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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4 March 2026 has been entered.
Amendments
Applicant’s amendments to the claims filed on 4 March 2026 are acknowledged and have been considered for this action.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 102
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 9, 10, 12, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshiki et al. (Japanese Pat. App. JP 2007269522A, hereinafter “Yoshiki”). The previously provided English machine translation of Yoshiki (JP 2007269522A) is relied upon in the analysis below.
Regarding claims 9, 10, and 12, Yoshiki teaches a process for removing impurities generated during a hydrogenation/dehydrogenation cycle from a liquid organic hydrogen carrier (LOHC) (paragraphs 71 and 75), said process comprising contacting said LOHC with a filtering agent (adsorbent, paragraph 69; instant specification paragraph 17), wherein said LOHC is an aromatic liquid (paragraph 75) and wherein the filtering agent is a zeolite (paragraph 69).
Though Yoshiki’s process is targeted to removing polymerized polycyclic compounds ([0062]), because the filtering agents taught by Yoshiki (zeolites, alumina, and silica alumina; [0069]) are essentially the same as the instant invention ([0019]-[0020] and claims 11-12), such materials will also necessarily remove oxygenated derivatives of the LOHC carrier that are inherently generated during the hydrogenation/dehydrogenation cycle.
Regarding claim 15, Yoshiki teaches the method of claim 9, and further teaches the system of their invention comprising a hydrogen storage system (S2, paragraph 75 and Fig.2) that removes impurities via a removal device (1a, which may be columns of a filtering agent/adsorbent per paragraph 69) prior to delivery to a dehydrogenation reactor (2). Therefore, Yoshiki also teaches removing impurities generated during a hydrogenation/dehydrogenation cycle from the LOHC before a step of dehydrogenating the LOHC.
Regarding claim 16, Yoshiki teaches the process of claim 9, as analyzed above, and incorporating this process into a method for producing hydrogen (paragraph 1 and paragraph 75).
Claim Rejections - 35 USC § 103
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 9-10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiki et al. (Japanese Pat. App. JP 2007269522A) in view of Bulgarin et al. (Int. J. Hydrogen Energy 2020, 45, 712-720) and Wunsch et al. (Materials 2020, 13, 277). The previously provided English machine translation of Yoshiki (JP 2007269522A) is relied upon in the analysis below.
Regarding claim 9, Yoshiki teaches a process for removing impurities generated during a hydrogenation/dehydrogenation cycle from a liquid organic hydrogen carrier (LOHC) (paragraphs 71 and 75), said process comprising contacting said LOHC with a filtering agent (adsorbent, paragraph 69; instant specification paragraph 17), wherein said LOHC is an aromatic liquid (paragraph 75) and wherein the filtering agent is a zeolite (paragraph 69).
Yoshiki’s process is targeted to removing polymerized polycyclic compounds ([0062]) and not oxygenated derivates of the LOHC carrier that were generated during the hydrogenation dehydrogenation cycle.
However, Wunsch also teaches about LOHC systems (abstract) and further teaches that by-products may be generated during the reaction cycles, that oxygen-containing impurities are probably caused by atmospheric oxygen, and that the LOHC molecules may themselves decompose at high temperatures associated with the reaction (p. 3, ¶ 1).
Furthermore, Bulgarin teaches that oxygenated LOHC derivates degrade the purity of hydrogen gas generated in LOHC systems (influence of LOHC oxygenate impurities on the quality of the released hydrogen gas.; Conclusion, ¶ 3) and that purification of the LOHC material leads to steeply improved hydrogen quality (pre-purifying of the perhydro dibenzyltoluene prior to the dehydrogenation experiment (to eliminate water and oxygenates from the applied LOHC material) led equally to a steeply improved hydrogen product quality; Conclusion, ¶ 4).
Taken together the teachings of Wunsch and Bulgarin would suggest to one of ordinary skill in the art that it would be desirable to remove not only oxygenated impurities present in the starting LOHC materials, as explicitly taught by Bulgarin (Conclusion, ¶ 4), but also those that might be generated by adventitious oxygen during the hydrogenation/dehydrogenation cycles, as suggested by Wunsch.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of removing unfavorable impurities in LOHC systems taught by Yoshiki to removing oxygenated impurities present in the LOHC carrier that were generated during the hydrogenation dehydrogenation cycles, as taught by Wunsch and Bulgarin. One of ordinary skill in the art would have been motivated to do so because Bulgarin teaches that such impurities degrade the quality of hydrogen being produced and because Wunsch suggests that such impurities may be generated during the LOHC hydrogenation/dehydrogenation reactions.
Regarding claim 10, modified Yoshiki teaches the process of claim 9, where Yoshiki teaches that the LOHC is an aromatic liquid ([0075]).
Regarding claim 12, modified Yoshiki teaches the process of claim 9, where Yoshiki teaches that the filtering agent is a zeolite ([0069]).
Regarding claim 13, modified Yoshiki teaches the general method of claim 9, and Yoshiki also teaches that toluene is one example of an LOHC that can serve as the hydrogen storage medium ([0020] and [0044]) in the method they describe. Toluene (methylbenzene) meets the limitations of claim 13, where n is equal to zero and B is the aromatic ring benzene substituted by a saturated hydrocarbon radical of one carbon (methyl).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use toluene in the method of modified Yoshiki, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so because Yoshiki teaches that toluene is one example of a suitable LOHC material.
