DETAILED ACTION
Claims 1-8 were rejected in Office Action mailed on 07/10/2025.
Applicant filed a response, amended claims 1-5 and 7, and canceled claim 6 on 01/12/2026.
Claims 1-5 and 7-8 are pending.
Claims 1-5 and 7-8 are rejected.
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 .
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Elton et al., WO 2014/011455 A1 (Elton) (provided in IDS received on 02/16/2023), and further in view of Kushch et al., Hydrogen-generating compositions based on magnesium, International Journal of Hydrogen Energy, 2011 (Kushch) and Mori et al., Recent challenges of hydrogen storage technologies for fuel cell vehicles, International Journal of hydrogen Energy, 2009 (Mori).
Regarding claims 1 and 7, Elton teaches a method and apparatus for producing hydrogen from aluminum and an acid (Elton, Abstract);
Elton further teaches metal analysis in Table 1, that there is 1.21 wt.% magnesium in the aluminum metal (Elton, page 16, Table 1); wherein either aluminum or magnesium reads on a metal of the presently claimed.
Elton further teaches accepting a feedstock including aluminum (Elton, [0012]), a reaction vessel adapted to accept the feedstock and acid (Elton, [0013]), in a steady state operation, the feedstock is provided for the reactions and hydrogen is generated and collected; control of the acid concentration or level by accepting or providing acid (Elton, [0028]), reading upon providing a metal, the metal being input to a reaction chamber at a first flow rate; providing an acid, the acid being input to the reaction chamber at a second flow rate; wherein the combination of the metal and the acid produce hydrogen under pressure in the reaction chamber; outputting the hydrogen from the reaction chamber at a first pressure and a third flow rate.
Given that Elton teaches an identical or essentially identical process using identical or essentially identical materials, i.e., reaction of metal with acid, specifically aluminum and/or magnesium with acid, with those of the present invention (specification, [0027]), therefore it is clear that the reaction of Elton would necessarily and inherently be exothermic.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Given that Elton teaches achieving a steady state operation, in a steady state operation, the feedstock is provided for the reactions and hydrogen is generated and collected; control of the acid concentration or level by accepting or providing acid (Elton, [0028]), it would necessarily require determining flow rate of hydrogen, and controlling the flow rate of feedstock and the acid, as a function of the flow rate of hydrogen generated, in order to control the rate of reaction to achieve steady state, therefore reading upon determining the first pressure; determining the third flow rate; and controlling each of the first flow rate and the second flow rate as a function of the third flow rate to control the rate of the exothermic reaction.
Alternatively, it would have been obvious to a person of ordinary skill in the art to determine flow rate of hydrogen, and control the flow rate of feedstock and the acid, as a function of the flow rate of hydrogen generated, in order to control the rate of reaction to achieve steady state, therefore reading upon determining the first pressure; determining the third flow rate; and controlling each of the first flow rate and the second flow rate as a function of the third flow rate to control the rate of the exothermic reaction.
Further regarding claim 1, Elton does not explicitly disclose determining the first pressure, and controlling each of the first flow rate and the second flow rate also as a function of the first pressure to control a rate of the exothermic reaction.
With respect to the difference, Kushch teaches production of hydrogen by reaction of magnesium with proton-containing compounds (Kushch, Abstract). Kushch specifically teaches production of hydrogen at desired pressure (Kushch, 1323, right column, bottom paragraph; Kushch, page 1324, right column, 2nd paragraph).
Kushch is analogous art as Kushch is drawn to production of hydrogen by reaction of magnesium with proton-containing compounds.
In light of the disclosure of Kushch of reaction of metal with proton-containing compounds to produce hydrogen at desired pressure, it therefore would have been obvious to a person of ordinary skill in the art to conduct the reaction of Elton to produce hydrogen at desired pressure, with reasonable expectation of success. Therefore, the method of Elton in view of Kushch would necessarily require determining the pressure of the produced hydrogen, and controlling each of the flow rate of feedstock and the acid as a function of the pressure of produced hydrogen in addition to the flow rate of produced hydrogen, in order to achieve steady state operation of hydrogen production at desired pressure.
Alternatively, it would have been obvious to a person of ordinary skill in the art to control the feed rate of the feedstock (i.e., aluminum metal) and the acid as a function of the pressure of produced hydrogen in addition to the flow rate of produced hydrogen, in order to achieve steady state operation of hydrogen production at desired pressure, and thereby arrive at the claimed invention.
Further regarding claim 1, Elton in view of Kusch teaches producing hydrogen at desired pressure, but does not explicitly disclose what pressure is desired.
