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 1-9, in the reply filed on 17 December 2025 is acknowledged.
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.
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 6, 7 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 6, the claim recites that the mixed stream is sent to a purification unit to generate a purified mixed stream, the purified mixed stream sent to the hydrogen separation unit. Claim 1, upon which claim 6 is dependent recites that the mixed stream is sent to the hydrogen separation unit. Thus an embodiment with these two separate streams sent to the hydrogen separation unit; however, this does not appear to be supported by the disclosure as a whole, the disclosure rather appearing to support a single stream where the entirety of the mixed stream is converted to a purified mixed stream which then alone is sent to the hydrogen separation unit.
As to claim 9, the claim recites that the mixed stream is provided with a hydrogen stream to generate a hydrogen rich mixed stream, the hydrogen rich mixed stream sent to the hydrogen separation unit. Claim 1, upon which claim 6 is dependent recites that the mixed stream is sent to the hydrogen separation unit. Thus an embodiment with these two separate streams sent to the hydrogen separation unit; however, this does not appear to be supported by the disclosure as a whole, the disclosure rather appearing to support a single stream where the entirety of the mixed stream is converted to a hydrogen rich mixed stream which then alone is sent to the hydrogen separation unit.
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 1-9 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 1, the claim recites the limitation "the cathode side" at lines 2 and 7. There is insufficient antecedent basis for this limitation in the claim.
As to claim 4, the claim recites a group of options as choses for the separation unit; however, the configuration/wording of the claim renders it unclear as to if the membrane unit and the electrochemical pump are intended to be two separate options or a single option utilized together. This is further rendered unclear by use of the accidental term “andan”.
As to claim 9, the claim recites the limitation “a predetermined upper concentration limit of inert gas”; however, this limitation is already present in claim 1, upon which claim 9 is dependent. Therefore, it is unclear as to if the limitation of claim 9 intends to refer back to the limitation of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
Allowable Subject Matter
Claims 1-9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the indication of allowable subject matter is the inclusion of the limitation towards separating the mixed inert and hydrogen stream produced at start up until a concentration limit is reached and then bypassing the separation step. The prior art teaches venting this start up stream.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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