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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 15, 2025 has been entered.
Response to Amendment
In the amendment filed September 15, 2025, claims 1 and 10 were amended. Claims 1-4 and 6-22 are pending.
Applicant’s arguments regarding the 35 U.S.C. 102 rejections of the claims over Yogev have been fully considered but they are not persuasive for these reasons:
Regarding Applicant’s assertion that “The boreholes of Yogev are not part of or within the structure of the first and second air compressing vessels 11a, 11b and the first and second air storage vessels 12a, 12b. As clearly taught by Yogev, ‘the first and second air compressing vessels 11a, 11b and the first and second air storage vessels 12a, 12b are mounted in corresponding boreholes made in the ground 13.’ [Yogev, paragraph 0059, emphasis added] The boreholes are not part of or included within the structure of the vessels” (Remarks at p. 5), the examiner disagrees. The revised rejection below clarifies the examiner’s interpretation of “first structure” and “second structure.” The boreholes in the ground 13 are part of the first and second structures of Yogev (see annotated Fig. 2 below; see also paras. [0060]-[0061]).
Regarding Applicant’s assertion that “the cited portions of Yogev do not teach, for example, wherein the first structure has an innermost layer, an outermost layer, and a thermal isolation layer that is in between the innermost layer and the outermost layer; or wherein one of the interior protection layers is arranged on an inner mixing tank surface of the mixing tank and another of the interior protection layers is arranged on an inner gas tank surface of the gas tank. Instead, the asserted thermal isolation layer 1040 of Yogev is arranged on the outside of the asserted first structure 12a, 12b (i.e., between the walls of the borehole/cavity and the outer surface of the vessels)” (Remarks at p. 6), the examiner disagrees. The revised rejection below clarifies the examiner’s interpretation of “first structure,” “second structure,” “mixing tank,” and “gas tank.”
Regarding Applicant’s assertion that “Yogev clearly teaches that vessels are separate from the boreholes and the thermally isolated filling material. Yogev teaches that the first and second air compressing vessels 11a, 11b and the first and second air storage vessels 12a, 12b are mounted in the corresponding boreholes…In Paragraph 0060, Yogev teaches that the thermally isolated filling material 1040 fills the space between walls of the vessels and walls of the borehole. Yogev does not teach, for example, that the boreholes are within or part of the first and second air compressing vessels 11a and the first and second air storage vessels 12a, 12b” (Remarks at p. 8), the examiner disagrees. The revised rejection below clarifies the examiner’s interpretation of “first structure,” “second structure,” “mixing tank,” and “gas tank.”
Regarding Applicant’s assertion that “Yogev does not teach, for example, wherein one of the interior protection layers is arranged within the mixing tank on an inner mixing tank surface of the mixing tank and another of the interior protection layers is arranged within the gas tank on an inner gas tank surface of the gas tank. As taught by Yogev, thermally isolated filling material 1040 is between the outer walls of the vessels and the walls of the borehole, which is not within the mixing tank or within the gas tank” (Remarks at p. 9), the examiner disagrees. Yogev teaches both the mixing tank and the gas tank have an interior protection layer on an inner surface as claimed (see Yogev at Fig. 2; paras. [0060], [0063]-[0064]).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 5, 7, 10, 11, 18, and 20-22 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Pub. 2021/0351615 to Yogev (hereinafter, “Yogev”).
Regarding claim 1, Yogev discloses an energy storage apparatus (system 1, Fig. 2; para. [0053]), comprising: a first structure (structure including air storage vessel 12a and/or 12b, annotated Fig. 2 below; para. [0058]) configured to contain a default pressure of a pressurized gas (see paras. [0082]-[0089]); and a second structure (structure including vessel 11a and/or 11b, annotated Fig. 2; para. [[0058]) configured to receive a first amount of a liquid from a liquid source (water inlets 19a, 19b, Fig. 2; para. [0072]) so that a pressure level in the first structure (annotated Fig. 2) increases from the default pressure to an increased level associated with a space replacement in the second structure (see paras. [0082]-[0089]), wherein the first structure (annotated Fig. 2) has an innermost layer (wall of the vessel, see annotated Fig. 2 below; paras. [0060], [0063]), an outermost layer (wall of the borehole, see annotated Fig. 2; para. [0060]), and a thermal isolation layer (material 1040, Fig. 2; para. [0060]) that is in between the innermost layer and the outermost layer (see annotated Fig. 2; para. [0060]).