With respect to the difference, Mori teaches hydrogen storage technologies for fuel cell vehicles (Mor, Title, Abstract). Mori specifically teaches for low-pressure metal hydride tank (i.e., for hydrogen storage), the pressure is low pressure (<1 MPa, i.e., <145 psi) (Mori, page 4573, Table 1).
Mori is analogous art as Mori is drawn to hydrogen storage technologies for fuel cell vehicles, i.e., application of hydrogen.
In light of the disclosure of Mori, it therefore would have been obvious to a person of ordinary skill in the art to produce the hydrogen of Elton in view of Kusch at desired pressure, such as at a pressure <1 MPa, i.e., <145 psi, for low-pressure metal hydride tank storage purpose, as taught by Mori, and achieve expected results, and thereby arrive at a range that encompasses that of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, as applied to claim 1, Elton teaches aluminum metal analysis in Table 1 (Elton, page 16, Table 1), wherein Al or Mg reads upon the metal, and all the components of aluminum metal read upon al fuel components. The feed rate of Al and Mg would necessarily be a function of the mass ratio of Al and Mg in the aluminum metal input to reaction vessel, in order to maintain desired steady state operation.
Alternatively, it would have been obvious to a person of ordinary skill in the art to control the feed rate of Al or Mg as a function of mass ratio of Al or Mg in the aluminum metal input to reaction vessel, in order to maintain desired steady state operation.
Regarding claim 3, as applied to claim 1, Elton teaches in a steady state operation, the feedstock is provided for the reactions and hydrogen is generated and collected; control of the acid concentration or level by accepting or providing acid (Elton, [0028]). The feed rate of acid would necessarily be a function of a mass ratio of the acid as compared to the aluminum metal input to the reaction vessel, in order to achieve steady state reaction.
Alternatively, it would have been obvious to a person of ordinary skill in the art to control the feed rate of the acid as a function of the aluminum metal input to reaction vessel, in order to maintain desired steady state operation.
Regarding claim 4, as applied to claim 1, given Elton in view of Kushch teaches producing pressurized hydrogen in a steadying state operation, therefore, the feed rate of the feedstock (i.e., aluminum metal) and the acid would necessarily be controlled as a function of feedback values determined as a function of the pressure of produced hydrogen, in order to achieve steady state operation of hydrogen production at desired pressure.
Alternatively, it would have been obvious to a person of ordinary skill in the art to control he feed rate of the feedstock (i.e., aluminum metal) and the acid as a function of feedback values determined as a function of the pressure of produced hydrogen, in order to achieve steady state operation of hydrogen production at desired pressure.
Regarding claim 5, as applied to claim 1, Elton teaches in a steady state operation, the feedstock is provided for the reactions and hydrogen is generated and collected; control of the acid concentration or level by accepting or providing acid (Elton, [0028]). The feed rate of the feedstock (i.e., aluminum metal) and the acid would necessarily be controlled as a function of feedback values determined as a function of the production rate of hydrogen, in order to achieve steady state operation.
Alternatively, it would have been obvious to a person of ordinary skill in the art to control he feed rate of the feedstock (i.e., aluminum metal) and the acid as a function of feedback values determined as a function of the production rate of hydrogen, in order to maintain desired steady state operation.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Elton in view Kushch and Mori, as applied to claim 1 above, and further in view of Oz et al., The effect of vinegar-acetic acid solution on the hydrogen generation performance of mechanochemically modified magnesium (Mg) granules, Energy, 2017 (Oz).
Regarding claim 7, as applied to claim 1, alternatively, Oz teaches hydrogen generation using Mg granule and acetic acid solutions (Oz, Abstract). Oz specifically teaches the generation of H2 based on the hydrolysis reaction of Mg (Oz, page 333, right column, Conclusion, last paragraph).
As Oz expressly teaches, electrochemically active light metals such as magnesium has been investigated for use in hydrogen generation systems and green energy engineering, and considered important for practical, energy efficient applications to provide alternative to current fossil suppliers (Oz, page 328, left column, 1st paragraph); the generation of H2 based on the hydrolysis reaction of Mg is an alternative option for energy supply (Oz, page 333, right column, Conclusion, last paragraph).
Oz is analogous art as Oz is drawn to hydrogen generation using Mg granule and acetic acid solutions.
In light of the motivation of using a hydrogen generation system based on the reaction of Mg, as taught by Oz, it therefore would have been obvious to a person of ordinary skill in the art to produce hydrogen using magnesium with an acid, in order to use a metal that is light, achieve a process that is practical, and energy efficient to provide alternative to current fossil suppliers, and thereby arrive at the claimed invention.
