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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-12 and 19, in the reply filed on April 6, 2026 is acknowledged. Upon further consideration, the restriction requirement between the inventions of Groups I and II, as well as the requirement for election of species, as made by the previous examiner have been withdrawn. Thus, claims 1-19 are currently under consideration.
Specification
The disclosure is objected to because of the following informalities:
On page 3, at lines 8 and 9, the references to “claim 6” and “claim 1” should be removed. Appropriate correction is required.
Claim Objections
Claims 8, 15, and 16 are objected to because of the following informalities:
In claim 8, the dash “—” before “claim 1” (at line 2) should be deleted.
In claim 15, “recycle” (at line 7) should be changed to --recycling--.
In claim 16, --of formula-- should be inserted before “(I)” (at line 4).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the recitation of “said compensation elements” (at line 11), which refers to a plurality of compensation elements, renders the claim indefinite because the claim previously recited “at least one compensation element” (at line 3), which refers to one or a plurality of compensation elements.
Regarding claim 3, the relationship between “a first array of gas inlet tubes and a second array of gas outlet tubes” and the “more than one gas inlet and more than one gas outlet” set forth in claim 2 is unclear.
Regarding claim 5, the relationship between “an inner volume” (at line 3) and “an inner volume” previously set forth in claim 1 (at line 2) is unclear.
Also, the relationship between “a structured fixed bed” (at line 7) and “a fixed bed” previously set forth in claim 1 (at line 7).
Regarding claim 6, the scope of the claim is unclear because the phrase “and/or” is recited at the end of line 4, but missing from the end of line 5.
Regarding claim 9, the recitation of “a unit separating water from hydrogen” (at line 3) is considered indefinite because the “water” and “hydrogen” lack proper positive antecedent basis. In particular, the claims have not identified sources for the water and hydrogen.
Regarding claim 11, a dependent claim includes all the limitations of the claim from which it depends. As such, the limitation “said separating unit is replaced by two separating units” is unclear. It is therefore suggested that the limitation be rewritten as the system further comprising an additional separating unit for separating water from hydrogen.
Also, the recitation of “said separating unit” (at line 2) is unclear because claim 9 recites “a unit separating water from hydrogen” (at line 3). Consistent terminology should be applied.
Also, the recitation of “two separating units, for charging and discharging mode” (at lines 2-3) is unclear because the claims have not set forth what constitutes a “charging mode” and “discharging mode” of the system.
Regarding claim 12, the limitation “within the reactor” (at lines 2-3) is unclear. In particular, it is unclear as to whether the material is to be located “within the reaction vessel” or “within the inner volume” of the reactor, as previously set forth in claim 1 (at line 2).
Regarding claim 13, the recitation of “the step” (as lines 1-2) lacks proper antecedent basis. It is suggested that “the step” be changed to --a step--.
Also, the relationship between “a reactor” (at line 2) and “a reactor” set forth in claim 1 is unclear. It is suggested that “a reactor” be changed to --the reactor--.
Regarding claim 14, the recitation of “the step” (as line 2) lacks proper antecedent basis. It is suggested that “the step” be changed to --a step--.
Also, the relationship between “a reactor” (at line 2) and “a reactor” set forth in claim 1 is unclear. It is suggested that “a reactor” be changed to --the reactor--.
Also, the limitation “oxidizing a compound of formula (I)… thereby obtaining an oxidized compound of formula (I)” is unclear. As set forth in claim 1, the fixed bed contains or consists of particles of FeOx, where 0≤x≤1.5. The formula includes x = 0, which covers iron (Fe) in its metal form. It is unclear as to whether iron (Fe), in addition to the compounds of iron (FeO, Fe3O4, Fe2O3, etc.), are to be oxidized by water.
Regarding claim 15, the relationship between “a reactor” (at line 4) and “a reactor” set forth in claim 1 is unclear. It is suggested that “a reactor” be changed to --the reactor--.
Regarding claim 16, the relationship between “a reactor” (at line 3) and “a reactor” set forth in claim 1 is unclear. It is suggested that “a reactor” be changed to --the reactor--.
