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 .
Status of the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on 12/12/2025. Claims 1-6 and 8-13 are pending in the current Office action. Claim 7 was cancelled by Applicant. Claims 1 and 9 were amended by Applicant. Claims 10-13 are new claims.
Status of the Rejection
The rejections of claims 1-6 and 8-9 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-6 and 8 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-6 and 8-9 on the grounds of non-statutory double patenting are withdrawn in view of the terminal disclaimer filed on 12/12/2025.
The rejection of claim 9 under 35 U.S.C. § 103 is maintained, and amended only as necessitated by Applicant’s amendments.
New objections to the claims are necessitated by Applicant’s amendments.
New rejections of claims 6 and 8 under 35 U.S.C. § 112(a) are necessitated by Applicant’s amendments.
Claims 1-5 and 10-13 are allowable.
Terminal Disclaimer
The terminal disclaimer filed on 12/12/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat. Nos. 11549187, 11952671, and 12203178 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 lines 11-12 recite “the at least one hydrogen pump”, but should recite “the at least one hydrogen pump unit” to match the terminology used in line 2.
Appropriate correction is required.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action i.e., 35 U.S.C. § 112(f), can be found in a prior Office action.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
BECAUSE the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a fixing member that prevents members from the anode end plate to the anode separator positioned in the first end from moving in the stacking direction” and “a pressure transmitting member that is disposed in the space and transmits a pressure from the anode separator positioned in the first end to the anode end plate” in claims 1, 9, and 10.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Specifically, the limitation “a fixing member …” is being interpreted as “a fastener” (or equivalents thereof) according to the definition in para. 101 (the fixing member is identified as, for example, fastener 25 of Fig. 2); and the limitation “a pressure transmitting member …” has been interpreted as a solid structure or plurality of solid structures in contact with both the anode separator and the anode end plate (or equivalents thereof) based on the depictions of 70C-74C in Fig. 4a-d.
As Applicant did not traverse these interpretations in the reply filed on 12/12/2025, it is considered that the limitations “a fixing member …” and “a pressure transmitting member …” are intended to invoke 35 U.S.C. § 112(f).
Claim Rejections – 35 USC § 112
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.
Claims 6 and 8 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement due to the inclusion of new matter. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 6, claim 6 recites the combined limitations “the pressure transmitting member is a porous member filling the space” (claim 1 line 19) and “the columnar member is an insulating member” (claim 6 lines 1-2). The disclosure as originally filed is not considered to describe these limitations in combination.
Specifically, the disclosure as originally filed describes the “pressure transmitting member” as a “porous member” in the “seventh” (paras. 40-43) and “fifteenth” (paras. 62-64) aspects, corresponding to the embodiments depicted in Fig. 4D and paras. 178-179 and Fig. 8D and paras. 254-258, respectively. However, the disclosure only describes the “pressure transmitting member” as comprising a “columnar member” that is an “insulating member” in the “sixth” (paras. 39-40) and “fourteenth” (paras. 60-61) aspects, corresponding to the embodiments depicted in Fig. 4B and paras. 162-167 and Fig. 8B and paras. 241-243, respectively. I.e., the disclosure describes the limitations “the pressure transmitting member is a porous member filling the space” and “the columnar member is an insulating member” only in the alternative.
It is therefore considered that the combination of the limitations “the pressure transmitting member is a porous member filling the space” and “the columnar member is an insulating member” as recited in claim 6 constitutes new matter not described in the disclosure as originally filed. Claim 6 is therefore rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement due to the inclusion of new matter.
Regarding claim 8, claim 8 recites the limitations “the pressure transmitting member is a porous member filling the space” (claim 1 line 19) and “the pressure transmitting member is an elastic member” (claim 8 lines 1-2). The disclosure as originally filed is not considered to describe these limitations in combination.
