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 03/25/2026. Claims 1-13, and 15-20 are pending in the current Office action. Claims 1, 4, 10-11, 13, and 16-18 were amended by Applicant. Claim 14 was cancelled by Applicant.
Status of the Rejection
The objections to claims 16 and 17 are withdrawn in view of Applicant’s amendments.
The rejections of claims 4, 10, and 11 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-9, 12-13 and 15-18 under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
The rejections of claims 10-11 and 19-20 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-8, 12-13, and 17-20 on the grounds of non-statutory double patenting are withdrawn in view of Applicant’s amendments.
New ground(s) of rejection are necessitated by Applicant’s amendments.
Claim Interpretation
The claims include the terms “height”, “height direction”, and “vertical direction”. It is noted that, under the broadest reasonable interpretation, the assignment of any particular direction to a “height”, “height direction”, and/or “vertical direction” is arbitrary. I.e., while the selection of the direction considered to correspond to “height”, “height direction”, and/or “vertical direction” must be consistent within each claim set, it does not require this direction to have any particular orientation with respect to unclaimed components or the surroundings of the apparatus.
It is further noted that the term “web”, as used in the instant application, has been interpreted to include “thin pieces of metal”, in addition to fabrics and web-shaped networks, based on Applicant’s Remarks filed on 10/04/2022 in the parent application (i.e., application No. 16645009).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7, 9, 12, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noaki (US Pat. No. 6773561 B1).
Regarding claim 1, Noaki teaches an electrolysis device for the electrolytic treatment of liquids (title and abstract), comprising:
an anode chamber (“an anode compartment” col. 6 line 66 – col. 7 line 4 and “29” Fig. 14, annotated below);
a cathode chamber (“a cathode compartment” col. 7 lines 5-10 and “30” Fig. 14);
an ion exchange membrane separating the anode chamber from the cathode chamber (“a cation exchange membrane disposed between respective adjacent unit cells,” col. 6 lines 60-65 and “17” Fig. 14); and
at least one web (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated below) situated in both the anode chamber and the cathode chamber (Id.), the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“holes 6” Id.);
wherein a lower end region of the at least one web is beveled such that a width of the at least one web tapers toward a lower end of the at least one web (see annotated Fig. 13, below) and such that a distance the at least one web projects away from the ion exchange membrane decreases toward the lower end of the at least one web (see annotated Figs. 13 and 14, below).
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Annotated Noaki Fig. 13
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Annotated Partial Noaki Fig. 14
Regarding claim 2, Noaki further teaches the plurality of holes is situated in an upper region of the at least one web (see Fig. 13).
Regarding claim 3, Noaki further teaches the upper region extends over the majority of the height of the at least one web, a value within the claimed range (see Fig. 13).
Regarding claim 4, Noaki anticipates the limitations of claim 2, as described above. Noaki further teaches the upper region extends over the majority of the height of the at least one web, a value within the claimed range (see Fig. 13).
Regarding claim 5, Noaki anticipates the limitations of claim 2, as described above. Noaki further teaches each of the plurality of holes is spaced apart in the height direction of the at least one web (see Fig. 13).
Regarding claim 6, Noaki further teaches a first spacing between a first hole of the plurality of holes and a second hole of the plurality of holes is different than a second spacing between the second hole and a third hole of the plurality of holes (see annotated Fig. 13).
Regarding claim 7, Noaki further teaches the first spacing is smaller than the second spacing (see annotated Fig. 13).
Regarding claim 9, Noaki anticipates the limitations of claim 1, as described above. Noaki further teaches each of the plurality of holes has an approximately circular contour (see Fig. 13).
Regarding claim 12, Noaki anticipates the limitations of claim 1, as described above. Noaki further teaches the at least one web comprises two webs, a first web of the two webs being situated in the anode chamber and a second of the two webs being situated in the cathode chamber (col. 9 lines 54-67 and Fig. 13).
