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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 7-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 8, Applicant claims accommodating “the dehydrogenation product at a second dehydrogenation base different from the first dehydrogenation base”. In claim 4, Applicant claims accommodating “the dehydrogenation product in a space formed in an internal space of the accommodation body due to the distribution”. Claimed this way, the configuration is not clear where the dehydrogenation product is accommodated. In claim 4, its accommodated in “an internal space of the accommodation body due to the distribution”. In claim 8, it is accommodated in “a second dehydrogenation base different from the first dehydrogenation base”. In other words, its not clear how the “first” and “second” dehydrogenation bases of claim 8 are related to “the accommodation body” of claim 4 as they are both claimed to be receiving “the dehydrogenation product”. Clarification is required.
Claims 5 and 7 claim “the raw material stored at the dehydrogenation base” and “the dehydrogenation product stored at the dehydrogenation base”. There is a lack of antecedent basis for these terms in the claims. Clarification is required.
It is noted that due to these clarity issues, a search of the merits of claim 7 was not possible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4 and 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nojima (US 2008/0052994).
Regarding claim 1, Nojima further discloses a system comprising:
a moving body (such as a truck, as depicted in Fig. 13) including an accommodation body (such as the trailer of the truck) configured to accommodate a raw material (such as hydrogen storage material, as described in paragraph 27) including a hydride from which a hydrogen-containing gas is capable of being obtained by subjecting the raw material to a dehydrogenation reaction (see paragraph 47 which discloses that the hydrogen storage material can be reacted to form hydrogen and a byproduct/waste liquid), and to accommodate a dehydrogenation product produced in combination with the hydrogen-containing gas by the dehydrogenation reaction (the waste product that is produced along with the hydrogen is stored as waste liquid as described in paragraph 31) ; and
a management device (see paragraph 48 which discloses an ECU which controls the opening and closing of the valves are controlled by an ECU based on information received, such as pressure) configured to perform information communication with a production base of the raw material (pressures received from the production base, or the fuel tank are fed to an ECU that controls opening and closing of valve 106, for example), a dehydrogenation base (the dehydrogenation base is dehydrogenation device 103 which also comprises a valve 108 and pump 107) that performs the dehydrogenation reaction by using the raw material (the reaction takes place in the dehydrogenation device 103, see paragraph 38), and the moving body;
wherein the management device, based on the information (such as the pressure, as suggested in paragraph 48), is configured to manage the moving body to distribute the raw material from the production base to the dehydrogenation base and to recover the dehydrogenation product from the dehydrogenation base to the production base (see paragraph 48 which discloses that the ECU controls the valves and pumps that move the raw material from the production base/fuel tank to the dehydrogenation base/dehydrogenation device).
Regarding claim 4, Nojima further discloses the moving body is configured to distribute at least a part of the raw material from the accommodation body at the dehydrogenation base (the raw material from accommodation body/fuel tank 104 can be sent to dehydrogenation base 103), and to accommodate the dehydrogenation product in a space formed in an internal space of the accommodation body due to the distribution (the dehydrogenation byproduct/waste stream is sent back to the fuel tank where it is held in space 203, for example, see Fig. 2).
Regarding claim 11, Nojima further discloses the moving body is configured to, after distributing the raw material from an accommodation chamber of the accommodation body, accommodate the dehydrogenation product in the accommodation chamber without cleaning the accommodation chamber (Nojima teaches the ability to accommodate the dehydrogenation product in the accommodation chamber, such as the interior of cartridge/tank 208). Weather or not the tank is cleaned does not further limit the claimed apparatus as it is directed to a process of operating the claimed apparatus. Regarding the italicized limitations recited in claim 11 which are directed to a manner of operating disclosed system (as disclosed above), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Regarding claim 12, Nojima further discloses the moving body is configured to return the dehydrogenation product to the production base (the dehydrogenation product can be returned to production base/fuel tank 103 via valve 108). even when the accommodation body is not fully filled with the dehydrogenation product and/or when undistributed raw material remains in the accommodation body (this limitation is directed when the dehydrogenation product sent to the production base which is a manner of operating the claimed moving body and does not further limit the claim). Regarding the italicized limitations recited in claim 12 which are directed to a manner of operating disclosed system (as disclosed above), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Regarding claim 13, Nojima further discloses the moving body is configured to recover the dehydrogenation product from the dehydrogenation base to which the raw material is distributed (such as when the dehydrogenation product is recovered via valve 108).
Regarding claim 14, Nojima further discloses an intermediate base (such as tank 104) provided between the production base (in this embodiment, the production base is tank comprising raw material 1205 and dehydrogenation production 1204 and depicted in Fig. 12) and at least one of the dehydrogenation bases (such as dehydrogenation base 103 where the tank feeds raw material from the chamber 1205 to the intermediate/fuel tank 104 and then to dehydrogenation base 103), wherein the intermediate base includes a raw material tank and a dehydrogenation product tank (fuel tank 104 is divided into to two chambers one containing fuel, and the other containing waste product/dehydrogenation product).
