DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s amendment to claim 1 is sufficient to overcome the rejection under 35 U.S.C. 112(a) set forth in the prior Office action. However, in view of the change in claim scope, new grounds of rejection based upon the prior art are set forth below.
Applicant’s amendment to claim 12 is sufficient to overcome the rejection under 35 U.S.C. 112(b) set forth in the prior Office action.
Applicant’s amendment to claim 18 is sufficient to overcome the objection to claims 18 and 19 for being dependent upon a cancelled claim.
Applicant's arguments filed 6 January 2026 have been fully considered but they are not persuasive. Applicant has argued that the Office has failed to properly establish that the prior art inherently possesses the claimed configurations of applying a magnetic field to induce magnetic buoyancy.
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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708 B2).
Regarding claim 1, Potchen et al teach (see fig. 2) an electrolysis system including an electrolysis cell (10) that included a fluid reservoir (channels 22), a fluid inlet (54) opening into the fluid reservoir and disposed at a first side of the reservoir, a fluid outlet (56) opening out of the fluid reservoir and disposed on a second side of the reservoir, an electrode (right-most or left-most electrode 20) positioned at a third side of the fluid reservoir, wherein at least a portion of the third side (the lower end) is opposite from the fluid outlet, and one or more magnets (26) that were inherently capable of performing the function of passively detaching gas bubbles from the electrode by applying a magnetic field.
Potchen et al fail to teach the arrangement of the first side, second side, and third side as claimed. Potchen et al do teach all of the elements, just not the elements being arranged as claimed.
However, per MPEP 2144.04.VI.C., absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing, to have rearranged the elements of Potchen et al, such as by placing the outlet on a first side, the inlet on a second side, and the electrode on a third side, where the second side joined the first and third sides as an obvious matter of design choice. Each of the elements taught by Potchen et al continued to perform their same functions if placed in the arrangement as claimed, and Applicant has not provided evidence that the claimed arrangement produced a result different from the arrangement of Potchen et al.
Potchen et al fail to expressly teach that the magnets (26) were “configured to passive detach gas bubbles from the electrode” and were “configured to apply a magnetic field to a two-phase region adjacent the electrode to induce magnetic buoyancy based on different magnetic susceptibilities of gas and liquid and thereby passively detach the gas bubbles from the electrode and create a two-phase flow”. However, a review of the instant specification, especially paragraph [0026] as filed, shows that the claimed configuration is produced by providing a magnet that creates a magnetic field within the electrolysis cell. The magnets (26) of Potchen et al created a magnetic field within the electrolysis cell. Thus, the structure and positioning of the magnets of Potchen et al are identical to those disclosed by the instant specification. Therefore, one of ordinary skill in the art at the time of filing would have expected the magnet structure of Potchen et al to inherently be configured as claimed.
Regarding claim 5, as noted above, the structure described by the instant specification that permits the magnets to by “configured to cause gas bubbles that form on the electrode to detach from the electrode” is allowing the magnetic field produced by the magnet to extend to the electrode-liquid interface. The magnets of Potchen et al exert their magnetic field through the electrodes to the electrode-liquid interface. Thus, the electrolysis cell of Potchen et al is considered to inherently be configured as claimed.
Regarding claim 6, as discussed with respect to claim 1 above, Potchen et al teach the claimed elements, merely in a different spatial relationship. Per MPEP 2144.04.VI.C., absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing, to have rearranged the elements of Potchen et al, such as by placing the outlet on a first side, the inlet on a second side, and the electrode on a third side, where the second side joined the first and third sides as an obvious matter of design choice.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708) as applied to claim 1, above, and further in view of Croat (US 4,496,395).
Potchen et al teach using permanent magnets, but each fail to teach the composition of the magnets.
Croat teaches (see abstract, paragraph spanning cols. 4 and 5) high coercivity permanent magnets that were composed of neodymium and iron, otherwise known as neodymium magnets.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the neodymium magnets taught by Croat for the magnets of Potchen et al because the neodymium magnets of Croat possessed high magnetic coercivity.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708) as applied to claim 1 above, and further in view of Andrews et al (US 2002/0070123).
Potchen et al fail to teach a barrier disposed over the fluid outlet of the electrolysis cell fluid reservoir, the barrier being configured to allow gases to flow through while preventing liquids from passing therethrough.