Regarding claim 18, Noaki teaches an electrolysis device for the electrolytic treatment of liquids (title and abstract), comprising:
an anode chamber (“an anode compartment” col. 6 line 66 – col. 7 line 4 and “29” Fig. 14, annotated above);
a cathode chamber (“a cathode compartment” col. 7 lines 5-10 and “30” Fig. 14);
an ion exchange membrane separating the anode chamber from the cathode chamber (“a cation exchange membrane disposed between respective adjacent unit cells,” col. 6 lines 60-65 and “17” Fig. 14);
at least one web situated in the anode chamber, the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated above), wherein a lower end region of the at least one web situated in the anode chamber is beveled such that a width of the at least one web situated in the anode chamber tapers toward a lower end of the at least one web situated in the anode chamber (see annotated Fig. 13, above) and such that a distance the at least one web situated in the anode chamber projects away from the ion exchange membrane decreases toward the lower end of the at least one web situated in the anode chamber (see annotated Figs. 13 and 14, above); and
at least one web situated in the cathode chamber, the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated above), wherein a lower end region of the at least one web situated in the cathode chamber is beveled such that a width of the at least one web situated in the cathode chamber tapers toward a lower end of the at least one web situated in the cathode chamber (see annotated Fig. 13, above) and such that a distance the at least one web situated in the cathode chamber projects away from the ion exchange membrane decreases toward the lower end of the at least one web situated in the cathode chamber (see annotated Figs. 13 and 14, above).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Noaki (US Pat. No. 6773561 B1) in view of Nakao (US Pat. No. 5221452).
Regarding claims 10 and 11, Noaki anticipates the limitations of claim 1, as described in the rejection under 35 U.S.C. § 102(a)(1) above, incorporated herein by reference.
Noaki does not teach a cross-section of at least one hole of the plurality of holes is approximately 10 mm2 (claim 10) or 15 mm2 (claim 11). Noaki does not provide guidance on the cross-section of the “holes 6”.
However, Nakao teaches an electrolysis device (title) comprising metal current-conducting webs (“power supply ribs are made of titanium plates” col. 5 lines 42-65), wherein the metal current-conducting webs comprise holes having a cross section of about 20-320 mm2 (“a plurality of perforations preferably having a diameter of from 5 to 20 mm” Id.), a range close to the claimed values, which provide the predictable benefit of allowing the electrolyte to communicate between compartments (“in order to ensure the communication of the electrolyte between adjacent compartments partitioned by the ribs” Id.).
As Noaki and Nakao teach electrolysis devices comprising chambers separated by conducting metal webs, Noaki and Nakao 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 Noaki, such that at least one of the holes is in the range of 20-320 mm2, a range close to the claimed values of 10 mm2 (claim 10) and 15 mm2 (claim 11), as taught by Nakao. A person having ordinary skill in the art would have been motivated to make this modification because Nakao teaches cross sections within this range are suitable for allowing the electrolyte to pass between different electrode chambers. A range in the prior art close to a claimed value establishes a prima facie case of obviousness (MPEP § 2144.05(I)). Furthermore, absent evidence of unexpected results, change in the size of a component establishes a prima facie case of obviousness (MPEP § 2144.04(IV)(A)).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9, 10, 11, or 12 of U.S. Patent No. 11608561 B2 (the reference patent) in view of Noaki (US Pat. No. 6773561 B1).
Regarding claim 1, claim 1 of the reference patent recites an electrolysis device for the electrolytic treatment of liquids (“an electrolysis device for the electrolytic treatment of liquids” claim 1 lines 1-2), comprising:
an anode chamber (“an anode chamber” claim 1 line 3);
a cathode chamber (“a cathode chamber” claim 1 line 3);
an ion exchange membrane separating the anode chamber from the cathode chamber (“an ion exchange membrane separating the anode chamber from the cathode chamber” claim 1 lines 9-10); and
at least one web situated in the anode chamber or the cathode chamber (“the inner space of the anode chamber and/or of the cathode chamber are/is subdivided by webs” claim 1 lines 11-12), the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“wherein the webs are provided at least regionally with holes, and wherein the webs extend in the height direction of the electrolysis device and comprise, as viewed in the height direction, at least one lower region in which the webs are free of holes” claim 1 lines 14-18).
Claim 1 of the reference patent does not recite a lower end region of the at least one web is beveled such that a width of the at least one web tapers toward a lower end of the at least one web and such that a distance the at least one web projects away from the ion exchange membrane decreases toward the lower end of the at least one web.
However, Noaki teaches an electrolysis device (title) comprising metal webs (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated above), wherein a lower end region of the metal webs are beveled such that a width of the metal webs tapers toward a lower end of the at least one web (see annotated Fig. 13, above) and such that a distance the metal webs project away from the ion exchange membrane decreases toward the lower end of the metal webs (see annotated Figs. 13 and 14, above), thereby providing a fluid connection between adjoining chambers of the electrolysis device at the bottom of each chamber (see Figs. 12 and 13).
