DETAILED ACTION
Status of Claims
Claims 1-5, 7, 9, 13, 15-16, 19, 21-23, 25, 27, 31-34 and 36 are pending.
Claims 6, 8, 10-12, 14, 17-18, 20, 24, 26, 28-30 and 35 are cancelled.
Claims 33-34 are withdrawn from consideration.
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 Objections and Rejections
The previous objections to claims 7 and 16 are withdrawn in view of Applicant’s amendment.
The previous rejection of claims 9 and 13 under 35 U.S.C. 112b are withdrawn in view of Applicant’s amendment.
All other rejections from the previous Office action stand.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7 January 2026 was filed after the mailing date of the Non-Final Office action on 24 October 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-5, 13, 15-16, 19, 21-22 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ulrich (JP 2016-023371).
Regarding claim 1, Ulrich discloses a method of operating an electrochemical cell (title) (= a method of operating an electrochemical cell to perform an electrochemical reaction), the electrochemical cell comprising:
A medium supply section (4) including a liquid (e.g. water) [0011], [0026], [0030] (= a reservoir containing a liquid electrolyte);
A first electrode (2) [0005], [0029]-[0030] (= a first gas diffusion electrode);
A second electrode (3) [0025], [0029] (= a second electrode); and
A proton exchange membrane (1) that uses capillary forces to transport water [0011], [0020] and is positioned between the first electrode (2) and second electrode (3) and has an end that is within the reservoir (Figure 3) (= a porous capillary spacer positioned between the first gas diffusion electrode and the second electrode, the porous capillary spacer having an end positioned within the reservoir and in liquid contact with the liquid electrolyte);
PNG
media_image1.png
478
524
media_image1.png
Greyscale
Figure 3 of ‘371.
The method comprising contact between the first electrode, second electrode and liquid electrolyte (Figure 3) and applying a voltage [0003]-[0004], [0030] (= the method comprising:
Contacting the first gas diffusion electrode and the second electrode with the liquid electrolyte; and applying a voltage across the first gas diffusion electrode and the second electrode). Regarding the claimed wherein the electrochemical cell is an electro-synthetic cell, one of ordinary skill in the art would recognize that the method and device of Ulrich is an electro-synthetic cell that continuously supplies water to the device to produce a chemical product. Moreover, making the device and method of Ulrich as continuous would have been obvious in view of Ulrich’s disclosure directed towards the continuous supply of water via capillary forces [0011].
Regarding claim 2, Ulrich discloses filling the porous capillary spacer (= proton exchange membrane, 1) with the liquid electrolyte from the reservoir by at least capillary action [0011], [0020].
Regarding claims 3-4, Ulrich does not explicitly disclose filling the membrane with liquid electrolyte before the end of the membrane is positioned within the medium, however, a step such as pre-filling a membrane prior to capillary action would have been an obvious engineering design choice in order to maximize the amount of liquid electrolyte present. Ulrich does disclose contacting the first and second electrode with the liquid electrolyte after its transportation along the membrane as applied to claim 4 [0021], [0030].
Regarding claim 5, Ulrich discloses that during the method the membrane is filled with the liquid electrolyte [0030]. The claimed “during operation” is not particularly limiting to a specific step.
Regarding claim 13, Ulrich discloses current densities including 500- 2000 mA/cm2 [0017]. The units do not correlate with the claimed units of current (Amp), however, one of ordinary skill in the art would necessarily expect the same or similar predictable result.
Regarding claim 15, Ulrich is performing the same method as claimed therefore a column height is necessarily maintained given the teachings of capillary forces of Ulrich [0011], [0020].
Regarding claim 16, Ulrich discloses wherein the maximum column height of the liquid electrolyte is greater than the height of the first electrode (Figure 3).
Regarding claim 19, Ulrich discloses self-regulation (e.g. the layers regulating the transport) [0020]-[0022].
Regarding claim 21, Ulrich discloses gas phase and liquid phase pathways into and out of a cross-plane axis are differently oriented (Figures 2-3).
Regarding claim 22, Ulrich discloses capillary force to continuous replenish and removed as claimed [0011], [0025].
Regarding claim 31, Ulrich discloses producing hydrogen and oxygen from water [0003], [0005].
Regarding claim 36, the instant claim states “spacer is configured to directly contact” without positively reciting direct contact given the use of “configured to”. Moreover, Ulrich discloses contact between the member (1) and electrodes [0025].
Claim(s) 1, 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cohn et al. (EP 0107396).
