DETAILED ACTION
Claim(s) 1-7 and 12 were rejected in Office Action mailed on 11/18/2025.
Applicant filed a response, amended claim(s) 1, 6-7 and 12, withdrew claim(s) 8-11 and 13-15 on 02/18/2026.
Claim(s) 1-15 are pending, and claim(s) 8-11 and 13-15 are withdrawn.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 .
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:
“These passages show that in the claimed methods, the reaction endpoint is a clear solution containing a dissolved, water-soluble aluminum salt (e.g., aluminum citrate, aluminum oxalate), which can then be separated from other materials (gases, residual solids, or co-dissolved species) by transferring, drying, or other purification steps. That is the described context for step (c).
Slocum is directed to a different purpose and different handling of the aluminum solid. Its Abstract states:
"Aluminum can be used as a fuel source when reacted with water if its native surrounding oxide coating is penetrated with a gallium-based eutectic.... After the aluminum objects are treated, 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 describes activated aluminum reacting with water to produce hydrogen and solid aluminum reaction products (aluminum hydroxide/oxy-hydroxide). Those solids are sparingly soluble and accumulate as a slurry at the bottom of the reactor. Slocum discusses these solids in terms of fouling and disposal, not as materials to be purified as products. Nowhere does Slocum:
" identify any aluminum salt as the intended product of the method; or
" disclose any step of separating an aluminum salt from byproducts in the sense of claim 1(c).”
Remarks, p. 7-8
The Examiner respectfully traverses as follows:
Firstly, Slocum meets the present claim 1, including producing an aluminum salt and separating the aluminum salt, as set forth above on pages 6-7.
Secondly, the present claim 1 does not require the reaction endpoint being a clear solution containing a dissolved, water-soluble aluminum salt. Instead, regarding the aluminum salt, claim 1 only recites “an aluminum salt”.
Applicant further argues:
“The Action equates Slocum's water with the claimed "anion donor." Applicant submits that such a reading is inconsistent with the present specification and dependent claims, which defines "anion donor" as:
"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, [0027].”
Remarks, p. 8
The Examiner respectfully traverses as follows:
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, absent evidence to the contrary.
Applicant further argues:
“Applicants do not dispute that, as a matter of chemistry, aluminum hydroxide is an aluminum salt in a broad sense and that such a solid may form in Slocum's systems. The issue under § 102 is what Slocum teaches one of ordinary skill to do. Slocum teaches using activated aluminum as a fuel to generate hydrogen with water; any aluminum hydroxide solid forms incidentally as a sparingly soluble precipitate at the bottom of the reactor. Slocum does not teach reaction conditions tailored to produce aluminum hydroxide as a useful product, nor any processing or separation steps directed to isolating aluminum hydroxide (or any other aluminum salt) as a purified product.
By contrast, amended claim 1 requires a method:
" whose purpose is "preparing an aluminum salt";
" that uses an "anion donor" as defined in the instant specification; and
" that must include a step of "separating the aluminum salt from the byproducts."”
Remarks, p. 8-9
The Examiner respectfully traverses as follows:
Firstly, under broadest reasonable interpretation, Slocum meets the present claim 1, including 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) separating the aluminum salt from the byproducts, as set forth above on page 6.
Secondly, 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.
Applicant further argues:
“Applicants respectfully submit that the combination of Slocum and Yu does not teach or suggest the claimed methods for preparing aluminum salts with a required separation step.
Yu's work is clearly framed around magnesium, not aluminum. Its title is:
"Effects of concentrations of NaCl and organic acid on generation of hydrogen
from magnesium metal scrap."
Yu systematically studies low-grade magnesium scrap in aqueous citric and acetic acid solutions (with NaCl) and reports hydrogen evolution rates and yields. Yu does not disclose aluminum, activated aluminum, or any aluminum salt preparation. Its motivation is to utilize magnesium scrap for hydrogen, not to develop general salt synthesis methods.”
Remarks, p. 9
The Examiner respectfully traverses as follows:
Firstly, Slocum meets the present claim 1, including producing an aluminum salt and separating the aluminum salt, as set forth above on pages 6-7.
Secondly, it is noted that while Yu does not disclose all the features of the present claimed invention, Yu is used as teaching reference, namely add citric acid to the water in Slocum, when reacting with activated aluminum to produce H2, in order to achieve higher H2 yield, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Thirdly, given that Yu teaches producing H2 using Mg metal, which is a similar process with that of the Slocum, which is producing H2 using Al metal, and Yu provides proper motivation to combine, i.e., H2 yield was highest when the seawater contained 30 wt.% citric acid, therefore it is examiner’s position that it would have been obvious to a person of ordinary skill in the art to combine the Slocum with Yu.
Applicant further argues:
“Slocum is, as noted above, a water-only activated aluminum fuel system designed to use water as the reactive medium for portable, safe hydrogen generation. Slocum emphasizes the practical
advantages of using water (availability, low hazard, simplicity) with Ga/In-activated aluminum. Adding substantial amounts of organic acids (as Yu does for magnesium) to Slocum's system would:
" alter the handling profile from benign water to corrosive acid solutions; " increase weight/volume burdens for transported reagents; and " undercut the very advantages Slocum highlights. A person of ordinary skill in the art, starting from Slocum, would not be naturally motivated by Yu's magnesium-in-citric-acid experiments to abandon Slocum's water-only design. Moreover, even if one hypothesizes combining the references and reacting activated aluminum with water plus citric acid, the resulting process would still be viewed as a hydrogen-generation process, because that is the goal in both Slocum and Yu. Neither reference suggests: "
treating any aluminum salt (e.g., aluminum citrate) as the primary product; "
designing reaction conditions for aluminum salt yield, solubility, and purity; or "
performing a step of "separating the aluminum salt from the byproducts".”
Remarks, p. 9-10
The Examiner respectfully traverses as follows:
Firstly, 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.
Second, given that Yu provides proper motivation to combine, i.e., H2 yield was highest when the seawater contained 30 wt.% citric acid, therefore it is examiner’s position that it would have been obvious to a person of ordinary skill in the art to combine the Slocum with Yu.
Applicant further argues:
“In other words, in the claimed invention, aluminum salts (e.g., aluminum citrate, aluminum oxalate) are the intended products, and the process is arranged so that they remain soluble, can be separated from the reaction mixture, and can be purified. Hydrogen is relegated to a byproduct. In Slocum and Yu, hydrogen is the primary goal; metal solids or salts are not treated as products to be purified.
Claim 1, step (c) makes this distinction even sharper: every embodiment of claim 1 includes a separation step directed to an aluminum salt as a product. Neither Slocum nor Yu, nor any combination of them, teaches or suggests such a separation step for any aluminum salt:
" Slocum separates hydrogen; it does not separate an aluminum salt product.
" Yu collects hydrogen from magnesium; it does not separate aluminum salts at all.
" Neither reference uses the solubility of an aluminum salt (as in our citrate/oxalate
examples) as a basis for transferring and purifying a desired aluminum product.
In a purely stoichiometric sense, reacting Al0 with citric acid can be written as forming aluminum citrate and H2. But under In re Best, it is not enough that a chemical equation can be written; the question is whether the prior art and the claimed process are truly the same in nature and objective. Here, the combination of Slocum and Yu would still be understood as a hydrogen-generation scheme with incidental solid/waste; the present claims are drafted as a salt-manufacturing scheme with a required separation step for the aluminum salt product.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Firstly, under broadest reasonable interpretation, Slocum meets the present claim 1, including 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) separating the aluminum salt from the byproducts, as set forth above on page 6.
Secondly, 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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