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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 04/21/2026.
Status of Rejections
All previous rejections are maintained.
Claims 1-20 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 101
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception(s) without significantly more. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
MPEP § 2106 describes the two-step analysis of judicial exceptions in claims. “Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception.” Step 2B determines whether additional elements in the claim contribute to an inventive concept.
Claim 1: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “measuring at least one…” includes the evaluation/observation of the pressure or viscosity of the fluid. Evaluations and observations are considered mental processes, which are abstract ideas (see MPEP § 2106.04(a)(2)III).
The limitation claiming “selecting a probability…” is considered a mental process, which is an abstract ideas (see MPEP § 2106.04(a)(2)III).
The limitation claiming “calculating…” includes mathematical calculations according to the specification (see [0062]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
Therefore, the claim contains judicial exceptions and Prong 2 analysis is necessary.
Step 2A Prong 2:
After the optimal flow rate is calculated (an abstract idea, as explained above), the flow rate of the flue is adjusted to the optimal flow rate. This is considered an insignificant extra-solution activity. According to MPEP § 2106.05(g)(3), “[T]he courts have found [the following] to be insignificant extra-solution activity… i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential)”. This is considered to be similar to the instant invention where the flow rate is set after determining the optimal flow rate. Additionally, that section of the MPEP states “When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following: (1) Whether the extra-solution limitation is well known”. Ogumerem et al (“Dynamic Modeling and Explicit Control of a PEM Water Electrolysis Process”, Smart and Sustainable Manufacturing Systems, vol 2, 2, 2018) discloses that setting a flow rate to dislodge bubbles from a reaction surface (see e.g. page 34, paragraph starting with “In Fig. 5a”). Therefore, the claim has not integrated the judicial exception into a practical application.
Step 2B:
The claim further claims a fluid, a reactive surface, bubbles that form on said surface due to the reaction, sensors, and a flow controller. These elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Ogumerem et al (“Dynamic Modeling and Explicit Control of a PEM Water Electrolysis Process”, Smart and Sustainable Manufacturing Systems, vol 2, 2, 2018) – see e.g. abstract; page 39, Fig 8.
Swiegers et al (“The prospects of developing a highly energy efficient water electrolyser by eliminating or mitigating bubble effects”, Sustainable Energy Fuels, 2021, 5,1280) – see e.g. abstract; page 1283, col 2, paragraph starting with “(5)”.
Bakker et al (“Gas bubble removal in alkaline water electrolysis with utilization of pressure swings”, Electrochimica Acta, 319 (2019) 148-157) – abstract; page 151, col 1, 3.1; page 151, col 2, paragraph starting with “Two pressure”.
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Claim 11: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “determining at least one…” includes the evaluation/observation of the pressure or viscosity of the fluid. Evaluations and observations are considered mental processes, which are abstract ideas (see MPEP § 2106.04(a)(2)III).
The limitation claiming “selecting a probability…” is considered a mental process, which is an abstract ideas (see MPEP § 2106.04(a)(2)III).
The limitation claiming “calculating…” includes mathematical calculations according to the specification (see [0062]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
Therefore, the claim contains judicial exceptions and Prong 2 analysis is necessary.
Step 2A Prong 2:
After the optimal flow rate is calculated (an abstract idea, as explained above), the flow rate of the flue is adjusted to the optimal flow rate. This is considered an insignificant extra-solution activity. According to MPEP § 2106.05(g)(3), “[T]he courts have found [the following] to be insignificant extra-solution activity… i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential)”. This is considered to be similar to the instant invention where the flow rate is set after determining the optimal flow rate. Additionally, that section of the MPEP states “When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following: (1) Whether the extra-solution limitation is well known”. Ogumerem et al (“Dynamic Modeling and Explicit Control of a PEM Water Electrolysis Process”, Smart and Sustainable Manufacturing Systems, vol 2, 2, 2018) discloses that setting a flow rate to dislodge bubbles from a reaction surface (see e.g. page 34, paragraph starting with “In Fig. 5a”). Therefore, the claim has not integrated the judicial exception into a practical application.
Step 2B:
The claim further claims a fluid, a reactive surface, bubbles that form on said surface due to the reaction, sensors, a flow controller, and control circuitry. These elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Ogumerem et al (cited above) – see e.g. abstract; page 39, Fig 8.
Swiegers et al (cited above) – see e.g. abstract; page 1283, col 2, paragraph starting with “(5)”.
Bakker et al (cited above) – see e.g. abstract; page 151, col 1, 3.1; page 151, col 2, paragraph starting with “Two pressure”.
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Any claims dependent on the above claims are rejected for their dependence.
Claim Rejections - 35 USC § 112(a)
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 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
MPEP 2164.01 states the following:
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)…There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
(A), (B), (F), (G): The claims are drawn to a method/controller configured to perform the method of calculating and applying an optimal flow rate of fluid to dislodge bubbles from a reactive surface based on a selected probability distribution of bubble size.
(C), (E): Ogumerem, Swiegers, and Bakker (all cited above) all show that is known in the art that flow rate of electrolyte can be used to dislodge bubbles from a surface (see e.g. abstract of Ogumerem; see e.g. abstract of Swiegers; see e.g. abstract of Bakker). Ogumerem teaches creating predictive models of the cell to optimize the parameters used to run the cell (See e.g. abstract). Swiegers explicitly states that “It should perhaps then be no surprise that, while numerous studies have sought to develop accurate theoretical models for bubble generating processes and their influence on electrode performance, predicting and modelling bubble behaviour has been a very challenging task” (see e.g. page 1284, col 1, paragraph starting with “In summary”).