As Noaki teaches an electrolysis device comprising metal webs, Noaki is 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 invention recited in claim 2 of the reference patent, by adding a bevel to the lower end region of the at least one webs, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing the electrolyte to better travel between adjacent chambers in the electrolysis device at the bottom of the electrolytic cell. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 1 of the reference patent thus renders each of the limitations of claim 1 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 2, claim 2 of the reference patent further recites the plurality of holes is situated in an upper region of the at least one web (“wherein the webs comprise, as viewed in the height direction, at least one upper region with holes” claim 2 lines 2-3).
Claim 2 of the reference patent thus renders each of the limitations of claim 2 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claims 3 and 4, claim 2 of the reference patent does not recite the upper region extends at least approximately over an upper quarter of the height of the at least one web (claim 3) or at least approximately over an upper third of the height of the at least one web (claim 4).
However, Noaki further teaches the metal webs comprise a plurality of holes situated in an upper region (“holes 6” col. 9 lines 54-67), wherein the upper region extends over a majority of the height of the webs (see Fig. 13), a range within the claimed ranges.
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 invention recited in claim 2 of the reference patent, by having the upper region extend over a majority of the height of the webs, a range within the claimed ranges, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification because Noaki teaches that this is a suitable arrangement for providing electrolyte exchange between adjacent chambers in the electrolysis cell.
Claim 2 of the reference patent thus renders each of the limitations of claims 3 and 4 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 5, the limitations of claim 2 are rendered obvious by the limitations of claim 2 of the reference patent in view of Noaki, as described above.
Claim 9 of the reference patent further recites each of the plurality of holes is spaced apart in the height direction of the at least one web (“wherein the webs comprise, in the at least one upper region, multiple holes which, as viewed in the direction of the height of the webs, have different spacings from one another” claim 9 lines 1-4).
Claim 9 of the reference patent thus renders each of the limitations of claim 5 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 6, claim 10 of the reference patent further recites a first spacing between a first hole of the plurality of holes and a second hole of the plurality of holes is different than a second spacing between the second hole and a third hole of the plurality of holes (“the holes in the webs, in a first lower section of the upper region, are arranged with smaller spacings from one another than in a second section of the upper region adjoining a top thereof” claim 10 lines 1-4).
Claim 10 of the reference patent thus renders each of the limitations of claim 6 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 7, claim 10 of the reference patent further recites the first spacing is smaller than the second spacing (“the holes in the webs, in a first lower section of the upper region, are arranged with smaller spacings from one another than in a second section of the upper region adjoining a top thereof” claim 10 lines 1-4).
Claim 10 of the reference patent thus renders each of the limitations of claim 7 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 8, claim 9 of the reference patent renders the limitations of claim 5 obvious in view of Noaki, as described above. Claim 10 of the reference patent further recites the spacing between the respective holes of the plurality of holes varies along the height of the at least one web (“the holes in the webs, in a first lower section of the upper region, are arranged with smaller spacings from one another than in a second section of the upper region adjoining a top thereof” claim 10 lines 1-4).
Claim 10 of the reference patent thus renders each of the limitations of claim 8 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 9, claim 1 of the reference patent renders the limitations of claim 1 obvious in view of Noaki, as described above.
Claim 1 of the reference patent does not explicitly recite each of the plurality of holes has an approximately circular contour.
However, Noaki further teaches the metal webs comprise a plurality of holes (“holes 6” col. 9 lines 54-67) having approximately circular contours (see Fig. 13).
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 invention recited in claim 2 of the reference patent, such that the plurality of holes have an approximately circular contour, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification because Noaki teaches an approximately circular shape is suitable for the holes in the metal webs. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 1 of the reference patent thus renders each of the limitations of claim 9 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 10, the limitations of claim 1 are rendered obvious by claim 1 of the reference patent in view of Noaki, as described above.
Claim 11 of the reference patent further recites a cross-section of at least one hole of the plurality of holes is at least approximately 10 mm2, a range encompassing the claimed value (claim 11 lines 1-3). A range in the prior art encompassing a claimed value establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Claim 11 of the reference patent thus renders each of the limitations of claim 10 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 11, the limitations of claim 1 are rendered obvious by claim 1 of the reference patent in view of Noaki, as described above.