Regarding claim 15, this claim is directed to a manner of operating the claimed moving body. The configuration of Nojima can be operated in this way where the raw material is accommodated and returned to the production base/refueling tank (1205/1204 of Nojima) and it also can be operated to accommodate the raw material and return the dehydrogenation product from the intermediate base/tank 104 to the waste section 1204. As such, the claimed conditional limitations of when this happens (short distance vs. long distance transportation) is directed to operation steps of the claimed apparatus and does not further limit it. Regarding the italicized limitations recited in claim 15 which are directed to a manner of operating disclosed system (as disclosed above), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Regarding claim 16, Nojima further discloses the intermediate base (fuel tank 104) is arranged to divide a transportation route between the production base and the at least one of the dehydrogenation bases into the first section and the second section (the first section is the line that connects the production base/refilling tank 1205 of claim 12 to the fuel tank 104, and the second section is the line connecting the intermediate base/fuel tank 104 to the dehydrogenation base 103).
Regarding claim 17, Nojima further discloses the internal space of the accommodation body is partitioned into a plurality of accommodation chambers by a partition member (see Fig. 13 which illustrates the accommodation body/truck is divided into two sections by a divider/partition 1304).
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nojima (US 2008/0052994) in view of Sadamoto (US 2004/0067394).
Regarding claim 5, Nojima is silent regarding a management device which is configured to communicate an amount of the raw material stored at the dehydrogenation base, and/or (ii) an amount of the dehydrogenation product stored at the dehydrogenation base.
Sadamoto also discloses a process for a reactant cartridge which distributes a reactant and receives a byproduct of the reaction (see abstract and Fig. 4A/B).
Sadamoto discloses detecting the amount of liquid contained in cartridge by obtaining information from a strain gauge or an optical sensor (see paragraphs 82-83). Sadamoto teaches such a structure in order to provide information regarding how much liquid is remaining in the cartridge (paragraph 83).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to add the information gathering means of Sadamoto, and transmitting the information gained to the management device of Nojima in order to assess the liquid level remaining in the cartridge. Such a modification would assist in determining when a raw material would need to be refilled.
Claim(s) 6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nojima (US 2008/0052994).
Regarding claim 6, Nojima does not teach a plurality of dehydrogenation bases. In other words, Nojima does not teach a plurality of reaction zones where the raw material is dehydrogenated. However, adding a second dehydrogenation base to the system of Nojima would have been obvious to one of ordinary skill in the art at the time of the invention. Such a modification is nothing more than a mere duplication of parts to yield entirely predictable results. Furthermore, such a modification would have been recognized to be beneficial in providing redundancy for the reaction base. In the event that one dehydrogenation base and catalyst used therein is inoperable, there would be another dehydrogenation base to utilize the raw material for energy production.
Regarding claim 8, importing the modification of Nojima made in the rejection of claim 6 above which adds multiple dehydrogenation bases to Nojima, modified Nojima further discloses a configuration (multiple dehydrogenation bases) that is capable of accommodating the dehydrogenation product at a second dehydrogenation base (this is accomplished by sending the dehydrogenation product to the 2nd dehydrogenation base instead of the 1st, as set forth in the rejection of claim 6 above).
Regarding claim 9, the claimed limitation merely claims that a process (steps (i) and (ii)) are repeated several times. Such a feature does not further limit the claimed apparatus. The apparatus of modified Nojima, as discussed in the rejection of claim 8 above, includes all the structural features of claim 9. As such, repetition of a process utilizing the disclosed structure of modified Nojima does not further limit the apparatus claim. Regarding limitations recited in claim 9 which are directed to a manner of operating disclosed system (as disclosed above), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Regarding claim 10, Applicants claims an operational limitation of how the claimed structure is operated. In modified Nojima, the structure is indeed capable of returning the dehydrogenation product to the production base (via valve 108 for example) even if that is not disclosed by Nojima. Regarding limitations recited in claim 10 which are directed to a manner of operating disclosed system (as disclosed above), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Relevant Prior Art
DE102017201454A1 – Discloses a reactor which comprises a partition (26) that separates two zones in a reactor and teaches a dehydrogenation reaction. However, this reference is silent regarding a raw material production base that allows for accommodating the raw material in the accommodation body.
EP 1306917 A2 – Discloses an accommodating body which holds a raw material (in this case a borohydride solution) in chamber 20 and a waste product in chamber 26. This reference, however, does not teach the claimed process which includes a raw material production base.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. More specifically, Applicant merely alludes to the newly amended claim limitations and does not present any specific arguments that are applicable to the instant rejection.
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 MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725
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