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 without traverse of Group I claims 2, 8-13, 18, 19, 21, 26, 27, 33, 40, 48, 49, and 51 in the reply filed on 24 March 2026 is acknowledged.
Claims 4, 5, and 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 24 March 2026.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 2, 8-13, 18, 19, 21, 26, 27, 33, 40, 48, 49, and 51 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the specific embodiments of an electrochemical actuator pump comprising the specific structure of a chamber with compliant surface, similar to that in claim 9 with the specific intercalation compounds outlined in [0054] of the as published instant specification forming only oxygen gas and not any gas, does not reasonably provide enablement for the generic system as claimed to enable the particulars of the “configured language” in the last clause of instant claim 2. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claims are drawn toward an electrochemical system described in the way in which it functions through one electrode which undergoes an intercalation/deintercalation and a second electrode which generates or consumes a gas upon application of a first or second magnitude of voltage.
(B) The nature of the invention:
The invention is drawn towards methods of fluid control via electrochemical actuation due to gas generation minimizing the use of hydrogen gas (pg. 6 last paragraph of the as filed specification).
(C) The state of the prior art:
The following is deemed to be the most relevant prior art of record:
Chiang et al (US 2012/0175998 A1) discloses an electrochemical actuator driven by intercalation/de-intercalation into an electrode (Abstract).
Carlstrom et al (US 2010/0108536 A1) discloses a gas driven electrochemical actuation to drive a complaint cover to be filled with gas (Fig. 4 and claim 32) driven by the splitting of water and the recombination of hydrogen and oxygen ([0037]).
Liu et al (US 7,298,017 B1) discloses a solid state actuator driven by intercalation/deintercalation into a volume changing material (Abstract).
Goldstein et al (US 2014/0163339 A1) discloses an electrochemically actuated drug delivery device (Abstract) comprising intercalation/deintercalation of a shape change element and when gas is evolved, recombining the gas within the cell ([0147]).
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have an understanding as to electrochemical pumping mechanisms, as well as suitable electrodes and their uses based on the chemical principles being employed.
(E) The level of predictability in the art:
There does not seem to be any predictability as to the consumption of a gas when a voltage is not passed through the system.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
While the specification recites the limitation, specification is devoid of any experimental evidence showing the effect of the device to enable the configured language. Fig. 22 appears to attempt to identify a recombination after electrolysis but the data is presented in terms of fluid delivery and not a consumption rate. This is also only displayed with manganese oxide electrode and no evidence of suitability of the configured limitation with the generic recitation in the claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The quantity of experimentation would not be so limited but rather encompass any combination of intercalating compounds and/or gas species able to be generated and/or consumed in any electrochemical system, even those unrelated to electrochemical pumping action. Thus, due to the unknown combinations, a quantity of experimentation could not be accurately measured based on the scope of the instant claim.
Claim Rejections - 35 USC § 112(b)
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 2, 8-13, 18, 19, 21, 26, 27, 33, 40, 48, 49, and 51 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.
As to claim 2, the recitation “wherein the electrochemical system is configured such that when no electrical current is passed between the first electrode and the second electrode, the gas consumption reaction does not occur at the first electrode or the gas consumption reaction occurs at a rate of less than or equal to 5 mol% per day.” is deemed indefinite as to the associated structure required to enable configuration of such a system. While the specification recite the optionality of configuring an electrochemical system as such, the instant specification does not recite what enable the system to perform in such a way. Thus, either the implied function of the configured language is inherent to any system satisfying the instantly claimed structure, or the function is derived from a particular arrangement of the specific structure of the claimed device not readily apparent from the instant specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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