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Yogev Annotated Figure 2
Regarding claim 2, Yogev further discloses the first structure (annotated Fig. 2) is a concrete based structure (para. [0044]).
Regarding claim 7, Yogev further discloses the first structure (annotated Fig. 2) has a concrete layer (para. [0044]).
Regarding claim 10, Yogev discloses an energy storage device (system 1, Fig. 2; para. [0053]), comprising: a liquid source (water inlets 19a and/or 19b, Fig. 2; para. [[0072]); a gas tank (structure including air storage vessel 12a and/or 12b, annotated Fig. 2; para. [0058]); a mixing tank communicated (structure including vessel 11a and/or 11b, annotated Fig. 2; para. [[0058]) with the liquid source and the gas tank (see e.g., paras. [0082]-[0088]); and a plurality of interior protection layers (wall of the vessels 11a, 11b, see annotated Fig. 2 above; paras. [0060], [0063]-[0064]), wherein one of the interior protection layers (wall of vessel 11a or 11b) is arranged within the mixing tank (annotated Fig. 2) on an inner mixing tank surface (see annotated Fig. 2; para. [0060]) of the mixing tank (annotated Fig. 2) and another of the interior protection layers (annotated Fig. 2) is arranged within the gas tank (annotated Fig. 2) on an inner gas tank surface (see annotated Fig. 2; para. [0060]) of the gas tank (annotated Fig. 2; paras. [0063]-[0064]).
Regarding claim 11, Yogev further discloses the mixing tank (annotated Fig. 2) or the gas tank (annotated Fig. 2) comprises a concrete layer (para. [0044]).
Regarding claim 18, Yogev further discloses a hydrogenator (hydro-electric power system 117, Fig. 2; para. [0107]) connected to the mixing tank (see Fig. 2).
Regarding claim 20, Yogev further discloses at least one of the liquid source (water inlets 19a, 19b), the gas tank (annotated Fig. 2), and the mixing tank (annotated Fig. 2) is located on ground level (para. [0058]).
Regarding claim 21, Yogev further discloses at least one of the liquid source (water inlets 19a, 19b), the gas tank (annotated Fig. 2), and the mixing tank (annotated Fig. 2) is located below ground level (paras. [0058]-[0059]).
Regarding claim 22, Yogev further discloses at least one of the liquid source (water inlets 19a, 19b), the gas tank (annotated Fig. 2), and the mixing tank (annotated Fig. 2) is partially located below ground level (since tanks may be underground, part of each vessel is below ground level, see paras. [0058]-[0059]).
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.
Claims 3 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yogev as applied to claims 1 and 10 above, and further in view of U.S. Pub. 2022/0412511 to Weisenberg (hereinafter, “Weisenberg”).
Regarding claim 3, Yogev does not expressly disclose the first structure has a graphene layer. Yogev does teach that the first and second structures can “be constructed of a suitable metal, plastic or composite material appropriate to withstand the strain on the walls caused by the air-hydraulic pressure inside the vessels” (para. [0063]).
