DETAILED ACTION
Claim(s) 1-7 and 12 were rejected in Office Action mailed on 07/24/2026.
Applicant filed RCE without amending claims on 08/24/2026.
Claim(s) 1-15 are pending, and claim(s) 8-11 and 13-15 are withdrawn.
Claim(s) 1-7 and 12 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/24/2026 has been entered.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,280,367 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claim requires a method for preparing an aluminum salt comprising: (a) reacting activated aluminum metal (Al(0)) with an anion donor in an aqueous solution; (b) producing an aluminum salt and one or more byproducts of the reaction; and (c) optionally separating the aluminum salt from the byproducts.
The patent claims meet all limitations of the present claim. Specifically, the patent claim 1 recites a method of reacting an activated aluminum, the method comprising: exposing the activated aluminum to an aqueous solution, wherein the activated aluminum comprises aluminum combined with gallium and/or indium; reacting the aluminum in the activated aluminum with water in the aqueous solution to generate hydrogen and aluminum ions; and maintaining the aluminum ions dissolved in the aqueous solution during the reaction; and patent claim 8 recites further comprising precipitating aluminum hydroxide (reading upon an aluminum salt).
Given that hydrogen is a gas, which would necessarily be separated from aluminum hydroxide precipitated.
Furthermore, given that the patent method produces an aluminum salt, therefore the method of patent can necessarily be used for preparing an aluminum salt.
Claims 1 and 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19033841 (reference co-pending). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a method for preparing an aluminum salt comprising: (a) reacting activated aluminum metal (Al(0)) with an anion donor in an aqueous solution; (b) producing an aluminum salt and one or more byproducts of the reaction; and (c) optionally separating the aluminum salt from the byproducts.
The patent/co-pending claims meet all limitations of the present claims. Specifically, co-pending a method for producing oxygen gas, the method comprising: producing aluminum nitrate using an activated aluminum alloy and nitric acid; and heating the aluminum nitrate to produce the oxygen gas (co-pending claim 1); wherein producing aluminum nitrate includes precipitating aluminum nitrate (aluminum nitrate reads upon an aluminum salt) (co-pending claim 5); wherein reacting the activated aluminum alloy with the water produces hydrogen (hydrogen reads upon one or more byproducts of the reaction) (co-pending claim 8).
Given that the co-pending method produces an aluminum salt, therefore the method of patent can necessarily be used for preparing an aluminum salt.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Slocum, US 2016/0355918 A1 (Slocum).
Regarding claim 1, Slocum discloses a reaction wherein aluminum, reacts with water to produce hydrogen (wherein hydrogen reads upon one or more byproducts of the reaction), wherein the alumina is penetrated with a gallium-based eutectic (wherein aluminum penetrated with a gallium-based eutectic reads upon activated aluminum metal) (Slocum, Abstract).
Slocum further discloses Al(OH)3 is also produced when Al reacts with H2O (Slocum, [0002]), wherein Al(OH)3 reads upon an aluminum salt, and H2O reads upon an anion donor in an aqueous solution.
Given that hydrogen is a gas, which would necessarily be separated from Al(OH)3, i.e., Al(OH)3 is separated from hydrogen, reading upon separating the aluminum salt from the byproducts.
Furthermore, given that the reaction of Slocum produces Al(OH)3, which reads upon an aluminum salt, therefore the reaction of Slocum necessarily can be used for preparing an aluminum salt.
Regarding claim 2, as applied to claim 1, Slocum further discloses in FIG. 9A-9C, hydrogen generation systems in which different shaped of activated aluminum are used, which are necessarily solid.
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 3-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Slocum as applied to claim 1 above, and further in view of Yu et al., Effects of concentrations of NaCl and organic acid on generation of hydrogen from magnesium metal scrap, International Journal of hydrogen energy, 2012 (Yu).
Regarding claims 3-5, as applied to claim 1, Slocum does not explicitly disclose wherein the anion donor is a soluble acid, a soluble base or a soluble salt.
