DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-24 are rejected.
Claims 25-51 are withdrawn.
Election/Restrictions
Applicant’s election without traverse of Species A, as shown in Figs. 2A-2B, in the reply filed on April 20, 2026, and Group I, claims 1-24, in the reply filed on March 09, 2026, is acknowledged.
Accordingly, claims 25-51 are withdrawn from further consideration because they are drawn to non-elected inventions.
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 1-24 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 recites the limitation "the membrane" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the membrane" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation "the permeate tube" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1, 7-13, 15, 17-21 and 24 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Kaczur et al. (US 2013/0180863) [hereinafter Kaczur].
With respect to claim 1, Kaczur discloses an electrolyzer system 100, as shown in Fig. 1, having: a membrane 112 having at least one anode electrode 114 and at least one cathode electrode 118, each is in communication with said membrane 112, as shown in Fig. 1; said membrane 112 is adapted for electrolysis of at least a portion of water to simultaneously at least partially generate hydrogen therefrom (see paragraph 0038); wherein at least electrode selected from a group consisting of at least one anode electrode, at least one cathode electrode and any combination thereof also functions as at least one spacer selected from a group consisting of permeate spacer, feed spacer and any combination thereof (see paragraphs 0044, 0091, and 0093-0096).
With respect to claim 7, Kaczur discloses wherein said membrane 112 configured for filtration of water when a pressure difference is provided across said membrane 112, (see paragraphs 0062, 0078 and 0083).
With respect to claim 8, Kaczur discloses wherein said membrane 112, is configured for osmotic and/or gauge pressure driven filtration of water (see paragraphs 0062, 0078 and 0083).
With respect to claim 9, Kaczur discloses wherein said membrane 112, is selectively permeable membrane configured to at least partially purify feed water when a pressure difference is provided across said membrane 112 (see paragraphs 0062, 0078 and 0083).
With respect to claim 10, Kaczur discloses wherein at least one selected from a group consisting of said at least one anode electrode 114, said at least one cathode electrode 118 and any combination thereof is made of at least one material selected from titanium, carbon fiber, carbon cloth, graphene and any combination thereof (see paragraph 0088).
With respect to claim 11, Kaczur discloses wherein at least one selected from a group consisting of said at least one anode electrode, said at least one cathode electrode and any combination thereof is at least partially coated or at least partially cladded with at least one catalyst (see paragraph 0036).
With respect to claim 12, Kaczur discloses wherein said catalyst is selected from a group consisting of iridium oxide, ruthenium oxide, tantalum oxide, titanium oxide, platinum, and platinum oxide and any combination thereof (see paragraph 0093).
With respect to claim 13, Kaczur discloses wherein at least one selected from a group consisting of said at least one anode electrode, said at least one cathode electrode and any combination thereof is provided in the form of at least one selected from a group consisting of mesh, foil, plate, cloth, fiber, sintered body and any combination thereof (see paragraphs 0036-0037).
With respect to claim 15, Kaczur discloses wherein the membrane element includes at least one selected from a group consisting of feed spacers, permeate spacers and any combination thereof (see paragraph 0044); and the at least one anode electrode 216 and/or the at least one cathode electrode 218 are provided by the feed or permeate spacer or are provided on or adjacent one or other of the feed and/or permeate spacers or are coupled to at least one selected from a group consisting of feed spacers, permeate spacers or are at least partially coated or at least partially cladded on at least one selected from a group consisting of feed spacers, permeate spacers and any combination thereof, as shown in Fig. 2 (see paragraph 0044).
With respect to claim 17, Kaczur discloses wherein at least one electrode 114, 118, is provided in the form of a grid or parallel spaced apart strips, as shown in Fig. 1.
With respect to claim 18, Kaczur discloses wherein at least one electrode 114, 118, is in the form of a full or partial coating or a full or partial cladding of the permeate and/or feed spacer (see paragraph 0036).
With respect to claim 19, Kaczur discloses wherein a catalyst is provided on one or both of the anode electrode and the cathode electrode (see paragraph 0036).
With respect to claim 20, Kaczur discloses collecting means 150 for collecting the dissolved hydrogen and/or free gas hydrogen in the product water or optional reject flow for subsequent extraction by degasification or gas membrane separation (see paragraph 0039), as shown in Figs. 1-3.
With respect to claim 21, Kaczur discloses wherein the water filtration process is selected from the group consisting of reverse osmosis, pressure retarded osmosis (PRO), forward osmosis (FO), ultrafiltration, microfiltration and nanofiltration (see paragraph 0078).
