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 .
Summary
This is the initial Office Action based on Application 18/240,166 filed 08/30/2023 by Yeon Ho Kim, Hoon Mo Park, Kyung Moon Lee, Dong Hoon Nam, Ji Hye Park, Young Jin Cho, Jae Wan Kim, Byeong Soo Shin, Ji Hoon Lee, Ho Young Jeong, Suk Hoon Hong, Man Hee Park, Yeong Jun Kim, Jae Yeon Kim, and Ho Chan An.
Claims 8-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected hydrogen supply method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/15/2026.
Claims 1-19 are previously pending, of those claims, claims 8-19 have been withdrawn from consideration as being drawn to non-elected subject matter. Claims 1-7 are currently pending and have been fully considered.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by KUBO (US 2008/0250804 A1).
KUBO teaches a fuel cell system (paragraph 0028) which is taken to be the claimed hydrogen supply module. There is an air cooling apparatus 15 which is taken to be the first circulation part, including a fluid circulation line, such as the refrigerant circuit 32 (paragraph 0037). The system includes a heat medium passage 16 (paragraph 0029-0030) which is taken to be the claimed second circulation part. The air cooling apparatus includes a condenser 34 and evaporator 36 (paragraph 0037) and is taken to be the claimed first heat exchanger which exchanges heat with an air (paragraph 0037). The air cooling apparatus 15 includes a refrigerant compressor 33 (paragraph 0036). A heat exchanger 41is included and connected to the bypass passage 39 of the first circulation part and is taken to be the claimed second heat exchanger (paragraph 0039). The cooling apparatus 15 includes an expansion valve 35 (paragraph 0037 and Figure 1), which is taken to be the claimed expansion member. The second fluid circulation line 16 is connected to the second heat exchanger 41 (Figure 1). The second fluid circulation line 16 then includes a pump 27 (paragraph 0034). The fuel system then includes hydrogen supplied from hydrogen tanks 13 (paragraph 0029). The flow portion of the second fluid circulation part includes electromagnetic three way valves 29 (paragraph 0034) and is taken to be the claimed flow rate control member. There are at least two hydrogen tanks 13 provided on the second fluid circulation line (paragraph 0031 and Figure 1).
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.
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over KUBO (US 2008/0250804 A1) in view of DILL (US 6,202,710 B1) and HOEHNE (US 2005/0253019 A1).
Claim 2 is dependent upon claim 1 which is rejected above under 35 U.S.C. 102 in view of KUBO. KUBO teaches the hydrogen supply module, being the fuel cell system (Figure 1). There is the second fluid circulation line 16, which includes a 2-1th fluid circulation line connecting the second heat exchanger 41 and the flow rate control member 29, and has a closed loop shape (Figure 1). KUBO teaches a 2-2th fluid circulation line connecting the tank 13 and the controller 29 (Figure 1).
KUBO does not explicitly teach that the 2-2th fluid circulation line has a closed loop shape, and a 2-3th fluid circulating line connecting one end and an opposite end of the second flow rate control member and having a closed loop shape, and a 2-4th fluid circulation line connecting the second hydrogen storage part and the second flow rate control member and having a closed loop shape, and wherein the second flow rate control member is configured to control flow directions of the second fluid in the 2-1th fluid circulation line, the 2-2th fluid circulation line, and the 2-3th fluid circulation line, and the 2-4th fluid circulation line connecting the second hydrogen storage part and the second flow rate control member having a closed loop shape.
DILL teaches a 2-2th fluid circulation line, coolant loop 44 (Figure 8) which is taken to be analogous to the line 16b of the first hydrogen storage part of KUBO, and connects the hydrogen storage part of KUBO and the second flow rate control member 29 (Figure 1 of KUBO). The fluid circulation line of DILL then has a closed loop shape (Figure 8) and a 2-4th fluid circulation line, which corresponds to line 44’ of DILL which has a closed loop structure, and corresponds to the second hydrogen storage part of KUBO with the second flow rate control member.
At the time the invention was filed it would have been motivated to substitute the fluid circulation lines of DILL for the fluid connection lines of KUBO, as this is a simple substation of known prior art elements in order to achieve predictable results. Specifically DILL teaches the taught structures has the benefits of cooling efficiencies (DILL column 7 lines 46-50).
HOEHNE teaches a 2-3th fluid circulation line 32-34 and 27-29 respectively connecting ends of oppose end of second flow rate control members 30 (Figure 1) connecting one end and an opposite end of the a second flow rate control member and having a closed loop.
At the time the invention as filed one having ordinary skill in the art would have been motivated to combine the circulation line of HOENHNE with the system of KUBO to have a closed loop shape as this is a combination of known prior art elements in order to achieve predictable results.
KUBO does not explicitly teach the flow rate control member configured to control the fluid in the 2-1th, 2-2th, 2-3th, and 2-4th fluid circulation line. However this would have been an application of a known element to achieve predictable results. Specifically KUBO teaches the use of the three way valves 29 to control the flow between the tank and the other elements (paragraphs 0034-0035). Therefore using it for the additional flow circulation lines would have been obvious at the time the invention was filed.
With respect to claim 3. KUBO teaches the pump 27 (Figure 1) then HOEHNE teaches pumps 35 and 36 (Figure 1). Therefore the combination of KUBO, DILL, and HOENE teaches the use of pumps provided on the circulation lines.
With respect to claim 4. KUBO teaches the fluid to pass from the first heat exchanger 34, the expansion member 35, second heat exchanger 41, and the compressor 33 (Figure 1). However, having the fluid pass through the expansion and compressor in the different order would be a mere rearrangement of parts and would have been obvious at the time the invention was filed.
With respect to claim 6. KUBO teaches the use of a radiator on the second fluid connection part (paragraph 0025).
With respect to claim 5. KUBO teaches the fluid to pass from the first heat exchanger 34, the expansion member 35, second heat exchanger 41, and the compressor 33 (Figure 1).
With respect to claim 7. KUBO teaches the use of a radiator on the second fluid connection part (paragraph 0025).
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/239,946 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because a hydrogen supply method comprising a first and second circulation part, a first heat exchanger, a fist flow rate control member, a compressor, a second heat exchanger, an expansion member, and where the second fluid circulation line is connected to the second heat exchanger, and the second fluid circulation part includes a pump, and a hydrogen storage part includes a first and second hydrogen storage part.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
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