With respect to the difference, Yu teaches producing H2 using Mg metal (Yu, Abstract). Yu specifically teaches producing H2 using Mg metal in aqueous organic acid, e.g., citric acid (Yu, Abstract).
As Yu expressly teaches, H+ mobility and H+ concentration in solution affected the total cumulative volume of generated H2 leading to that the highest H2 yield occurred at some intermediate citric acid concentration in sea water (Yu, page 3039, left column, 2nd paragraph); H2 yield was highest when the seawater contained 30 wt.% citric acid (Yu, Abstract)
Yu is analogous art as Yu is drawn to producing H2 using Mg metal.
In light of the motivation of reacting metal with citric acid to product H2, as taught by Yu, it therefore would have been obvious to a person of ordinary skill in the art to add citric acid to the water in Slocum, when reacting with activated aluminum to produce H2, in order to achieve higher H2 yield, and thereby arrive at the claimed invention.
Regarding claims 6 and 12, as applied to claim 1, Slocum in view of Yu further teaches Fig. 9B (also shown below), wherein the activated metal is immersed in aqueous solution; produced hydrogen is sent through an outlet (Slocum, [0087]); hydrogen can then react with oxygen in a fuel cell to produce electricity (Slocum, Abstract), therefore, the produced hydrogen would necessarily be allowed to bubble out of solution and Slocum in vie of Yu would necessarily comprise collecting the hydrogen in order to react with oxygen in a fuel cell to produce electricity.
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Slocum, FIG. 9B
Regarding claim 7, as applied to claim 1, given that Slocum in view of Yu teaches an identical or substantially identical process, i.e., reacting activated aluminum metal with citric acid, with that of the present invention (claims 1 and 7), therefore it is clear that in the reaction of Slocum in view of Yu, the activated aluminum would necessarily react with citric acid to form aluminum citrate and H2.
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).
Response to Arguments
In response to Applicant’s remark, regarding the double patenting rejection to be held in abeyance, Applicants’ request that the double patenting rejections to be held in abeyance is noted. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP 804 IB and IB1).
Applicant primarily argues:
“(i) Water is not an "anion donor" under the specification's own definition, and the Action's reading of "anion donor" is inconsistent with the intrinsic record
The Action's position that "water meets this definition of 'anion donor"' (paragraph 15) is incorrect as a matter of both chemistry and claim construction. The specification expressly defines the term:
"the term 'anion donor' refers to a chemical entity capable of providing an anion for pairing with aluminum in order to form an aluminum salt. The anion donor may be a soluble acid, base, or salt." Specification as filed, 27
The key operative phrase is "for pairing with aluminum in order to form an aluminum salt." An anion donor, as defined in the intrinsic record, is a chemical entity that provides a discrete, recognizable anion (citrate, oxalate, nitrate, sulfate, phosphate, chloride, fluoride, hydroxide from a base or salt, etc.) that pairs with A3+ to produce the target aluminum salt as the intended synthetic outcome. The dependent claims reinforce this understanding. Claim 3 recites that the anion donor "is a soluble acid, a soluble base, or a soluble salt," and claim 5 enumerates specific soluble acids: "citric acid, oxalic acid, nitric acid, sulfuric acid, phosphoric acid, hydrogen chloride, and hydrogen fluoride." Each of these species is deliberately added as a reagent to provide a specific anion to react with aluminum. None of Slocum's disclosed reaction conditions includes any such reagent; Slocum uses only water.