Specifically, the disclosure as originally filed describes the pressure transmitting member as a “porous member” in the “seventh” (paras. 40-43) and “fifteenth” (paras. 62-64) aspects, corresponding to the embodiments depicted in Fig. 4D and paras. 178-179 and 8D and paras. 254-258, respectively. However, the disclosure only describes the pressure transmitting member as an “elastic member” in the “eighth” (paras. 44-46) and “sixteenth” (paras. 65-67) aspects, corresponding to the embodiments depicted in Fig. 4B and paras. 162-167, Fig. 4C and paras. 168-172, Fig. 4E and paras. 182-187, Fig. 8B and paras. 241-243, Fig. 8C and paras. 247-252, and Fig. 8E and paras. 261-266. I.e., the disclosure is considered to describe the limitations “the pressure transmitting member is a porous member filling the space” and “the pressure transmitting member is an elastic member” only in the alternative.
It is therefore considered that the combination of the limitations “the pressure transmitting member is a porous member filling the space” and “the pressure transmitting member is an elastic member” as recited in claim 8 constitutes new matter not described in the disclosure as originally filed. Claim 8 is therefore rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement due to the inclusion of new matter.
Claim Rejections – 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this can be found in a prior Office action.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Janaky (US Pat. Pub. 2021/0310136 A1) in view of Nakazawa (US Pat. No. 8679305 B2).
Regarding claim 9, Janaky teaches an electrochemical hydrogen pump (abstract) comprising:
an anode end plate (“anode-side endplate 12” para. 45 and Fig. 3);
a cathode end plate (“cathode-side endplate 1” para. 44 and Fig. 3);
at least one hydrogen pump unit (“electrolyzing cells 24” para. 47 and Figs. 2-4) that is disposed between the anode end plate and the cathode end plate in a stacking direction (see Fig. 3) and includes: an electrolyte membrane (“catalyst-coated membrane 5” para. 47 and Figs. 2-4), an anode disposed on a first main surface of the electrolyte membrane (“custom made Ti-frit 14” Id.), a cathode disposed on a second main surface of the electrolyte membrane (“custom made Ti-frit 15” Id.), an anode separator stacked on the anode (“second component 25b” Id. and see para. 54), and a cathode separator stacked on the cathode (“first component 25a” Id. and see para. 48);
a fixing member (comprising “washers 19”, “screw-nuts 21” and “screw-bolts 20” para. 41 and Figs. 1-2, which reads on a fastener or equivalents thereof) that prevents at least the anode end plate, the at least one hydrogen pump unit, and the cathode end plate form moving in the stacking direction (para. 41 and see Figs. 1-2); and
a gas flow channel (“H2 channel structure” para. 63 and see Fig. 3a, annotated below) through which hydrogen generated in the cathode is supplied to a space disposed between the anode end plate and the at least one hydrogen pump unit (“pressure chamber 11b” para. 63 and Figs. 2 and 3).
Janaky does not teach a pressure transmitting member that is disposed in the space and transmits a pressure from the anode separator of the at least one hydrogen pump unit to the anode end plate.
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Annotated Janaky Fig. 3A
However, Nakazawa an electrochemical cell stack for generating high-pressure hydrogen (title), comprising an end plate (“end plate 20a” col. 2 line 66 through col. 3 line 4 and Fig. 2), a gas flow channel (“hydrogen lead-out passage 76” col. 4 lines 46-53 and Fig. 2) through which hydrogen generated in the cathode is supplied to a space (“cylinder chamber 62” col. 4 lines 26-32) wherein a pressure transmitting member is disposed in the space (“Elastic bodies such as disk springs 64” col. 4 lines 26-32 and Fig. 2, considered equivalent to a plurality of solid structures in contact with both the anode separator and the anode end plate) and transmits a pressure to a separator positioned on a first end (“cathode side separator 36” Fig. 1 and col. 5 lines 27-40, see also Fig. 2) to provide the predictable benefit of reducing gaps between the membranes and current collectors in the electrolysis cells (col. 5 lines 27-40).
