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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/28/2025 has been entered.
Product-By-Process Claims
Even 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 (see MPEP § 2113; [R-08.2012]).
Furthermore, the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product (see MPEP § 2113; [R-08.2012]).
Claim 9 includes the process limitations “the oxide affinity barrier is formed in situ by operating the engine under a motive gas mixture comprising hydrogen and less than 2% by volume carbon dioxide while applying an electric current through the engine block and a magnetic field parallel to said current, thereby promoting alignment of octahedral Fe3O4 crystals and reducing interstitial gaps in the barrier” and is therefore, a product by process claim. Applicant’s disclosure does not appear to support or indicate the presence of distinctive structural characteristics in the final product imparted by the process limitations.
Claim 10 includes the process limitations “the magnetite oxide affinity barrier comprises ferrimagnetic Fe3O4 crystals aligned along applied magnetic field lines during barrier formation” and is therefore, a product by process claim. Applicant’s disclosure does not appear to support or indicate the presence of distinctive structural characteristics in the final product imparted by the process limitations.
Claim 11 includes the process limitations “the oxide affinity barrier is formed by operating the engine in a sustained Stirling cycle for at least 100 continuous hours at an operating temperature of at least 850 °C while under hydrogen motive gas pressure” and is therefore, a product by process claim. Applicant’s disclosure does not appear to support or indicate the presence of distinctive structural characteristics in the final product imparted by the process limitations.
Claims 9-11 are rejected below.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-3, 8, 10, and 12 are objected to because of the following informalities:
Regarding Claim 1
Lines 4-5 recite the language “said motive gas”. For consistency and clarity within the claims, the claim language should be amended such that it reads –said hydrogen-containing motive gas—
Regarding Claim 2
Line 1 recites the language “the affinity barrier”. For consistency and clarity within the claims, the claim language should be amended such that it reads –the oxide affinity barrier—
Regarding Claim 3
Line 1 recites the language “said motive gas”. For consistency and clarity within the claims, the claim language should be amended such that it reads –said hydrogen-containing motive gas—
Regarding Claim 8
Line 1 recites the language “the affinity barrier”. For consistency and clarity within the claims, the claim language should be amended such that it reads –the oxide affinity barrier—
Regarding Claim 10
Line 3 recites the language “barrier formation”. For consistency and clarity within the claims, the claim language should be amended such that it reads –of the magnetite oxide affinity barrier—
Regarding Claim 12
Line 1 recites the language “the motive gas”. For consistency and clarity within the claims, the claim language should be amended such that it reads –the hydrogen-containing motive gas—
Appropriate correction is required.
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.
Claim(s) 1, 3-5, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660.
Regarding Claim 1
Bliesner discloses a Stirling engine (Bliesner, Abstract), comprising: an engine block; and a gas circuit defined in said engine block and having a hydrogen-containing motive gas disposed therein, said gas circuit having a surface which is exposed to said motive gas (Bliesner, Abstract).
However, Bliesner does not disclose that the gas circuit comprises a steel alloy with an oxide affinity barrier disposed thereon.
Kinnally teaches a hydrogen conduit for conveying hydrogen in a Stirling engine under conditions of high temperature and high pressure (Kinnally, [0015]), wherein the hydrogen conduit comprises a steel alloy (Kinnally, [0016]) with an oxide affinity barrier [under BRI: alumina is an oxide affinity barrier as it is inherent for alumina to have a high oxide affinity for oxygen] (Kinnally, [0017]-[0018]) disposed thereon to resist hydrogen permeation (Kinnally, Abstract, [0004]-[0005]) [aluminum oxide provides resistance to hydrogen permeation (Kinnally, [0024])].
One having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bliesner such that the gas circuit comprises a steel alloy with an oxide affinity barrier disposed thereon as is taught by Kinnally as well known in the art in order to resist hydrogen permeation.
Regarding Claim 3
Bliesner and Kinnally teach the system as rejected in Claim 1 above. Bliesner further teaches that the motive gas comprises hydrogen (Bliesner, Column 6, Lines 55-67).
