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
Claims 1-2 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/25.
Applicant’s election without traverse of claims 4-23 in the reply filed on 11/21/25 is acknowledged.
Claim Rejections - 35 USC § 112(b)
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 6 and 10 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 6 recites the limitation "the water" in line 2. However, there is insufficient antecedent basis for this limitation in the claim. Specifically, it is noted that an earlier amendment removed water from claim 5, and so it is now unclear whether the “aqueous solution” of claim 5 is being referred to or if some other water source is being set forth.
Please note, for purposes of claim interpretation the examiner will be treating “the water” as referring to the previously set forth aqueous solution of claim 5.
Claim 10 recites the limitation "the concentric tubes" in line 1. However, there is insufficient antecedent basis for this limitation in the claim. Furthermore, it is noted that in line 3, “concentric tubes” are again referenced. It appears that the “the” should be removed from the line 1 recitation and inserted in the line 3 recitation.
Please note, for purposes of claim interpretation the examiner will be treating “the concentric tubes” as further requiring the reaction vessel to contain additional concentric tubes in addition to the electrode previously set forth in claim 4.
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.
Claim(s) 4-7, 10, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2014/0261252 to Kerstiens (hereinafter referred to as “KERSTIENS”) in view of US Pat. No. 4,113,601 to Spirig (hereinafter referred to as “SPIRIG”).
Regarding claims 4 and 7, KERSTIENS teaches a system for generating hydrogen (see KERSTIENS at Abstract, Fig. 1 and ¶4), comprising:
a power source, wherein the power source is electrically connected to the electrodes and is configured to pass a current through the aqueous solution via the electrodes so that at least some molecules within the aqueous solution dissociate into hydrogen and oxygen (see KERSTIENS at Fig. 1 depicting battery 36; see also ¶27 teaching the electrodes having power supplied thereto so as to cause electrolysis to occur);
a generally cylindrical reaction vessel comprising an upstream end and an outer tube serving as electrodes wherein the upstream end serves as the anode and the outer tube serves as the cathode (see KERSTIENS at Fig. 1 depicting gas generator 30; see also Fig. 3 depicting gas generator 30 having cathode tube 116 as the outer shell, anode bar 108 which extends from the upstream end, and electrically conductive tubes 112 which as shown in Fig. 4 are arranged with end caps 104 so as to provide for space for water electrolysis as claimed).
While KERTSTIENS teaches the power source as set forth above, KERSTIENS fails to explicitly teach the power source being: (1) a source of AC electrical energy; and, (2) a power converter in communication with the source of AC energy for converting the alternating current to direct current as claimed. However, SPIRIG teaches a water electrolysis apparatus for dissociating water into hydrogen and oxygen (see SPIRIG at Abstract), in which the electrodes are powered from a public 220V AC supply and then rectified to provide a DC power source (see SPIRIG at col. 4 lines 12-15, 35-38, and claim 8). While KERSTIENS explicitly teaches the use of a vehicle battery (see KERSTIENS at ¶18), KERSTIENS also teaches other embodiments in which other power sources are used and in which the system is paired with a stationary engine (see KERSTIENS at ¶31).
As such, one of ordinary skill in the art would have recognized that in a stationary setup that it would be necessary to be able to power the system using an AC power source. Moreover, it would have been obvious to one of ordinary skill in the art to have configured the system to transform the incoming AC power to DC power necessary to drive the electrolytic reaction.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the starting DC power source of KERSTIENS so as to use generally provided AC power sources as taught by SPIRIG so as to allow the system to be useable with AC power outlets as are typically provided by utility companies.
Regarding claim 5, KERSTIENS in view of SPIRIG teaches the system further comprising a pressure vessel receives influent aqueous solution before delivery to the reaction vessel (see KERSTIENS at Fig. 1 depicting solution reservoir tank 20 and ¶16 and ¶22).
Regarding claim 6, KERSTIENS in view of SPIRIG teaches the system wherein the pressure vessel has a chamber that holds air and hydrogen above the water (see KERSTIENS at Fig. 1 depicting reservoir tank 20 having gas line 51 at the upper part of the vessel and which would necessarily hold the air and hydrogen above due to the density differences between the electrolyte solution and the produced gas from gas generator 30).
Regarding claim 10, KERSTIENS in view of SPIRIG teaches the system wherein concentric tubes define an annular aqueous solution flow path therebetween (see KERSTIENS at Fig. 1 depicting gas generator 30; see also Fig. 3 depicting gas generator 30 having cathode tube 116, anode bar 108, and electrically conductive tubes 112 which as shown in Fig. 4 are arranged with end caps 104 with small holes 130 which define an annular flow path), the aqueous solution flowing around and through the concentric tubes of the reaction vessel along the annular flow path before at least partially re-circulating within the reaction vessel, the aqueous solution flowing from smaller inner tubes to larger outer tubes (see KERSTIENS at Fig. 3 depicting the conductive tubes 112 having small holes 130 so that the annular spaces between adjacent conductive tubes are fluidly connected to allow the aqueous solution to flow as claimed).
