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 .
Status of the Claims
This is a final Office action in response to Applicant’s remarks and amendments filed 07/29/2026. Claims 1-7 are pending in the current Office action. Claims 1, 2, 3, and 7 were amended by Applicant.
Status of the Rejection
The objection to claim 7 is withdrawn in view of Applicant’s amendments.
The rejections of claims 1-3 and 5-7 under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
The rejection of claim 4 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments.
The rejections of claims 3-5 under 35 U.S.C. § 112(b) are maintained.
New grounds of rejection for claims 2, 3, and 5 are established as necessitated by Applicant’s amendments.
Claims 1, 6, and 7 are allowed.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are: “a H2O supply device configured to supply H2O to the co-electrolysis device” in claim 4 and “a reflux portion configured to reflux part of gas discharged from the reforming device to the co-electrolysis device” in claim 7.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Specifically, the limitation “a reflux portion configured to reflux part of gas discharged from the reforming device to the co-electrolysis device” is being interpreted as a pipe that connects the effluent of the reforming device to the influent of the co-electrolysis device, and equivalents thereof, based on para. 103 and Fig. 10 of the instant specification.
No specific structure corresponding to the “H2O supply device configured to supply H2O to the co-electrolysis device” could be identified in the specification.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 3, the term “a dense film” in claim 3 is a relative term which renders the claim indefinite. The term “dense” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, the instant specification describes a “dense film” as e.g., “made of a dense material”, “The dense film 3a is denser than the support substrate 45”, and “8YSZ, LSGM (lanthanum gallate), or the like,” (paras. 83-84), but provides no objective definition of what density would be required for a film to be considered “dense”, and the claim does not recite a “support substrate” to which the density of the film could be compared. It is therefore unclear how dense (in relative or absolute terms) the “dense film” would need to be to read on the claim.
Furthermore, claim 3 recites the limitation "the reforming catalyst" in line 4. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 2, from which claim 3 depends, was amended to delete the term “a reforming catalyst”. It is therefore unclear whether claim 3 is intended to require “a reforming catalyst” or not.
Examiner recommends amending claim 3 to recite “a [[dense]] film” and “a [[the]] reforming catalyst”.
Regarding claim 4, claim limitation “a H2O supply device configured to supply H2O to the co-electrolysis device” invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, no corresponding structure could be identified in the specification. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Furthermore, claim 4 depends from claim 3, and therefore incorporates the indefinite language of claim 3. Claim 4 is therefore indefinite.
Examiner recommends amending claim 4 to read “a H2O supply 2O supplied
Regarding claim 5, claim 5 depends from claim 3, and therefore incorporates the indefinite language of claim 3. Claim 5 is therefore indefinite.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brunot (US Pat. Pub. 2019/0194816 A1).
Regarding claim 2, Brunot teaches a methane production system (e.g., abstract and para. 51) comprising:
a co-electrolysis device (comprising the plurality of “co-electrolyzer 1” paras. 87-88 and “Active Co-SOEC” Fig. 3, annotated below, see also “number P of reactors of the unit U” para. 104 and para. 109) having a co-electrolysis cell (“co-electrolyzer 1” and “Active Co-SOEC” Id.), the co-electrolysis cell including a first electrode (“cathode 2” para. 72 and Fig. 1) at which H2, CO, and O2- are produced from CO2 and H2O ( “co-electrolysis” para. 36 and Eq. (II)), an electrolyte capable of transferring O2- (“electrolyte 3 … The electrolyte may in particular be an anionic conductor, more specifically an anionic conductor of O2- ions” para. 72 and Fig. 1), and a second electrode (“anode 4” para. 72 and Fig. 1) at which O2 is produced from the O2- transferred from the first electrode through the electrolyte (para. 75 and Fig. 1);
a reforming device connected to the co-electrolysis device (comprising the plurality of “X inactive SOEC reactors” para. 111 and “Co-SOEC stand-by” Fig. 3), the reforming device having a reforming cell (each of the “X inactive SOEC reactors” para. 111 and “Co-SOEC stand-by” Fig. 3) configured to produce CH4 from the H2 and CO produced at the first electrode (“at each cathode of the X reactors, a methanation by heterogeneous catalysis” para. 105 and see para. 108), and
a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device (see below).