Regarding Claim 4
Bliesner and Kinnally teach the system as rejected in Claim 1 above. Bliesner further teaches that the Stirling engine creates a maintained Stirling cycle, and wherein the operating temperature of the sustained Stirling Cycle is at least 600 degrees C (Bliesner, Column 1, Lines 46-54).
Regarding Claim 5
Bliesner and Kinnally teach the system as rejected in Claim 1 above. Bliesner further teaches that the Stirling engine creates a maintained Stirling cycle, and wherein the operating temperature of the sustained Stirling Cycle is at least 700 degrees C (Bliesner, Column 1, Lines 46-54).
Regarding Claim 9
Bliesner and Kinnally teach the system as rejected in Claim 1 above. While Bliesner and Kinnally do not explicitly disclose that the oxide affinity barrier is formed in situ by operating the engine under a motive gas mixture comprising hydrogen and less than 2% by volume carbon dioxide while applying an electric current through the engine block and a magnetic field parallel to said current, thereby promoting alignment of octahedral Fe3O4 crystals and reducing interstitial gaps in the barrier, this claim is a product-by-process claim, and therefore the process by which the oxide affinity barrier is formed is not considered to involve an inventive step that provides an unobvious difference between the claimed product and the prior art product.
Regarding Claim 11
Bliesner and Kinnally teach the system as rejected in Claim 1 above. While Bliesner and Kinnally do not explicitly disclose that the oxide affinity barrier is formed by operating the engine in a sustained Stirling cycle for at least 100 continuous hours at an operating temperature of at least 850 °C while under hydrogen motive gas pressure, this claim is a product-by-process claim, and therefore the process by which the oxide affinity barrier is formed is not considered to involve an inventive step that provides an unobvious difference between the claimed product and the prior art product.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660, and further in view of Hinderks, US 2012/0227389.
Regarding Claim 2
Bliesner and Kinnally teach the system as rejected in Claim 1 above. However, Bliesner and Kinnally do not teach that the affinity barrier comprises magnetite.
Hinderks teaches the use of materials suitable for the high temperature requirements of internal combustion engines (Stirling engines) (Hinderks, [0415]). Hinderks teaches the use of materials such as alumina, magnetite, etc. (Hinderks, [0415]).
Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bliesner/Kinnally such that affinity barrier comprises magnetite instead of alumina. Therefore, it would have been obvious to substitute one ferromagnetic material for another.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660, in view of Hinderks, US 2012/0227389, and further in view of Graves, US 2024/0010811.
Regarding Claim 10
Bliesner, Kinnally, and Hinderks teach the system as rejected in Claim 2 above. Hinderks teaches that the magnetite oxide affinity barrier comprises aligned ferrimagnetic Fe304 crystals (Hinderks, [0415]).
However, Bliesner, Kinnally, and Hinderks do not explicitly disclose that the ferrimagnetic Fe3O4 crystals are aligned along applied magnetic field lines during barrier formation. Graves teaches that during a magnetite layer formation, ferrimagnetic Fe3O4 crystals [a person of ordinary skill in the art would recognize magnetite nanoparticles as ferrimagnetic Fe3O4 crystals] are aligned along applied magnetic field lines (Graves, [0046]).
Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bliesner/Kinnally/Hinderks such that the ferrimagnetic Fe3O4 crystals are aligned along applied magnetic field lines during barrier formation. It would have been obvious to substitute one means of ferrimagnetic Fe3O4 layer formation for another.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kemper, CA 2642590 A1, as evidenced by Goj, US 2009/0194043, and further in view of Kinnally et al., US 2006/0037660.
Regarding Claim 1
Kemper discloses a Stirling engine (Kemper, Claim 21), comprising a hydrogen-containing motive gas disposed therein (Kemper, Page 1, Lines 18-26, Abstract). Kemper further teaches that the Stirling engine creates a maintained Stirling cycle, and wherein the operating temperature of the sustained Stirling Cycle is at least 850 degrees C [900 degrees C is at least 850 degrees C] (Kemper, Page 1, Lines 18-26). While Kemper does not explicitly disclose that the Stirling engine comprises an engine block and a gas circuit defined in the engine block, a person of ordinary skill in the art would find it inherent that a Stirling Engine comprising an engine block and a gas circuit defined in said engine block as Goj teaches an engine in which hydrogen conduits (38) are channeled through passages in the engine block (not shown) to transfer heat between the engine block and hydrogen travelling along the passages (Goj, [0098]).
