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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-4, 11, 12, 14 and 37 in the reply filed on 14 October 2025 is acknowledged.
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, 14 and 37 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 a 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 being stable at a pressure less than 100 gigapascal (GPA)” and (as recited in dependent claims) how to achieve a particular number of hydrogen atoms per metal atom between 2 and 12.
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, applying a pressure, and bonding hydrogen atoms from the electrolyte in plurality, thus reading on any metal, in any electrolyte containing hydrogen, applying any pressure and bonding any number of hydrogen atoms greater than 1 to each metal atom.
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, the electrolyte and the pressure, in order to kinetically suppress a hydrogen evolution reaction and form a stable superhydride below 100 gigapascal.
Therefore, in consideration of all the factors above, the Examiner cannot consider the claims enabled.
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.
Claim 14 is 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.
As to claim 14, the claim recites the limitation “the pressure”. However, claim 1, upon which claim 14 depends, recites two separate pressure limitations. Therefore, it is unclear as to which one is being referred back to.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 37 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Conclusion
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