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 .
Response to Amendment
The amendment filed on 6/4/2026 has been entered into the prosecution for the application. Currently claims 12-22 are pending.
The 112(b) rejection to claim 13 is withdrawn due to the amendment to the claim.
Applicant’s arguments, see Remarks, filed 6/4/2026, with respect to Mitsuta have been fully considered and are persuasive. The rejection as per Mitsuta has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 recites that the first gas component is hydrogen and the second gas component is oxygen.
This limitation has been added to claim 12, thus claim 19 does not further limit claim 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 12-15, 17, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,350,496 of Smith et al in view of US 2017/0101717 of Sone et al.
As to claims 12 and 19, Smith teaches of a device comprising:
an electrolysis unit with a first chamber and a second chamber, the first and second chambers being separated by a separating unit (i.e. membrane) (Smith, col 2 lines 45-61 and Figs. 1 and 2);
wherein the first chamber receives an electrolyte and produces a first gas component (hydrogen), the second chamber does not receive the electrolyte and produces a second gas component (pure oxygen) and the pressure inside the second chamber is greater than the pressure in the first chamber (Smith, col 2 line 40 thru col 3 line 21 and col 5 lines 8-16).
As states in Smith, the electrolyte (i.e. water) is consumed at the anode to generate oxygen and proton. Therefore the electrolyte does not enter the second chamber.
Smith does not teach a phase separating unit to separate the first gas component from the electrolyte.
Sone teaches of water electrolysis apparatus (Sone, [0001]).
Sone teaches that the hydrogen is separated by a phase separating unit from the electrolyte after it exits a first chamber (cathode chamber) in order to allow the hydrogen to be dried and stored or used (Sone, [0061] and [0066]).
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 Smith as per Sone so as to utilize a phase separating unit to separate hydrogen from the electrolyte in order to obtain dry hydrogen for use or storage.
As to claim 13, Smith in view of Sone teach to the device of claim 12.
Smith teaches of the device of the electrolysis unit, thus disclosing the operation thereof (see MPEP 2114 I and II). Additionally, it is noted that the membrane has specific structure that facilitates the pressure differential being able to be maintained during operation (Smith, col 3 lines 19-35).
As to claim 14, Smith in view of Sone teach to the device of claim 12.
Smith teaches the device is operated to about 6000 psi which discloses the claimed invention of at least 50 bar (approximately 725 psi) (Smith, col 3 lines 2-4).
As to claim 15, Smith in view of Sone teach to the device of claim 12.
Smith teaches the separating unit is a membrane with pores (Smith, col 2 lines 45-50 and Fig. 1).
As to claims 17 and 22, Smith in view of Sone teach to the device of claim 12.
Smith teaches that oxygen at high pressure is desirable in vehicles and in space (i.e. microgravity) such that the device of Smith generates such high pressure oxygen and thus be operable in microgravity or in vehicles (Smith, col 1 lines 10-14 and col 2 lines 8-19).
It is noted that claim 17 does not provide any additional structure to the system for how it is operated in microgravity. If Applicant has a specific structure in mind, it would be beneficial to claim the structural component of the system.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Sone as applied to claim 12 above, and further in view of US 2012/0048731 of Haryu et al.
As to claim 16, Smith in view of Sone teaches to the device of claim 12.
Smith in view of Sone do not teach the phase separating unit comprising a membrane.
Haryu teaches of a water electrolysis apparatus (Haryu, [0003]).
Haryu additionally teaches that a gas/liquid separator comprises a membrane structure that allows gas to pass through the membrane while retaining the liquid within a container, thus effectively separating the gas components from the liquid components within the electrolysis apparatus (Haryu, [0018], [0040] – [0045]).
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 Smith in view of Sone as per Haryu so as to utilize a membrane structure for the separation of gas components from liquid component within a gas/liquid separating.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Sone as applied to claim 12 above, and further in view of US 2023/0032928 of Bouwman et al.
As to claim 18, Smith in view of Sone teaches to the device of claim 12.
Smith does not teach to an electrolyte circuit.
Sone teaches that the electrolyte can be recirculated to the first gas chamber (hydrogen generating side) after passing through the phase separating unit so as to replenish the electrolyte into the cell (Sone, [0061] – [0064] and Fig. 1).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith as per Sone so as to utilize a electrolyte circuit to replenish the electrolyte to the cell.
As modified, Smith in view of Sone do not teach using osmosis within the circulation unit.
Bouwman teaches of electrolysis system for water electrolysis (Bouwman, [0001]).
Bouwman teaches that the system can comprise a simpler construction by use of a device that allows for water to be fed to the electrolytic cell by forward osmosis. Bouwman states the cell has at least one water inlet (Bouwman, [0014] – [0015] and [0043]).
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 Mitsuta as per Bouwman so as to utilize a delivery unit to deliver water into the cell by osmosis in order to form a device of simpler construction by still allows for water to be supplied to the cell.
Claims 20 and 21 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Sone as applied to claim 12 above, and further in view of US 6,338,786 of Thorpe et al.
As to claim 20, Smith in view Sone teach to the device of claim 12.
Smith in view of Sone do not teach a frame structure that has the phase separator integrated therein.
Thorpe teaches of electrolytic cells (Thorpe, col 1lines 6-11).
Thorpe additionally teaches the cell structure is held together by frames such that gas-liquid separators are integrated into the frame structure to facilitate proximity and separation of the gas and liquid within the system for recycling the liquid back into the cell (Thorpe, col 5 line 16 thru col 6 line 33 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 Smith in view of Sone as per Thorpe so as to utilize frames with phase separation units integrated therein in order to allow for a multicell system which facilitates separation of the product from the electrolyte and recycling the electrolyte back into the system.
As to claim 21, Smith in view of Sone and Thorpe teach to the device of claim 20.
Smith in view of Sone do not teach a heat exchanger integrated into the electrolysis unit.
Thorpe teaches that the rigid end boxes can include locations for components including heaters, cooler and heat exchangers to control the temperature of the system (Thorpe, col 2 lines 34-40).
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 Smith in view of Sone as per Thorpe so as to include a heat exchanger within the electrolysis unit in order to control the temperature of the system.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
Applicant argues that Smith does not teach the electrolyte is prevented from entering the second chamber.
In specific that osmotic drag from the cathode to the anode through the membrane is in contrast to the claimed invention.
However, as noted above, in Smith while water is transported across the membrane, it is also consumed at the anode before it enters the second chamber (anode chamber 3). Thus water is prevented from entering the second chamber. Additionally as per claim 13, the operating conditions of the system further facilitates the location of the electrolyte. As Smith teaches this operational condition, there is no structural component that is “configured” as per the claim limitation that overcomes the prior art of record.
If Applicant desires a specific structure to the membrane (i.e. separating unit) that discloses some version of “configuration” for the system, it would behoove Applicant to include it within the independent claim.
It is noted, as stated previously in the non-final action dated 310/2026, that US 2022/0341046 of Catanorchi teaches a different membrane structure (AEM vs. PEM in Smith) that discloses a dry anode situation similar to the claimed invention.
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 BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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