However, Kemper/Goj does not disclose that the gas circuit comprises a steel alloy with an oxide affinity barrier disposed thereon.
Kinnally teaches a hydrogen conduit for conveying hydrogen in a Stirling engine under conditions of high temperature and high pressure (Kinnally, [0015]), wherein the hydrogen conduit comprises a steel alloy (Kinnally, [0016]) with an oxide affinity barrier [under BRI: alumina is an oxide affinity barrier as it is inherent for alumina to have a high oxide affinity for oxygen] (Kinnally, [0017]-[0018]) disposed thereon to resist hydrogen permeation (Kinnally, Abstract, [0004]-[0005]) [aluminum oxide provides resistance to hydrogen permeation (Kinnally, [0024])].
One having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kemper/Goj such that the gas circuit comprises a steel alloy with an oxide affinity barrier disposed thereon as is taught by Kinnally as well known in the art in order to resist hydrogen permeation.
Regarding Claim 6
Kemper, Goj, and Kinnally teach the system as rejected in Claim 2 above. Kemper further discloses that the Stirling engine creates a maintained Stirling Cycle, and wherein an operating temperature of the sustained Stirling cycle is at least 850 degrees C [900 degrees C is at least 850 degrees C] (Kemper, Page 1, Lines 18-26).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660, and further in view of Creasey, CN 110291351 A1.
Regarding Claim 7
Bliesner and Kinnally teach the system as rejected in Claim 1 above. However, Bliesner and Kinnally do not teach that the Stirling cycle lasts for at least 100 hours.
Creasey teaches that a Stirling cycle operation can be operated for 2 hours to as long as several weeks (Creasey, Translation, Page 9, Paragraph 2).
Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bliesner/Kinnally such that the Stirling cycle lasts for at least 100 hours as is taught by Cn as being well known in the art to operate Stirling engines for a time of that length.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660, and further in view of Li et al., US 2023/0243040.
Regarding Claim 8
Bliesner and Kinnally teach the system as rejected in Claim 1 above. Bliesner and Kinnally further teach providing an affinity barrier in order to resist hydrogen permeation and hydrogen embrittlement (Kinnally, Abstract, [0004]). However, Bliesner and Kinnally do not explicitly disclose that the affinity barrier chemically interacts with hydrogen to trap hydrogen on the surface thereof.
Li teaches regulating hydrogen permeability of a substrate by providing a coating that contains a layer to trap hydrogen molecules in order to prevent permeation of the molecules through the layer that may suffer from hydrogen embrittlement (Li, [0015] and [0031]).
Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the affinity barrier of Bliesner/Kinnally interacts with hydrogen to trap hydrogen on the surface thereof in order to prevent permeation of the molecules and resist hydrogen embrittlement.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliesner, US 6,263,671, in view of Kinnally et al., US 2006/0037660, and further in view of Alger, US 4,651,527.
Regarding Claim 12
Bliesner and Kinnally teach the system as rejected in Claim 1 above. However, Bliesner and Kinnally do not explicitly disclose that the motive gas comprises hydrogen doped with less than 2% by volume carbon dioxide to supply oxygen for formation of the oxide affinity barrier.
Alger teaches a Stirling engine system in which the working gas is hydrogen and a dopant gas includes an oxide which reacts with surface of the Stirling engine to slow the rate of working gas permeation therethrough (Alger, Claim 2). Alger further teaches that the motive gas comprises hydrogen doped with less than 2% by volume carbon dioxide (Under BRI: 0% by volume carbon dioxide is less than 2% by volume carbon dioxide. The Examiner is interpreting the dopant as carbon monoxide, and therefore 0% carbon dioxide (less than 2% by volume carbon dioxide), Column 1, Lines 30-51 and Column 5, Lines 46-53) to supply oxygen for formation of the oxide affinity barrier (activated alumina) (Alger, Column 2, Lines 20-30).
Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the motive gas of Bliesner/Kinnally to include hydrogen doped with less than 2% by volume carbon dioxide to supply oxygen for formation of the oxide affinity barrier in order to prevent permeation of the molecules and resist hydrogen embrittlement.