Claim 12 of the reference patent further recites a cross-section of at least one hole of the plurality of holes is at least approximately 15 mm2, a range encompassing the claimed value (claim 12 lines 1-3). A range in the prior art encompassing a claimed value establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Claim 12 of the reference patent thus renders each of the limitations of claim 11 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 12, the limitations of claim 1 are rendered obvious by claim 1 of the reference patent in view of Noaki, as described above.
Claim 1 of the reference patent does not recite the at least one web comprises two webs, a first web of the two webs being situated in the anode chamber and a second of the two webs being situated in the cathode chamber.
However, claim 1 of the reference patent recites this as one of three possible configurations (“the inner space of the anode chamber and/or of the cathode chamber are/is subdivided by webs” claim 1 lines 11-12). Selecting an option from a finite number of predictable, art recognized solutions to a problem with a reasonable expectation of success establishes a prima facie case of obviousness (MPEP § 2143(I)(E)).
Claim 1 of the reference patent thus renders each of the limitations of claim 12 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 13, claim 9 of the reference patent recites a web for an electrolysis device (“webs extending transversely with respect to the electrodes,” claim 1 lines 12-13) comprising an upper region (“at least one upper region” claim 2 lines 2-3) and a lower region terminating in a lower end region (a system with an upper region must necessarily also have a lower region), and
a plurality of holes formed into the upper region (“upper region with holes” claim 2 line 3), each of the plurality of holes being spaced apart from another of the plurality of holes, wherein the spacing between the respective holes varies along the upper region in a vertical direction (“multiple holes which, as viewed in the direction of the height of the webs, have different spacings from one another.” claim 9 lines 2-4).
Claim 9 of the reference claim does not recite the lower end region is beveled such that a width of the web tapers toward a lower end of the web.
However, Noaki teaches metal webs (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated above), wherein a lower end region of the metal webs are beveled such that a width of the metal webs tapers toward a lower end of the web (see annotated Fig. 13, above) thereby providing a fluid connection between adjoining chambers of the electrolysis device at the bottom of each chamber when the metal webs are used in an electrolytic cell (see Figs. 12 and 13).
As Noaki teaches an electrolysis device comprising metal webs, Noaki is 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 invention recited in claim 9 of the reference patent, such that the lower end region is beveled such that a width of the web tapers toward a lower end of the web, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing electrolyte to better travel between adjacent chambers in the electrolysis device when the metal webs are incorporated into the electrolytic device recited in claim 9 of the reference patent. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 9 of the reference patent thus renders each of the limitations of claim 13 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claims 15 and 16, claim 9 of the reference patent does not recite the upper region extends at least approximately over an upper quarter of the height of the at least one web (claim 15) or at least approximately over an upper third of the height of the at least one web (claim 16).
However, Noaki further teaches the metal webs comprise a plurality of holes situated in an upper region (“holes 6” col. 9 lines 54-67), wherein the upper region extends over a majority of the height of the webs (see Fig. 13), a range within the claimed ranges.
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 invention recited in claim 9 of the reference patent, by having the upper region extend over a majority of the height of the webs, a range within the claimed ranges, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification because Noaki teaches that this is a suitable arrangement for providing electrolyte exchange between adjacent chambers when the metal web is incorporated into the electrolysis cell.
Claim 9 of the reference patent thus renders each of the limitations of claims 15 and 16 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 17, claim 9 of the reference patent renders the limitations of claim 13 obvious in view of Noaki, as described above.
Claim 10 of the reference claim further recites the upper region comprises a first upper region and a second upper region (“a first lower section of the upper region” and “a second section of the upper region” claim 10 lines 2-4), the plurality of holes being formed into both the first upper region and the second upper region (claim 10 lines 1-4); and
the spacing between respective holes in the first upper region is smaller than the spacing between respective holes in the second upper region (Id.).
Claim 10 of the reference patent thus renders each of the limitations of claim 17 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 18, claim 1 of the reference patent recites an electrolysis device for the electrolytic treatment of liquids (“an electrolysis device for the electrolytic treatment of liquids” claim 1 lines 1-2), comprising:
an anode chamber (“an anode chamber” claim 1 line 3);
a cathode chamber (“a cathode chamber” claim 1 line 3);
an ion exchange membrane separating the anode chamber from the cathode chamber (“an ion exchange membrane separating the anode chamber from the cathode chamber” claim 1 lines 9-10); and
at least one web situated in the anode chamber or the cathode chamber (“the inner space of the anode chamber and/or of the cathode chamber are/is subdivided by webs” claim 1 lines 11-12), the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“wherein the webs are provided at least regionally with holes, and wherein the webs extend in the height direction of the electrolysis device and comprise, as viewed in the height direction, at least one lower region in which the webs are free of holes” claim 1 lines 14-18); and/or
at least one web situated in the cathode chamber (“the inner space of the anode chamber and/or of the cathode chamber are/is subdivided by webs” claim 1 lines 11-12), the at least one web comprising a plurality of holes extending partially along a height of the at least one web (“wherein the webs are provided at least regionally with holes, and wherein the webs extend in the height direction of the electrolysis device and comprise, as viewed in the height direction, at least one lower region in which the webs are free of holes” claim 1 lines 14-18).
Claim 1 of the reference patent does not recite at least one web situated in the anode chamber and at least one web situated in the cathode chamber.
However, claim 1 of the reference patent recites this as one of three possible configurations (“the inner space of the anode chamber and/or of the cathode chamber are/is subdivided by webs” claim 1 lines 11-12). Selecting an option from a finite number of predictable, art recognized solutions to a problem with a reasonable expectation of success establishes a prima facie case of obviousness (MPEP § 2143(I)(E)). Furthermore, Noaki teaches that it is desirable to use metal webs in both the anode and cathode chambers, to provide an electrical connection to both the anode and the cathode (col. 9 lines 54-67).
Claim 1 of the reference patent does not recite the lower end region of the at least one web situated in the anode chamber is beveled such that a width of the at least one web situated in the anode chamber tapers toward a lower end of the at least one web situated in the anode chamber and such that a distance the at least one web situated in the anode chamber projects away from the ion exchange membrane decreases toward the lower end of the at least one web situated in the anode chamber or a lower end region of the at least one web situated in the cathode chamber is beveled such that a width of the at least one web situated in the cathode chamber tapers toward a lower end of the at least one web situated in the cathode chamber and such that a distance the at least one web situated in the cathode chamber projects away from the ion exchange membrane decreases toward the lower end of the at least one web situated in the cathode chamber.
However, Noaki teaches an electrolysis device (title) comprising metal webs in both the anode and cathode chambers (“electrically conductive ribs 9” col. 9 lines 54-67 and Fig. 13, annotated above), wherein a lower end region of the metal one webs in the anode and cathode chambers are beveled such that a width of the metal webs tapers toward a lower end of the metal webs (see annotated Fig. 13, above) and such that a distance the webs project away from the ion exchange membrane decreases toward the lower end of the metal webs (see annotated Figs. 13 and 14, above), which provides a fluid connection between adjoining chambers of the electrolysis device (see Figs. 12 and 13).
As Noaki teaches an electrolysis device comprising metal webs, Noaki is 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 invention recited in claim 1 of the reference patent, by adding a bevel to the lower end region of the webs in the anode and cathode chambers, as taught by Noaki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing electrolyte to better travel between adjacent chambers in the electrolysis device. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 1 of the reference patent therefore renders the limitations of claim 18 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 19, claim 10 of the reference patent further recites for each web, each of the plurality of holes is spaced apart from another of the plurality of holes, wherein the spacing between the respective holes varies in a vertical direction (“the holes in the webs, in a first lower section of the upper region, are arranged with smaller spacings from one another than in a second section of the upper region adjoining a top thereof” claim 10 lines 1-4).
Claim 10 of the reference patent therefore renders the limitations of claim 19 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 20, claim 10 of the reference patent further recites, for each web, the spacing between two lower holes of the plurality of holes is smaller than a spacing between two higher holes of the plurality of holes (“the holes in the webs, in a first lower section of the upper region, are arranged with smaller spacings from one another than in a second section of the upper region adjoining a top thereof” claim 10 lines 1-4).
Claim 10 of the reference patent therefore renders the limitations of claim 20 obvious in view of Noaki. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Allowable Subject Matter
Claims 13 and 15-17 would be allowable if rewritten or amended to overcome the rejection(s) on the grounds of non-statutory double patenting set forth in this Office action, or upon the filing and acceptance of a terminal disclaimer.
Furthermore, claims 8, 19, and 20 would be allowable if rewritten in independent form to include all of the limitations of the base claim and any intervening claims, and either: a) further amended to overcome the rejection(s) on the grounds of non-statutory double patenting set forth in this Office action or b) filing and acceptance of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 13, the prior art of record does not reasonably teach or render obvious the cumulative limitations of claim 13.
The closest prior art is considered to be Noaki (US Pat. Pub. 6773561), Getsy ‘857 (US Pat. No. 5653857), and Sato (US Pat. No. 4734180).
As detailed in the rejections above, Noaki teaches a web for an electrolysis device comprising an upper region, a lower region terminating in a lower end region, and a plurality of holes formed in to the upper region, each of the plurality of holes being spaced apart from another of the plurality of holes, wherein the lower end region is beveled such that a width of the web tapers toward a lower end of the web (see annotated Figs. 13 and 14, above).
However, Noaki does not teach the spacing between the respective holes varies along the upper region in a vertical direction.
Getsey ‘857 teaches a metal web (“vertical web member 52” col. 6 lines 25-62 and Figs. 1 and 3) comprising a plurality of holes (“oval perforations 54” and “circular perforations 55” Id.), wherein the spacing between the respective holes varies along the upper region in a vertical direction (see annotated Fig. 3, below).
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Annotated Getsey ‘857 Fig. 3
However, Getsey ‘857 does not teach a lower region of the web is beveled. Furthermore, since the webs of Getsy ‘857 and Noaki serve different purposes in their respective electrolytic cells, it cannot reasonably be considered that a person having ordinary skill in the art would have found it obvious to modify the webs of Getsey ‘857 in view of Noaki or vice versa, absent an explicit motivation to do so in the prior art.
Sato teaches a system analogous to that of Noaki (see e.g., Fig. 2), but explicitly teaches the holes are regularly distributed along the height of the webs. Sato therefore cannot provide a person having ordinary skill in the art with a motivation to use a variable spacing along a height direction of the metal webs.
Thus, the prior art of record does not reasonably teach or render obvious the cumulative limitations of claim 13. Therefore claim 13 is patentably distinguished over the prior art, and would be allowable if the rejections on the grounds of double patenting are addressed via amendment or filing and acceptance of a terminal disclaimer.
Regarding claims 15-17, claims 15-17 depend from claim 13, and would therefore be allowable over the prior art for at least the same reasons enumerated for claim 13, above.
Regarding claims 19-20, claims 19-20 incorporate each of the limitations of claim 13, and would therefore be allowable over the prior art if amended in independent form including the cumulative limitations of the base claim and all intervening claims for at least the same reasons enumerated for claim 13, above.
Regarding claim 8, while not identical in language, the reasons the prior art is not considered to disclose the cumulative limitations of claim 13 enumerated above are considered to apply mutandis mutatis to the cumulative limitations of claim 8. Claim 8 would therefore be allowable over the prior art if amended in independent form including the cumulative limitations of the base claim and all intervening claims for at least the same reasons enumerated for claim 13, above
Response to Arguments
Applicant’s arguments, see Remarks p. 6-9, filed 03/25/2026, with respect to the rejections of claims 13 and 14 under 35 U.S.C. § 102(a)(1) on the grounds of anticipation by Getsy ‘977 (US Pat. No. 5653857) have been fully considered and are persuasive. The rejections of claims 13 and 14 on the grounds of anticipation by Getsy ‘977 have been withdrawn.
Applicant’s arguments, see Remarks p. 6, filed 03/25/2026, with respect to the rejections of claims 1-8, 12-13, and 17-20 on the grounds of non-statutory double patenting over U.S. Patent No. 11608561 B2 have been fully considered and are persuasive. The rejections of claims 1-8, 12-13, and 17-20 on the grounds of non-statutory double patenting have been withdrawn.
Applicant's arguments, see Remarks p. 6-9, filed 03/25/2026, with respect to the rejections of claims 1-13 and 15-18 in view of Noaki (US Pat. Pub. 6773561), Getsy ‘857 (US Pat. No. 5653857) and Carlson (US Pat. No. 5296109) under 35 U.S.C. § 102(a)(1) or 103 have been fully considered but they are not persuasive.
Specifically, no specific arguments as to why the amendments would overcome the rejections based on these references could be identified in Applicant’s response. In particular, certain claims remain anticipated by Noaki, as described above, after Applicant’s amendments.
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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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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