Weisenberg teaches a similar structure configured to contain a default pressure of a pressurized gas (tube 5, Fig. 1A; para. [0067]). Weisenberg teaches the structure includes a plurality of layers (see Fig. 1A). Weisenberg teaches that the structure includes a concrete layer (para. [0067]). Weisenberg teaches that the structure includes a graphene layer (paras. [0185]-[0186]). Weisenberg teaches that the structure includes a fiber reinforced plastic layer that encapsulates the graphene layer (paras. [0189]-[0190]). Weisenberg further teaches that this material arrangement provides efficient, safe, and reliable gas storage and increases design life and versatility (paras. [0023], [0090], [0258]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to form the first structure with a graphene layer as taught by Weisenberg for the purpose of improving safety, reliability, and design life, as recognized by Weisenberg (see paras. [0023], [0090], [0258]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 14, Yogev does not expressly disclose the mixing tank or the gas tank further comprises a graphene layer. Yogev does teach that the mixing tank and gas tank can “be constructed of a suitable metal, plastic or composite material appropriate to withstand the strain on the walls caused by the air-hydraulic pressure inside the vessels” (para. [0063]).
Weisenberg teaches a similar energy storage device including a tank configured to store a pressurized gas (tube 5, Fig. 1A; para. [0067]). Weisenberg teaches the tank includes a plurality of layers (see Fig. 1A). Weisenberg teaches that the tank includes a concrete layer (para. [0067]). Weisenberg teaches that the tank includes a graphene layer (paras. [0185]-[0186]). Weisenberg teaches that the tank includes a fiber reinforced plastic layer that encapsulates the graphene layer (paras. [0189]-[0190]). Weisenberg further teaches that this material arrangement provides efficient, safe, and reliable gas storage and increases design life and versatility (paras. [0023], [0090], [0258]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to form the first structure with a graphene layer as taught by Weisenberg for the purpose of improving safety, reliability, and design life, as recognized by Weisenberg (see paras. [0023], [0090], [0258]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 15, Yogev further discloses a concrete layer (para. [0044]). However, Yogev does not expressly disclose the interior protection layer comprises a concrete layer.
Weisenberg teaches a similar energy storage device including a tank configured to store a pressurized gas (tube 5, Fig. 1A; para. [0067]). Weisenberg teaches the tank includes a plurality of layers (see Fig. 1A). Weisenberg teaches that the tank includes a concrete layer (para. [0067]). Weisenberg teaches that the concrete layer permits the tank to be accessed during operation for maintenance, inspection, or intervention, and permits the tank to be located underground to provide above ground surface area utilization (para. [0067]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to have the interior protection layer comprise a concrete layer as taught by Weisenberg for the purpose of permitting the tank to be accessed during operation for maintenance, inspection, or intervention, and permitting the tank to be located underground to provide above ground surface area utilization (para. [0067]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 16, Yogev does not expressly disclose the interior protection layer further comprises a fiber-reinforced plastic layer encapsulated by a concrete layer.
Weisenberg teaches a similar energy storage device including a tank configured to store a pressurized gas (tube 5, Fig. 1A; para. [0067]). Weisenberg teaches the tank includes a plurality of layers (see Fig. 1A). Weisenberg teaches that the tank includes an outer concrete layer (para. [0067]). Weisenberg teaches that the tank includes a graphene layer (paras. [0185]-[0186]). Weisenberg teaches that the tank includes a fiber reinforced plastic layer that encapsulates the graphene layer (paras. [0189]-[0190]). Weisenberg further teaches that this material arrangement provides efficient, safe, and reliable gas storage and increases design life and versatility (paras. [0023], [0090], [0258]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to form the interior protection layer to have a concrete layer encapsulating a fiber-reinforced plastic layer encapsulating a graphene layer as taught by Weisenberg for the purpose of improving safety, reliability, and design life, as recognized by Weisenberg (see paras. [0023], [0090], [0258]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 17, Yogev as modified by Weisenberg already includes the interior protection layer further comprises a graphene layer (Weisenberg, paras. [0185]-[0186]) encapsulated by the fiber-reinforced plastic layer (Weisenberg, paras. [0189]-[0190]).
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yogev as applied to claim 1 above, and further in view of U.S. Pub. 2015/0267866 to Varrassi (hereinafter, “Varrassi”).
