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 .
Election/Restrictions
Applicant's election without traverse of Species B in the reply filed on 01 July 2026 is acknowledged.
Claims 7, 10, and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected as being drawn to a nonelected invention, there being no allowable or linking claim, there being no allowable generic or linking claim. Claim 7 is directed to non-elected Species A, and claims 10 – 11 are directed to non-elected Species C. Election was made without traverse in the reply filed on 01 July 2026.
During a telephone conversation with Mark Dodd on 23 July 2026, a provisional election was made without traverse to prosecute the invention of Species D, claim 13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14 and 15 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claim 14 is directed to non-elected Species E and claim 15 is directed to non-elected Species F.
Claims 1 – 6, 8 – 9, 12 – 13, and 16 have been fully considered in examination.
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.
Claim 6 is 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 6 recites the limitation “an elevated temperature” in line 2. The term “elevated” is a relative term which renders the claim indefinite. It is unclear what “elevated” is intended to convey in the phrase “elevated temperature.” The phrase “elevated temperature” 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.
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 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kong, et. al. 2021 (Superconductivity up to 243 K in the Yttrium-Hydrogen System under High Pressure. Nature Communications 2021, 12, 5075), referred to as Kong from herein, in view of Riktor, et. al. 2009 (Hydride Formation in Ball-Milled and Cryomilled Mg-Fe Powder Mixtures. Materials Science and Engineering B 2009, 158, 19 – 25), referred to as Riktor from herein.
Regarding claim 1, Kong teaches a method of preparing a supervalent metal hydride (Abstract describes synthesizing yttrium hydrides, including YH6 and YH9) comprising providing a metal and applying a pressure to the metal in the presence of a source of hydrogen to sufficient to form a supervalent metal hydride (Section titled “Preparation of samples” on Page 7 describes yttrium hydrides synthesized in situ in a diamond anvil cell involving a direct reaction between yttrium metal and hydrogen gas at ~250 GPa).
Kong does not teach providing a metal powder nor cryomilling the metal powder for a milling time to provide a cryomilled metal precursor.
Riktor teaches providing a metal powder (Page 19 describes comparing cryomilling and ball-milling magnesium and iron powder mixtures) and cryomilling the metal powder for a milling time (Section titled “Experimental” on Pages 19 – 20 describe cryomilling the powder for 6 hours). Riktor discloses that powders that were cryomilled show improved hydrogen absorption kinetics over powders that were ball-milled (Fig. 11 shows the cryomilled data exhibiting a steeper growth at earlier times than the ball-milled data; Page 24 specifically states that the results from Fig. 11 indicate “improved kinetic for the cryomilled powders”).
Kong and Riktor are analogous to the present invention as both are in the field of preparing metal hydrides where Kong also prepares supervalent metal hydrides.
It would be obvious for one of ordinary skill in the art before the effective filing date to modify the method of Kong with the teachings of Riktor. The use of known techniques to improve similar methods in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See § MPEP 2143 I.C While Riktor teaches preparing mixed-metal hydrides and not specifically supervalent metal hydrides, one of ordinary skill in the art would still reasonably expect successful results if the metal in Kong was substituted by a powder and if the method in Kong included cryomilling the metal powder to improve the hydrogen absorption kinetics as taught by Riktor. One of ordinary skill in the art would have a reasonable expectation of success as demonstrated by Riktor.
Regarding claim 2, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Riktor further teaches a milling time of 6 hours, or 360 minutes (Section titled “Experimental” on Pages 19 – 20 describe cryomilling the powder for 6 hours).
Regarding claim 3, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches the pressure applied is greater than 100 MPa (Section titled “Preparation of samples” on Page 7 describes pressures up to ~250 GPa using hydrogen gas and 250 – 410 GPa when using ammonia borane).
Regarding claim 4, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches the pressure is greater than 10 GPa (Section titled “Preparation of samples” on Page 7 describes pressures up to ~250 GPa using hydrogen gas and 250 – 410 GPa when using ammonia borane).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kong, in view of Riktor as applied in claim 1, and in further view of Salke, et. al. 2019 (Synthesis of Clathrate Cerium Superhydride CeH9 at 80 – 100 GPa with Atomic Hydrogen Sublattice. Nature Communications 2019, 10, 4453), referred to as Salke from herein.
