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, encompassing claims 1-11 and new claim 17, in the reply filed on July 21, 2026, 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 1 and 3 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 the limitation "the OH- ion" in line 3. There is insufficient antecedent basis for this limitation in the claim.
As to claim 3, 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:
step (i) recites the broad recitation “an anolyte”, and the claim also recites “preferably water” 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.
step (ii) recites the broad recitation “a catholyte”, and the claim also recites “preferably water or the base produced therein at reduced concentration” 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.
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 non-obviousness.
Claims 1, 3, 4, 9, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gilliam et al. (US Patent Application Publication no. 2010/0140103) in view of Albrecht et al. (US Patent Application Publication no. 2016/0076156).
Regarding claim 1, Gilliam discloses an electrochemical cell comprising:
(a) an anode (102) suitable for allowing the electrochemical reaction of oxidation of OH- ions and consequent production of oxygen gas (paragraph 51) and release in solution of protons H+ (as shown in figure 1; paragraph 6) wherein said anode (102) is contained in an anode chamber suitable for containing as an anolyte an acidic solution (paragraphs 28, 57),
(b) a cathode (106; paragraph 18) connected through an electrical connection (114) to said anode (102) and suitable to allow the electrochemical reaction of reduction of proton H+ and consequent production of hydrogen gas (paragraphs 3-5) and release in solution of OH- ions (as shown in figure 1), wherein said cathode (106) is contained in a cathode chamber suitable to contain as a catholyte a basic solution, in particular an aqueous solution of NaOH (paragraphs 15, 17, 28, 32),
(c) a system for feeding said anode chamber with said acidic solution (paragraph 28),
(d) a system for feeding said cathode chamber with said basic solution (paragraphs 15, 28),
(e) a cation exchange membrane (116) impermeable for OH- ions and permeable for cations, in particular Na+ (shown in figure 1; paragraphs 19-20),
(f) an anion exchange membrane (120) impermeable for H+ ions and permeable for anions, particularly Cl- (figure 1; paragraphs 19-20),
wherein said anodic chamber (containing anode 102) and said cathodic chamber (containing cathode 106) are separated by said cation exchange membrane (116) and said anion exchange membrane (120) which in turn are separated by a third chamber (118) suitable for containing or containing an aqueous solution of chloride salt, in particular NaCl (shown in figures 1, 4; paragraphs 19-20, 22, 34-35), where
(α) said cation exchange membrane (116) is simultaneously a wall or a portion thereof of said cathode chamber (containing cathode 106) and of said third chamber (middle chamber containing the NaCl solution; figure 1) such that from the third chamber to the cathode chamber a passage of salt cations, in particular Na+ (paragraphs 19-20), is possible,
(β) said anion exchange membrane (120) is simultaneously a wall or a portion thereof of said anode chamber containing anode electrolyte (104) and of said third/middle chamber such that from the third/middle chamber to the anode chamber a passage of salt anions, in particular Cl-, is possible(paragraphs 3, 15, 20 – chloride ions migrate from the salt solution in the middle chamber to produce HCl in the anode electrolyte),
further comprising:
(h) a carbonation reactor/CO2 contactor (128) wherein the cathode chamber comprises an inlet (top of cathode chamber through circulating system 142; figure 1) and an outlet (bottom of cathode chamber as shown by arrows) which are connected in a circuit (142) in which said carbonation reactor/CO2 contactor (128) is inserted (CO2 contactor sequesters carbon dioxide contained in the product gas and cathode electrolyte to precipitate hydroxides, carbonates and bicarbonates; paragraph 55).
Gilliam fails to teach wherein said electrodes are made of stainless steel or graphite.
Albrecht discloses an electrochemical system comprising an anode in an anode chamber, a cathode in a cathode chamber and a third/middle chamber separating the anode chamber and the cathode chamber by ion exchange membranes (figure 1; paragraph 46). The ion exchange membrane separating the electrode chambers allows the passage of sodium ions. These sodium ions react with the hydroxide ions in the cathode electrolyte to form sodium hydroxide (paragraphs 158-159). The anode and the cathode can be made of graphite as this is a well-known electrocatalyst material for electrochemical reduction of oxygen and water to hydroxide ions to generate sodium hydroxide in the cathode electrolyte (paragraphs 12, 35, 184).
The system of Gilliam is also configured to migrate sodium ions through a cation exchange membrane to react with hydroxide ions produced at the cathode to generate sodium hydroxide in the cathode electrolyte (paragraphs 3, 20).