Regarding the limitation “a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device”, Brunot teaches the effluent from the co-electrolysis device is connected to the influent of the reforming device by a pipe (see e.g., Fig. 3). Brunot further teaches that the reforming cells and the co-electrolysis cells are structurally identical, and are used as either components of the reforming device or the co-electrolysis device as needed (paras. 33-37, esp. para. 37).
Therefore, as Brunot comprises a pipe that connects the effluent of the co-electrolysis device to the influent of the reforming device, and each of the individual SOEC cells may be part of the reforming device or co-electrolysis device as needed, the system of Brunot necessarily comprises a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device. I.e., the pipe that connects the effluent of the co-electrolysis device to the influent of the reforming device must necessarily also connect the effluent of the reforming device to the influent of the co-electrolysis device when their functions are reversed. Brunot therefore anticipates the limitation “a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device” (MPEP § 2112).
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Annotated Brunot Fig. 3
Regarding claim 3, claim 3 has been interpreted as “an electrolyte film disposed between the first electrode and the second electrode”.
Brunot further teaches the reforming cell includes a first reforming electrode containing a reforming catalyst (“at each cathode of the X reactors, a methanation by heterogeneous catalysis” para. 105), a second reforming electrode (“anode 4” para. 72 and Fig. 1), and an electrolyte film disposed between the first reforming electrode and the second reforming electrode (“solid electrolyte 3” para. 72 and Fig. 1).
Regarding claim 5, Brunot further teaches the reforming cell has the same configuration as the co-electrolysis cell (“a heat management of all of the SOEC reactors of a power-to-gas unit … only some of them are operated in this mode, that is to say P reactors, the other portion of the reactors, i.e. X reactors, …” para. 37, see also paras. 33-36 and Fig. 3).
Allowable Subject Matter
Claims 1 and 6-7 are allowed.
Furthermore, claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) 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:
Regarding claim 1, the prior art of record, alone or in combination, does not reasonably teach or render obvious the cumulative limitations of claim 1, with a particular emphasis on the limitations “a voltage detector configured to detect an electromotive voltage of the reforming cell” and “a control unit configured to control an amount of H2O supplied to the co-electrolysis device, wherein the control unit changes the amount of H2O supplied according to the electromotive voltage detected by the voltage detector” (emphasis added).
The closest prior art is considered to be Brunot (US Pat. Pub. 2019/0194816 A1), Brown (US Pat. Pub. 2022/0246966 A1), Reytier ‘979 (US Pat. Pub. 2015/0329979 A1), Reytier ‘699 (US Pat. Pub. 2019/0348699 A1), Schulz (US Pat. Pub. 2016/0107952 A1), Borm (WO 2021/214214 A1 and US Pat. Pub. 2023/0155150 A1), and Wakasugi (EP 3378972 A2).
The teachings of Brunot are described above and in the Office action mailed 05/08/2026.
Brunot does not teach a voltage detector configured to detect an electromotive voltage of the reforming cell, or a control unit configured to control an amount of H2O supplied to the co-electrolysis cell based upon the electromotive voltage of the reforming cell.
Details of the teachings of Brown may be found in the Office action mailed 05/08/2026. In brief, Brown teaches a system comprising a co-electrolysis stack (“SOEC module 175” para. 27 and Fig. 1) and a fuel cell (“SOFC module 115” Id.), wherein a control unit indirectly controls an amount of H2O supplied to the co-electrolysis stack based on a measured electromotive voltage of the fuel cell (paras. 27, 31, and 46), which provides art recognized benefits (paras. 31 and 46).
It may therefore reasonably be considered that a person having ordinary skill in the art would have found it obvious to implement a feed control to a co-electrolysis cell based on a measure electromotive voltage in a different electrochemical cell.
However, as noted by Applicant (see Remarks p. 7-8, filed 07/29/2026), the teachings of Brunot and Brown, taken as a whole, do not reasonably render the limitation “a control unit configured to control an amount of H2O supplied to the co-electrolysis device, wherein the control unit changes the amount of H2O supplied according to the electromotive voltage detected by the voltage detector” obvious.
Specifically, because Brown teaches an SOFC rather than a methane reforming cell, and because Brown only teaches the controller indirectly adjusts the amount of H2O supplied to the co-electrolysis cell, the combination of Brunot and Brown cannot reasonably be considered a combination of prior art elements according to known methods to yield predictable results (MPEP § 2143(I)(A)). Furthermore, it is not considered that a person having ordinary skill in the art would have had a motivation to modify the system of Brunot to comprise a control system configured as recited in claim 1 based on the teachings of Brown due to the aforementioned differences in operation.