Also, the limitation “oxidizing a compound of formula (I)… thereby obtaining an oxidized compound [of formula] (I)” is unclear. As set forth in claim 1, the fixed bed contains or consists of particles of FeOx, where 0≤x≤1.5. The formula includes x = 0, which covers iron (Fe) in its metal form. It is unclear as to whether iron (Fe), in addition to the compounds of iron (FeO, Fe3O4, Fe2O3, etc.) are to be oxidized by water.
Regarding claim 17, the relationship between “a reactor” (at line 1) and “a reactor” set forth in claim 1 is unclear. It is suggested that “a reactor” be changed to --the reactor--.
Also, the scope of the claim is unclear because it lacks a transitional phrase, such as “comprising”. See MPEP § 2111.03.
Also, the claim is considered indefinite because it attempts to claim a process without setting forth any steps involved in the process. The claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
Also, the limitation “oxidizing a compound of formula (I)” (at line 5) is unclear. As set forth in claim 1, the fixed bed contains or consists of particles of FeOx where 0≤x≤1.5. The formula includes x = 0, which covers iron (Fe) in its metal form. It is unclear as to whether iron (Fe), in addition to the compounds of iron (FeO, Fe3O4, Fe2O3, etc.) are to be oxidized by water.
Regarding claim 18, the relationship between “an energy storage system” (at line 1) and “an energy storage system” set forth in claim 9 is unclear. It is suggested that “an energy storage system” be changed to --the energy storage system--.
Also, the scope of the claim is unclear because it lacks a transitional phrase, such as “comprising”. See MPEP § 2111.03.
Also, the claim is considered indefinite because it attempts to claim a process without setting forth any steps involved in the process. The claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
Regarding claim 19, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In this case, the claim recites the broad recitation “a distance of 1 to 10m in between”, and the claim also recites “in particular of 2-5m in between”, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
The remaining claims are also rejected because they depend from a rejected base claim.
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.
Claims 1-6 and 8-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,080,929 B2 (hereafter, US ‘929) in view of Wolf (DE 102015007645 A1).
Regarding claim 1, US ‘929 (see ref. claim 1) claims a reactor comprising:
a reaction vessel defining an inner volume,
at least one compensation element,
at least one gas inlet and at least one gas outlet, and
an insulation,
wherein said inner volume is filled with a fixed bed; wherein:
said fixed bed contains or consists of particles of formula (I), FeOx (I), where 0≤x≤1.5; and said fixed bed is essentially free of cavities; and
said compensation element is adapted to adjust said inner volume.
US ‘929 (see ref. claim 4) further claims that said at least one gas inlet and gas outlet are adapted to fill and remove gases from said inner volume.
US ‘929, however, fails to claim the inner volume being 1000 m3 or more.
Wolf (see Figure, translation) discloses a reactor (i.e., a chemical reactor for storing chemical and electrical energy via thermodynamically reversible cyclic processes), comprising:
a reaction vessel defining an inner volume, the inner volume being filled with a fixed bed (i.e., a vessel containing a packed bed of iron pellets 4); and
at least one gas inlet (i.e., an inlet for receiving a hydrogen stream 1.4 and an inlet for receiving water vapor stream 4.4) and at least one gas outlet (i.e., an outlet for discharging a hydrogen stream 3.1 and an outlet for discharging a water vapor stream 4.3), the at least one gas inlet and the at least one gas outlet being adapted to fill and remove gases (hydrogen or water vapor) from said inner volume;
wherein the fixed bed contains particles of the formula FeOx, where 0≤x≤1.5 (i.e., the packed bed contains iron pellets 4 comprising magnetite (Fe3O4), wustite (FeO), and/or iron (Fe), depending on whether the packed bed is in a state of being reduced by the hydrogen stream 1.4 or oxidized by the water vapor stream 4.4 during the reversible cycle).