Regarding claim 8, as applied to claim 1, Elton does not explicitly disclose wherein the acid is acetic acid.
With respect to the difference, Oz specifically teaches hydrogen generation system using Mg granule samples combined with acetic acid solutions (Oz, Abstract).
As Oz expressly teaches, using domestic type, biodegradable, vinegar-acetic acid solutions as a corrosive medium, instead of other aqueous acids (HCl, HNO3, H2SO4), made the system less toxic and more environmentally friendly; the price of vinegar is low cost comparing to other acidifying agents (Oz, page 333, right column, Conclusion, last paragraph).
In light of the motivation of using acetic acid for reaction with magnesium to produce hydrogen, as taught by Oz, it therefore would have been obvious to a person of ordinary skill in the art to use acetic acid as the acid in Elton, in order to make the hydrogen production method of Elton less toxic, more environmentally friendly and with low cost, and thereby arrive at the claimed invention.
Response to Arguments
In response to the amended claims, the previous claim objections and 35 U.S.C. 112(b) rejections are withdrawn.
In response to the amended claim 1, which recites, “wherein the first pressure does not exceed approximately 120 psi”. It is noted that the referenced teaching from Elton in view of Kushch would not anticipate/meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Elton in view of Kushch are withdrawn from the record. However, the amendments necessitate a new set of rejections over Elton in view of Kushch and Mori, as set forth above.
Applicant primarily argues:
“Claims 1-7 stand rejected under 35 U.S.C. §103 as being unpatentable over WO
2014/011455 to Elton et al. (herein referred to as "Elton") and further in view of non-patent publication "Hydrogen-generating compositions based on magnesium" to Kushch et al. (herein referred to as "Kushch"). Claims 7-8 stand rejected under 35 U.S.C. §103 as being unpatentable over Elton and further in view of non-patent publication "The effect of vinegar-acetic acid solution on the hydrogen generation performance of mechanochemically modified magnesium
(Mg) granules" to Oz et al. (herein referred to as "Oz"). Applicant respectfully submits that these claims are patentable and respectfully requests the Examiner to withdraw the Section 103 rejections.
The following is a quotation from MPEP 2143:
To establish aprimafacie case of obviousness, three basic criteria must be met.
First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.
Furthermore, MPEP 2143 (sections V and VI) provides: If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.
If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.
In view of the above requirements, Applicant respectfully submits that the amended claims are allowable over the cited combinations of Elton in view of Kushch and Oz under 35 U.S.C. §103.”
Remarks, p. 5
The Examiner respectfully traverses as follows:
Applicants do not specifically point out any reasons that would result the rejection over Elton in view of Kushch and Oz, now Elton in view of Kuschch, Mori and Oz are improper.
Given that Kusch, Mori, and Oz provide proper motivation to combine, as set forth above, on pages 5-6, 6-7, and 9-10, respectively, the examiner’s position remains that the rejections over Elton in view of Kuschch, Mori, and Elton in view of Kuschch, Mori and Oz are proper, absent evidence to the contrary.
Applicant further argues:
“In an effort to advance prosecution of the current application, Applicant has amended independent claim 1 to indicate, in relevant part, that the first pressure does not exceed approximately 120 psi. Support for this amendment can be found in Applicant's originally filed disclosure at least at paragraphs [0067] and [0069]. For example, paragraph [0069] discloses that "as a result of the danger inherent in such high pressure gas transfers, and the need for expensive specialty tanks that can handle such high pressure along with the seals which must be maintained, the pressure regulators and gauges, it is preferred that the pressure output by the system in process step 106 be 120 psi or less." No new matter has been added by way of this amendment. Applicant respectfully submits that this limitation is not taught, disclosed, or suggested by any of the cited prior art references, either independently or in any combination.
In view of the foregoing amendments and remarks, Applicant respectfully submits that the rejection of independent claim 1 under 35 U.S.C. §103 by Elton in view of Kushch or Oz should be withdrawn. Claim 1 is patentably distinct and in condition for allowance.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
The amended claim 1, including the new amended claim limitation, “wherein the first pressure does not exceed approximately 120 psi”, is met by Elton in view of Kushch and Mori, as set forth above on pages 3-7. Specifically, Mori teaches for low-pressure metal hydride tank (i.e., for hydrogen storage), the pressure is low pressure (<1 MPa, i.e., <145 psi) (Mori, page 4573, Table 1), which encompasses the range of the presently claimed.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732