Regarding claim 4, Yogev does not expressly disclose the first structure has a fiberglass layer. Yogev does teach that the first and second structures can “be constructed of a suitable metal, plastic or composite material appropriate to withstand the strain on the walls caused by the air-hydraulic pressure inside the vessels” (para. [0063]).
Varrassi teaches a similar structure configured to contain a default pressure of a pressurized gas (tank 1, Figs. 1, 4; para. [0041]). Varrassi teaches that the structure is formed from a plurality of layers (see Fig. 2). Varrassi teaches at least one of the layers is a fiberglass layer (paras. [0018], [0048], [0052]). Varrassi further teaches that this composite structure of the wall permits satisfactory thermal insulation, good leak tightness, and good mechanical strength (para. [0057]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to form the first structure having a fiberglass layer as taught by Varrassi for the purpose of permitting satisfactory thermal insulation, good leak tightness, and good mechanical strength, as taught by Varrassi (para. [0057]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 6, Yogev does not expressly disclose the thermal isolation layer comprises polyurethane.
Varrassi teaches a similar structure configured to contain a default pressure of a pressurized gas (tank 1, Figs. 1, 4; para. [0041]). Varrassi teaches that the structure is formed from a plurality of layers (see Fig. 2). Varrassi teaches that the structure includes a thermal isolation layer (para. [0052]) that comprises polyurethane (para. [0052]). Varrassi further teaches that this composite structure of the wall permits satisfactory thermal insulation, good leak tightness, and good mechanical strength (para. [0057]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to have the thermal isolation layer comprise polyurethane as taught by Varrassi for the purpose of permitting satisfactory thermal insulation, good leak tightness, and good mechanical strength, as taught by Varrassi (para. [0057]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Claims 8, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yogev as applied to claims 7 and 11 above, and further in view of U.S. Pat. 4,206,608 to Bell (hereinafter, “Bell”).
Regarding claim 8, Yogev further teaches the utilized materials include steel and concrete (para. [0044]). However, Yogev does not expressly disclose the concrete layer comprises steel reinforce bars.
Bell teaches a similar energy storage apparatus comprising a first structure configured to contain a default pressure of a pressurized gas (high-pressure storage tanks 36, 136, Figs. 1-3). Bell teaches the first structure has a concrete layer (concrete 140, Fig. 3) comprising steel reinforce bars (steel rods 142, 144, 146, Fig. 3; col. 6, ll. 13-24). Bell further teaches that this arrangement of a concrete layer with steel reinforce bars provides a large capacity and safe storage facility for storing pressurized gas under high pressurization (col. 6, ll. 13-30).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to add steel reinforce bars to the concrete layer as taught by Bell for the purpose of providing safe storage for the pressurized gas under high pressurization, as recognized by Bell (see col. 6, ll. 13-30).
Regarding claim 12, Yogev further teaches the utilized materials include steel and concrete (para. [0044]). However, Yogev does not expressly disclose the mixing tank or the gas tank further comprises a metallic wall encapsulated by the concrete layer.
Bell teaches a similar energy storage device comprising a gas tank configured to contain a pressurized gas (high-pressure storage tanks 36, 136, Figs. 1-3). Bell teaches the first structure has a concrete layer (concrete 140, Fig. 3) comprising steel reinforce bars (steel rods 142, 144, 146, Fig. 3; col. 6, ll. 13-24) and a metallic wall encapsulated by the concrete layer (tanks 136 are formed by steel tubes, see Fig. 3; col. 6, ll. 13-24). Bell further teaches that this arrangement of a metallic wall encapsulated by the concrete layer provides a large capacity and safe storage facility for storing pressurized gas under high pressurization (col. 6, ll. 13-30).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to be formed with a metallic wall encapsulated by the concrete layer as taught by Bell for the purpose of providing safe storage for the pressurized gas under high pressurization, as recognized by Bell (see col. 6, ll. 13-30).
