DETAILED ACTION
Claims 1-11 were rejected in Office Action mailed on 10/01/2025.
Applicant filed a response, amended claims 1-5, 7-10, 12, added claim 22, and canceled claim 6, 16-20, on 10/01/2025.
Claims 1-5, 7-10, 12-15 and 22 are pending, and claim(s) 12-15 are withdrawn.
Claim 1 is rejected.
Claims 2-5, 7-10 and 22 are objected.
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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Cisar et al., US 2006/0257313A1 (Cisar) in view of Ryu et al., US 2011/0020215A1 (Ryu).
Regarding claim 1, Cisar teaches a hydrogen generator, comprising a second chamber containing a second material (reading upon a solid formulation for hydrogen generator), such as borohydrides (Cisar, Abstract); preferably such as sodium borohydride (Cisar, [0052]).
Cisar further teaches transporting a portion of the evolved water from a first chamber into the second chamber such as the second chamber material undergoes an exothermic reaction to evolve hydrogen gas (Cisar, Abstract).
Cisar does not explicitly disclose the second material further comprises boric acid that is stable at temperatures below about 60˚ C but adapted to release releases water upon heating to a temperature between about 80˚ C and about 300˚ C.
With respect to the difference, Ryu teaches a chemical hydride reactant mixture for hydrogen generation via hydrolysis (Ryu, Abstract). Ryu specifically teaches the mixture includes a fuel mixture having at least one hydride and at least one accelerator, the at least one accelerator can include an acid accelerator (Ryu, [0024]); such as boric acid (Ryu, [0026]), the fuel is sodium borohydride (Ryu, [0025]).
Ryu is analogous art as Ryu is drawn to a chemical hydride reactant mixture for hydrogen generation via hydrolysis.
In view of the disclosure of Ryu, it therefore would have been obvious to a person of ordinary skill in the art to include at least one accelerator, such as boric acid, together with the sodium borohydride of Cisar, in order to use the boric acid as an accelerator for the production of hydrogen from sodium borohydride, and yield expected results.
Given that Cisar in view of Ryu teaches an identical or substantially identical material, i.e., a mixture of sodium borohydride and boric acid, with that of the presently claimed, therefore, it is clear that the boric acid of Cisar in view of Ryu would necessarily and inherently meet the claimed limitation of that is stable at temperatures below about 60˚ C but adapted to release releases water upon heating to a temperature between about 80˚ C and about 300˚ C.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Allowable Subject Matter
Claims 2-5, 7-10 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 22, neither Cisar or Ryu discloses or suggests wherein a molar ratio of sodium borohydride to boric acid is between about 1:1 and about 1:10, or between about 1:1 to about 1:5, as presently claimed.
On the contrary, Cisar in view of Ryu further teaches for 15 g of sodium borohydride, 15 g of boric acid was used as accelerator (Ryu, Table 1).
Given the molecular mass of sodium borohydride (38 g/mol) and boric acid (62 g/mol), 15 g of sodium borohydride and 15 g of boric acid corresponds to a molar ratio of sodium borohydride to boric acid of 1:0.6, which is outside the claimed ranges.
Response to Arguments
In response to the amended claims, the previous 35 U.S.C. 112(b) rejections are withdrawn.
In response to the amended claim 1, which recites, “boric acid”. It is noted that the referenced teaching from Cisar would not meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Cisar are withdrawn from the record. However, the amendments necessitate a new set of rejections over Cisar in view of Ryu, for claim 1, as set forth above.
Applicant primarily argues:
“Absolutely nothing in Cisar suggests the use of boric acid for any purpose much less the one set forth in amended claim 1. Since Cisar fails to establish that "all the claimed elements were known in the prior art ", Cisar cannot possibly provide a proper basis for the rejection of amended claim 1 under 35 USC 103 in accordance with the line of case law cited above. Thus, amended claim 1 should be allowed.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Cisar does not expressly teach the claimed boric acid. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Cisar does not disclose the entire claimed invention. Rather, Ryu is relied upon to teach claimed elements missing from Cisar, with proper motivation to combine, namely, boric acid is an acid accelerator (Ryu, [0024]). See page 7 of the Office Action set forth above.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732