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 .
Response to Amendment
Acknowledgment is made to Applicant’s claim amendments received 17 September 2025. Claims 1-20 are currently pending of which claims 16-20 are withdrawn from consideration.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 274 (See Figure 3). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 13 is 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. Applicants claim in claim 1 that an anode side chamber has a closed distal end and then in claim 13 that an anode side chamber has a hydrogen withdrawal stream. The disclosure as originally filed supports these limitation in the alternative only, not in combination.
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 13 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 13, it is unclear as to how the anode side chamber can be both closed at a withdrawal end and comprise a hydrogen withdrawal stream at a withdrawal end.
Claim Rejections - 35 USC § 102
Acknowledgment is made to Applicant’s claim amendments received 17 September 2025. The rejections to the claim presented under 35 USC 102 in the Office Action of 17 April 2025 are withdrawn.
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 1-9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0010903 A1 to Wakerley et al. (Wakerley) in view of US 2023/0235465 A1 to Goetheer et al. (Goetheer).
As to claims 1, 2, 3 and 4, Wakerley teaches a bipolar membrane cell (800) comprising a separation layer (155) located between an anode half-cell (151) and a cathode half-cell (152), the anode half-cell comprising an anode and a proton exchange membrane (502), the proton exchange membrane (502) located between the anode and the separation layer (155), the cathode half-cell (152) comprising a cathode and an anion exchange membrane (501), the anion exchange membrane (501) located between the cathode and the separation layer (155) and an external circuit (V) connecting the anode and the cathode (Paragraphs 0039-0042 and 0061-0072; Figures 3, 7 and 8). Wakerley further teaches that the cathode half-cell comprises a feed structure of some sort connected with a carbon dioxide source stream (110) for delivering carbon dioxide to the cathode side and for withdrawing a carbon dioxide depleted stream (102) from the cathode side and that the anode half cell comprises a feed structure of some sort for delivering a hydrogen rich stream (112) to the anode side (Paragraphs 0039-0042 and 0067-0072; Figures 3, 7 and 8).
However, Wakerley is silent as to the specific formation of the anode and cathode side gas chambers, merely showing the reactions, and thus fails to specifically teach that the half-cells comprise an anode side chamber and a cathode side chamber with proximal and distal ends.
However, Goetheer also discusses electrolysis cells (1) with an anode half cell, a cathode half cell and a separation layer (6) therebetween separated by proton and anion exchange membranes. Goetheer teaches that the feed structures to the anode half cell and the cathode half cell comprise an anode side chamber (17) with a proximal (feed) end and a distal (outlet) end and a cathode side chamber (16) with a proximal (feed) end a distal (outlet) end, wherein the feed and outlet to each of the cathode side chamber, the anode side chamber, and the separation layer are concurrent (Paragraphs 0070-0074; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to form the anode half cell and the cathode half cell of Wakerley with a cathode side chamber and an anode side chamber each with a distal and proximal end through which the required feed and withdrawal inlets and outlets are provided with the reasonable expectation of effectively supplying reactants and delivering products to and from the cell as taught by Goetheer.
Wakerley further teaches a plurality of options for feed and withdrawal to the anode side and for feed and withdrawal at the separating layer. Wakerley teaches that in one embodiment the feed to the anode side comprises hydrogen and that there is no outlet from the anode side (Figure 7). Wakerley teaches that in another embodiment there is no feed to the separation layer and a carbon dioxide outlet from the separation layer (Figure 5). The combination of these embodiments to achieve desired flows with desired inputs would have been obvious to one of ordinary skill in the art at the time of filing.
Thus rendering obvious, with the concurrent flow and chamber structure taught by Goetheer, a cell structure in which there is no outlet at the anode side chamber, thus a closed distal and, and no inlet at the separation layer, thus a closed proximal end.
As to claim 5, the combination of Wakerley and Goetheer teaches the apparatus of claim 4. Wakerley further teaches that the separation layer (155), the anode half-cell (152) and the cathode half-cell (151) are arranged in a planar configuration (Figure 7).