Regarding claim 13, Yogev further discloses the mixing tank or the gas tank further comprising a heat conservative layer (material 1040 is a thermally isolated material, para. [0060]). Yogev does not expressly disclose the heat conservative layer is encapsulated by the concrete layer.
Bell teaches a similar energy storage apparatus comprising a first structure configured to contain a default pressure of a pressurized gas (high-pressure storage tanks 36, 136, Figs. 1-3). Bell teaches the gas tanks are encapsulated by a concrete layer (concrete 140, Fig. 3; col. 6, ll. 7-15). Bell further teaches that this arrangement of encasing the tanks in a concrete layer provides a large capacity and safe storage facility for storing pressurized gas under high pressurization (col. 6, ll. 13-30).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to have the heat conservative layer be encapsulated by the concrete layer as taught by Bell for the purpose of providing safe storage for the pressurized gas under high pressurization, as recognized by Bell (see col. 6, ll. 13-30).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yogev as applied to claim 1 above, and further in view of Weisenberg and Bell.
Regarding claim 9, Yogev further discloses the second structure (annotated Fig. 2) has a concrete layer (para. [0044]).
Yogev does not expressly disclose the second structure has a graphene layer, a fiberglass layer, and steel reinforce bars.
Weisenberg teaches a similar energy storage device including a tank configured to store a pressurized gas (tube 5, Fig. 1A; para. [0067]). Weisenberg teaches the tank includes a plurality of layers (see Fig. 1A). Weisenberg teaches that the tank includes an outer concrete layer (para. [0067]). Weisenberg teaches that the tank includes a graphene layer (paras. [0185]-[0186]). Weisenberg teaches that the tank includes a fiberglass layer that encapsulates the graphene layer (paras. [0189]-[0190]). Weisenberg further teaches that this material arrangement provides efficient, safe, and reliable gas storage and increases design life and versatility (paras. [0023], [0090], [0258]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to form the second layer to have a concrete layer, a graphene layer, and a fiberglass layer as taught by Weisenberg for the purpose of improving safety, reliability, and design life, as recognized by Weisenberg (see paras. [0023], [0090], [0258]), and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Bell teaches a similar energy storage apparatus comprising a first structure configured to contain a default pressure of a pressurized gas (high-pressure storage tanks 36, 136, Figs. 1-3). Bell teaches the first structure has a concrete layer (concrete 140, Fig. 3) comprising steel reinforce bars (steel rods 142, 144, 146, Fig. 3; col. 6, ll. 13-24). Bell further teaches that this arrangement of a concrete layer with steel reinforce bars provides a large capacity and safe storage facility for storing pressurized gas under high pressurization (col. 6, ll. 13-30).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev/Weisenberg to add steel reinforce bars to the concrete layer as taught by Bell for the purpose of providing safe storage for the pressurized gas under high pressurization, as recognized by Bell (see col. 6, ll. 13-30).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yogev as applied to claim 10 above, and further in view of U.S. Pub. 2012/0305411 to Elazari-Volcani (hereinafter, “Elazari”).
Regarding claim 19, Yogev does not expressly disclose the gas tank and the mixing tank are in the liquid source.
Elazari teaches a similar energy storage device comprising a liquid source, a gas tank (air 35, Figs. 1-2), and a mixing tank (tank 10, Figs. 1-2). Elazari teaches that the gas tank and the mixing tank are located underwater within the liquid source (water body 50, Figs. 1-2; para. [0110]). Elazari further teaches that when such a storage device is underwater in a sea, lake, or reservoir, the water body provides the liquid source to the device (para. [0108]). Elazari teaches that it is known to place such energy storage devices underwater to reduce costs (para. [0003]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the energy storage apparatus of Yogev to position the gas tank and the mixing tank in a body of water such that they are in the liquid source as taught by Elazari for the purpose of providing a convenient liquid source, and to reduce costs, as recognized by Elazari (see paras. [0003], [0108]).
Conclusion
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/LAURA E. PARKER/Examiner, Art Unit 3733
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