Andrews et al teach (see fig. 2, abstract, paragraphs [0079]-[0081]) that it was known to enhance the effectiveness of gas-liquid separation for separating gaseous products of electrolysis from an entrained liquid phase by adding a barrier (e.g. 152, 154), wherein the barrier was permeable to the gas being produced, e.g. hydrogen or oxygen or ozone, while being impermeable to the liquid water that is entrained in the gaseous product. The barrier was effective for enhancing the separation of the gas from the entrained liquid.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a barrier as taught by Andrews et al before the fluid outlet of the electrolysis cell of Potchen et al for the purpose of enhancing the separation of the gaseous product of electrolysis from the liquid that may be entrained therein.
Claims 8-10, 16, 18-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708 B2) in view of Tsubouchi et al (US 5,238,547 A).
Regarding claim 8, Potchen et al teach (see figs. 12 and 2) an electrolysis system including a water pump (124) and an electrolysis cell (10) that included a fluid reservoir (channels 22), an electrode (20) at least partially disposed within the fluid reservoir and one or more magnets (26) that were inherently capable of performing the function of passively detaching gas bubbles from the electrode by applying a magnetic field, and a phase separator (separation tank 128) separate from the electrolysis cell and in fluid communication with the electrolysis cell such that gas bubbles can be communicated from the electrolysis cell, the phase separator comprising a reservoir (not shown, but the interior of the tank) inherently including a fluid inlet opening and a fluid outlet opening, and a plurality of conduits (not numbered, but seen in fig. 12) the facilitated fluid communication between the water pump, electrolysis cell and phase separator.
Potchen et al fail to expressly teach that the magnets (26) were “configured to passive detach gas bubbles from the electrode” and were “configured to apply a magnetic field to a two-phase region adjacent the electrode to induce magnetic buoyancy based on different magnetic susceptibilities of gas and liquid and thereby passively detach the gas bubbles from the electrode and create a two-phase flow”. However, a review of the instant specification, especially paragraph [0026] as filed, shows that the claimed configuration is produced by providing a magnet that creates a magnetic field within the electrolysis cell. The magnets (26) of Potchen et al created a magnetic field within the electrolysis cell. Thus, the structure and positioning of the magnets of Potchen et al are identical to those disclosed by the instant specification. Therefore, one of ordinary skill in the art at the time of filing would have expected the magnet structure of Potchen et al to inherently be configured as claimed.
Potchen et al fail to teach that the phase separator was a magnetic phase separator including one or more magnets associated therewith.
Tsubouchi et al teach (see abstract, figs. 1 and 2, and col. 3, lines 8-57) a trough-shaped fluid reservoir for causing gas-liquid separation comprising a fluid inlet and a fluid outlet located adjacent to the bottom surface and the gas outlet being disposed adjacent to the top surface. The gas-liquid separation was enhanced by the use of magnets (17) and an electric current passing through the liquid, wherein the combination of magnetic field and electric current produced a force that separated the liquid phase from the gas phase. The magnet (17) was disposed between the fluid inlet (1) and the fluid outlet (2) such that the two-phase (gas-liquid) fluid flowed into the fluid reservoir via the fluid inlet (1) towards the magnet (17). The liquid portion of the gas-liquid fluid flowed past the magnet and out of the fluid reservoir via the fluid outlet.
Tsubouchi et al fail to expressly teach that the magnets (17) were “configured to attract gas bubbles within the two-phase flow and cause the gas bubbles to collect on or around the one or more magnets of the magnetic phase separator and allow a liquid from the two-phase flow to flow past the one or more magnets and out of the fluid reservoir via the fluid outlet” and were “configured to apply a magnetic field to the two-phase flow to induce magnetic buoyancy based on different magnetic susceptibilities of gas and liquid and thereby attract gas bubbles toward the one or more magnets while allowing the liquid to flow past the one or more magnets and out of the fluid outlet”. However, a review of the instant specification, especially paragraph [0031] as filed, shows that the claimed configuration is produced by providing a magnet that creates a magnetic field within the phase separator. The magnets (26) of Tsubouchi et al created a magnetic field within the phase separator. Thus, the structure and positioning of the magnets of Tsubouchi et al are identical to those disclosed by the instant specification. Therefore, one of ordinary skill in the art at the time of filing would have expected the magnet structure of Tsubouchi et al to inherently be configured as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a magnet associated with the phase separator of Potchen et al as suggested by Tsubouchi et al for the purpose of achieving further enhancement of the separation of the gas and liquid according to their force exerted on the liquid via the electromagnetic forces. Although Tsubouchi et al show the magnets being disposed opposite to the direction in which the gas bubbles were attracted, absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the position of the magnets of Tsubouchi et al to any convenient location around the trough, such as above the trough, while still being effective for projecting the magnetic field into the gas-liquid mixture, particularly in view of the recognition in Tsubouchi et al of the force exerted on the liquid according to the orientation of the magnetic field and electric field. For example, if the magnet were moved to the upper surface of the gas-liquid phase separator while having the polarity of the magnet reversed (North and South swapped), then the net effect would have been identical.
