DETAILED ACTION
Claims 1-13 were subject to restriction requirement mailed on 01/02/2026.
Applicant filed a response, and elected Group I, claims 1-9, and withdrew claims 10-13, without traverse on 02/20/2026.
Claims 1-13 are pending, and claims 10-13 are withdrawn.
Claims 1-9 are rejected.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on 02/20/2026 is acknowledged.
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/20/2026.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 6, it is suggested to amend “the surfaces” to “surfaces” to ensure proper antecedent basis and clarity.
Appropriate correction is required.
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 1-9 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, lines 6-7, recites a phrase “substantially no oxide layer”. However, it is unclear what the phrase refers to, i.e., it is unclear what degree of oxide layer must be considered as “substantially no oxide layer” (emphasis added). The examiner interprets that the phrase refers to no continuous oxide layer. Interpretation is speculative. Clarification is requested.
Regarding dependent claims 2-9, these claims does not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 3, line 2, recites a phrase “substantially prevents an oxide layer forming”. However, it is unclear what the phrase refers to, i.e., it is unclear what degree of preventing an oxide layer forming be considered as “substantially prevents an oxide layer forming” (emphasis added). The examiner interprets that the phrase refers to “prevents a continuous oxide layer forming. Interpretation is speculative. Clarification is requested.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fischman et al., Hydrogen generation via the reaction of an activated aluminum slurry with water, International Journal of Hydrogen Energy, 2020 (Fischman) (provided in IDS received on 05/03/2024).
Regarding claims 1 and 9, Fischman teaches a stable aluminum slurry fuel that reacts readily and exothermically with liquid water to produce hydrogen gas; bulk pure aluminum is first surface-treated with a gallium-indium eutectic, then ground into a powder and suspended in mineral oil (reading upon a hydrophobic liquid) (Fischman, Abstract);
Fig. 1 depicting the progression of oil separating off of aluminum in the presence of water: aluminum sits in oil, water is added and oil remains on the surface of the aluminum, oil begins to bead up was water preferentially wets to the aluminum, water begins to react with the aluminum (Fischman, page 20, Fig. 1), reading upon when the fuel precursor is introduced to water, the suspended aluminium particles migrate to the water and react therewith to produce hydrogen.
Fischman further teaches further work including grinding the aluminum into powder while it is already suspended in oil, smaller particle size can be achieved without risking powder combustion (Fischman, page 29, 3rd paragraph of Conclusion).
Given that Fischman teaches an identical or substantially identical process, using identical and substantially identical materials, i.e., grinding the aluminum into powder while it is already suspended in oil, with those of the present invention (specification, page 6, bottom paragraph); therefore it is clear that Fischman would necessarily and inherently meet that the suspended aluminum particles are non-spherical, angular particle and surfaces of the suspended aluminium particles have substantially no oxide layer thereon.
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). See MPEP 2112.01 (I).
Alternatively, given that Fischman teaches that aluminum is surface treated with gallium-indium eutectic and does not disclose having or requiring to have an oxide layer formed, it is clear that the surfaces of the aluminum surface treated with gallium-indium eutectic in Fischman have substantially no oxide layer thereon.
Regarding claims 2-4, as applied to claim 1, although Fischman does not explicitly teach wherein the suspended aluminum particles are produced by wet-ball milling aluminum feedstocks, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Fischman meets the requirements of the claimed product, Fischman clearly meets the requirements of the present claim.
Regarding claims 5-6, as applied to claim 1, Fischman further teaches by grinding the aluminum into powder while it is already suspended in oil, smaller particle sizes can be achieved without risking powder combustion; the use of finer particles would allow for higher mass fractions of aluminum to be introduced into the oil while still maintaining fluid-like properties and not clumping or clogging while being pumped; higher mass fractions of aluminum will, in turn, increase the total fuel energy density and specific energy; additionally, using smaller particles will allow for easier particle suspension in oil, which would improve shelf-life and increase the overall homogeneity of the fluid, decreasing the need for fumed silica (Fischman, page 29, 3rd paragraph of Conclusion).
Although there are no disclosures on the amounts of particle size of the aluminum powder and the volume loading of the aluminum powder, as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the particle size of the aluminum powder, including over the amounts presently claimed, in order to allow for higher mass fractions of aluminum to be introduced into the oil, including the presently claimed, increase the total fuel energy density and specific energy, allow for easier particle suspension improve shelf-life, increase the overall homogeneity of the fluid and decrease the need for fumed silica, and thereby arrive at the claimed invention.
Regarding claims 7-8, as applied to 1, given that Fischman disclose identical or essentially identical material, i.e., mineral oil, with that of the presently claimed (claim 9), therefore it is clear that the mineral oil of Fischman would necessarily and inherently meet the claimed limitation of wherein the hydrophobic liquid has a boiling point of at least 60°C and wherein the hydrophobic liquid has a boiling point of at most 100°C.
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). See MPEP 2112.01 (I).