The Action's contention that water qualifies because the hydroxide ion of water reacts with aluminum to form Al(OH)3 improperly conflates the solvent/reaction medium with the defined anion donor. Water in Slocum's system is the sole reaction medium; it is not dissolved into an aqueous solution in the role of an anion-providing reagent. The intrinsic record is consistent and clear: the "aqueous solution" in claim 1 is the solution medium in which a separately introduced anion donor is dissolved. Claim 1 recites "reacting activated aluminum metal (Al) with an anion donor in an aqueous solution"; "in an aqueous solution" is the spatial setting for the anion donor, not a description of the anion donor itself. To treat water simultaneously as both the "aqueous solution" and as the "anion donor" dissolved therein is internally inconsistent and reads the anion donor element out of the claim entirely.
Under the principle of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en bane), claims are to be given their broadest reasonable interpretation consistent with the specification, not a reading that renders claim terms superfluous or that is inconsistent with the definition provided in the intrinsic record. Reading water as an anion donor renders "anion donor" meaningless as a separate claim element: every reaction involving aluminum and any aqueous medium would then satisfy the limitation, a reading no reasonable reading of the specification supports. The Action's "broadest reasonable interpretation" here is not reasonable; it is contrary to the specification.
Furthermore, this point is confirmed structurally by comparing Slocum's chemistry with the claimed chemistry. The specification describes the anion donor's function in producing specifically targeted aluminum salts:
"the rapid oxidation of Al0 when it reaches aqueous solution provides a steady source of aluminum cations, which rapidly combine with the anions of the anion donor (as presented in solution)." Specification as filed, 27
The anions of the anion donor, as described, are the ions supplied to solution by a deliberately dissolved reactant (an acid, base, or salt). In Slocum, there are no such dissolved anion-donor species. The reaction Slocum identifies is the standard aluminum-water reaction (Slocum, 2):
"2A1 + 6H2O [Wingdings font/0xE0] 2A1(OH)3 + 3H2 + Heat [Eq. 1]"
This is a reaction between a metal and water. There is no dissolved anion donor of any kind in Slocum's reactor beyond water itself. Accordingly, Slocum does not disclose the "anion donor" element of claim 1.”
Remarks, p. 5-7
The Examiner respectfully traverses as follows:
Firstly, while applicants point to the specification to clarify the definition of “anion donor” as a chemical entity capable of providing an anion for pairing with aluminum in order to form an aluminum salt, it is noted that water meets this definition of “anion donor”, given that the hydroxide ion of water reacts with aluminum and forms Al(OH)3 (emphasis added), absent evidence to the contrary.
Secondly, regarding the disclosure in the specification that “The anion donor may be a soluble acid, base, or salt”, the disclosure is merely provided for exemplary purpose, not provided as a definition.
Applicant further argues:
“(ii) The claimed "separating the aluminum salt from the byproducts" step is not disclosed by Slocum
The Action argues that because hydrogen is a gas, it "would necessarily be separated from Al(OH)3" and that this phase separation "read[s] upon separating the aluminum salt from the byproducts." (FOA, p. 7). Applicant respectfully submits this argument fails for several independent reasons.
First, the Action's own analysis reveals that in Slocum the H2 is what is separated, not the aluminum salt. Claim 1, step (c) requires "separating the aluminum salt from the byproducts," meaning the aluminum salt is what is collected and purified as the product. In Slocum, the aluminum salt (whatever form of aluminum oxide/hydroxide is incidentally produced) is not separated, collected, or processed as a product in any manner. It is the hydrogen gas that is collected and used. As Slocum's Abstract plainly states:
"the aluminum objects can be reacted in a reactor to produce hydrogen which can, for example, react with oxygen in a fuel cell to produce electricity." Slocum, Abstract.
The Al(OH)3 that incidentally forms in Slocum's reactor is, as described throughout Slocum, a problematic solid that fouls the reactor. Slocum discusses these solids not as a product to be purified, but as a reactor-management challenge. The specification of our application, by contrast, makes clear that the "separating" step is a purposive, affirmative act directed to the aluminum salt as the desired product:
"In some embodiments, the methods disclosed herein may... include a step of separating the aluminum salt from the byproducts of the reaction. As used herein, 'separating' means disassociating, removing from solution, and/or purifying the aluminum salt by any suitable means, such as extraction, precipitation or the like."