Specifically, Wolf discloses the inner volume being 1000 m3 or more (i.e., the chemical reactor has dimensions of 10 m x 10 m x 10 m, which calculates to a volume = 1,000 m3; see translation at page 5, seventh paragraph, and page 6, first paragraph).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to configure the inner volume to be 1000 m3 or more in the reactor of US ‘929 because the inner volume would then provide a large capacity for storing chemical and electrical energy and be suitable for powering a fuel cell or a combustion chamber of a technical work-performing power process for a long period time, as taught by Wolf. In addition, "mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148. See also MPEP § 2144.04 IV, A.
Regarding claim 2, US ‘929 fails to claim more than one gas inlet and more than one gas outlet. However, one of ordinary skill in the art would have recognized that multiple gas inlets/outlets provide a higher mass flow of gases relative to a single gas inlet/outlet. Furthermore, Wolf (see translation at page 5, last paragraph) discloses that the mass flow determines the power of the current consumption and the power of the power outfeed during the reversible cycle. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide more than one gas inlet and more than one gas outlet in the modified reactor of US ‘929 because multiple gas inlets and multiple gas outlets would have allowed for the reactor to process a higher mass flow of the gases, with a corresponding higher power of the current consumption and higher power of the power outfeed during the reversible cycle, as taught by Wolf. Also, the duplication of parts to produce a multiplied effect was held to be obvious. See MPEP § 2144.04 VI,B.
Regarding claim 3, US ‘929 fails to claim a first array of gas inlet tubes and a second array of gas outlet tube. However, as discussed above, the provision of more than one gas inlet and more than one gas outlet in the modified reactor of US ‘929 would have been obvious to one of ordinary skill in the art. Furthermore, Wolf (see Figure) discloses gas inlet tubes and gas outlet tubes being connected to the reaction vessel. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further provide a first array of gas inlet tubes and a second array of gas outlet tubes in the modified reactor of US ‘929 because the inlet tubes would have enabled the transport of gases from their source(s) to the reaction vessel and the outlet tubes would have enabled the transport of gases from the reaction vessel to their intended destination(s), as taught by Wolf.
Regarding claim 4, as discussed above, the provision of more than one gas inlet and more than one gas outlet, and, furthermore, the provision of gas inlet tubes and gas outlets tubes, in the modified reactor of US ‘929 would have been obvious to one of ordinary skill in the art. US ‘929 (see ref. claim 4) further claims that the gas inlet can be arranged at the top of the reactor, and the gas outlet can be arranged at the bottom of the reactor. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further configure the gas inlet tubes and the gas outlet tubes to be essentially parallel to a longitudinal axis of the modified reactor of US ‘929.
Regarding claim 5, US ‘929 further claims that the reaction vessel is in the form of a cylinder or a sphere or a tube bundle (see ref. claim 2); and/or the reaction vessel does not contain means for agitation or transportation (see ref. claim 2). Also, with respect to the inner volume, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further configure the inner volume to be 10,000 m3 – 500,000 m3 in the reactor of US ‘929, depending on the scale of the intended power application, because a larger inner volume would predictably provide a larger capacity for storing chemical and electrical energy, as taught by Wolf (see above), and the mere scaling-up of a prior art system that was capable of being scaled up would have been obvious.
Regarding claim 6, US ‘929 (see ref. claim 3) further claims that the at least one compensation element is adapted to compensate volume dilatation/compression during operation of the reactor; and/or is configured in the form of a membrane, in the form of a piston; and/or is configured in the in the form of a sponge or in the form of a fibrous material.
Regarding claim 8, US’ 929 (see ref. claim 5) further claims at least one unit in fluid communication with said reaction vessel supplying an inert gas or hydrogen.
Regarding claim 9, US ‘929 (see ref. claim 6) further claims an energy storage system comprising a reactor according to claim 1, said reactor being in fluid communication with a unit separating water from hydrogen. US ‘929 (see ref. claim 7) also claims said unit being in fluid communication with a fuel cell. US ‘929, however, fails to claim said unit being in fluid communication with a hydrogen turbine.
