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 .
Information Disclosure Statement
The information disclosure statement filed 9 October 2023, upon the basis of the corrected version filed 7 November 2023, is not being considered by the Office. The IDS filed 7 November 2023 is being considered as it includes corrected data.
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 1-6 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Specific examples of improper language are set forth below.
In claim 1, “a cathode chamber structured to equip a cathode electrode” does not clearly state whether or not the cathode electrode is present or merely a capability of the cathode chamber.
The recitation “to supply the catholyte of outside into the cathode chamber” in claim 1 does not appear to be idiomatic English. It is suggested to amend this portion to “to supply the catholyte into the cathode chamber from outside the cathode chamber.
In claim 2, “to a region above the half of the cathode chamber” and “to a region below the half of the cathode chamber” are not phrased in idiomatic English. It is suggested to amend these to “to a region in the upper half of the cathode chamber” and “to a region in the lower half of the cathode chamber”.
In claim 6, “supplying a catholyte to a cathode chamber equipping a cathode electrode” (emphasis added) is not phrased in idiomatic English. It is unclear if the claim requires a cathode electrode in the cathode chamber or merely that the cathode chamber has the capability of equipping a cathode electrode.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greener et al (GB 1421118 A).
Greener et al teach (see fig. 1, claim 1, and page 6, lines 28-101) an organic hydride production device (1) comprising a cathode chamber (1C) structured to equip a cathode electrode (18) for hydrogenating a substance to be hydrogenated (nitrosophenol) in a catholyte solution by addition of a proton to produce an organic hydride (aminophenol), a cathode inlet (17 and 31) connected to the cathode chamber and structured to supply the catholyte from outside into the cathode chamber, an upper cathode outlet (unnumbered, but called a “gas chimney”) connected to the cathode chamber and structured so as to be capable of discharging the catholyte and hydrogen gas from the cathode chamber to the outside, and a lower cathode outlet (16) connected to the cathode chamber below the upper cathode outlet and structured so as to be capable of discharging the catholyte and water from the cathode chamber to the outside. The upper outlet of Greener et al would have been inherently capable of discharging the catholyte and hydrogen gas to the outside of the cell since the upper outlet has an identical structure to the structure disclosed by the instant specification (an opening to the outside in the upper half of the cathode chamber) as permitting the “structured to discharge the catholyte and hydrogen gas” limitation of claim 1. The lower outlet of Greener et al would have been inherently capable of discharging the catholyte and water to the outside of the cell since the lower outlet has an identical structure to the structure disclosed by the instant specification (an opening to the outside in the lower half of the cathode chamber) as permitting the “structured to discharge the catholyte and water” limitation of claim 1. See MPEP 2114.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Greener et al (GB 1421118 A).
Greener shows the lower cathode outlet being in the upper half of the cathode chamber while still being lower than the upper cathode outlet. However, Greener also shows a drain (14) located in the lower half of the cathode chamber.
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to have located the lower cathode outlet in the lower half of the cathode chamber to provide greater vertical separation between the upper cathode outlet and the lower cathode outlet.
Allowable Subject Matter
Claim 6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 3-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art includes Greener et al (GB 1421118 A) as applied to reject claims 1 and 2 above, as well as Robinson (US 2008/0179194). Greener et al fail to teach the catholyte being removed from the cathode chamber via the upper cathode outlet as required by claim 6 and fail to teach the cathode chamber including a plate portion (the back wall of the cathode chamber opposite the membrane (4)) including grooves connected to the inlet and outlets as required by claims 3-5. Robinson is relevant to the claimed invention because the two-phase product of the cathode chamber is taught, the two phases including an organic phase and a water phase that required separation. However, Robinson failed to recognize that hydrogen gas also produced at the cathode should be recovered separate from the water phase from the cathode chamber by providing two outlets in the cathode chamber. Miyoshi et al (JP 2017-179601 A, cited by Applicant) is noteworthy for teaching a plate portion inducing flow in a similar pattern to that produced by the structure of instant claims 3-5. However, Miyoshi et al do not teach a groove as claimed, instead having a single recess filled with porous material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794