Specification as filed, 34
The specification further provides concrete examples in which the aluminum salt, as a desired, soluble product, is produced in solution and is available for purification steps such as transferring the solution, drying, or other purification. In Example 1: "Aluminum citrate is formed as a soluble product (dissolved in aqueous solution)." (Specification, 37). In Example 2: "Aluminum oxalate is formed as a soluble product (dissolved in aqueous solution)." (Specification, 38). These exemplify step (c) of claim 1; the aluminum salt product, dissolved in solution, is separated (by transferring the solution, drying, etc.) from byproducts. This is a fundamentally different operation from the passive phase difference between a gas (H2) and a precipitated solid (Al(OH)3) occurring at the bottom of a hydrogen fuel reactor.”
Remarks, p. 7-8
The Examiner respectfully traverses as follows:
Given that claim 1 does not recite specific steps regarding separating the aluminum salt, and Slocum discloses Al(OH)3 is also produced when Al reacts with H2O (Slocum, [0002]), wherein Al(OH)3 reads upon an aluminum salt, and H2O reads upon an anion donor in an aqueous solution; and given that hydrogen is a gas, which would necessarily be separated from Al(OH)3, i.e., Al(OH)3 is separated from hydrogen, therefore Slocum’s disclosure reads upon separating the aluminum salt from the byproducts, absent evidence to the contrary.
Applicant further argues:
“Second, to the extent the Action argues that Al(OH)3 precipitating and gas bubbling upward in Slocum's reactor constitutes a "separation" within the scope of claim 1, this reads the purposive separation step of claim 1(c) as being automatically and necessarily satisfied by any reaction that produces a gas and a solid simultaneously. That interpretation would render step (c) meaningless; it would be satisfied by any two-phase product system. The specification's definition of "separating" as a purposive act of "disassociating, removing from solution, and/or purifying the aluminum salt" forecloses this reading.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
The specification provides a definition for separating as “disassociating, removing from solution, and/or purifying the aluminum salt by any suitable means, such as extraction, precipitation or the like”, therefore, the dissociation or precipitation of Al(OH)3 (i.e., a solid phase) from gaseous H2 would certainly meet such definition, absent evidence to the contrary.
Applicant further argues:
“Third, and relatedly, Slocum's operational goal is explicitly hydrogen production. No step of Slocum's method is directed to recovering, purifying, or even retaining the Al(OH)3 as a useful product. Slocum does not describe, suggest, or contemplate any processing step directed to the aluminum-containing product. Without a step in Slocum's method directed to separating the aluminum salt as a product, element (c) of claim 1 is simply absent from Slocum's disclosure.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, given that the reaction of Slocum produces Al(OH)3, which reads upon an aluminum salt, therefore the reaction of Slocum necessarily can be used for preparing an aluminum salt.
Furthermore, the recitation in the claims that the method is “for preparing an aluminum salt” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Slocum discloses the method as presently claimed, it is clear that the method of Slocum would be capable of performing the intended use, i.e. for preparing an aluminum salt, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Secondly, claim 1 does not recite specific steps for “separating the aluminum salt” that are not met by Slocum, therefore, it remains the examiner’s position that Slocum meets claim 1, including “separating the aluminum salt”.
Applicant further argues:
“(iii) Slocum does not disclose a method "for preparing an aluminum salt"
The preamble of claim 1 recites "A method for preparing an aluminum salt." While preambles are not always limiting, the preamble here provides necessary context for the method steps and defines the purpose of the claimed method. The claimed method is a synthesis method for which an aluminum salt is the intended product. Every step of claim 1 (the use of an anion donor specifically selected to provide the correct anion for the target salt, the production of the target aluminum salt and byproducts, and the separation of the aluminum salt from byproducts) is oriented toward that purpose.