Wolf (see translation at page 5, eighth paragraph) also discloses that the hydrogen stream 3.1 can be supplied to either a fuel cell or a combustion chamber of a technical work-performing power process 3 (also known in the art as a hydrogen turbine). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide a hydrogen turbine in fluid communication with said unit in the claimed system of US ‘929 because a hydrogen turbine would be considered another apparatus that can be satisfactorily powered using the reactor, as taught by Wolf.
Regarding claim 10, US ‘929 (see ref. claim 7) further claims an electrolyzer, wherein said electrolyzer is in fluid communication with said reactor.
Regarding claim 11, US ‘929 (see ref. claim 8) further claims said separating unit is replaced by two separating units, for charging and discharging mode.
Regarding claim 12, US ‘929 (see ref. claim 9) further claims a microporous and hygroscopic material containing chamber within the reactor.
Regarding claim 13, US ‘929 (see ref. claim 10) further claims a method for storing hydrogen, comprising the step of reducing a compound of formula (I) in a reactor as defined in claim 1 by feeding said reactor with a hydrogen-containing gas, thereby obtaining a reduced compound of formula (I) and water.
Regarding claim 14, US ‘929 (see ref. claim 11) further claims a method for generating hydrogen, comprising the step of oxidizing a compound of formula (I) in a reactor as defined in claim 1 by feeding said reactor with water, thereby obtaining an oxidized compound of formula (I) and hydrogen.
Regarding claim 15, US ‘929 (see ref. claim 12) further claims a method for storing electrical energy, said method comprising:
(a) electrolytically reducing water to obtain hydrogen;
(b) reducing a compound of formula (I) in a reactor as defined in claim 1 by feeding said reactor with a hydrogen-containing gas, thereby obtaining a gaseous mixture containing H2O/H2;
(c) separating H2 from said gaseous mixture and recycle said H2 into said reactor.
Regarding claim 16, US ‘929 (see ref. claim 13) further claims a method for releasing electrical energy, said method comprising:
(a) oxidizing a compound of formula (I) in a reactor as defined in claim 1 by feeding said reactor with water, thereby obtaining an oxidized compound (I) and a gaseous mixture containing H2O/H2,
(b) separating H2 from said gaseous mixture, and
(c) converting the chemical energy in said H2 through oxidation to thereby obtain water and electrical energy.
Regarding claim 17, US ‘929 further claims a method of using a reactor according to claim 1, for converting hydrogen to water and storing the thus obtained energy by reducing a compound of formula (I) (see ref. claims 10 and 12); and/or for converting water to hydrogen by oxidizing a compound of formula (I) thereby releasing the previously stored energy (see ref. claims 11 and 13).
Regarding claim 18, as discussed above with respect to the rejection of claim 9, the modified energy storage system of US ‘929 comprises the reactor according to claim 1, said reactor being in fluid communication with a unit separating water from hydrogen, and said unit being in fluid communication with a hydrogen turbine. US ‘929 (see ref. claim 8) further claims that the energy storage system is operable under a charging mode or a discharging mode. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further perform a method of using the modified energy storage system of US ‘929 for storing electrical energy, thereby charging said system; and/or for releasing electrical energy, thereby discharging said system.
Regarding claim 19, US ‘929 fails to claim that the tubes of the first and/or the second array have a distance of 1 to 10 m in between, in particular of 2-5 m in between. However, it would have been an obvious design consideration for one of ordinary skill in the art before the effective filing date of the claimed invention to select an appropriate spacing of the tubes in first array and/or the second array in the modified system of US ‘929, in order to evenly distribute the gases to the inner volume via the gas inlet tubes and and/or to evenly remove the gases from the inner volume via the gas outlet tubes, based on the size of the reactor.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Messerschmitt (GB 191212242 A), Berlin-Anhaltische (GB 191328390 A), and Voitic et al. (Applied Energy 157 (2015) 399-407) are cited to further illustrate the state of the art.
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/JENNIFER A LEUNG/Primary Examiner, Art Unit 1774
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