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 .
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 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 21, the claim recites the limitation “a plurality of porous capillary spacers”. However, “at least one 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 claim 1. 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 terminal disclaimer filed on 2 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/245,874 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Response to Arguments
Applicant's arguments filed 2 June 2026 have been fully considered but they are not persuasive.
Applicant’s argue that the combination fails to teach a porous capillary spacer with a thickness less than 0.2 mm. First specifically arguing that the capillary spacer of Jehle must be greater than 0.2 mm thick in order to achieve the required line density of channels of between 0.5/mm and 5/mm. However, the Examiner disagrees, the Examiner maintains that Jehle is discussing a preference of line density and not a requirement and also that this line density if not necessarily references a density through the thickness, but through the length/width over which the channel structure extends in an entire longitudinal direction, i.e. this line density is not a diameter of the channels requiring the thickness of the spacer to be larger than this. Applicant’s next specifically arguing that the separator of Wenske is different than that of Jehel, operating with falling film rather than capillary uptake. However, it is important to note that the separator itself has not been modified, i.e. the capillary uptake of Jehle is maintained. The Examiner maintains that Wenske renders obvious merely the desirability of the sizing of the capillary gap between electrodes.
Applicants first argue that there is no teaching of “liquid electrolyte” in Jehle. However, it is first important to note that the claims do not actively require a liquid electrolyte, the liquid electrolyte is merely included in functional language i.e. “a reservoir for containing a liquid electrolyte” or “able to fill itself with the liquid electrolyte”. Second, the composition of the liquid electrolyte has not been claimed. Therefore, the examiner maintains both that the apparatus of Jehle, while specifically discussing liquid water would be capable of operating filled with any number of other fluids and that the water of Jehle itself can be appropriately considered a liquid electrolyte in that it is the liquid undergoing electrolytic reaction in combination with the membrane.
Applicants further argue that it would not have been obvious to one of ordinary skill in the art to optimize the compression based on the operating conditions as the spacer could be comprised and risk narrowing or closing the cavities; however, the Examiner disagrees, 2 bar is not a high pressure and a degree of compression would be required to ensure that the apparatus doesn’t fail under operation. Furthermore, there are no limitations present as to if this compression occurs during assembly, during all of operation, during part of operation, etc.
Applicants further argue that one or ordinary skill in the art would not understand at the time of filing to operate the cell in a bubble free state by altering the applied voltage; however, that is not required. The claims are apparatus claims, the cell must merely be capable of performing the claimed operation.
Applicants further argue that the membrane layers of Jehle cannot be considered a plurality of capillary spacers; however, the Examiner maintains that absent narrowing limitations, for example as to the function of configuration of these layers, this in an appropriate broadest reasonable interpretation.
Applicants further argue that Jehle fails to teach “a plurality of pores alone”. However, these limitations have not been claimed.
Applicants further argue that it would not be obvious to utilize a second cell to increase capacity; however, the Examiner disagrees and maintains that this would be clearly obvious, absent narrowing limitations of specific interconnections.
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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