolytic chamber is connected with the clean water tank and water flowing from the clean water tank through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water, as taught by Nakamura. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of efficiently replacing the water supply to the electrolytic device, as taught by Nakamura. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Modified Diyikoskao does not teach the anode and cathode are in the form of sheets.
However, Zhang teaches a system for generating hydrogen water (title and abstract) comprising an electrolytic device (para. 9), wherein the electrodes of the electrolytic device are in the form of matched sheets (“two electrode plates 7” para. 34 and see Figs. 2-3).
As Zhang teaches a system for generating hydrogen water via electrolysis, Zhang 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 Daiyikoskao, such that the anode and cathode are in the form of matched anode and cathode sheets, as taught by Zhang. A person having ordinary skill in the art would have been motivated to make this modification because Zhang teaches matched sheets are a suitable shape for electrodes in an electrolytic hydrogen water generating system. Simple substitution of one known element for another (i.e., using the sheet/plate electrodes of Zhang in place of the unspecified electrode shapes of Daiyikoskao) to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Modified Daiyikoskao does not teach the anode sheet and the cathode sheet are fixed in the electrolytic chamber by locking bolts and nuts, the nuts being located outside the shell.
However, Nakamura further the electrolytic device comprises a shell (comprising “electrode fastener-bottom (14)” and “electrode fastener-top (15)” para. 48 and Figs. 1 and 4) with an electrolytic chamber arranged in the shell (see Figs. 1 and 4) wherein the anode and cathode are fixed in the electrolytic chamber by locking bolts and nuts, wherein the nuts are located outside the shell (see Fig. 4).
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 Daiyikoskao, by fixing the anode sheet and cathode sheet using locking bolts and nuts, wherein the nuts are located outside the shell, as taught by Nakamura. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of fixing the anode and cathode in the electrolytic chamber, as taught by Nakamura. Simple substitution of one known element for another (i.e., using the locking bolt and nut electrode fixing arrangement of Nakamura in place of the electrode fixing arrangement of Daiyikoskao) to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Response to Arguments
Applicant’s arguments, see Remarks p. 3, filed 10/21/2025, with respect to the objections to claim 1 have been fully considered and are persuasive. The objections to claim 1 have been withdrawn.
Applicant’s arguments, see Remarks p. 4-7, filed 10/21/2025, with respect to the rejection of claim 1 under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. The rejection of claim 1 under 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant's arguments filed, see Remarks p. 4-7, filed 10/21/2025, with respect to the rejection of claim 1 under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 5 and 6 that Karren (p. 5) and Daiyikoskao (p. 6) do not teach clean water flows directly through the electrolytic chamber where it is electrolyzed in transit i.e., “instant hydrogen generation”, and that Karren and Daiyikoskao therefore do not anticipate or render obvious the limitations of claim 1. Specifically, Applicant argues because Karren and Daiyikoskao teach the electrolyzed solution is stored after formation, they do not teach the limitation “wherein the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water” as recited in amended claim 1.
Examiner’s Response #1
Examiner respectfully disagrees. During prosecution, claims are interpreted according to their broadest reasonable interpretation, which is their plain language interpretation unless said interpretation is inconsistent with the specification or 35 U.S.C. § 112(f) is invoked (MPEP § 2111).
In the instant case, while Applicant asserts the limitation “wherein the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water” precludes storage of the electrolyzed solution in a tank, this is not the case. Rather, this limitation is considered to require the apparatus to be capable of electrolyzing the fluid flowing from the clean water tank as it passes through the electrolytic chamber to generate hydrogen-rich water.
Karren teaches the electrolyzer is a flow-through electrolyzer i.e., it electrolyzes the fluid as it passes through the electrolytic chamber, and further teaches that this results in hydrogen-rich water (see rejection under 35 U.S.C. § 103, above). Karren thus clearly teaches the limitation “wherein the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water” as recited in amended claim 1.
While Daiyikoskao does indeed not teach this limitation, it is considered that a person having ordinary skill in the art would have found it obvious to modify the system of Daiyikoskao to be capable of electrolyzing the fluid as it flows through the electrolytic chamber to generate hydrogen-rich water based on the teachings of Nakamura (see rejection under 35 U.S.C. § 103, above).
Applicant’s argument is therefore not persuasive.
Applicant’s Argument #2
Applicant argues on p. 5 that Karren does not teach the groove nozzle “conforms to the human skin surface, thereby defining a closed cavity” or a “skin-specific sealed cavity”. Specifically, Applicant argues that Karren merely teaches a configuration that achieves a partial seal against a firm surface, such as flooring, rather than a structure that conforms to a surface.
Examiner’s Response #2
Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a groove nozzle that “conforms to the human skin surface, thereby defining a closed cavity” or a “skin-specific sealed cavity”) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Rather than requiring a groove nozzle that “conforms to the human skin surface, thereby defining a closed cavity”, the claim requires “a groove surrounding a discharge opening, the groove is configured to contact the skin of the human, the groove of the suction nozzle defines a sealing cavity with the skin of the human, the sealing cavity confining the hydrogen-rich water against the skin of the human”. As described in the rejection of claim 1, above, Karren is considered to teach each of these limitations.
Applicant’s argument is therefore not persuasive.
Applicant’s Argument #3
Applicant argues on p. 5-6 that the system of Nakamura teaches a system that generates cleaning solution from an electrolyte solution, rather than “clean water”, as required by amended claim 1, and that Nakamura therefore does not teach or render obvious the cumulative limitations of claim 1.
Examiner’s Response #3
Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, Nakamura is not relied on to teach the cumulative limitations of claim 1, but rather is used to teach the use of locking bolts and nuts located outside the shell of an electrolytic system to secure the anode and cathode and, in the case of the rejection over Daiyikoskao in view of Nakamura and Zhang, the use of a clean water tank and flow-through electrolyzer configuration.
Furthermore, as the electrolyte solution of Nakamura is used for cleaning i.e., it is a water-based cleaning solution, it is considered to be within the broadest reasonable interpretation of the term “clean water”.
As Applicant has not provided any arguments as to why Nakamura does not teach the limitations relied upon for the rejections, Applicant’s arguments are not persuasive.
Applicant’s Argument #4
Applicant argues on p. 6 that the system of Zhang does not teach the limitation “the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water” as recited in amended claim 1.
Examiner’s Response #4
Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, Zhang is not relied on to teach the limitation “the clean water flowing through the electrolytic chamber is electrolyzed in transit to generate hydrogen-rich water”. Rather, Karren or Nakamura are relied on to teach this limitation.
As Zhang was not relied on to teach the indicated limitations, Applicant’s argument is not persuasive.
Applicant’s Argument #5
Applicant argues on p. 6-7 that modifying the system of Daiyikoskao to use sheet electrodes, as taught by Zhang, would render the system of Daiyikoskao unsuitable for its original purpose. Specifically, Applicant indicates that modifying the system of Daiyikoskao to remove the membrane would prevent the control of the pH as taught by Daiyikoskao.
Examiner’s Response #5
Examiner respectfully disagrees. In response to applicant's argument that combining the system of Daiyikoskao with that of Zhang would necessitate the removal of the membrane of Daiyikoskao, thereby rendering the system of Daiyikoskao unsuitable for its intended purpose, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, Zhang is merely relied on to demonstrate that a person having ordinary skill in the art would have found it obvious to modify the electrode shape in Daiyikoskao such that the electrodes are sheet electrodes.
As Applicant has not provided any arguments or evidence as to why the use of sheet electrodes would not be possible in an electrolytic cell comprising a membrane, Applicant’s argument is 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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