With respect to claim 24, Kaczur discloses wherein at least selected from a group consisting of at least one anode electrode, at least one cathode electrode, said permeate spacer, said feed spacer and any combination thereof is in mechanical communication with the permeate tube (see paragraph 0159).
Claim(s) 1-6, 14 and 23 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by de Nora (US 4,792,388).
With respect to claim 1, de Nora discloses an electrolyte cell, as shown in Fig. 4, having: a membrane 5 having at least one anode electrode 7 and at least one cathode electrode 14, each is in communication with said membrane 5, as shown in Fig. 4; said membrane 5 is adapted for electrolysis of at least a portion of water to simultaneously at least partially generate hydrogen therefrom, as shown in Fig. 8; wherein at least electrode selected from a group consisting of at least one anode electrode, at least one cathode electrode and any combination thereof also functions as at least one spacer selected from a group consisting of permeate spacer, feed spacer and any combination thereof, as shown in Figs. 4-5.
With respect to claim 2, de Nora discloses an electrolyte cell, as shown in Fig. 4, having: a membrane 5 having at least one anode electrode 7 and at least one cathode electrode 14, each is in communication with said membrane 5, as shown in Fig. 4; said membrane 5 is adapted for electrolysis of at least a portion of water to simultaneously at least partially generate hydrogen therefrom, as shown in Fig. 8; wherein said at least electrode selected from a group consisting of at least one anode electrode, at least one cathode electrode and any combination thereof at least partially comprises a predetermined pattern 13, 13a, 13b, as shown in Figs. 4-7.
With respect to claim 3, de Nora discloses wherein said predetermined pattern 13b is corrugated in at least one direction, as shown in Fig. 7.
With respect to claim 4, de Nora discloses wherein at least electrode selected from a group consisting of at least one anode electrode 7, at least one cathode electrode 14 and any combination thereof functions as at least one spacer selected from a group consisting of permeate spacer, feed spacer and any combination thereof, as shown in Figs. 4-5.
With respect to claim 5, de Nora discloses wherein said at least electrode selected from a group consisting of at least one anode electrode, at least one cathode electrode and any combination thereof at least partially comprises a predetermined pattern 13, 13a, 13b, as shown in Figs. 4-7.
With respect to claim 6, de Nora discloses wherein said predetermined pattern 13b is corrugated in at least one direction, as shown in Fig. 7.
With respect to claim 14, de Nora discloses wherein the membrane 5 comprises a salt rejection layer (see col. 9, lines 67-68 and col. 10, lines 1-6, membrane is for sodium chloride brine) and a support layer 3, 10, 8, the at least one anode electrode 7 and/or at least one cathode electrode 14 comprising the salt rejection layer and/or being provided in, on or between one or both the salt rejection and support layers, as shown in Fig. 5.
With respect to claim 23, de Nora discloses wherein said water is selected from a group consisting of sea water, brackish water, wastewater, fresh water and any combination thereof (see col. 8, lines 52-63).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 16 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kaczur (US 2013/0180863) in view of Small et al. (US 2020/0189942) [hereinafter Small].
With respect to claim 16, Kaczur lacks wherein at least one electrode is formed from graphene.
Small teaches an alternating current electrodialysis cell, as shown in Fig. 2. Small teaches the use of electrodes and that typical high surface area materials for the electrodes include porous carbon, carbon nanoparticles, carbon nanotubes, graphene (see paragraph 0016). It would have been obvious to one of ordinary skill in the art to provide at least one electrode disclosed by Kaczur made of graphene, as taught by Small, since graphene is a desirable high surface material used for electrodes (see paragraph 0016).
Claim(s) 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kaczur (US 2013/0180863).
With respect to claim 22, Kaczur teaches wherein a low current density is applied across the electrodes (see paragraph 0061) to enable electrochemical splitting of the water to occur (see paragraph 0075). Kaczur lacks the specific current density, i.e., wherein a low current density below 100 mA/cm.sup.2 is applied across the electrodes to enable electrochemical splitting of the water to occur, preferably being below 10 mA/cm.sup.2; especially below 5 mA/cm.sup.2, ideally below 1 mA/cm.sup.2. However, Kaczur teaches that “the electrolyzer 102 may be operated at full rate during operation, or temporarily operated at a lower current density with or without any carbon dioxide addition during the injection of the metal salts. The conditions under which to renew the cathode surface with the addition of these salts may differ depending on desired renewal results” (see paragraph 0061). It would have been obvious to provide the electrodes disclosed by Kaczur with the specific current density claimed by applicant, since one of ordinary skill in the art would recognize to choose a desired current value according to a desired result (see paragraph 0061).
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 1 and 7-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/558,023 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims the claimed subject matter.
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 MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
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