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 7 October 2025 is acknowledged.
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 10, 21 and 22 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.
As to claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
As to claim 21, the claim recites the limitation “two or more porous capillary spacers”. However, a porous capillary spacer” is already recited in claim 1, upon which claim 21 is dependent. Therefore, it is unclear as to if the limitations of claim 21 intend to include the limitation of claim 1 or to refer to new and separate limitations.
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.
Claims 1, 2, 10, 12, 13, 14, 16, 20, 21, 22, 31, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0224668 A1 to Jehle et al. (Jehle) in view of US 5,650,058 to Wenske et al. (Wenske).
As to claims 1 and 12, Jehle teaches an electrochemical cell (100) operating as a synthesis cell for the production of hydrogen and oxygen from water, the cell (100) comprising a first gas diffusion electrode (14) configured to generate a first gas, hydrogen, and to be in contact with and adjacent to a first body (gas chamber) (40) comprising the first gas, a second gas diffusion electrode (16) configured to generate a second gas, oxygen, and to be in contact with and adjacent to a second gas body (gas chamber) (46) comprising the second gas and a porous capillary spacer (22) positioned between the first gas diffusion electrode (14) and the second gas diffusion electrode (16), the porous capillary spacer (22) configured to be filled with a liquid electrolyte and to confine the liquid electrolyte in the porous capillary spacer by a capillary effect (Paragraphs 0023-0027; Figure 1).
However, Jehle is silent as to the specific thickness of the capillary spacer. However, Wenske also discusses capillary electrolysis cells for the production of hydrogen and oxygen from water and teaches that an effective capillary layer thickness is, for example, 0.05 mm (Abstract; Column 1, Lines 11-19; Column 3, Lines 4-16). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the capillary layer of Jehle with a thickness of, for example, 0.05 mm, with the expectation of effectively providing the capillary layer as taught by Wenske.
As to claim 2, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that the apparatus comprises a reservoir (34/36) configured to contain the liquid electrolyte and to be below the porous capillary spacer (22) during operation, a distal end of the porous spacer in contact with the liquid electrolyte in the reservoir (34/36) (Paragraph 0027; Figure 1).
As to claim 10, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle teaches that the first gas diffusion electrode and the second gas diffusion electrode are compressed against the capillary spacer (Figure 1). However, Jehle is silent as to the specific pressure of the compression. However, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the compression pressure to ensure appropriate cell contact in view of the operating conditions chosen for the apparatus (MPEP 2144.05).
As to claim 13, the combination of Jehle and Wenske teaches the apparatus of claim 1. The apparatus of the combination is capable of operating, based on, for example, the applied voltage, to perform the functional language of “during operation gas bubbles are not visible on at least a part of the first gas diffusion electrode or on at least a part of the second gas diffusion electrode” (MPEP 2114).
As to claim 14, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that the apparatus comprises an external housing (frame) (18) providing an external gas conduit (42) configured such that during operation the first gas is transported out of the first gas body (40) via the external gas conduit (42) (Paragraph 0024; Figure 1).
As to claim 16, the combination of Jehle and Wenske teaches the apparatus of claim 14. Jehle further teaches that the external housing (frame) (18) provides a second external gas conduit (48) configured such that during operation the second gas is transported out of the second gas body (46) via the external gas conduit (48) (Paragraph 0024; Figure 1).
As to claim 20, the combination of Jehle and Wenske teaches the apparatus of claim 1. The capillary spacer and reservoir of Jehle is capable of holding any number of electrolytes including one with an ionic resistance of less than 140 mΩ cm2 at room temperature (MPEP 2114).
As to claim 21, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that the apparatus can comprises additional capillary spacer layers (Paragraph 0026).
As to claim 22, the combination of Jehle and Wenske teaches the apparatus of claim 21. Jehle further teaches that the reservoir is two part, a pipe (34) and a water tank (36) and that a distal end of each of the capillary layers are positioned in contact with the pipe (34) (Paragraphs 0026 and 0027; Figure 1).