Claim 1 is thus patentable over Brunot in view of Brown.
Borm teaches a system comprising a co-electrolysis system and a methane reformer (abstract), wherein the amount of feedstocks (i.e., water and carbon dioxide) supplied to the co-electrolysis system is controlled by a controller (e.g., para. 32). However, Borm explicitly teaches a measured potential is unsuitable as the variable used to control the system if the system is used in a thermoneutral mode (para. 32). Therefore, Borm cannot reasonably be considered to provide a person having ordinary skill in the art with a motivation to modify the system of Brunot to use a voltage as the variable monitored by a control system.
Wakasugi teaches a system comprising an SOEC configured for co-electrolysis (“12” para. 42 and Fig. 2) and a methane reformer (“20” para. 44 and Fig. 2), wherein the amount of water supplied to the co-electrolysis cells is controlled by a control system based on the electromotive voltage of the co-electrolysis cell (para. 39 and Fig. 8b). However, Wakasugi teaches the water supply to the co-electrolysis cell is controlled based on the measured voltage in the same cell, rather than the measured voltage in a different cell, as required by the claim. Therefore, Wakasugi cannot be considered to provide a person having ordinary skill in the art with a motivation to modify the system of Brunot as required by the claim.
Schulz teaches a system comprising an SOEC and a methane reformer (abstract and Fig. 1), wherein the amount of carbon dioxide and carbon monoxide supplied to the methane reformer is controlled (e.g., para. 6). However, the system of Schulz does not comprise a co-electrolysis cell and controls the amount of carbon dioxide and carbon monoxide supplied, rather than the amount of hydrogen gas supplied, and therefore cannot reasonably be considered to provide a person having ordinary skill in the art with a motivation to modify Brunot to read on the claim limitations in question.
Reytier ‘979 and Reytier ‘699 are by the same Applicant as Brunot and describe similar subject matter, but provide no description of a controller configured in the manner required by the claim.
Thus, the prior art of record does not reasonably teach or render obvious the cumulative limitations of claim 1. Claim 1 is therefore patentably distinguished over the prior art of record.
Regarding claim 4, claim 4 requires the same combination of allowable features recited in claim 1. Claim 4 is therefore patentably distinguished over the prior art for the same reasons enumerated for claim 1, above, mutatis mutandis.
Regarding claims 6 and 7, claims 6 and 7 depend from claim 1, and therefore incorporate the patentably distinguished subject matter of claim 1. Claims 6 and 7 are therefore patentably distinguished over the prior art for at least the same reasons enumerated for claim 1, above.
Response to Arguments
Applicant’s arguments, see Remarks p. 7-9, filed 07/29/2026, with respect to the rejections of claims 1 and 6-7 under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. The rejections of claims 1 and 6-7 under 35 U.S.C. § 102(a)(1) have been withdrawn.
Applicant’s arguments, see Remarks p. 5-6, filed 07/29/2026, with respect to the interpretation of claims 4 and 7 under 35 U.S.C. § 112(f) have been fully considered but are not persuasive.
Applicant’s arguments, see Remarks p. 5-6, filed 07/29/2026, with respect to the rejection of claim 4 under 35 U.S.C. § 112(b) have been fully considered but are not persuasive.
Applicant’s arguments, see Remarks p. 9-10, filed 07/29/2026, with respect to the rejections of claims 2-5 over the prior art have been fully considered but are not persuasive.
No arguments or amendments regarding the rejections of claims 3 and 5 under 35 U.S.C. § 112(b) could be identified. Therefore, these rejections are maintained.
Applicant’s Argument #1
Applicant argues on p. 5-6 that claims 4 and 7 do not invoke 35 U.S.C. § 112(f) as currently drafted.
Specifically, Applicant argues that the terms “H2O supply device” and “reflux portion” are structural, rather than functional in nature, said structures being “any device capable of delivering water to the co-electrolysis device” and “any device capable of refluxing gas”, respectively.
Examiner’s Response #1
Examiner respectfully disagrees. At issue is whether the limitations “a H2O supply device configured to supply H2O to the co-electrolysis device” in claim 4 and “a reflux portion configured to reflux part of gas discharged from the reforming device to the co-electrolysis device” in claim 7 follow the drafting pattern that invokes interpretation as a “means or step plus function” limitation stipulated in MPEP § 2181(I).