As Janaky and Nakazawa each teach electrochemical cells for the production of high-pressure gases, Janaky and Nakazawa are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Janaky, by adding a pressure transmitting member that is disposed in the space and transmits a pressure from the anode separator of the at least one hydrogen pump unit to the anode end plate. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of reducing gaps between the membranes and current collectors in the electrolysis cells, as taught by Nakazawa. Furthermore, combining prior art elements (i.e., adding a pressure transmitting member to a space between an end plate and a separator in an electrochemical cell stack) according to known methods to yield predictable results (applying pressure to the stack) establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Modified Janaky does not explicitly teach the pressure transmitting member has the same elastic modulus as a cathode gas diffusion layer included in the cathode.
However, Janaky further teaches a cathode gas diffusion layer comprising Ti (“custom designed gas-diffusion layers in the form of Ti-frits” para. 81 and “Ti-frit 15” para. 52 and Fig. 6).
Janaky further teaches that Ti, the same material (and therefore a material having the same elastic modulus) as the cathode gas diffusion layer, is suitable for springs applying pressure to electrolytic cells (para. 52).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use Ti, a material having the same elastic modulus as the cathode gas diffusion layer, as the material of the pressure transmitting member when modifying Janaky to comprise the pressure transmitting member as taught by Nakazawa. A person having ordinary skill in the art would have been motivated to use Ti because Janaky teaches Ti is suitable for springs in contact with hydrogen gas. Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Allowable Subject Matter
Claims 1-5 and 10-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art of record, alone or in combination, does not reasonably teach or disclose the cumulative limitations of claim 1, with an emphasis on the limitation “wherein the pressure transmitting member is a porous member filling the space”.
The closest prior art of record is considered to be Janaky (US Pat. Pub. 2021/0310136 A1), Nakazawa (US Pat. No. 8679305 B2), and Ishikawa (US Pat. Pub. 2010/0213051 A1).
As detailed in the rejection of claim 9 above, Janaky teaches an electrochemical hydrogen pump comprising a space disposed between the anode end plate and a hydrogen pump unit. While Janaky does not teach a pressure transmitting member disposed in the space, it is considered that a person having ordinary skill in the art would have found it obvious to add a pressure transmitting member to the space based on the teachings of Nakazawa.
Ishikawa teaches that a porous material may be suitably used to prevent a pressure difference from developing between different connected components of an electrochemical hydrogen compressor (paras. 54-55 and Fig. 5). However, Applicant has convincingly argued that a person having ordinary skill in the art would not have found it obvious to modify Janaky by adding a porous member to the space in view of the teachings of Ishikawa (or Ishikawa in combination with Nakazawa).
Specifically, the space of Janaky connects the hydrogen outputs of the electrochemical cells to the output of the cell stack. I.e., hydrogen gas flows through the space of Janaky. The problem addressed by Ishikawa i.e., pressure equalization between two spaces, results because the hydrogen flow is dead-ended in the sealing grooves of Ishikawa (see Fig. 5). As hydrogen flows through the space of Janaky, it would not be expected to experience a pressure differential, and would therefore not be expected to benefit from the pressure equalization described by Ishikawa. A person having ordinary skill in the art would therefore not have had a motivation to combine the teachings of Ishikawa with those of Janaky.
Furthermore, due to the aforementioned differences between the system of Janaky and Ishikawa, the addition of the porous member for Ishikawa to Janaky cannot reasonably be considered a simple combination of prior art elements (MPEP § 2143(I)(A)).
It is therefore considered that the prior art of record, alone or in combination, does not reasonably teach or disclose the cumulative limitations of claim 1. Claim 1 is therefore considered patentably distinguished over the prior art.
Regarding claims 2-5, claims 2-5 depend from claim 1, and therefore incorporate the allowable subject matter of claim 1. Claims 2-5 are therefore allowable over the prior art for the same reasons enumerated for claim 1.
Regarding claim 10, the prior art of record, alone or in combination, does not reasonably teach or disclose the cumulative limitations of claim 1, with an emphasis on the limitation “the columnar member contacts the anode power supply plate”.
The closest prior art of record is considered to be Janaky (US Pat. Pub. 2021/0310136 A1), Nakazawa (US Pat. No. 8679305 B2), and Taruya (US Pat. Pub. 2006/0254907 A1).