Response to Arguments
Upon further consideration of claims 1-12, objections are made to the Drawings and claims 1-3, 8, and 12.
Applicant's arguments, with respect to the rejection of claims 1 and 3-5 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Regarding Claim 1, the Applicant argues that while Kinnally may disclose a “barrier”, it does not disclose an oxide affinity barrier as claimed, and therefore Kinnally does not disclose an oxide affinity barrier as employed in the present application.
The Examiner is unconvinced. It is noted that the features upon which applicant relies (i.e., an affinity barrier with which hydrogen chemically interacts) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 does not claim any relationship between the hydrogen-containing motive gas and the oxide affinity barrier. Therefore, it is irrelevant whether Kinnally discloses such a relationship. Additionally, alumina as claimed by Kinnally is known in the art to have a high oxide affinity for oxygen. Therefore, alumina is an oxide affinity barrier. Claims 1 and 3-5 remain rejected under 35 U.S.C. 103.
Applicant's arguments, with respect to the rejection of claims 2 under 35 U.S.C. 103 have been fully considered. A new rejection has been made.
However, it is noted that the features upon which applicant relies (i.e., magnetite’s use for hydrogen permeation or embrittlement) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 2 does not claim any relationship between the oxide affinity barrier and hydrogen permeation/embrittlement/trapping. Therefore, it is irrelevant whether Bliesner/Kinnally/Avalos discloses such a relationship.
Applicant's arguments, with respect to the rejection of claims 4-6 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
The Applicant argues that Yamaguro does not remedy the deficiencies noted above and does not render obvious the Applicant’s specific solution to hydrogen permeation and embrittlement. The Examiner is unconvinced. The Applicant’s specific solution to hydrogen permeation and embrittlement is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claims 4-6 remain rejected under 35 U.S.C. 103.
Applicant's arguments, with respect to the rejection of claim 7 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
The Applicant argues that Creasey does not remedy the deficiencies noted above and does not render obvious the Applicant’s specific solution to hydrogen permeation and embrittlement. The Examiner is unconvinced. The Applicant’s specific solution to hydrogen permeation and embrittlement is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 7 remains rejected under 35 U.S.C. 103.
Applicant's arguments, with respect to the rejection of claim 8 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
The Applicant argues that the functional requirement of Claim 8 distinguishes over the art as no reference of record discloses or suggests an oxide barrier that chemically interacts with hydrogen “to trap hydrogen on the surface thereof”. The Examiner is unconvinced. Li teaches regulating hydrogen permeability of a substrate by providing a coating that contains a layer to trap hydrogen molecules in order to prevent permeation of the molecules through the layer that may suffer from hydrogen embrittlement (Li, [0015] and [0031]). Claim 8 remains rejected under 35 U.S.C. 103.
Applicant’s arguments, with respect to the legal standard (page 8), have been fully considered but they are not persuasive.
The Applicant argues that nothing suggests substituting magnetite (Avalos) for alumina (Kinnally), and nothing suggests modifying Bliesner’s Stirling engine with such substitution [Rejection of Claim 2]. The Examiner is unconvinced. Kinnally teaches that the affinity barrier comprises a ferromagnetic element (Kinnally, [0017]-[0018]). Avalos teaches the use of ferromagnetic constituents/materials such as magnetite in a combustion engine (Avalos, Abstract). Therefore, one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bliesner/Kinnally such that affinity barrier comprises magnetite as Avalos teaches that magnetite is well known in the art as a ferromagnetic material that is used in combustion engines. Therefore, it would have been obvious to substitute one ferromagnetic material for another.
The Applicant argues that nothing suggests that Avalos’s electromagnetic use of magnetite could be repurposed as a chemical hydrogen affinity barrier. The Examiner is unconvinced. This is not claimed in the previously rejected claims (1-8). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Alger (US 5,413,642) – Forming corrosion and permeation barriers
Ernst (US 4,478,275) – Abrasion resistant heat pipe
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/K.L.S/Examiner, Art Unit 3746 01/16/2026
/MARK A LAURENZI/Supervisory Patent Examiner, Art Unit 3746 1/28/2026