Regarding claim 9, Potchen et al show (fig. 2) the electrolysis cell comprising a fluid inlet (136) and a fluid outlet (138).
Regarding claim 10, at least one of the magnets (26) of Potchen et al were placed on a first side of the electrode where the fluid reservoir was disposed on the opposing side of the electrode.
Regarding claim 16, the magnet of Tsubouchi et al was disposed outside the fluid reservoir of the phase separator.
Regarding claim 18, the phase separator of Tsubouchi et al included a separate gas outlet (10).
Regarding claim 19, Tsubouchi et al teach (see abstract, figs. 1 and 2, and col. 3, lines 8-57) a trough-shaped fluid reservoir for causing gas-liquid separation comprising a fluid inlet and a fluid outlet located adjacent to the bottom surface and the gas outlet being disposed adjacent to the top surface.
The Office acknowledges that the trough of Tsubouchi et al did not possess opposing side walls that tapered closer towards one another adjacent a vertex thereof. However, Applicant has not presented arguments or evidence that the claimed shape of the trough produces a result different from the trough of Tsubouchi et al. Therefore, in accordance with In re Dailey (see MPEP 2144.04.IV.B.) the change in shape from the shape of Tsubouchi et al would have been considered prima facie obvious to one of ordinary skill in the art at the time of filing.
Regarding claim 22, Potchen et al teach (see figs. 12 and 2) an electrolysis system including a water pump (124) and an electrolysis cell (10) that included a fluid reservoir (channels 22), an electrode (20) at least partially disposed within the fluid reservoir and one or more magnets (26) that were inherently capable of performing the function of attracting a liquid in the fluid reservoir towards the electrode thereby passively detaching gas bubbles from the electrode, and a phase separator (separation tank 128) separate from the electrolysis cell and in with the electrolysis cell such that gas bubbles can be communicated from the electrolysis cell, the phase separator comprising a reservoir (not shown, but the interior of the tank) that inherently including a fluid inlet opening and a fluid outlet opening.
Potchen et al fail to expressly teach that the magnets (26) were “configured to passive detach gas bubbles from the electrode” and were “configured to apply a magnetic field to a two-phase region adjacent the electrode to induce magnetic buoyancy based on different magnetic susceptibilities of gas and liquid and thereby passively detach the gas bubbles from the electrode and create a two-phase flow”. However, a review of the instant specification, especially paragraph [0026] as filed, shows that the claimed configuration is produced by providing a magnet that creates a magnetic field within the electrolysis cell. The magnets (26) of Potchen et al created a magnetic field within the electrolysis cell. Thus, the structure and positioning of the magnets of Potchen et al are identical to those disclosed by the instant specification. Therefore, one of ordinary skill in the art at the time of filing would have expected the magnet structure of Potchen et al to inherently be configured as claimed.
-Potchen et al fail to teach that the phase separator was a magnetic phase separator including one or more magnets associated therewith.
Tsubouchi et al teach (see abstract, figs. 1 and 2, and col. 3, lines 8-57) a trough-shaped fluid reservoir for causing gas-liquid separation comprising a fluid inlet (1) and a fluid outlet (2) located adjacent to the bottom surface and a gas outlet (10) being disposed adjacent to the top surface. The gas-liquid separation was enhanced by the use of magnets (17) and an electric current passing through the liquid, wherein the combination of magnetic field and electric current produced a force that separated the liquid phase from the gas phase. The magnet (17) was disposed between the fluid inlet (1) and the fluid outlet (2) such that the two-phase (gas-liquid) fluid flowed into the fluid reservoir via the fluid inlet (1) towards the magnet (17). The liquid portion of the gas-liquid fluid flowed past the magnet and out of the fluid reservoir via the fluid outlet.