(D), (H): The instant specification does not provide any formula or guidance on how the probability distribution is generated or selected and does not provide guidance on how the optimal flow rate of the fluid is calculated for the selected probability distribution of bubble sizes. While it is known in the art use models, Swiegers discusses the difficult in developing models for the bubbles that are generated. Given the difficulty with getting a model, such as a probability distribution of bubble sizes, it would be more difficult to then use these probability distributions to calculate an optimal flow rate without any guidance given for how to develop or select the distributions and how those are used to calculate flow rate. Thus, the claims require undue experimentation.
Any claims dependent on the above claims are rejected for their dependence.
Response to Arguments
Applicant's arguments filed 04/21/2026 have been fully considered but they are not persuasive.
On page(s) 6-7, the Applicant argues that claim 1 has been amended to include physical structural elements and has been reworded to not include abstract ideas and is no longer in violation of 35 USC 101. This is not considered persuasive.
The Applicant points to the changes in the preamble that now recite “a clear technological improvement”, which is not an abstract idea. However, the improvement in the preamble is the result of the abstract ideas identified above. MPEP § 2106.05(a) II states that ‘it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology…Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology’.
The Applicant points to “determining” being changed to “measuring” “thereby making the data-gather step a concrete physical measurement of a real-world fluid property”. Although the Applicant has changed the language and included a sensor, MPEP § 2106.04(a)(2)III states that "The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation… Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer”.
The Applicant points to the adjusting limitation being amended to now include a flow controller “thereby tying or creating a nexus with the post-calculation step to a specific physical control action”. However, adjusting a flow rate using a flow controller is considered an insignificant extra-solution activity to the judicial exception. MPEP § 2106.05(g)(3) states that ‘When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following: (1) Whether the extra-solution limitation is well known’. Ogumerem et al (“Dynamic Modeling and Explicit Control of a PEM Water Electrolysis Process”, Smart and Sustainable Manufacturing Systems, vol 2, 2, 2018) discloses that setting a flow rate to dislodge bubbles from a reaction surface (see e.g. page 34, paragraph starting with “In Fig. 5a”). Therefore, the claim has not integrated the judicial exception into a practical application.
The new limitations following the “wherein” clause are only describing the fluids function in the reactor and that adjusting step dislodges bubbles.
The primary issue with claim 1 is that the abstract ideas of “measuring…”, ”selecting…”, and “calculating…” are the inventive concept of the claim and as stated above ‘it is important to keep in mind that an improvement in the abstract idea itself is not an improvement in technology’.
On page(s) 7-8, the Applicant argues that claim 11 passes Step 2A Prong 1 of 35 USC 101. This is not considered persuasive.
The Applicant argues that the claim now includes explicit physical hardware elements transforming the claim from generic control circuitry into a specific machine. However, it was not argued in the Office Action that claim 11 was not a machine.
The Applicant argues that the claim as a whole is more than the abstract idea of the “mathematical concept”. This is not considered persuasive. As the rejection states, the other parts of the claim not directed to the abstract ideas are insignificant extra-solution activity or understood, routine and conventional elements.
The Applicant argues that the claim as a whole is directed to a specific technological improvement. However, MPEP § 2106.05(a) II states that ‘it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology…Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology’.
The Applicant points to structural aspects of the claim including the reactive surface, fluid, flow control device, sensors, and control circuitry as demonstrating an integration of the abstract ideas. However, these elements have all been shown to be understood, routine and conventional with the above references and therefore the claim does not satisfy Step 2B.
On page(s) 8-9, the Applicant argues that claim 11 passes Step 2B Prong 1 of 35 USC 101. This is not considered persuasive.
The Applicant argues that the combination of elements is not well-understood, routine, and conventional because conventional flow systems do not like dynamically adjust flow based on real-time pressure/viscosity measurements and a selected bubble-size probability distribution to disclose bubbles. However, the prior art listed above all discloses that the physical elements are well-understood, routine, and conventional. Additionally, Ogumerem discloses that setting a flow rate to dislodge bubbles from a reaction surface (see e.g. page 34, paragraph starting with “In Fig. 5a”). Step 2B determines whether additional elements in the claim contribute to an inventive concept. The argument about dynamically adjusting flow based on real-time pressure/viscosity measurements is drawn to the abstract idea, not the additional elements.
On page(s) 9, the Applicant argues that claims 1 and 11 are fully enabled by the instant specification. The Applicant points to [0006] and [0015] showing a pressure differential equation and stating the probability distribution is calculated based on the pressure or viscosity. However, the rejection states that “The instant specification does not provide any formula or guidance on how the probability distribution is generated or selected and does not provide guidance on how the optimal flow rate of the fluid is calculated for the selected probability distribution of bubble sizes”. The equation shown in [0015] does not show the probability distribution calculation. None of the other paragraphs pointed to by the Applicant shows how this is done. The Applicant argues that “POSITA routinely model polydisperse bubble populations with probability distributions and solve force-balance equations”. However, Swiegers discusses the difficult in developing probability models for the bubbles that are generated. Equation 1 does not link measured pressure or viscosity to a probability model or optimal flow. As stated by the Applicant this equation only “guides calculation of the velocity…needed to generate the shear/drag for that discloses bubbles of sizes within the selected probability velocity”. However, it is not clear how the probability distribution is incorporated into this equation. There is frequent mention of tying the measured values to a probability distribution but there is no guidance showing how this is actually done and how these distributions are used. The Applicant argues that ‘Paragraph [0014] confirms that "optimization of these characteristics can be wholly or partially determined through calculation of reaction kinetics systematic experimentation and systematic control of the reaction’ but this is just a general description of the steps and does not provide sufficient guidance for the claim.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 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.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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