Regarding claim 16, KERSTIENS in view of SPIRIG teaches the system wherein the reaction product comprises hydrogen gas (KERSTIENS at ¶15 teaching the gases produced including hydrogen).
Regarding claim 19, KERSTIENS in view of SPIRIG teaches the system wherein the reaction vessel is inclined at an angle relative to a horizontal reference line, where the angle is between 15 degrees and 90 degrees (see KERSTIENS at Fig. 1 depicting gas generator 30 being at approximately 90 degrees relative to the horizontal; see MPEP §2144.05(I)).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over KERSTIENS in view of SPIRIG as applied to claim 4 above, and further in view of JP2003175389A to Shusaku et al., with reference to the provided machine translation (hereinafter referred to as “SHUSAKU”) and KR101750308B1 to Kil et al., with reference to the provided machine translation (hereinafter referred to as “KIL”).
Regarding claim 9, while KERSTIENS in view of SPIRIG teaches the system with the reaction vessel as claimed (see teachings of KERSTIENS set forth in the rejection of claim 4), KERSTIENS as modified by SPIRIG fails to explicitly teach the reaction vessel wherein the outer tube has a wall thickness exceeding that of inner tubes of the reaction vessel as claimed.
However, KIL teaches a hydrogen gas generation system having a reaction vessel with concentrically arranged electrodes (see KIL at Abstract and Fig. 2 and Fig. 3). Moreover, KIL depicts the outer tube having a wall thickness exceeding that of inner tubes of the reaction vessel (see KIL at Fig. 2 depicting inner cell electrodes 24 being thinner than outer tank electrolytic tank 23). Furthermore, SHUSAKU is directed towards another electrolysis device containing concentrically arranged tube electrodes (see SHUSAKU at Abstract and Fig. 4) in which the exterior tube is depicted as having a larger thickness than the interior electrode tubes (see Fig. 4).
As such, one of ordinary skill in the art would have recognized that having the exterior tube having a larger or increased thickness than that of the inner tubes would allow for increased protection of the reaction vessel since the outer tube functions as not only the last electrode (see KIL at Fig. 2 and ¶35) but also as the reactor outer wall (see SHUSAKU at Fig. 4 and ¶7 teaching 201 being a metal container). Consequently, one of ordinary skill in the art would have recognized the benefit and need to have the outer electrode which also acts as the reactor container to be thicker to provide increased protection to the reaction vessel.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the thickness of the outer tubular cathode of KERSTIENS as modified by SPIRIG to be thicker as shown by SHUSAKU and KIL in order to provide increased protection of the reactor vessel thereby arriving at the system as claimed.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over KERSTIENS in view of SPIRIG as applied to claims 4 and 5 above, and further in view of KIL.
Regarding claim 12, while KERSTIENS in view of SPIRIG teaches the system including a pressure system so as to move fluid from the reservoir tank to the gas generator (see KERSTIENS at Fig. 1 depicting air pressure system 16 which includes pressure regulator 60 and solenoid 64; see also ¶14 and ¶22 teaching the air pressure system as exerting pressure on the electrolytic solution within the reservoir tank 20 and thereby to the gas generator through fluid line 28 to move liquids within the system), KERSTIENS as modified by SPIRIG fails to explicitly teach a water pump that lies between the pressure vessel, i.e. the reservoir tank, and the reaction vessel as claimed.
However, KIL teaches the use of a pump between the reservoir tank and the reaction vessel in order to provide the electrolyte to the electrolytic cell for generating the gaseous electrolysis products (see KIL at Abstract and Fig. 1 depicting pump 115 between water tank 119 and electrolytic cells 22 which are fluidly connected via hoses/supply lines as taught in ¶36-¶38).
As such, one of ordinary skill in the art would have recognized that instead of using a vehicle’s high pressure air line for the pressure system of KERSTIENS to move the fluids through the system, that instead a water pump could also be used especially for applications not on a vehicle with an already existing air pressure system. Furthermore, one of ordinary skill in the art would have been aware of the typical way of moving fluids including the use of a pump as taught by KIL.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the air pressure system of KERSTIENS as modified by SPIRIG with the pump of KIL in order to provide an alternative means of moving the fluid electrolyte from the reservoir tank to the electrolysis cells as needed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-7, 10, 12, 16, and 19 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 11-13, 17, and 18 of copending Application No. 19/316,704. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claimed limitations in the present claims listed above are included in the claims of the ‘704 application as listed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4-7, 9, 10, 12, and 16 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 4-6, 9, 10, 16, and 21 of copending Application No. 18/202,150. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claimed limitations in the present claims listed above are included in the claims of the ‘150 application as listed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794