ELECTROCHEMICAL CELL DEIONIZATION SYSTEM
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 statements (IDS) submitted on 5/11/2026, 8/18/2026, and 9/16/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
In response to communication filed on 8/4/2026:
Claim 7 has been amended; claims 21-33 have been added. No new matter has been entered.
Previous drawing objections have been withdrawn due to amendment.
Previous rejections under 35 USC 103 have been maintained.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “The Office's statement on p. 5 that the combination would be made "to prevent foldover quenching of the fluorescence signal" is unsupported because Moon contains no fluorescent sensing mechanism and therefore has no foldover quenching problem to solve. Moon neither identifies fluorescence as part of its system nor recognizes any deficiency associated with fluorescent detection. Accordingly, the stated motivation is derived entirely from Kornbluth's disclosure rather than from any problem recognized in Moon. The proposed modification therefore relies upon impermissible hindsight reconstruction using Applicant's disclosure as a roadmap.
Nothing in Moon suggests incorporating a fluorescent chemosensor into its water purification loop, nor does Kornbluth suggest adapting its fluorescent heavy-metal sensor for use in the chemically demanding environment of a hydrogen electrochemical system. The Office's proposed combination therefore reflects knowledge gained only from Applicant's disclosure rather than any teaching, suggestion, or motivation found in the cited references themselves. Such hindsight reconstruction does not satisfy the requirements of 35 U.S.C. § 103.
Moreover, even if one were to combine the references, the Office Action does not explain what component of Moon would be modified. Moon's chelate resin functions solely to capture metal ions, whereas Kornbluth's fluorescent sensing compound is an integrated molecular structure in which the receptor, spacer, and fluorophore cooperate to generate an optical signal. The rejection effectively extracts isolated features from Kornbluth while disregarding the integrated architecture that Kornbluth identifies as responsible for its sensing mechanism. Neither reference teaches or suggests incorporating such a sensing architecture into Moon's deionization system.”
The Examiner respectfully traverses. The sensor of Kornbluth can be chemically bonded to the additive of the modified Moon because, as taught by Kornbluth, chemosensor devices comprising a compound that binds the ion causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants (see abstract; paragraphs 0008, 0037-0038, 0048; claim 1.).
The Applicant discloses: “The Office Action, pp. 5-6, acknowledged that Moon and Kornbluth do not expressly disclose the first and second sensing states recited in claim 4. Instead, the rejection relied upon an assertion of inherency accompanied by citation to In re Best. However, In re Best applies only where the prior-art structure is identical or substantially identical to the claimed structure. Here, that prerequisite has not been established.
Moon contains no fluorescent sensing architecture. Kornbluth's sensing mechanism, on the other hand, depends upon a specifically designed receptor-spacer-fluorophore architecture operating through photoinduced electron transfer. The Office Action has not established that the proposed combination necessarily possesses the claimed first and second operating states, nor has it explained why such states would inevitably result from modifying Moon according to Kornbluth. Accordingly, the Office Action has not established inherency with respect to claim 4.”
The Examiner respectfully traverses. Claim 1 broadly recites a sensor which is disclosed by Moon. Claim 1 then goes on to broadly define the sensor includes an indicator compound bound to the additive which is disclosed by Kornbluth. The claim does not disclose a type of sensor or compound in the sensor but merely defines “a sensor” structured to monitor the amount of a metal ion. Both Moon and Kornbluth disclose this limitation.
New grounds of rejection have been necessitated by amendment of claim 7 and addition of claim 30.
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 7 and 30 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 7 now discloses the additive has at least one pKa value outside an operating range of the electrolyzer or fuel cell.
However, the claims do not specify an actual example of an additive. The specification provides several examples of additives which can be composed of very different compounds. Paragraph 0068 of the published specification discloses citric acid can be a non-limiting example of an additive. Clearly, one of ordinary skill in the art would understand that this type of compound will have a pKa value of some sort. However, paragraph 0075 and claim 5 disclose the additive is a crown ether. A crown ether does not have a pKa value as it lacks an acidic proton that can be easily donated to a base. Therefore, claim 7 is indefinite because it does not specify a specific compound that can possess an actual pKa value.
Claim 30 discloses wherein the chelating receptor has at least one pKa value selected such that the chelating receptor is non-binding for hydrogen ions during operation of the electrolyzer or fuel cell. As with claim 7, the claims do not specify an actual example of an additive. The specification provides several examples of additives which can be composed of very different compounds. Paragraph 0068 of the published specification discloses citric acid can be a non-limiting example of an additive. Clearly, one of ordinary skill in the art would understand that this type of compound will have a pKa value of some sort. However, paragraph 0075 and claim 5 disclose the additive is a crown ether. A crown ether does not have a pKa value as it lacks an acidic proton that can be easily donated to a base. Therefore, claim 30 is indefinite because it does not specify a specific compound that can possess an actual pKa value.
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 1-4, 21-24, 27-29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (WO 2022/181875 A1) and further in view of Kornbluth et al. (US 2021/0190695 A1).
Regarding claims 1-3, Moon et al. a hydrogen electrochemical system (Abstract discloses a hydrogen production system using water electrolysis.) comprising:
an electrolyzer (Fig. 4 discloses an electrolysis stack, element 420) or fuel cell including a membrane electrolyte (Fig. 1, element 106 discloses a membrane in a membrane electrode assembly, element 100.) and catalyst-loaded catalyst layers (Fig. 1, elements 112 and 116 disclose catalyst layers.);
a deionization system including an additive binding to a metal ion in water present in the membrane electrolyte or fuel cell (Paragraphs 0039-0040 disclose a device for managing water by removing radicals and metal ions which are impurities generated during water electrolysis. Paragraph 0059 disclose a second reaction tower (Fig. 4, element 600) which removes metal ions generated in the hydrogen production system. The second reaction tower has a chelate resin which removes metal ion impurities from the water.), sensor structured to monitor quantity of the metal ion (Paragraph 0028 discloses the use of a water quality sensor.). However, Moon et al. do not teach the sensor including an indicator compound bound to the additive.
Kornbluth et al. teach a chemosensor of formula (I) (Abstract; Claim 1 disclose the compound of formula I is R1-CH2NH-G.). Further, the chemosensor is used for detecting metal ions such as Pb2+ (Abstract). The components of R1-CH2NH-G can include fluorophore (Paragraphs 0008, 0038; Claim 1; Fig. 2 disclose G is fluorophore.) and a receptor (Paragraph 0048 discloses R1 can be a rigid cyclic group capable of chelating or complexing with an ion.).
Therefore, it would have been obvious to one having ordinary skill in the art to use a sensor that can be chemically bound to the additive of Moon because as taught by Kornbluth, chemo-sensor devices comprising a compound that binds the ion causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants.
Regarding claim 4, the combination of Moon and Kornbluth et al. teach the hydrogen electrochemical system of claim 1. However, they do not teach wherein the sensor has a first state of no electron excitation of the indicator compound when a receptor of the additive is free of the metal ion and a second state of electron excitation when the receptor includes the metal ion.
MPEP 2112.01 Composition, Product, and Apparatus Claims
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 21 and 23, Moon et al. teach a hydrogen electrochemical system (Abstract discloses a hydrogen production system using water electrolysis.) comprising:
an electrolyzer (Fig. 4 discloses an electrolysis stack, element 420) or fuel cell including a membrane electrolyte (Fig. 1, element 106 discloses a membrane in a membrane electrode assembly, element 100.) and catalyst-loaded catalyst layers (Fig. 1, elements 112 and 116 disclose catalyst layers.);
a deionization system including an additive binding to a metal ion in water present in the membrane electrolyte or fuel cell (Paragraphs 0039-0040 disclose a device for managing water by removing radicals and metal ions which are impurities generated during water electrolysis. Paragraph 0059 discloses a second reaction tower (Fig. 4, element 600) which removes metal ions generated in the hydrogen production system. The second reaction tower has a chelate resin which removes metal ion impurities from the water.), sensor structured to monitor quantity of the metal ion (Paragraph 0028 discloses the use of a water quality sensor.). However, they do not teach the sensor comprising a chemosensor including the additive and an indicator, the indicator including a fluorophore attached to a chelating receptor of the additive via a spacer including an electron-donating group.
Kornbluth et al. teach a chemosensor of formula (I) (Abstract; Claim 1 disclose the compound of formula I is R1-CH2NH-G.). Further, the chemosensor is used for detecting metal ions such as Pb2+ (Abstract). The components of R1-CH2NH-G can include fluorophore (Paragraphs 0008, 0038; Claim 1; Fig. 2 disclose G is fluorophore.) and a receptor (Paragraph 0048 discloses R1 can be a rigid cyclic group capable of chelating or complexing with an ion.). Further, the indicator includes a fluorophore attached to a chelating receptor of the additive via a spacer (Fig. 2). The spacer includes an electron-donating amine group (Paragraph 0038 discloses methylamine, -CH2NH-.).
Therefore, it would have been obvious to one having ordinary skill in the art to use a sensor that can be chemically bound to the additive of Moon because as taught by Kornbluth, chemo-sensor devices comprising a compound that binds the ion causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants.
Regarding claim 22, the combination of Moon and Kornbluth et al.t each the hydrogen electrochemical system of claim 21. Further, Kornbluth et al. teach wherein the fluorophore is configured to be quenched by photoinduced electron transfer when the chelating receptor is free of the metal ion (Paragraph 0037).
Therefore, it would have been obvious to one having ordinary skill in the art to use a sensor that can be chemically bound to the additive of Moon because as taught by Kornbluth, chemo-sensor devices comprising a compound that binds the ion causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants.
Regarding claim 24, the combination of Moon and Kornbluth et al.t each the hydrogen electrochemical system of claim 21. However, they do not teach wherein the sensor has a first state of no electron excitation of the indicator compound when a receptor of the additive is free of the metal ion and a second state of electron excitation when the receptor includes the metal ion.
MPEP 2112.01 Composition, Product, and Apparatus Claims
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 27, the combination of Moon and Kornbluth et al.t each the hydrogen electrochemical system of claim 21. Further, Kornbluth discloses wherein the additive and the sensor are immobilized on a polymer surface (Paragraph 0060).
Therefore, it would have been obvious to one having ordinary skill in the art to use a sensor that can be chemically bound to the additive of Moon because as taught by Kornbluth, chemo-sensor devices comprising a compound that binds the ion causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants.
Regarding claims 28 and 29, Moon et al. teach a hydrogen electrochemical system (Abstract discloses a hydrogen production system using water electrolysis.) comprising:
an electrolyzer (Fig. 4 discloses an electrolysis stack, element 420) or fuel cell including a membrane electrolyte (Fig. 1, element 106 discloses a membrane in a membrane electrode assembly, element 100.) and catalyst-loaded catalyst layers (Fig. 1, elements 112 and 116 disclose catalyst layers.);
a deionization system including an additive binding to a metal ion in water present in the membrane electrolyte or fuel cell (Paragraphs 0039-0040 disclose a device for managing water by removing radicals and metal ions which are impurities generated during water electrolysis. Paragraph 0059 discloses a second reaction tower (Fig. 4, element 600) which removes metal ions generated in the hydrogen production system. The second reaction tower has a chelate resin which removes metal ion impurities from the water.), the additive including a chelating receptor configured to selectively bind the metal ion while being non-binding for hydrogen ions present during operation of the electrolyzer or fuel cell (Paragraph 0046 discloses the second reaction tower includes a chelate resin. Paragraph 0059 discloses the chelate resin is used for heavy metal removal, such as Fe and Cu. Hydrogen is not a heavy metal and will therefore not bind with the chelate resin.) sensor structured to monitor quantity of the metal ion (Paragraph 0028 discloses the use of a water quality sensor.). However, they do not teach the sensor includes an indicator compound bound to the additive.
Kornbluth et al. teach a chemosensor of formula (I) (Abstract; Claim 1 disclose the compound of formula I is R1-CH2NH-G.). Further, the chemosensor is used for detecting metal ions such as Pb2+ (Abstract). The components of R1-CH2NH-G can include fluorophore (Paragraphs 0008, 0038; Claim 1; Fig. 2 disclose G is fluorophore.) and a receptor (Paragraph 0048 discloses R1 can be a rigid cyclic group capable of chelating or complexing with an ion.). Further, the indicator includes a fluorophore attached to a chelating receptor of the additive via a spacer (Fig. 2). The spacer includes an electron-donating amine group (Paragraph 0038 discloses methylamine, -CH2NH-.).
Therefore, it would have been obvious to one having ordinary skill in the art to use a sensor that can be chemically bound to the additive of Moon because as taught by Kornbluth, chemo-sensor devices comprising a compound that binds the ion and causes the compound to produce a fluorescent signal that can be easily detected, thereby providing improved sensitivity to water pollutants.
Regarding claim 31, the combination of Moon and Kornbluth et al.t each the hydrogen electrochemical system of claim 28. However, they do not teach wherein the sensor has a first state of no electron excitation of the indicator compound when a receptor of the additive is free of the metal ion and a second state of electron excitation when the receptor includes the metal ion.
MPEP 2112.01 Composition, Product, and Apparatus Claims
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claims 6, 26, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (WO 2022/181875 A1) and Kornbluth et al. (US 2021/0190695 A1) as applied to claims 1, 21, and 28 above, further in view of Depree et al. (US 3,882,018 A).
Regarding claims 6, 26, and 33, the combination of Moon and Kornbluth et al. teach the hydrogen electrochemical system of claims 1, 21, and 28. However, they do not teach a regeneration system for repeated use of the additive.
In the field of ion removal from water, Depree teaches that an adsorbent leaden with heavy metal ions may be subjected to regeneration to leach the heavy metal ions to permit reuse of the adsorbent (Abstract; Col. 2, lines 7-50).
Therefore, it would have been obvious to one of ordinary skill in the art to have added a conventional regeneration device as taught by Depree to the system of Moon for the purpose of removing the chelated metal to permit the chelating agent to adsorb more iron without having to obtain fresh chelating agent.
Allowable Subject Matter
Claims 5, 25, and 32 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 following is a statement of reasons for the indication of allowable subject matter: the subject matter of claims 5, 25, and 32 are not disclosed in the prior art of record nor would they present a prima facie case of obviousness with the current prior art.
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 DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Tavares-Crockett can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 October 1st, 2026
Prosecution Insights