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 .
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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-4, 11, 12 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, the claim recites the new limitation “having a pH of -2 to 0”, “applying a pressure between 1 to 5 Gigapascals”, “electric potential that is between -1.5 Volts and -0.2 Volts” and “being stable at pressure of 0 to 100 GPa”. These ranges are not supported by the disclosure as originally filed, the disclosure does not provide these ranges at all, let alone in combination.
Claims 1-4, 11, 12 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, how to configure the electrolyte to “suppress a hydrogen evolution reaction in the metal electrode”, how to use the method steps as claimed to form “a metal superhydride comprising the plurality of hydrogen atoms of the electrolyte being bonded to each of the one or more metal atoms of the metal electrode, the metal superhydride including H-H distance of less than 2 Angstroms, the metal superhydride being stable at pressures of 0 to 100 GPA” and how to achieve a particular number of “hydrogen atoms being between 2 and 20 hydrogen atoms inclusive”.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In regards to the present invention, when considering (A) The breadth of the claims: the claims are substantially broad the claims recite a metal, an electrolyte comprising hydrogen atoms, bonded hydrogen atoms between 2 and 20 and stability at pressures of 0 to 100 GPa. Thus, including a huge breadth of a combination of metal atoms, electrolyte compositions, and final bonded superhydride products stable under a large pressure range including below atmospheric up to 1,000 times atmospheric. Most concerning would be the breadth of the electrolyte, as the disclosure specifically states that “the electrolytes provide a wat to tune the activity” (Specification Paragraph 0073) and that the electrochemical loading needs to be done “in electrolyte formulations that can suppress the hydrogen evolution reaction connecting through super concentrated electrolytes of other suppressing mechanisms” (Specification Paragraph 0077).
In regards to the present invention, when considering (B) The nature of the invention: the invention is drawn to the creation of a superhydride with greater than 1 hydrogen atom bonded to each metal atom that is stable at a pressure less than 100 gigapascals, this is complex and not well known.
In regards to the present invention, when considering (C) The state of the prior art: the prior art teaches that creating highly loaded superhydrides is significantly challenging, for example “Producing High Concentrations of Hydrogen in Palladium via Electrochemical Insertion from Aqueous and Solid Electrolytes” to Benck et al. teaches that electrochemically the maximum hydrogen loading of, for example, palladium is less than one. “Road to Room-Temperature Superconductivity: Tc above 260 K in Lanthanum Superhydride under Pressure” to Hemley et al. teaches that pressures under which superhydrides are stable are higher than 100 GPa and only known for a limited number of metals. “Materials advances result from study of cold fusion” discusses the state of the art on superhydrides and teaches that superhydrides are challenging to create in a stable form as it is like filling a leaky bucket in that hydrogen gas is evolved as hydrogen is loaded, that more experimentation is needed to achieve stable superhydrides and that, for example, palladium hydrogen loading of 2 hydrogen atoms per palladium atom is theoretical and more work is required to even achieve 1 hydrogen atom per palladium atom.
In regards to the present invention, when considering (D) The level of one of ordinary skill: as discussed by the prior art, superhydrides are complex and unstable and require significant research, thus the level of one of ordinary skill would be considered low, i.e. it would not be within ordinary skill to know how to generate stable superhydrides, nor choose an electrolyte to suppress the hydrogen evolution reaction from the metal electrode (an art recognized problem), without detailed instructions.
In regards to the present invention, when considering (E) The level of predictability in the art: as discussed by the prior art, superhydrides are complex and unstable and require significant research, thus the art would be considered unpredictable.
In regards to the present invention, when considering (F) The amount of direction provided by the inventor: the specification provides very little direction, the specification provides a small list of possible metals, and describes pressures and voltages only in reference to three specific superhydrides YH9, LaH8 and MgH16, and even in these disclosures no electrolyte specifics are given in regards to a specific electrolyte nor the mechanism by which the electrolyte can suppress a hydrogen evolution reaction in the metal electrode, nor does the disclosure discuss counter electrodes or the like for the application of voltage. Furthermore, the specification itself appears to indicate that many concepts are theoretical discussing “probable structures” and “potential structures” and “feasible” methods.
In regards to the present invention, when considering (G) The existence of working examples: the disclosure appears to attempt to provide three working examples, (Paragraph 00105, 00106 and 00107) but even these working examples do not discuss the electrolyte, how the electrolyte can kinetically suppress a hydrogen evolution reaction in the electrolyte, or how the potential is applied, i.e. counter electrodes.
In regards to the present invention, when considering (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: the Examiner maintains that a great deal of experimentation would be required, specifically in terms of choosing the metal and the electrolyte, in order to kinetically suppress a hydrogen evolution reaction and form a stable superhydride at pressures of 0 to 100 gigapascal.
Therefore, in consideration of all the factors above, the Examiner cannot consider the claims enabled.
Response to Arguments
Applicant's arguments filed 17 June 2026 have been fully considered but they are not persuasive.
Applicants argue that the claim amendments overcome the enablement rejections; however, in addition to raising significant support issues, the Examiner disagrees that the enablement rejections are overcome. Applicants disclosure itself states that the choice of electrolyte is critical in achieving the end superhydride that is stable at the claimed pressures (See for example Specification Paragraphs 0073 and 0077). However, no direction is given as to how to choose this electrolyte, and given the other Wands factors as discussed above, the Examiner maintains that the claims are not enabled.
Applicants further argue that Applicants do not disclose a “small set of metals” and argue that palladium, lithium, magnesium, lithium-magnesium, and C-S superhydride systems are not “small”. However, while the exact limitation on the word “small” can be debated, it is clear that these example do not read on all metals, and the only claim limitation is “metal” thus clearly rendering the claims broad when discussing the enablement 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 CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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