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morgan et al., US 2022/0203437A1 (Morgan) (provided in IDS received on 07/25/2023) in view of Slocum et al., Characterization and Science of an Aluminum Fuel Treatment Process, 2018 (Slocum), and taken in view of evidence by AMC, Aluminum density: What you need to know (AMC, 2024) and PubChem, Mineral Oil, (PubChem, 2025).
Regarding claims 1 and 9, Morgan teaches the reaction between aluminum metal and water for producing hydrogen (Morgan, Abstract);
in one embodiment, the composition includes an aluminum slurry including a plurality of activated aluminum particles dispersed in a fluid carrier, wherein the activated aluminum particles comprise aluminum combined with gallium and/or indium, and a surface layer disposed on the plurality of activated aluminum particles, wherein the surface layer comprises a hydrophobic material (Morgan, [0006]);
while the hydrophobic material in the surface layer acts as a “lock” that is configured to substantially prevent eh reaction between aluminum particles and the surrounding environment (Morgan, [0021]);
in the presence of initiators, the plurality of aluminum particle may react with water to produce hydrogen (Morgan, [0075]) (reading upon the suspended aluminium particles migrate to the water and react therewith to produce hydrogen);
the fluid may be an oil, such as mineral oil (Morgan, [0025]);
the plurality of activated aluminum particle may have any suitable shape, for instance, irregularly shaped chunks (reading upon angular particles) (Morgan, [0028]).
Further regarding claim 1, Morgan teaches the activated aluminum comprise an aluminum combined with gallium and/or indium (Morgan, [0006]). Morgan does not explicitly disclose surfaces of the suspended aluminum particles have substantially no oxide layer thereon.
With respect to the difference, Slocum teaches activating aluminum using gallium and indium to react with water to produce high hydrogen yield (Slocum, page 63, 1st paragraph). Slocum specifically teaches aluminum can be activated when exposed to liquid metals such as gallium, indium and tin as they will naturally break down the oxide layer that forms on aluminum surface (Slocum, page 63, 2nd paragraph).
As Slocum expressly teaches, activated aluminum using gallium and indium can be reacted in water to produce high hydrogen yields; it can activate aluminum that can be reacted to near completion when immersed in water (Slocum, page 63, 1st paragraph).
Slocum is analogous art as Slocum is drawn to activating aluminum using gallium and indium to react with water to produce high hydrogen yield.
In light of the motivation of activating aluminum using gallium and indium, as taught by Slocum, it therefore would have been obvious to a person of ordinary skill in the art to activate aluminum using gallium and indium to break down the oxide layer that forms on aluminum surface, as taught by Slocum, in order to produce high hydrogen yield and react to near completion when immersed in water, and thereby arrive the claimed invention.
Regarding claim 2, as applied to claim 1, Morgan in view of Slocum further teaches the size of the activated aluminum particles may be altered using milling, e.g., ball mill; for instance, a mill may be used to grind a mixture comprising the activated solid aluminum and a fluid carrier (i.e., wet mill) (Morgan, [0065]).
Regarding claims 3-4, as applied to claim 2, although Morgan in view of Slocum does not explicitly teach wherein the suspended aluminum particles are produced by wet-ball milling aluminum feedstocks, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Morgan in view of Slocum meets the requirements of the claimed product, Morgan in view of Slocum clearly meets the requirements of the present claim.
Regarding claim 5, as applied to 1, Morgan in view of Slocum further teaches the particle size of the activated aluminum particles may be modulated to tune the reactivity between the aluminum particles and water. In some such embodiments, the particles may have a sufficiently small size of less than or equal to 10 microns (Morgan, [0063]), which encompasses the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6, as applied to 1, Morgan in view of Slocum further teaches in some embodiments, the fluid carrier, such as mineral oil, may be present in any appropriate amount in the aluminum slurry, in some embodiments, the plurality of activated aluminum particles may be present in an amount of greater than or equal to 5 wt% (Morgan, [0024]), and the activated aluminum may comprise greater than or equal to 0.1 wt.% of activating agent (Morgan, [0023]).
Given the density of aluminum (2.7 g/cc according to AMC) and mineral oil (about 0.84 g/ml according to PubChem), it can be estimated that the total volume of activated aluminum could have a volume ratio of greater than or equal to 1.6% (i.e., 5/2.7/(5/2.7+(100-5)/0.84)=1.6%, relative to the total volume of the activated aluminum and mineral oil, which encompasses the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 7-8, as applied to 1, given that Morgan in view of Slocum teaches identical or essentially identical material, i.e., mineral oil, with that of the presently claimed (claim 9), therefore it is clear that the mineral oil of Morgan in view of Slocum would necessarily and inherently meet the claimed limitation of wherein the hydrophobic liquid has a boiling point of at least 60°C and wherein the hydrophobic liquid has a boiling point of at most 100°C.
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). See MPEP 2112.01 (I).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights