Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of group I and the species of claim 3 encompassing claims 1-2 and 5-9 in the reply filed on 1/23/2026 is acknowledged.
Claims 4 and 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), there being no allowable generic or linking claim. Election was made without traverse.
Specification
The specification states the system ins directed towards water hydrolysis. Hydrolysis is a chemical process in which a molecule of water is added to another substance, causing both the substance and water molecule to split into two parts. However, the current invention is directed towards electrolyzing water which involves only water to split. Thus this invention does not enable how to practice water hydrolysis and is thus inoperative.
For purposes of examination the Examiner will assume that the system is directed towards water electrolysis as stated in the title.
Claim Rejections - 35 U.S.C. § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 101 because the disclosed invention is inoperative and therefore lacks utility.
1. The preamble states the system ins directed towards water hydrolysis. Hydrolysis is a chemical process in which a molecule of water is added to another substance, causing both the substance and water molecule to split into two parts. However, the current invention is directed towards electrolyzing water which involves only water to split. Thus this invention does not describe how to practice water hydrolysis and is thus inoperative.
For purposes of examination the Examiner will assume that the system is directed towards water electrolysis as stated in the title.
It is noted that even though claim 10 is withdrawn, claim 10 also has this defect.
7. Usually feeding direct current to a power source means you are recharging it, but here the claim says that this feeding establishes the potential between the electrodes. However, charging the power source does not establish the electrode potential. Thus this is inoperative.
For purposes of examination the Examiner will assume that it is the power source that is applying the direct current to the electrodes.
2-3 & 5-6, & 8-9. These claims are rejected for being dependent upon a rejected claim.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation 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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
1. The preamble states the system ins directed towards water hydrolysis. Hydrolysis is a chemical process in which a molecule of water is added to another substance, causing both the substance and water molecule to split into two parts. However, the current invention is directed towards electrolyzing water which involves only water to split. Thus this invention does not enable how to practice water hydrolysis.
The following factors show why this is not enabled:
(B) The nature of the invention is not directed towards water hydrolysis since water is electrolyzed;
(C) The state of the prior art does not recognize water hydrolysis as a form of water electrolysis;
(D) The level of one of ordinary skill could not hydrolize water for electrolysis;
(F) The amount of direction provided by the inventor is nonexistent; and
(G) The existence of working examples is nonexistent.
For purposes of examination the Examiner will assume that the system is directed towards water electrolysis as stated in the title.
It is noted that even though claim 10 is withdrawn, claim 10 also has this defect.
7. Usually feeding direct current to a power source means you are recharging it, but here the claim says that this feeding establishes the potential between the electrodes. However, charging the power source does not establish the electrode potential. Thus this is unenabled.
The following factors show why this is unenabled:
(B) The nature of the invention cannot establish a potential between the electrodes with current to a power source;
(C) The state of the prior art cannot establish a potential between the electrodes with current to a power source;
(D) The level of one of ordinary skill cannot establish a potential between the electrodes with current to a power source;
(F) The amount of direction provided by the inventor is nonexistent; and
(G) The existence of working examples is nonexistent.
For purposes of examination the Examiner will assume that it is the power source that is applying the direct current to the electrodes.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1, 3, & 5-8 are rejected under 35 U.S.C. § 103 as being unpatentable over Son et al., Electro-Forward Osmosis, 53 Environmental Science & Tech. 8352 (2019) [hereinafter Son].
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. A system for producing hydrogen and oxygen gases by water hydrolysis (water split into hydrogen and oxygen gases; Son pp. 8352-54, 8357, figs. 1-2), the system comprising:
a vessel comprising a first and a second chamber (cathode and anode chambers; Son pp. 8352-54, figs. 1-2);
a membrane permeable to water ions separating the first chamber and the second chambers … and wherein the membrane is optionally permeable to water such that the first chamber is in fluid communication with the second chamber (reverse osmosis membrane letting water pass; Son p. 8353, figs. 1-2);
a cathode in contact with a catholyte in the first chamber, an anode in contact with an anolyte in the second chamber (cathode and anode in their respective chambers; Son figs. 1-2);
a power source of direct current operably linked to the cathode and the anode (a power source would be inherent in order to supply current; Son pp. 8352-54, figs. 1-2);
… wherein the catholyte comprises a saline solution, brackish water, or seawater (water with NaCl; id.).
Son is silent on wherein the membrane is effective to substantially exclude passage of salt ions.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious. MPEP § 2144.05.
Son describes membrane permeability. Son p. 8353. A person having ordinary skill in the art would have recognized that the solute concentration difference drives water draw and would have wanted to minimize the salt permeability to maintain this solute concentration difference to maximize water draw, hence making it a result-effective variable. See id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have routinely experimented with the variable and determined the optimum or workable range to be inclusive of the claimed range/value(s).
Son is silent on wherein the anolyte comprises a negative ion inert to oxidation.
However, Son describes how either chloride or nitrate (which is inert) may be used as the electrolyte. Son p. 8354, fig. 2.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s by combining the chloride with nitrate as either may be used as electrolyte.
3. The system of claim 1, wherein the membrane is a reverse osmosis (RO) membrane (rejected for similar reasons stated in the claim 1 rejection).
5. The system of claim 1, wherein the membrane resists passage of gases (the membrane has a pore size of 0.25 nm so this would resist passage of gases). Son p. 8353.
6. The system of claim 1, wherein the catholyte is in fluid connection to a source of further catholyte (catholyte fed). Son fig. 2.
7. The system of claim 1, wherein an applied direct current to the power source establishes an electric potential between the cathode and the anode, the membrane allowing for production of hydrogen gas at the cathode and oxygen gas at the anode (a constant current was applied, thus it would have been direct current). Son pp. 8352-54, figs. 1-2.
8. The system of claim 1, wherein the anolyte comprises a higher ionic strength than the catholyte, and wherein the membrane allows water molecules to pass from the catholyte to the anolyte to replace water molecules hydrolyzed due to operation of the system (anolyte has higher concentration and the membrane passes water). Son figs. 1-2.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Son as applied to claim 1 previously, and further in view of Anderson et al., U.S. Patent App. Pub. No. 2012/0305407 A1 [hereinafter Anderson].
1-2. The system of claim 1, wherein the anolyte comprises perchlorate. Son is silent on this. This rejection serves as an alternative rejection to claim 1’s negative ion.
Anderson teaches that chloride and perchlorate both are suitable electrolytes for electrolytic solutions. Anderson [0045].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s system by combining the prior art’s chloride with Anderson’s perchlorate to yield the predictable result of having a suitable electrolyte for an electrolytic solution.
3 & 5-9. These claims are rejected for similar reasons stated in their respective claims.
Claim 9 rejected under 35 U.S.C. § 103 as being unpatentable over Son and alternatively in view of Anderson as applied to claim 1 previously, and further in view of Roeth et al., U.S. Patent App. Pub. No. 2002/0170831 A1 [hereinafter Roeth].
9. The system of claim 1, wherein the catholyte is a buffered saline solution. Son is silent on this.
However, Son teaches that a pH range must be maintained for membrane operation. Son p. 8359.
Roeth teaches using a buffer to electrode zones. Roeth [0014], [0076], [0082], [0106], fig. 1. A person having ordinary skill in the art knows that a buffer helps to maintain a desired pH.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s catholyte with Roeth’s buffer to maintain the pH within range for membrane operation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571) 270-7578. The examiner can normally be reached Monday-Wednesday, 9 AM - 6 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794