Slocum's method is a method for generating hydrogen as fuel. The preamble of Slocum's own disclosure states that it provides "a stable and high-yielding hydrogen fuel source." (Slocum, 3). The aluminum material in Slocum is the fuel; hydrogen is the product; the Al(OH)3 is an incidental waste product. As acknowledged in Applicants' prior response and not meaningfully contested by the Action, Slocum does not at any point "identify any aluminum salt as the intended product of the method" nor does it "disclose any step of separating an aluminum salt from byproducts in the sense of claim 1(c)." (Response to Non-Final Office Action, p. 7-8; quoted in FOA, 14). The Action responds by repeating that "under broadest reasonable interpretation, Slocum meets the present claim 1." But repeating the conclusion does not constitute the requisite reasoning. To anticipate, a reference must disclose each and every claim limitation. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The Action has not identified any teaching in Slocum of a step of purposively separating an aluminum salt as the intended product, because no such teaching exists in Slocum.”
Remarks, p. 8-9
The Examiner respectfully traverses as follows:
The recitation in the claims that the method is “for preparing an aluminum salt” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Slocum discloses the method as presently claimed, it is clear that the method of Slocum would be capable of performing the intended use, i.e. for preparing an aluminum salt, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention, absent evidence to the contrary.
Applicant further argues:
“B. The §103 rejection fails at the outset because the base reference (Slocum) does not disclose the claimed method, including the "anion donor" and "separating" limitations of claim 1
Because claims 3-7 and 12 each depend from claim 1, the § 103 rejection depends entirely on Slocum supplying the limitations of claim 1 that Yu does not. As demonstrated at length above in Section 2, Slocum does not disclose (i) an anion donor as defined in the specification and claims, and (ii) a step of separating the aluminum salt from the byproducts as a purposive step directed to the aluminum salt as a product. The Action's § 103 rejection inherits these deficiencies and, for the reasons discussed in Section 2, the combination of Slocum and Yu cannot render obvious claims that require limitations absent from both references individually.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Slocum meets the present claim 1, including “anion donor” and “separating”, as set forth above.
Applicant further argues:
“C. The motivation to combine Slocum and Yu is legally insufficient and technically
unsound
Even setting aside the § 102 deficiency of Slocum with respect to claim 1, the Action's proposed motivation to combine is directed to an entirely different objective than the claimed invention, and, respectfully, it is the wrong motivation for the claimed method. The Action's stated motivation is to "add citric acid to the water in Slocum... in order to achieve higher H2 yield." Final Office Action, paragraph 12. This motivation, even if technically valid, would lead one of skill in the art to optimize a hydrogen-generation process, not to create a method for preparing aluminum salts. The KSR standard requires that the motivation to combine must be directed to the same problem or desired improvement that the claimed invention addresses. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, the Action's motivation leads in an entirely different direction.
Furthermore, the Action's technical premise, that a skilled artisan in the hydrogen-generation field would look to Yu's magnesium-in-citric-acid experiments and straightforwardly apply them to Slocum's aluminum-in-water system, ignores critical differences between magnesium and aluminum chemistry that a person of ordinary skill in the art would immediately recognize. Magnesium reacts vigorously with water and acidic solutions under ambient conditions without requiring any special activation. Aluminum, by contrast, does not react with water under ambient conditions because of its passive oxide layer, which is precisely why Slocum's entire inventive contribution is the preparation of a special Ga/In-eutectic-activated aluminum material to enable that reaction. Yu's experiments involve no activation chemistry and no specially treated metal. The reaction mechanism for Mg in citric acid (Yu) is fundamentally different from the mechanism for activated Al in water (Slocum): Yu's Mg dissolves to generate Mg2+ which does not form a blocking hydroxide layer, while Slocum's reaction is predicated on a specific process of grain- boundary eutectic infiltration to continuously expose fresh Al0 to water. A skilled artisan would not treat these two systems as interchangeable for the purpose of optimizing reaction conditions.
