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
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.
Claim(s) 15, 16, 20, 21, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Aurbach et al. (WO 2017/064577) in view of Bhavaraju (US Patent Application Publication no. 2017/0137950).
Regarding claim 15, Aurbach discloses a method comprising:
(a) applying an electric current between a positive electrode (405) and a negative electrode (406; figure 4) immersed in an electrolyte solution in an electrochemical cell (410); and
(b) maintaining a potential difference between the electrodes while releasing hydrogen gas at the negative electrode (page 1, lines 24-25; page 20; first paragraph).
Aurbach fails to teach a potential difference of ≤ 1.5V and collecting the hydrogen gas.
Bhavaraju teaches an electrochemical method for the production of hydrogen comprising applying an electrical current between a positive electrode and a negative electrode immersed in an electrolyte, maintaining a potential difference in the range of 0.4 V to 1.2 V, i.e. 0.54 V in order to promote the hydrogen evolution reaction (paragraphs 42, 45, 97). The hydrogen gas is collected from the cathode compartment (paragraph 65).
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the potential difference between the electrodes of Aurbach, as taught by Bhavaraju in order to promote hydrogen evolution reaction.
Regarding claim 16, Aurbach further teaches wherein said electrolyte comprises a hydrogen donor, i.e. water (page 1, lines 8-27).
Regarding claim 20, the electrolyte of Aurbach comprises salt in water (page 1, lines 8-27).
Regarding claim 21, the electrolyte of Aurbach is acidic (page 1, lines 21-24; page 9, lines 11-13).
Regarding claim 23, Aurbach further discloses periodically reducing and then re-increasing a concentration of said electrolyte in said electrolyte solution (page 6, lines 26-30; page 7, lines 1-2).
Regarding claim 24, Aurbach discloses beginning with at least 1 Molar electrolyte solution in said electrochemical cell (page 7, lines 1-2); replacing the electrolyte solution with an electrolyte solution that is at least 500 times less concentrated and cyclically repeating (page 17, lines 24-30).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Aurbach in view of Bhavaraju as applied to claim 15 above, and further in view of Nocera et al. (US Patent Application Publication no. 2010/0101955).
Regarding claim 17, the modified Aurbach teaches all the features discussed above, but fails to disclose removing the positive electrode from the solution; drying the positive electrode; and placing the dry positive electrode back in the electrolyte solution.
Nocera teaches an electrolytic system comprising a lifting mechanism to remove the electrodes from the solution over the course of the electrolysis operation in order to wash them. The electrodes are immersed in the electrolyte after washing (paragraphs 341-345). One having ordinary skill in the art at the time of filing would have found it obvious to attach a lifting mechanism to the electrodes of the modified Aurbach, in order to remove them from the solution over the course of the electrolysis operation in order to wash them, as taught by Nocera.
Regarding claim 18, the electrodes of Nocera are electrolytically treated, removed and washed by sequential immersion (paragraphs 341-345).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Johnston et al. (US Patent Application Publication no. 2021/0260989).
Regarding claim 26, Johnston discloses a method of producing hydrogen gas (abstract), comprising:
(a) applying an electric current to an electrolyte solution in an electrochemical cell (paragraphs 12-13);
(b) releasing hydrogen gas at a negative electrode of said electrochemical cell (paragraph 15); characterized in that an electrical energy input of less than 60 kWh produces 1 Kg of released hydrogen gas (the hydrogen gas released depends upon the electrical energy input (paragraph 12 – the predetermined energy is at least 35, 40, 50, 100, 200 up to at least 10000 kWh and the predetermined quantity of hydrogen is at least 1kg up to at least 7kg).
Response to Arguments
Applicant’s arguments with respect to claim(s) 15 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The applicant argues that Aurbach fails to teach a potential difference of ≤ 1.5V and collecting the hydrogen gas, as amended. After further search and consideration, a new ground of rejection is presented in view of Bhavaraju.
Applicant's arguments filed on January 13, 2026, with respect to claim 26, have been fully considered but they are not persuasive. Applicant argues that Johnston fails to teach a link between energy input of 36kWh or less, and amount of hydrogen produced, i.e. 1Kg, as claimed.
In response, the Examiner respectfully disagrees. Johnston teaches that the electrical energy provided to the electrolyzer can be determined from the known or measured applied cell voltage needed to produce a given current density and the predetermined quantity of hydrogen to be produced, i.e. at least 1 kg of hydrogen. Johnston further teaches the predetermined electrical energy is at least 35 kWh (paragraph 12). The previous rejection of claim 26 in view of Johnston is still deemed proper and is maintained.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., temperature conditions, pH and current density) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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