As to claim 31, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that an average pore diameter for the capillary layer is, for example, 10 microns (Paragraph 0026).
As to claim 32, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that the porous capillary spacer comprises a plurality of pores that provide a fluidic pathway between the first gas diffusion electrode and the second gas diffusion electrode (Paragraphs 0026 and 0027).
As to claim 33, the combination of Jehle and Wenske teaches the apparatus of claim 1. Jehle further teaches that the column height, capillary rise, is, for example, at least 2 meters (Paragraph 0009).
Claims 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable Jehle, in view of Wenske and further in view of JP 2016-023371 A to Ulrich (Ulrich).
As to claim 23, as discussed above, the combination of Jehle and Wenske teaches the electrochemical cell of claim1. However, Jehle fails to further teach that the electrochemical cell is provided in plurality in a stack. However, Ulrich also discusses capillary electrolysis cells for the production of hydrogen and oxygen from water and teaches that a plurality of capillary cells should be arranged vertically in a stack (Paragraphs 0003 and 0031). Therefore, it would have been obvious to one of ordinary skill in the art to provide a second cell of Jehle in a stack, as taught by Ulrich, in order to increase capacity. It would have been obvious to one of ordinary skill in the art to electrically connect the cells of the stack, whether in series or in parallel, in order to not require separate power supplies for a single stack.
As to claim 25, Jehle teaches an apparatus comprises an electrochemical cell (100) operating as a synthesis cell for the production of hydrogen and oxygen from water, the cell (100) comprising a first gas diffusion electrode (14) configured to generate a first gas, hydrogen, and to be in contact with and adjacent to a first body (gas chamber) (40) comprising the first gas, a second gas diffusion electrode (16) configured to generate a second gas, oxygen, and to be in contact with and adjacent to a second gas body (gas chamber) (46) comprising the second gas and a porous capillary spacer (22) positioned between the first gas diffusion electrode (14) and the second gas diffusion electrode (16), the porous capillary spacer (22) configured to be filled with a liquid electrolyte and to confine the liquid electrolyte in the porous capillary spacer by a capillary effect (Paragraphs 0023-0027; Figure 1).
However, Jehle is silent as to the specific thickness of the capillary spacer. However, Wenske also discusses capillary electrolysis cells for the production of hydrogen and oxygen from water and teaches that an effective capillary layer thickness is, for example, 0.05 mm (Abstract; Column 1, Lines 11-19; Column 3, Lines 4-16). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the capillary layer of Jehle with a thickness of, for example, 0.05 mm, with the expectation of effectively providing the capillary layer as taught by Wenske.
However, Jehle fails to further teach that the apparatus comprises a second electrochemical cell forming a stack. However, Ulrich also discusses capillary electrolysis cells for the production of hydrogen and oxygen from water and teaches that a plurality of capillary cells should be arranged vertically in a stack (Paragraphs 0003 and 0031). Therefore, it would have been obvious to one of ordinary skill in the art to provide a second cell of Jehle in a stack, as taught by Ulrich, in order to increase capacity. It would have been obvious to one of ordinary skill in the art to electrically connect the cells of the stack, whether in series or in parallel, in order to not require separate power supplies for a single stack.
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, 10, 12, 13, 14, 16, 20, 23, 25, 31 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 18, 22, 23, 24, 28 and 34 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 the same limitations are claimed in different wording and order. Some functional limitation of the claims have not been specifically claimed, but are not patentably significant (MPEP 2114).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 18, 19 and 24 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the indication of allowable subject matter is the inclusion of the limitation towards a semi-permeable membrane dividing the reservoir into a first volume for containing a first liquid and a second volume for containing a second liquid. The reservoirs of the prior art for feeding the capillary spacer are not divided and do not comprise a semi-permeable membrane.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794