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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 11/18/2025 is acknowledged.
Claims 26 and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/18/2025.
Claims 1-2, 4-7, 9-10, 16, 19, 23, 25 and 33-37 are pending examination.
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 1-2, 4-7, 9-10, 16, 19, 23, 25 and 33-37 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 that the first and second electrode are compressed against the porous capillary spacer by more than 2 bar. There is no upper endpoint of this range and thus is indefinite to what are the metes and bounds of the compression. It is further noted that there is no structure to delineate how the compression is performed.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5, 6, 7, recites the broad recitations of pressure, compression and porosity, and the claim also recites preferred embodiments which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 5 and 6 have the same issue as claim 1 in no upper limit to the pressure and compression.
Claim 33 also recites the average pore diameter is more than 2 microns. There is again no upper limit (although this would be limited by the thickness of the spacer as you cannot have pore diameters bigger than the thickness of the material). However, there is no delineation of the spacer thickness, so there is still an issue at hand.
Claims 2, 4-7, 9-10, 16, 19, 23, 25 and 33-37 are rejected as being dependent on claim 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.
Claims 1-2, 4-7, 9-10, 16, 19, 23, 25, 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over JP2016023371A of Sauter in view of US 2009/0008261 of Kotzeva et al. It is noted that the English translation of Sauter is supplied by Applicant in the IDS dated 10/23/2023.
As to claims 1 and 6, Sauter teaches of a cell comprising:
a first gas diffusion electrode (Sauter, [0029] – [0030] and Figs. 2 and 3);
a second electrode (Sauter, [0029] – [0030] and Figs. 2 and 3); and
a porous capillary spacer positioned between the first and second electrodes (Sauter, [0011], [0029] – [0030] and Figs. 2 and 3).
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As seen in Figs. 2 and 3, there is a porous capillary spacer (1) between first and second electrodes (2 and 3). It is noted that both electrodes 2/3 are gas diffusion electrodes as gas diffuse away from the catalyst layers once generated.
Sauter does not teach a structure to compress the electrodes against the spacer.
Kotzeva teaches of a water electrolysis apparatus (Kotzeva, [0001]).
Kotzeva also teaches that the cell stack is fastened by bolts which pass through bolt-holes such that the bolts are fastened to compress the stack between the end plates (Kotzeva, [0058] and Figs. 1 and 2).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sauter as per Kotzeva so as to utilize the bolt fasteners in order to tightly hold the structure together under compression.
As to the limitations of how much compression, this is the intended use of the structure and thus does not provide a patentable difference to the combination, see MPEP 2114 I and II.
As to claims 2 and 16, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches sealing frames (5) to seal the cell and provide a housing such that the sealing frames also provide a reservoir for an end of the porous capillary spacer to be positioned in, thus providing an external liquid conduit to the cell (Sauter, [0030] and Fig. 3).
As to claim 4, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the liquid electrolyte is aqueous (Sauter, [0025]).
As to the claim language of the flow rate, this limitation does not further define a structure of the system, thus is disclosed as per the combination of Sauter in view of Kotzeva as per claim 1.
As to claim 5, Sauter in view of Kotzeva teach to the system of claim 1.
The claim limitations of use at a pressure of above 3 bar does not provide a structural embodiment to the system. Thus the combination of Sauter in view of Kotzeva discloses the claimed limitations (see MPEP 2114 I and II).
As to claim 7, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the porous capillary spacer is more than 50% to 80% porous (Sauter, [0018]).
As to claim 9, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter additionally teaches a gas handling structure in a portion of the first electrode (Sauter, [0029] and Fig. 2).
As to claim 10, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the second electrode is a gas diffusion electrode (Sauter, [0029] – [0030] and Figs. 2 and 3).
As to claim 19, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the liquid is transported along the porous capillary spacer by capillary action and diffusion (Sauter, [0011]).
As to claim 23, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the average pore diameter in the porous capillary spacer is less than 400 microns (Sauter, [0017] and [0022]).
As to claim 25, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the average pore size of the capillary spacer can be between 1 micron to 10 microns for the second material with small pores for the first material. As such the system can be optimized as desired for pore structure of the capillary spacer (Sauter, [0015], [0017] and [0022]).
As to claim 33, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the average pore size of the capillary spacer can be between 1 micron to 10 microns for the second material with small pores for the first material. As such the system can be optimized as desired for pore structure of the capillary spacer (Sauter, [0015], [0017] and [0022]).
As to claim 34, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the porous capillary spacer can be two or more layers, thus two or more spacers (Sauter, [0032]).
As to claim 35, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter teaches the porous capillary spacer comprises a plurality of pores to fluidically couple the first and second electrodes (Sauter, [0011], [0020], [0021], [0030], [0032] and Figs. 3 and 4).
As to claim 36, Sauter in view of Kotzeva teach to the system of claim 1.
Sauter does not teach the thickness of the porous capillary spacer being less than 0.2 mm (200 microns).
Kotzeva teaches of a water electrolysis apparatus (Kotzeva, [0001]).
Kotzeva teaches the polymer membrane is a capillary spacer that is capable of wicking water from a water channel into a central portion of the membrane assembly (Kotzeva, [0055]). Kotzeva teaches that the thickness of the membrane is 40 microns, thus being less than 200 microns (0.2 mm) to act as a proton-conductor to facilitate oxygen and hydrogen generation as an electrolyte in the apparatus (Kotzeva, [0053]).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sauter as per Kotzeva so as to utilize the desired spacer thickness in facilitating oxygen and hydrogen generation as an electrolyte in the apparatus.
As to claim 37, Sauter in view of Kotzeva teach to the system of claim 1.
As the use of the first and second electrodes, this does not define the structure of the component beyond that of Sauter. With that said, Sauter teaches oxygen gas is generated at anode side (catalyst layer 21) of electrode 2 while hydrogen gas is generated at cathode side (catalyst layer 31) of electrode 3 (Sauter, [0030]).
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 1-2, 4-7, 9, 10, 16, 19, 23, 25, 33-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34, 4, 15, 18, 20, 22, 23 of copending Application No. 18/245,874 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they each contain the same cell structure such that there is no distinction between claim sets.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759