As to claims 6, 7, 8 and 9, the combination of Wakerley and Goetheer teaches the apparatus of claim 4. However, Wakerley teaches a planar configuration and fails to teach a concentric configuration. However, Goetheer further teaches that, in addition to a planar configuration, the separation layer, the anode half-cell and the cathode half-cell can be arranged in a concentric circular configuration with a tubular anode and cathode (Paragraph 0042). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the planar configuration of Wakerley with a concentric tubular configuration as a known equivalent as taught by Goetheer (MPEP 2144.06 II). Thus a cell in which one of the tubular cathode half-cell or the tubular anode half-cell is located within the other of the tubular cathode half-cell or the tubular anode half-cell with the separation layer concentrically located in between forming a tubular bipolar membrane. Each of the anode-half cell, the cathode half-cell and the separation layer of the combination comprises a distal end and a proximal end, thus each of the inlet and outlet are in, at least indirect fluid communication with both the distal and proximal end of the tubular cell (Figure 4a).
As to claim 13, the combination of Wakerley and Goetheer teaches the apparatus of claim 1. Wakerley further teaches that, as an alternative, the anode half-cell comprises an anode side chamber comprising an outlet for an outlet stream (104) which would contain any unreacted hydrogen (Paragraphs 0039-0042 and 0067-0072; Figures 3 and 8).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wakerley and Goetheer as applied to claim 1 above, and further in view of US 2021/0395908 A1 to Kuhl et al. (Kuhl).
As to claim 10, the combination of Wakerley and Goetheer teaches the apparatus of claim 1. However, Wakerley is silent as to the anode and cathode materials. However, Kuhl also discusses electrolytic cells with a carbon dioxide reduction reaction at the cathode and a hydrogen oxidation reaction at the anode and teaches that the cathode should comprise, for example, a gold catalyst (a non-platinum group metal) and that the anode should comprise, for example, a platinum catalyst (Paragraphs 0069, 0156 and 0245). Therefore, it would have been obvious to one of ordinary skill in the art to form the anode of Wakerley at least partially from platinum and the cathode of Wakerley at least partially from gold, a non-platinum group metal, with the reasonable expectation of effectively performing the reactions desired as taught by Kuhl.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wakerley and Goetheer as applied to claim 1 above, and further in view of Foreign Patent Document No. DE 0 051 845 to Struck (Struck).
As to claim 11, the combination of Wakerley and Goetheer teaches the apparatus of claim 1. However, Wakerley fails to teach that the separating layer comprises a porous carbon. However, Struck also discusses three compartment electrolysis cells with a separating layer between ion exchange membranes and teaches that the internal resistance of the cells can be reduced and cell function improved by providing a porous graphite support structure in the separating layer between the ion exchange membranes (Paragraphs 0001 and 0007-0011). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the separating layer of Wakerley with a porous graphite support structure in order to reduce the internal cell resistance and improve cell function as taught by Struck.
As to claim 12, the combination of Wakerley, Goetheer and Struck teaches the apparatus of claim 11. Stuck further teaches that the porous graphite should have a strength that absorbs the necessary pressure in combination with a porosity as high as possible so that the flow is not unduly inhibited (Paragraphs 0009 and 0011). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the total pore volume of the graphite layer (also thus optimizing the surface area and conductivity) in order to optimize the pore volume in view of the flow (MPEP 2144.05 II).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wakerley, in view of Goetheer, further in view of US 2009/0078568 A1 to Ramaswami et al. (Ramaswami) and further in view of US 2021/0381116 A1 to Kashi et al. (Kashi).
As to claim 14, as discussed above Wakerley teaches the bipolar membrane cell of claim 4. As discussed above, Wakerley teaches that the anode half cell is supplied with a hydrogen rich stream. However, Wakerley fails to specifically teach the source of this hydrogen.
However, Ramaswami teaches an effective hydrogen source for on demand usage in a hydrogen gas consuming device comprises a water electrolysis cell (Paragraphs 0064 and 0067). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the hydrogen needed for the apparatus of Wakerley via connection to a water electrolysis cell with the expectation of effectively providing the hydrogen as taught by Ramaswami.
Wakerley further teaches that the separating layer produces a carbon dioxide product stream (Paragraphs 0039-0042 and 0067-0072; Figures 3, 7 and 8). However, Wakerley fails to specifically teach a use for this carbon dioxide stream.
However, Kashi teaches that carbon dioxide can be converted into valuable products such as ethylene and carbon monoxide in a carbon dioxide electrolyzer (Abstract; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to connect the carbon dioxide stream of Wakerley to a carbon dioxide electrolyzer in order to allow for the production of a valuable product stream as taught by Kashi.
Response to Arguments
Applicant's arguments filed 17 September 2025 have been fully considered but they are not persuasive. Applicants argue that the new claim limitations are not taught by the prior art; however, as discussed above, the Examiner disagrees.
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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