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, species A, claims 1-6 & 8-10 in the reply filed on 11/18/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7 and 11-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 5, 8, and 10 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claims. See MPEP § 608.01(n).
2-4 & 6. The element names in these claims should be lower case.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1-5 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Wang et al., Combined anodic and cathodic hydrogen production from aldehyde oxidation and hydrogen evolution reaction, 5 Nature Catalysis 66 (2022) [hereinafter Wang].
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. A system for generating hydrogen (H2) from an aldehyde (hydrogen production from aldehydes; Wang title, abstract), said system comprising:
an anode comprising a metal-based … catalyst (anode with copper catalyst; Wang p. 67, fig. 3);
a cathode comprising Ni2P or Pt/C (Pt/C; Wang p. 70, fig. 3); and
a separator positioned between the anode and the cathode (separator pictured; Wang fig. 3).
Wang is silent on the catalyst being an alloy.
However, Wang teaches that both copper and silver were both known to be catalysts to cleave the C-H bond. Wang p. 67. It further is obvious to combine equivalents.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s catalyst by combining the equivalents of copper and silver to yield the predictable result of having a suitable alloy to catalyze the cleavage of the C-H bond.
2. The system according to claim 1, wherein the anode comprises Copper (Cu) (rejected for similar reasons stated in the claim 1 rejection).
3. The system according to claim 1 or claim 2, wherein the anode comprises Silver (Ag) (rejected for similar reasons stated in the claim 1 rejection).
4. The system according to any one of claims 1-3, wherein the anode comprises Copper (Cu) and Silver (Ag) (rejected for similar reasons stated in the claim 1 rejection).
6. The system according to claim 1, wherein the anode comprises an alloy of any two or more metals selected from the group consisting of Platinum (Pt), Palladium (Pd), Gold (Au), Copper (Cu), and Silver (Ag) (rejected for similar reasons stated in the claim 1 rejection).
10. The system according to any one of claims 1-9, wherein the separator comprises an alkaline tolerable material (the solution is alkaline and thus a person having ordinary skill in the art would have understood the separator to be alkaline tolerable).
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Wang as applied to claims 1-4 previously, and further in view of Hou et al., CN 109954503 A. A machine translation was used for Hou et al. [hereinafter Hou].
5. The system according to any one of claims 1-4, wherein the anode comprises CuAg/Cu foam. Wang is silent on this.
However, Wang teaches that both copper and silver were both known to be catalysts to cleave the C-H bond. Wang p. 67. It further is obvious to combine equivalents.
Hou teaches that adding a layer of catalyst over metal foam was a known structure to form the anode. Hou [0004], [0010]-[0011], [0022]-[0023], & [0027].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s foam by combining the catalyst equivalents of copper and silver to and form a CuAg layer on top of the foam to yield the predictable result of having a suitable anode form to catalyze the cleavage of the C-H bond.
Claims 8-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Wang as applied to claims 1-7 previously, and further in view of Mues, U.S. Patent App. Pub. No. 2020/0181785 A1 and alternatively Lamaison et al., U.S. Patent App. Pub. No. 2023/0323226 [hereinafter Lamaison].
8. The system according to any one of claims 1-7, wherein the separator is a dialysis membrane. Wang is silent on this.
Wang teaches the separator should conduct hydroxides. Wang fig. 3a.
I. Mues
However, Mues teaches a separator which is a dialysis membrane since it is not an anion nor a cation exchange membrane. Mues [0041]-[0050]. Mues teaches the separator comprises pores that may range between 0.05-0.3 microns for the first polymer layer and 0.2-6.5 microns for the second polymer layer. Mues [0024]-[0025]. Mues teaches this separator conducts hydroxides by ensuring sufficient ionic conductivity. Mues [0006], [0012], [0014], [0026].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s separator to be Mues separator comprising pores that may range between 0.05-0.3 microns for the first polymer layer and 0.2-6.5 microns for the second polymer layer to yield the predictable result of conducting hydroxides.
II. Alternatively Lamaison
Lamaison teaches that separators such as anion-exchange membranes and diaphragms/non-charged separators (i.e. dialysis membranes) can facilitate charge transfers such as hydroxides. Lamaison [0080].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s separator to be Lamaison’s diaphragm/dialysis membrane to yield the predictable result of conducting hydroxides.
9. The system according to claim 8, wherein the dialysis membrane comprises a pore size of 50 nm to 1 micron (rejected for similar reasons stated in the claim 8 rejection).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571) 270-7578. The examiner can normally be reached Monday-Wednesday, 9 AM - 6 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794