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 15 is sufficient to overcome the rejection of that claim under 35 U.S.C. § 101 set forth in the prior Office action.
Applicant’s amendment to claim 14 and remarks, see page 5 filed 15 January 2025, are sufficient to overcome the rejection of that claim under 35 U.S.C. § 112(b) set forth in the prior Office action.
Applicant's arguments filed 15 January 2026 have been fully considered but they are not persuasive. Applicant has argued that Hatzell et al fail to teach each and every claim limitation.
In response, the Office disagrees with Applicant’s argument. Hatzell et al teach a device having a negative electrode compartment and a positive electrode compartment. The positive electrode compartment included an aqueous solution of circulating supercapacitive particles in contact with a conductive substrate. The negative electrode compartment included an aqueous solution comprising potassium hydroxide and supercapacitive particles. The power supply was capable of applying a potential difference between the positive and negative electrodes to cause hydrogen gas to evolve on the negative electrode. These are the structural elements required by claim 1 and thus the device of claim 1 is still anticipated by Hatzell et al. Applicant is reminded that apparatus claims are limited by their structural elements and not by the intended use of the structure. See MPEP § 2114.
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.
Claims 1-10 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatzell et al (“A high performance pseudocapacitive suspension electrode for the electrochemical flow capacitor”).
Hatzell et al teach (see abstract, fig. 1, sections 2.2 and 2.4) a device comprising a negative electrode compartment and a positive electrode compartment, the positive electrode compartment including circulating supercapacitive particles (slurry electrodes) suspended in an aqueous solution in contact with a conductive substrate (stainless steel current collectors). Hatzell et al also teach (see section 2.3, paragraph spanning columns on page 892 and fig. 3(a)) that the negative electrode compartment included a 2 M KOH solution (also comprising the supercapacitive particles) and that the power supply was capable of applying a potential difference between the positive and negative electrodes such that electrolysis of water began to occur with hydrogen generation at the negative electrode.
With respect to the claim recitations “electrolysis”, “for reducing H-2O to H2” and “for reducing water to hydrogen”, such limitations relate to the manner of operation of the claimed device. See MPEP § 2114. Here, the claim recitations do not appear to provide any structural limitations on the device, especially when comparing the inventive cell (20, fig. 1 of instant application) and the cell of Hatzell et al (see fig 1(a)). Note also that Hatzell et al teach (see second paragraph of section 3 and fig. 3(a)) that the device was capable of applying a sufficiently high potential to result in hydrogen production at the negative electrode (cathode).
Regarding claim 2, Hatzell et al teach (see title, abstract) that the particles were kept in suspension (slurry).
Regarding claim 3, Hatzell et al teach (see abstract) that the particles were carbon particles.
Regarding claim 4, Hatzell et al teach (see section 2.2) that the particles possessed a BET surface area of 1576 m2/g,
Regarding claim 5, Hatzell et al teach (see section 2.2) that the particles possessed an average particle size of 161 μm.
Regarding claim 6, Hatzell et al teach (see section 3) that the capacitance of the slurry electrodes was dependent upon the supporting electrolyte, but the values of capacitance fell within the range of 94-118 F/g.
Regarding claim 7, Hatzell et al teach (see fig. 1) a reservoir of the slurry electrode in fluid contact/communication with the positive electrode compartment.
Regarding claim 8, Hatzell et al teach (see abstract) the slurry electrode solution being aqueous.
Regarding claim 9, Hatzell et al teach (see fig. 1) separating the positive electrode compartment from the negative electrode compartment by a membrane.
Regarding claim 10, Hatzell et al teach (see fig. 1, “charging”) providing electrical power to create a potential difference between the positive electrode and the negative electrode.
Regarding claim 16, Hatzell et al teach (see section 2.3 and fig. 3(a)) that the solution in the negative electrode compartment included a 2 M KOH aqueous solution and that hydrogen gas evolution began at about 1 V. This meets the structural limitations of the second option of claim 16.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hatzell et al (“A high performance pseudocapacitive suspension electrode for the electrochemical flow capacitor”) in view of Presser et al (“The Electrochemical Flow Capacitor: A New Concept for Rapid Energy Storage and Recovery”).
Hatzell et al teach using the device for grid energy storage, but no specific recitation of the type of energy source utilized in powering the grid is made by Hatzell et al.
Presser et al teach (see abstract, section 1) that electrochemical flow capacitors for grid energy storage were deemed as necessary for supporting intermittent renewable energy sources such as wind and solar.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized solar energy as the power source fed to the device of Hatzell et al according to the suggestion of Presser et al.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hatzell et al (“A high performance pseudocapacitive suspension electrode for the electrochemical flow capacitor”).
Hatzell et al teaches the device of claim 1 as set forth above. Hatzell et al teach that the primary purpose of the device is for energy storage, not electrolysis for producing molecular hydrogen.
Hatzell et al teach (see fig. 3(a), second paragraph of section 3) that the device was capable of producing hydrogen gas at the negative electrode (cathode) when the applied voltage was above 1.0 V.
Therefore, one of ordinary skill in the art would have been motivated to have modified the manner of operation of the device of Hatzell et al to produce hydrogen gas at the negative electrode by applying a voltage above 1.0 V when it was desired to produce hydrogen gas.
Regarding claim 13, Hatzell et al teach performing circulation of the supercapacitive particles in the positive electrode (anode) compartment. Hatzell et al teach that the generation of hydrogen began to occur at 1.0 V, which is below the water splitting potential of 1.23 V, thereby preventing release of molecular oxygen at the negative electrode.
Regarding claim 14, Hatzell et al teach that the current density for hydrogen generation was at least 0.1 A/g of carbon supercapacitive particle and utilized a current collector surface area of 1 cm2, but there is no specific amount of carbon supercapacitive particles given, such that it is impossible to convert the current density from A/g of carbon particles to A/cm2 of current collector surface area. Absent a showing of unexpected results, one of ordinary skill in the art would have either expected the current density applied by Hatzell et al relative to the current collector surface area to be within the claimed range or been able to conduct routine experimentation to determine workable ranges of current density relative to the surface area of the current collector.
Regarding claim 15, the negative electrode of Hatzell et al was capable of reducing water to molecular hydrogen and the positive electrode of Hatzell et al was a supercapacitive flow system.
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.
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.
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794