Regarding claim 14, modified Yoshiki discloses the general process of claim 9, as described above, but does not disclose the aromatic liquid being one of those recited in claim 14.
However, Bulgarin (Introduction, ¶ 1 and Conclusion, ¶ 1) and Wunsch (p. 2, ¶ 2) teach that dibenzyltoluene serves as a promising LOHC material with many benefits.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute dibenzyltoluene for toluene in the LOHC system of Yoshiki, as taught by Bulgarin and Wunsch. One of ordinary skill in the art would have been motivated to do so because Wunsch teaches that this LOHC material has many benefits including being flame retardant, having no hazard potential, and having toxicological effects (p. 2, ¶ 2) and Bulgarin also teaches that it is a highly interesting candidate for large-scale hydrogen storage application (p. 713, ¶ 1).
Regarding claim 15, modified Yoshiki teaches the method of claim 9, where Yoshiki further teaches the system of their invention comprising a hydrogen storage system (S2, paragraph 75 and Fig.2) that removes impurities via a removal device (1a, which may be columns of a filtering agent/adsorbent per paragraph 69) prior to delivery to a dehydrogenation reactor (2). Therefore, Yoshiki also teaches removing impurities generated during a hydrogenation/dehydrogenation cycle from the LOHC before a step of dehydrogenating the LOHC.
Regarding claim 16, modified Yoshiki teaches the process of claim 9, where Yoshiki teaches incorporating this process into a method for producing hydrogen (paragraph 1 and paragraph 75).
Regarding claim 17, modified Yoshiki teaches the process of claim 9, where Bulgarin teaches carbon oxides such as CO are undesirable in the system (p. 713, col. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the filtering agent of Yoshiki to also remove unwanted CO impurities from the LOHC carrier. One of ordinary skill in the art would have been motivated to do so because CO degrades the quality of hydrogen produced, as taught by Bulgarin.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshiki et al. (Japanese Pat. App. JP 2007269522A) in view of Bulgarin et al. (Int. J. Hydrogen Energy 2020, 45, 712-720) and Wunsch et al. (Materials 2020, 13, 277), as applied to claim 9 above, and further in view of Armarego and Chai (“Purification of Laboratory Chemicals” 6e, Butterworth-Heinemann, 2009, hereinafter “Armarego”), and as evidenced by and Hosterman et al. (“Bentonite and Fuller’s Earth Resources of the United States”, USGS Professional Paper 1522, US Department of the Interior, 1992, hereinafter “USGS”). The previously provided English machine translation of Yoshiki (JP 2007269522A) is relied upon in the analysis below.
Regarding claim 11, modified Yoshiki teaches the process of claim 9, as described above, where Yoshiki teaches using adsorbent materials as the filtering agent to purify the aromatic liquid, and also teaches toluene as one such aromatic liquid to be used in their system (paragraph 64). Yoshiki does not disclose using any of the filtering agents comprising the compounds in the group of claim 11.
However, Armarego teaches that fuller’s earth is a highly effective adsorbent material (page 43, Table 11) and that fuller’s earth can be used to purify toluene in particular (page 343, “Toluene”). Because fuller’s earth refers to bentonite and bentonitic clays with decolorizing capacity (USGS, page 2, column 2, paragraphs 2-3) and these clays are minerals based on silicates (page 5, column 1, “Minerology”), Armarego teaches the additional limitations imposed by claim 11.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the adsorbent filtering agent of fuller’s earth, a mineral based on silicates, as taught by Armarego in the method of Yoshiki. One of ordinary skill in the art would have been motivated to do so because this adsorbent filtering agent is listed as the most effective by Armarego (page 43, Table 11) and is suggested for purifying toluene in particular (page 343).
Response to Arguments
Applicant's arguments filed 4 March 2026 have been fully considered but they are not persuasive.
Applicant is correct that Yoshiki’s purpose is to remove impurities that are distinct from those instantly claimed. However, Yoshiki’s method would still serve to remove the same impurities as instantly claimed because it uses filtering agents that are substantially similar (zeolites) to those claimed. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In any case, the amended claims are alternatively rejected over Yoshiki in view of Bulgarin and Wunsch, where Bulgarin and Wunsch teach the problems associated with oxygenated derivatives of the LOHC in a hydrogen generation system, and therefore motivate their removal in addition to the impurities identified by Yoshiki.
Applicant’s arguments with respect to the dependent claims are either unpersuasive for the same reasons as above, or moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 5,202,514 A discloses that fuller’s earth may be used to purify benzyltoluene oligomers (col. 3, line 46).
US 2024/0217814 A1 discloses removing oxygen-carrying impurities from LOHC materials. This publication currently qualifies as prior art under 35 USC § 102(a)(2) because it has an effective filing date of 19 April 2021, which is before the PCT filing date of the instant application. While the instant application claims priority to FR2007313 (filed 10 July 2020), Applicant would not be able to rely upon the certified copy of the foreign priority application to overcome a rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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