It would have been obvious to one having ordinary skill in the art at the time of filing to use graphite electrodes in the electrochemical device of Gilliam because as taught by Albrecht, graphite is a well-known electrocatalytic material for promoting electrochemical reactions for the effective production of sodium hydroxide in cathode electrolytes, and one would have a reasonable expectation of success in doing so.
As to the phrase “a desalination device”, the phrase is interpreted under MPEP 2111.02 II as a statement limiting the intended use of the claimed structure. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. In the instant case, the phrase is not deemed to further structurally differentiate the instantly claimed structure. Further, the prior art discloses producing desalinated water (paragraph 4) thus may be deemed a “desalination device”.
Regarding claim 3, the device of Gilliam is configured to perform the following steps:
(i) feeding the anode chamber with an anolyte, i.e. water (paragraphs 2, 28, 30, 37),
(ii) feeding the cathode chamber with a catholyte, i.e. the base produced therein at reduced concentration (NaOH – paragraphs 15, 28, 37),
(iii) feeding the third/middle chamber with a concentrated chloride salt solution, i.e. NaCl (as shown in figure 1; paragraphs 5, 15, 49),
(iv) oxidation of OH- on the anode (102) with the formation of oxygen and H+ protons to produce HCl (paragraph 20),
(v) reduction of H+ on the cathode with the formation of H2 hydrogen and OH- hydroxide ions to produce NaOH (paragraphs 20, 22).
It is important to note that the courts have held that apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the device is capable of performing a claimed function. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the device of Gilliam is capable of feeding an anolyte to the anode chamber, feeding a catholyte to the cathode chamber, feeding an electrolyte to the middle chamber, performing an oxidation reaction at the anode and a reduction reaction at the cathode and thus, it meets the claim.
Regarding claim 4, each of said chambers of Gilliam is provided with an inlet and an outlet (as shown in figure 1), namely:
(a) that the anode chamber (104) is provided with an inlet for fresh anolyte and an outlet for anolyte enriched with salt anions, particularly Cl-, or their derivatives, and oxygen (as shown in figure 1),
(b) that the cathode chamber (108) is provided with an inlet for the fresh catholyte and an outlet for the catholyte enriched in salt cations, particularly Na+, and hydrogen (paragraphs 28; 33; and
(c) that the third/middle chamber (118) has an inlet for the aqueous starting salt solution and an outlet for the reduced concentration salt solution, i.e. NaCl (paragraphs 19, 20 and 22).
Regarding claim 9, Albrecht further teaches a plurality of electrochemical cells in a multipolar configuration in a stack containing the cells with alternating polarity (paragraphs 163-165).
Regarding claim 10, Albrecht discloses pumping systems with adjustable speed/control system for feeding said chambers (paragraphs 126, 260-261, 273).
Regarding claim 17, said carbonation reactor/CO2 contactor (128) of Gilliam is configured to perform the following step: diverting carbonates and bicarbonates from said carbonation reactor/ CO2 contactor (128) to said cathode chamber (108; figure 1) in order to buffer said basic solution (paragraph 55 - CO2 contactor sequesters carbon dioxide contained in the product gas and cathode electrolyte to precipitate hydroxides, carbonates and bicarbonates which are fed into the cathode compartment through a cathode electrolyte circulating system 142).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gilliam in view of Albrecht as applied to claim 1 above, and further in view of Lee et al. (US Patent Application Publication no. 2012/0100444).
Regarding claim 5, the modified Gilliam teaches all the features discussed above but fails to disclose that the device further comprises (g) a gas-liquid separation device, in particular a gas-liquid scrubber, for recovering the hydrogen produced which is connected to the outlet of the cathode chamber and which is connected to a fuel cell.
Lee discloses a fuel cell system using hydrogen generated from a sea water electrolyzing device, wherein the gas collected is passed through a gas-liquid scrubber to be sent to the hydrogen inlet of the fuel cell. The fuel cell system generates electricity by using waste hydrogen, which, otherwise, is discarded after being generated secondarily from the water electrolyzing apparatus (abstract; paragraphs 10, 15).
One having ordinary skill in the art at the time of filing would have found it obvious to connect a gas-liquid scrubber to the outlet of the cathode chamber of the modified Gilliam, as taught by Lee, in order to remove/collect the hydrogen generated by electrolysis and supply it to a fuel cell system to generate electricity.
Allowable Subject Matter
Claims 7 and 8 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art made of record fails to teach the arrangement of plates and ion exchange membranes recited in claim 7. Claim 8 is dependent upon claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