Interpretation under 35 U.S.C. § 112(f) is invoked when:
a) the claim limitation explicitly uses the term “means”, “step”, or a substitute for the term “means” that is a generic placeholder (a.k.a. a nonce term);
b) the term “means”, “step”, or the nonce term is modified by functional language such as “for” or “configured to”; and
c) the term “means”, “step”, or the nonce term is not modified by sufficient structure, material, or acts for performing the claimed function.
In the instant case, the limitations each use a nonce term i.e., “device” and “portion”, which is modified by functional language i.e., “configured to…”. Therefore, the question of whether these limitations invoke 35 § 112(f) must be considered. As Applicant notes, these claims do not use the specific term(s) “means” or “step”, and are therefore presumed not to invoke 35 U.S.C. § 112(f). However, this presumption is rebutted because, contrary to Applicant’s assertion, the claims recite no structure sufficient to perform the recited functions.
Specifically, while Applicant asserts the limitations “a H2O supply device” and “a reflux portion” imply an art recognized structure i.e., these are terms of art, the “structure” Applicant assigns to these terms i.e., “any device capable of …” performing the recited function, are purely functional. I.e., no specific structure has been associated with these terms.
Furthermore, Applicant has not provided any evidence that the terms “a H2O supply device” and “a reflux portion” are terms of art.
Absent evidence of a specific structure associated with these terms, the limitations “a H2O supply device configured to supply H2O to the co-electrolysis device” in claim 4 and “a reflux portion configured to reflux part of gas discharged from the reforming device to the co-electrolysis device” in claim 7 must be considered as invoking the “means or step plus function” interpretation provided for in 35 U.S.C. § 112(f).
Applicant’s argument is therefore not persuasive.
Applicant’s Argument #2
Applicant argues on p. 6, that while broad, the limitations of claim 4 are not indefinite, because a person having ordinary skill in the art would understand what was meant by the limitation “a H2O supply device configured to supply H2O to the co-electrolysis device”.
Examiner’s Response #2
Examiner respectfully disagrees. Examiner acknowledges that, in general, a claim limitation is definite for the purposes of 35 U.S.C. § 112(b) if a person having ordinary skill in the art would understand the meaning of said limitation in light of the specification.
However, claim 4 invokes 35 U.S.C. § 112(f), which imparts additional burdens on Applicant with respect to compliance with 35 U.S.C. § 112. Specifically, when a claim limitation invokes 35 U.S.C. § 112(f), the specification must clearly and particularly point out the structure that performs the claimed function in order to comply with 35 U.S.C. § 112(b) (MPEP §§ 2181(II)(C) and 2181(III)).
In the instant case, no structure corresponding to “a H2O supply device” could be identified in the specification, and Applicant’s proposed structure i.e., “any device capable of delivering water to the co-electrolysis device”, is not in fact a structure, but merely restates the function performed.
Furthermore, claim 4 depends from claim 3, which is indefinite, and Applicant has not addressed this cause for rejection under 35 U.S.C. § 112(b).
Therefore, Applicant’s argument is not persuasive.
Applicant’s Argument #3
Applicant argues on p. 9-10 that the prior art of record i.e., Brunot, does not reasonably anticipate the limitation “a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device”.
Specifically, Applicant argues that while Brunot discloses a pipe that connects an outlet of the reforming device to an inlet of the co-electrolysis device and therefore “could perform such a function”, it does not anticipate this limitation because “there is no disclosure or suggestion that the system does or is intended to perform such a function” i.e., Brunot does not teach the system actually uses the effluent of the reforming device as an influent of the co-electrolysis device.
Examiner’s Response #3
Examiner respectfully disagrees. At issue is the broadest reasonable interpretation of the limitation “a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device”.
During examination, claims are interpreted according to their broadest reasonable interpretation (BRI) (MPEP § 2111). The BRI of a claim limitation directed to a function of an apparatus is an apparatus capable of performing the recited limitation (MPEP § 2114).
As acknowledged by Applicant, the system of Brunot comprises a pipe that is capable of providing the effluent of the reforming device as an influent to the co-electrolysis device. Therefore, Brunot anticipates the limitation “a pipe that connects an effluent of the reforming device to an influent of the co-electrolysis device”.
Applicant’s argument is thus not persuasive.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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