Janaky teaches an electrochemical hydrogen pump comprising a space disposed between the anode end plate and a hydrogen pump unit. While Janaky does not teach a pressure transmitting member disposed in the space, it is considered that a person having ordinary skill in the art would have found it obvious to add a pressure transmitting member comprising a columnar member to the space based on the teachings of Nakazawa (see Fig. 2).
However, the columnar members in Nakazawa do not contact the anode power supply plate.
Similarly, Taruya teaches a pressure transmitting member comprising a columnar member (“piston rod 18” Fig. 1) disposed in a space between an anode end plate and a hydrogen pump unit (see Fig. 1), but the columnar members of Taruya do not contact the anode power supply plate.
Furthermore, neither Nakazawa nor Taruya teach the columnar members are insulating, which would be necessary for them to contact the anodic power supply plate without shorting the system.
It is therefore considered that the prior art of record, alone or in combination, does not reasonably teach or disclose the cumulative limitations of claim 10. Claim 10 is therefore considered patentably distinguished over the prior art.
Regarding claims 11-13, claims 11-13 depend from claim 10, and therefore incorporate the allowable subject matter of claim 10. Claims 11-13 are therefore allowable over the prior art for the same reasons as claim 10.
Response to Arguments
Applicant’s arguments, see Remarks p. 6, filed 12/12/2025, with respect to the rejections of claims 1-6 and 8-9 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejection of claims 1-6 and 8-9 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 7-9, filed 12/12/2025, with respect to the rejections of claims 1-6 and 8 under 35 U.S.C. § 103 have been fully considered and are persuasive. The rejection of claims 1-6 and 8 under 35 U.S.C. § 103 have been withdrawn.
Applicant’s arguments, see Remarks p. 9, filed 12/12/2025, with respect to the rejection of claim 9 under 35 U.S.C. § 103 have been fully considered, but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 9 that Janaky in view of Nakazawa does not reasonably teach the limitation “the pressure transmitting member has the same elastic modulus as a cathode gas diffusion layer included in the cathode”. Specifically, Applicant argues that while it may be obvious to use Ti as the material for the spring, a Ti spring would not necessarily have the same elastic modulus as the porous Ti-frit.
Examiner’s Response #1
Examiner respectfully disagrees. At issue appears to be the broadest reasonable interpretation of the limitation “the pressure transmitting member has the same elastic modulus as a cathode gas diffusion layer”.
During prosecution, claims are interpreted according to their “broadest reasonable interpretation” (BRI), which is the plain meaning of the words unless said meaning is inconsistent with the specification or 35 U.S.C. § 112(f) is invoked (MPEP § 2111).
As described in e.g., Gale (“Smithell’s Metals Reference Book (8th Ed.)” – Ch. 21 Mechanical Testing (2004)), the term “elastic modulus”, in the context of metals, refers to an intrinsic property of the metal (“… intrinsic properties may be derived, which include: modulus of elasticity, yield and ultimate tensile strengths, ductility, and strain hardening behaviour.” § 21.2.1 para. 1, emphasis added). I.e., the term “elastic modulus” can refer to a property of a material that is independent of the form of said material.
While Examiner acknowledges that the term “elastic modulus” has other definitions that are extrinsic, rather than intrinsic, properties, the specification does not appear to restrict the definition of the term “elastic modulus” in this manner. It is therefore considered reasonable to interpret the limitation “the pressure transmitting member has the same elastic modulus as a cathode gas diffusion layer”, as currently drafted, as limiting the material of the pressure transmitting member to have the same “elastic modulus” as the material of the cathode gas diffusion layer.
Titanium (Ti) will have the same elastic modulus whether or not it is in a solid or particulate form, because a chemical composition and its properties are inseparable (MPEP § 2112.01(II)). Therefore, if Ti is used as the material of both the pressure transmitting member and the cathode gas diffusion layer, the materials used in both the pressure transmitting member and the cathode gas diffusion layer will necessarily have the same “elastic modulus”.
Applicant’s argument is therefore not persuasive.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/ Examiner, Art Unit 1795
/LUAN V VAN/ Supervisory Patent Examiner, Art Unit 1795