Regarding claims 1 and 7, Cohn discloses a method of operating an electrochemical cell (title, page 1 lines 24-31) (= a method of operating an electrochemical cell to perform an electrochemical reaction), the electrochemical cell comprising:
A reservoir (90) (page 9-10) (= a reservoir containing a liquid electrolyte);
An anode (18) (= a first gas diffusion electrode);
A cathode (20) (page 7 lines 32-34) (= a second electrode); and
An electrolyte matrix assembly (22) (page 8 line 1) that uses capillary forces to transport water and is positioned between the first electrode (18) and second electrode (20) and has an end that is within the reservoir through conduits (16) (Figure 7, page 7 lines 25-27, page 11 lines 14-20) (= a porous capillary spacer positioned between the first gas diffusion electrode and the second electrode, the porous capillary spacer having an end positioned within the reservoir and in liquid contact with the liquid electrolyte);
The method comprising:
Contacting the first gas diffusion electrode and the second electrode with the liquid electrolyte; and applying a voltage across the first gas diffusion electrode and the second electrode (page 5 lines 9-11, page 22 lines 16-19). Regarding the claimed wherein the electrochemical cell is an electro-synthetic cell, one of ordinary skill in the art would recognize that the method of device of Cohn is an electro-synthetic cell that continuously supplies electrolyte to the device to produce a chemical product. Moreover, making the device and method of Cohn as continuous would have been obvious in view of Cohn’s disclosure directed towards the continuous supply of water via capillary forces (page 5 lines 9-11).
Regarding claim 7, Cohn discloses external housing (98) providing one external liquid conduit (page 20 lines 28-33, Figure 7).
Regarding claim 9, Cohn discloses gaseous reactant supply conduits (page 7 lines 20-25, page 9 lines 21-28). The concept of external supply is described above and therefore combining gas conduits and external supply would have been an obvious engineering design choice.
Claim(s) 23, 25, 27 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ulrich (JP 2016-023371) in view of Hinatsu et al. (US 2013/0140171).
Regarding claims 23, 25, 27 and 32, Ulrich does not disclose the particular chemical productions, however, Hinatsu discloses that it is well known in the art that electrolyzers are used in a number of electrochemical reactions including water electrolysis to produce hydrogen and oxygen, ammonia electrolyzers producing hydrogen and nitrogen from ammonia and producing hydrogen, chlorine and caustic solution from brine by chlor-alkali electrolyzer [0003]. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce any number of chemistries using electrolysis and utilize the same or similar electrolyzer setup of Ulrich to carry out any number of electrolytic processes.
Response to Arguments
Applicant's arguments filed 20 February 2026 have been fully considered but they are not persuasive. On page 7 the argument states that the cited reference Ulrich does not disclose the claimed spacer as Ulrich does not explicitly state the recite excerpt from Applicant’s specification [0080]. The Examiner respectfully disagrees with this analysis. The specific language is not currently claimed beyond a porous capillary spacer. In response to applicant's argument that the reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., excerpt from [0080]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page 7 the argument is directed towards the claimed porous capillary spacer and states that since the membrane (1) of Ulrich is made of multiple layers, some materials for example being Nafion, that the membrane of Ulrich does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. The membrane of Ulrich is not limited to Nafion, for example, the membrane (1) of Ulrich comprises multiple layers, some of which layers unambiguously include pores [0020]. The instant claims do not exclude the membrane from including multiple layers. On page 8 the argument continues by stating that the membrane does not have pore sizes nor porosities and therefore does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. It is initially noted that the instant claims do not recite a pore size or porosity. Moreover, Ulrich unambiguously discloses pores in the membrane [0020]. On page 8 the argument states that the membrane of Ulrich does not disclose the claimed “configured to directly contact…” since the layers (11, 12) are not porous. The Examiner respectfully disagrees with this analysis. The entire membrane (1) of Ulrich is relied upon for disclosing the claimed porous capillary spacer. All of the layers of the membrane of Ulrich are therefore considered part of the claimed capillary spacer. The layers (13, 14) for example are porous and the layers (11, 12) are configured to provide direct contact. Additionally, the claim states “configured to” which is not a positive recitation of direct contact.
On pages 9-10 the argument states that Ulrich fails to disclose the claimed “electro-synthetic cell”. The Examiner respectfully disagrees with this analysis. It is initially noted that the constant addition of a reactant is not currently claimed. Ulrich discloses the cell as a water electrolysis cell, which aligns with the instant specification. The indication of a constant or continuous supply is not particularly limiting to a specified method step or material. There is no duration positively recited.
On page 10 the remarks are directed towards the instant specification including an electro-synthetic cell [068]. In response to applicant's argument that the reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., excerpt from [068]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Similar to the multiple layer argument of Ulrich above, the arguments on pages 11-12 state that Cohn is not a single material but is rather composed of different materials in different layers and therefore does not disclose the claimed invention. As stated above, the instant claims do not exclude the interpretation of the prior art that a spacer may be formed on multiple layers.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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.
/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795
Prosecution Insights