Regarding claim 5, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Salke teaches the pressure applied is less than 100 GPa (Section titled “Experimental details” on Page 8 describes a set of discrete pressures, which includes 33, 60, 80, 89, and 98 GPa, used in the high-pressure-temperature experiments). Salke further teaches that diamond anvil cell experiments may be challenging to perform at high pressures as these pressures may lead to diamond failure (see first paragraph on Page 2).
Salke is analogous to the present invention as both are in the same field of preparing supervalent metal hydrides.
It would be obvious for one of ordinary skill in the art before the effective date to modify the method of Kong in view of Riktor with the pressures taught by Salke to employ lower pressures that are closer to standard pressure and temperature conditions and to prevent any mishaps, such as diamond failure, when using equipment such as a diamond anvil cell. One of ordinary skill in the art would have a reasonable expectation of success as demonstrated by Salke.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kong, in view of Riktor as applied in claim 1.
Regarding claim 6, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches exposing the metal precursor to an elevated temperature in the presence of the source of hydrogen (Section titled “Preparation of samples” on Page 7 describes laser heating the sample with a pulsed YAG laser wherein the elevated temperatures may accelerate the diffusion of hydrogen into the metal)
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kong, in view of Riktor as applied in claim 1, and in further view of Nylén, et. al. 2009 (Thermal Decomposition of Ammonia Borane at High Pressures, J. Chem. Phys. 2009, 131, 104506), referred to as Nylén from herein.
Regarding claim 8, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches using ammonia borane in place of hydrogen gas as the hydrogen storage material (Section titled “Preparation of samples” on Page 7 describes using ammonia borane, or NH3BH3, in place of hydrogen gas).
However, Kong does not specify what phase ammonia borane is.
Nylén teaches the decomposition of ammonia borane at high pressures and specifically mentions that ammonia borane is a white, crystalline solid (see the second paragraph of the Section titled “Introduction” on Page 1).
Nylén is analogous to the present invention because they teach how a solid-phase hydrogen source decomposes to gaseous hydrogen at high temperatures, which influences the method of the present invention.
It would be obvious for one of ordinary skill in the art to modify the method of Kong in view of Riktor with the teachings of Nylén. One of ordinary skill in the art before the effective filing date would recognize that the ammonia borane used in the method of Kong in view of Riktor is a solid-phase hydrogen storage source as taught by Nylén.
Regarding claim 9, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong in view of Riktor and in further view of Nylén teaches the source of hydrogen comprises of a solid-phase hydrogen storage material according to claim 8. Kong further teaches the hydrogen storage material comprising of ammonia borane (Section titled “Preparation of samples” on Page 7 describes using ammonia borane, or NH3BH3, in place of hydrogen gas)
Claims 12 – 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kong, in view of Riktor as applied in claim 1.
Regarding claim 12, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches the metal precursor comprises of a rare-earth metal (Abstract describes synthesizing yttrium hydrides where yttrium is considered to be a rare-earth metal).
Regarding claim 13, Kong in view of Riktor teaches a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches the metal precursor comprises of a rare-earth metal according to claim 12. Kong further teaches the rare-earth metal comprises of yttrium (Abstract describes synthesizing yttrium hydrides).
Regarding claim 16, Kong in view of Riktor teach a method for preparation of a supervalent metal hydride according to claim 1, and Kong further teaches the pressure is applied by a diamond anvil cell (see Sections titled “Diamond anvil cell” and “Preparation of samples” on Page 7)
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Drozdov, et. al. 2019 (Superconductivity at 250 K in Lanthanum Hydride Under High Pressures. Nature 2019, 569, 528 – 531; Methods and Extended Data included in Office Action) prepares lanthanum hydride under high pressures.
Rönnebro, 2010 (High-pressure Techniques for Discovering and Re-Hydrogenation of Metal Hydride Materials. Journal of Physics and Chemistry of Solids 2010, 71, 1154 – 1158) reviews studies on using high-pressure techniques to synthesize hydrogen storage materials, including transition metal hydrides.
Weidenthaler, et. al. 2009 (Complex Rare-Earth Aluminum Hydrides: Mechanochemical Preparation, Crystal Structure and Potential for Hydrogen Storage. JACS 2009, 131, 16735 – 16743) teaches preparing rare-earth aluminum hydrides.
Hauback, et. al. 2007 (WO 2007/133092 A1), referred to as Hauback from herein teaches a method for preparing an aluminum hydride which includes cryomilling a metal powder. Hauback further teaches that cooler temperatures during milling may prevent dehydrogenation of the formed metal hydride.
Conclusion
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/V.F.C./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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