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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-8 in the reply filed on 11 February 2026 is acknowledged.
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 February 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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
(C) 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In the instant case, the following limitations are deemed to invoke 112(f):
Instant claim1: means of a heat transfer medium
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: means of heat transfer medium in claims 4-6.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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 1-8 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.
Claim 1 recites the limitation "the waste heat" in line 13. There is insufficient antecedent basis for this limitation in the claim.
As to claim 3, the recitation “wherein the waste heat generated by the electrolysis reaction is transferred to the make-up water and/or is transferred to the condensate, or is transferred to a mixture of the make-up water and the condensate” is indefinite due to the combined “and/or” and the separate “or” because the recitation of “transferred to a mixture of the make-up water and condensate” is merely repetitive of the “and” part of the previous option.
As to claim 5, the recitation “….through a heat exchanger” is unclear due to the dependency on claim 4 if another heat exchanger is required of the heat exchange of claim 4 is further limited in instant claim 5.
As to claim 6, the recitation “….is effected by a heat pump” is unclear due to the dependency on claim 4 if another heat exchanger is required of the heat exchange of claim 4 is further limited in instant claim 5.
Claim 6 recites the limitation "the condensate" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Eberhard et al (EP0084815 A2 with citations drawn towards the translation provided via Espacenet) in view of Lach et al (US 2023/0175685 A1).
As to claim 1, Eberhard discloses a method comprising:
- generating at least one product gas by an electrolysis reaction by an electrolyzer (#14 [0012]);
-providing a water-containing medium to generate steam (Feedwater tank 9 [0010]);
- supplying a water-containing medium to a steam generating device, and generating steam from the water- containing medium in the steam generating device (#2 [0010]);
- transferring at least part of the waste heat generated during the electrolysis reaction to the water-containing medium by means of a heat transfer medium before the water-containing medium is supplied to the degassing device (#8 [0018] via conduits 14b.
Eberhard fails to explicitly disclose.
- supplying the water-containing medium to a degassing device, and degassing the water-containing medium in the degassing device;
- supplying a portion of the steam generated in the steam generating device to the degassing device, wherein degassing of the water- containing medium is effected by the supplied steam;
Lach disclose a steam generator (#12) comprising a deaerator (#38) which removes gasses before supplying the water to the inlet of the steam generator ([0046]) where a portion of the steam generated in the steam generating device is supplies to the degassing device, wherein degassing of the water- containing medium is effected by the supplied steam ([0043],[0045]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a deaerator and steam supply to the deaerator as taught by Lach on the water feed line in Eberhard in order to remove non-condensable gases and heat the water before entry into the steam generator (Lach [0045]).
As to claim 2, Eberhard discloses wherein the water- containing medium is provided in the form of a condensate by condensation of the steam after use of the steam in a steam user. (Fig. 1 # 6 condensate to #7 pump through 8 into water tank 9).
As to claim 3, Eberhard discloses wherein the waste heat is transferred to the condensate (Fig. 1 #14b to #8).
As to claims 4 and 5, Eberhard discloses wherein the transfer of waste heat by means of the heat transfer medium is effected by a heat exchanger (#8 preheater which necessarily exchanges the heat with 14b) to the make-up water, producing a preheated make-up water (via transfer to 9 which becomes the make up water for the steam generator 2).
As to claims 7 and 8, Eberhard discloses wherein a first portion of the heat transfer medium is used to transfer waste heat to the water-containing medium, and a second portion of the heat transfer medium is re-cooled and afterwards used to cool the electrolyser. (Fig. 1 via 14b going from the electrolyzer and 14b returning to the electrolyzer via coolant pump 14c) wherein the heat transfer medium is re-cooled after the waste heat has been transferred to the water- containing medium and is afterwards used to cool the electrolyser. (via piping 14b to electrolyzer).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Eberhard, as modified by Lach, as applied to claim 5 above, and further in view of Rueger et al (US 2018/0287179 A1).
As to claim 6, Eberhard, as modified by Lach, fails to explicitly disclose wherein the transfer of waste heat by means of the heat transfer medium is effected by a heat pump to a mixture of the preheated make-up water and the condensate.
Rueger discloses coupling a heat pump (#64) to a water feed line (#51) utilizing low temperature heat to preheat feed water into a steam generator (#53 Fig. 6 [0123]).
Thus the prior art Eberhard, as modified by Lach, differs only by the specific type of heat transfer means. The specific use of heat exchangers are known from Rueger for use with electrolysis systems and steam generators.
Thus, it would have been obvious to one of ordinary skill in the art to have used a heat pump as taught by Rueger to preheat the feedwater in Eberhard, as modified by Lach, because they are compact units which provides the predictable result of utilizing low temperature heat to preheat feedwater for a steam generator (See MPEP 2144.07 and 2143 A)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795