Tsubouchi et al fail to expressly teach that the magnets (17) were “configured to attract gas bubbles within the two-phase flow and cause the gas bubbles to collect on or around the one or more magnets of the magnetic phase separator and allow a liquid from the two-phase flow to flow past the one or more magnets and out of the fluid reservoir via the fluid outlet” and were “configured to apply a magnetic field to the two-phase flow to induce magnetic buoyancy based on different magnetic susceptibilities of gas and liquid and thereby attract gas bubbles toward the one or more magnets while allowing the liquid to flow past the one or more magnets and out of the fluid outlet”. However, a review of the instant specification, especially paragraph [0031] as filed, shows that the claimed configuration is produced by providing a magnet that creates a magnetic field within the phase separator. The magnets (26) of Tsubouchi et al created a magnetic field within the phase separator. Thus, the structure and positioning of the magnets of Tsubouchi et al are identical to those disclosed by the instant specification. Therefore, one of ordinary skill in the art at the time of filing would have expected the magnet structure of Tsubouchi et al to inherently be configured as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a magnet associated with the phase separator of Potchen et al as suggested by Tsubouchi et al for the purpose of achieving further enhancement of the separation of the gas and liquid according to their force exerted on the liquid via the electromagnetic forces. Although Tsubouchi et al show the magnets being disposed opposite to the direction in which the gas bubbles were attracted, absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the position of the magnets of Tsubouchi et al to any convenient location around the trough, such as above the trough, while still being effective for projecting the magnetic field into the gas-liquid mixture, particularly in view of the recognition in Tsubouchi et al of the force exerted on the liquid according to the orientation of the magnetic field and electric field. For example, if the magnet were moved to the upper surface of the gas-liquid phase separator while having the polarity of the magnet reversed (North and South swapped), then the net effect would have been identical.
The Office acknowledges that the trough of Tsubouchi et al did not possess opposing side walls that tapered closer towards one another adjacent a vertex thereof. However, Applicant has not presented arguments or evidence that the claimed shape of the trough produces a result different from the trough of Tsubouchi et al. Therefore, in accordance with In re Dailey (see MPEP 2144.04.IV.B.) the change in shape from the shape of Tsubouchi et al would have been considered prima facie obvious to one of ordinary skill in the art at the time of filing.
Claims 12 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708) in view of Tsubouchi et al (US 5,238,547) as applied to claims 9 and 22, respectively, above, and further in view of Croat (US 4,496,395).
Potchen et al and Tsubouchi et al teach using permanent magnets, but each fail to teach the composition of the magnets.
Croat teaches (see abstract, paragraph spanning cols. 4 and 5) high coercivity permanent magnets that were composed of neodymium and iron, otherwise known as neodymium magnets.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the neodymium magnets taught by Croat for the magnets of Potchen et al and/or Tsubouchi et al because the neodymium magnets of Croat possessed high magnetic coercivity.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708) in view of Tsubouchi et al (US 5,238,547) as applied to claim 9 above, and further in view of Hasebe et al (US 4,747,925).
Tsubouchi et al show magnets outside of the phase separator.
Hasebe et al show disposing magnets inside of a phase separator that help separator gas bubbles from the liquid. Thus, Hasebe et al is evidence that the particular location of the magnets was not critical to achieving the result of enhanced gas bubble separation.
Therefore, it would have been obvious to one of ordinary skill in the art to have modified the magnetic phase separator of Tsubouchi et al by placing magnets inside the fluid reservoir according to the suggestion of Hasebe et al because Hasebe et al show that the location of the magnets was not critical to the function of enhancing the gas separation.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Potchen et al (US 8,591,708) in view of Tsubouchi et al (US 5,238,547) as applied to claim 22 above, and further in view of Andrews et al (US 2002/0070123).
Potchen et al fail to teach a barrier disposed over the fluid outlet of the electrolysis cell fluid reservoir, the barrier being configured to allow gases to flow through while preventing liquids from passing therethrough.
Andrews et al teach (see fig. 2, abstract, paragraphs [0079]-[0081]) that it was known to enhance the effectiveness of gas-liquid separation for separating gaseous products of electrolysis from an entrained liquid phase by adding a barrier (e.g. 152, 154), wherein the barrier was permeable to the gas being produced, e.g. hydrogen or oxygen or ozone, while being impermeable to the liquid water that is entrained in the gaseous product. The barrier was effective for enhancing the separation of the gas from the entrained liquid.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added a barrier as taught by Andrews et al before the fluid outlet of the electrolysis cell of Potchen et al for the purpose of enhancing the separation of the gaseous product of electrolysis from the liquid that may be entrained therein.
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 HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HARRY D WILKINS III/Primary Examiner, Art Unit 1794