Moreover, Slocum's system is specifically engineered around the use of pure water as the reaction medium because water is safe, portable, available, and poses no chemical hazard. Slocum's own specification emphasizes the portability and safety of the system repeatedly. Slocum, 3, 29, 48, 54. The addition of substantial quantities of citric acid (Yu uses 30 wt% citric acid for optimal H2 yield) would fundamentally alter the nature of Slocum's system: it would introduce a corrosive acid solution, increase the weight and volume of the carried reagent, and undermine the very design rationale of a portable, water-only fuel system. Contrary to the Action's position that "Slocum does not teach away from adding other additives," the practical reality is that the modifications Yu teaches would affirmatively frustrate Slocum's stated design goals. This is a textbook reason why a skilled artisan would not be motivated to make the proposed combination.
The Action states that Yu "provides proper motivation to combine, i.e., H2 yield was highest when the seawater contained 30 wt.% citric acid." FOA, paragraph 17. But this conflates the question of whether Yu discloses a benefit with the question of whether it would be obvious to apply that benefit to Slocum. The motivation to combine must account for the overall impact of the modification on the reference system as a whole. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). A modification that improves one parameter while degrading the fundamental utility, safety, and design philosophy of the base reference does not provide a proper motivation to combine.”
Remarks, p. 11-12
The Examiner respectfully traverses as follows:
Firstly, it is not required for the teaching reference Yu, to solve the same problem as the present invention.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Secondly, given that Slocum and Yu are analogous arts, i.e., both are drawn to producing H2 using metal. Yu provides a proper motivation to combine, i.e., H+ mobility and H+ concentration in solution affected the total cumulative volume of generated H2 leading to that the highest H2 yield occurred at some intermediate citric acid concentration in sea water (Yu, page 3039, left column, 2nd paragraph), therefore, it remains examiner’s position to combine Slocum with Yu.
Fourthly, a given course of action often has simultaneous advantages and disadvantages and this does not necessarily obviate a motivation to combine the references. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). See Winner, 202 F.3d at 1349 n.8 “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Therefore, it remains examiner’s position that while Slocum teaches the use of water in reaction with aluminum, Slocum does not teach away from adding other additives, such as citric acid, in order to achieve benefits such as improved H2 yield.
Applicant further argues:
“D. Even if the references were combined as proposed, the combination would not arrive at the claimed invention
Applicant respectfully submits that the Action's § 103 rejection predicated on the In re Best "necessarily produces" rationale fails here because the question is not merely whether reacting activated aluminum with citric acid can produce aluminum citrate stoichiometrically. The question is whether the combination of Slocum and Yu, as understood by a person of ordinary skill in the art, would lead that person to perform a method "for preparing an aluminum salt" that includes "separating the aluminum salt from the byproducts" as a purposive step. Applicant submits it would not.
As the court explained in In re Best, the "necessarily produces" reasoning applies 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. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Action asserts that Slocum in view of Yu "teaches an identical or substantially identical process." FOA, 12. But this assertion is not correct. The claimed process is a method for preparing an aluminum salt, in which: (a) a deliberately chosen anion donor is dissolved in aqueous solution; (b) activated aluminum is reacted with the anion donor to produce a target, soluble aluminum salt product and byproducts; and (c) the aluminum salt is separated from the byproducts as the intended product. In contrast, the combination of Slocum and Yu, as the Action explicitly characterizes it, is a hydrogen-generation process in which citric acid is added to increase H2 yield. The purpose, the product of interest, and the manner in which the reaction outcome is handled are all different. These are not identical or substantially identical processes.
Yu itself provides further confirmation that the organic acid is purely incidental to any salt that might form. Yu's entire paper analyzes H2 generation rates and volumes. The abstract, introduction, results, and conclusions are all framed around hydrogen output. Nothing in Yu is directed to any metal salt as a product, and Yu involves magnesium, not aluminum. It is not possible to read Yu and arrive at a method for preparing aluminum salts.
This critical distinction - that the claimed invention is a salt synthesis scheme and the prior art combination is a hydrogen production scheme - was raised squarely in Applicants' prior response and was not meaningfully rebutted by the Action. The Action's responses to paragraphs 17-19 of the Final Office Action simply reassert that Slocum meets claim 1 and that Yu provides motivation to combine for H2 yield, without addressing Applicant's argument: that neither Slocum nor Yu, alone or in combination, teaches or suggests performing the claimed reaction sequence as a method for making an aluminum salt with a deliberate, purposive separation step directed to the aluminum salt as the intended product.”
Remarks, p. 12-13
The Examiner respectfully traverses as follows:
Firstly, the fact remains that given that Slocum in view of Yu teaches an identical or substantially identical process, i.e., reacting activated aluminum metal with citric acid, with that of the present invention (claims 1 and 7), therefore it is clear that in the reaction of Slocum in view of Yu, the activated aluminum would necessarily react with citric acid to form aluminum citrate and H2, absent evidence to the contrary.
Secondly, it is not required for the teaching reference Yu, to solve the same problem as the present invention.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Lastly, the recitation in the claims that the method is “for preparing an aluminum salt” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Slocum discloses the method as presently claimed, it is clear that the method of Slocum would be capable of performing the intended use, i.e. for preparing an aluminum salt, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention, absent evidence to the contrary.
Applicant further argues:
“Claim 7 recites a method "wherein Al0 is reacted with citric acid (H3(C6H5O7)) to form aluminum citrate (Al(C6H5O7)) and H2." This claim is specifically directed to aluminum citrate as the product of the reaction. Slocum produces Al(OH)3 (not aluminum citrate) from its water-only reaction, and Yu produces magnesium salts (not aluminum citrate) from its Mg-in-citric-acid reaction. The Action's "necessarily produces" reasoning for claim 7 requires the additional inferential step that if citric acid were added to Slocum's system, the result would be aluminum citrate. But this inference is not supported by either reference and requires the assumption, not the teaching, that the skilled artisan would combine these references in this way for this purpose.”
Remarks, p. 14
The Examiner respectfully traverses as follows:
The fact remains that given that Slocum in view of Yu teaches an identical or substantially identical process, i.e., reacting activated aluminum metal with citric acid, with that of the present invention (claims 1 and 7), therefore it is clear that in the reaction of Slocum in view of Yu, the activated aluminum would necessarily react with citric acid to form aluminum citrate and H2, absent evidence to the contrary.
Applicant further argues:
“Claims 6 and 12 recite, respectively, allowing a hydrogen gas byproduct to bubble out of solution, and collecting a hydrogen gas byproduct. Slocum does collect hydrogen, but as the primary product of its hydrogen fuel system, not as a byproduct of an aluminum salt synthesis. The distinction between hydrogen as primary product (Slocum) and hydrogen as byproduct (claims 6 and 12, consistent with claim l's framing of the aluminum salt as the intended product) is structurally and functionally significant, and neither Slocum nor Yu collapses this distinction. As the specification states:
"In certain embodiments in which the anion donor is a soluble acid, the byproduct of the reaction is hydrogen gas (H2). The hydrogen gas may be allowed to bubble out of solution, where it may can be collected and used, or safely ventilated into the atmosphere." Specification as filed, 33
This framing, consistent with the claim language, places hydrogen in the role of byproduct, not primary product, which is the inverse of Slocum's and Yu's framing of hydrogen. Claims 6 and 12 are therefore non-obvious in the context of the overall claimed method.”
Remarks, p. 14
The Examiner respectfully traverses as follows:
Given that Slocum discloses collecting hydrogen, Slocum meets this limitation, disregard whether hydrogen is generated as main product or a by product, absent evidence to the contrary.
Therefore, the Examiner has fully considered Applicants’ arguments, but they are found unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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
