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 .
Information Disclosure Statement
The information disclosure statements filed 11/21/23 and 9/29/25 have been considered by the examiner.
Claim Objections
Claim 4 objected to because of the following informalities: in the third line, the limitation “component separator …” should be “a component separator …”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: in the third line, the limitation “cooler cooling …” should be “a cooler cooling …”. Appropriate correction is required.
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vik et al. (US 2011/0244341).
Regarding claim 1, Vik teaches a fuel cell power generation system comprising:
a fuel cell (23) generating electric power from hydrogen (abstract);
a condenser (22) extracting hydrogen from the anode outlet (4) of the fuel cell ([0028], [0030], [0075]) (the examiner notes that Vik does not explicitly teach steam discharged from the fuel cell; however, since the fuel cell of Vik is a solid oxide fuel cell per [0049] and [0065], the skilled artisan will easily understand that the discharge of the fuel cell inherently includes steam; see MPEP 2112); and
a hydrogen supply route, or de-watered gas outlet (6) and inlet (3), configured to supply extracted hydrogen to the fuel cell (23) (abstract, Figure 1).
Regarding claim 4, Vik further teaches a component separator, or separation unit (21), for separating hydrogen and carbon dioxide from a gas, which the examiner finds meets the limitation to “liquid gas”, to supply hydrogen to the fuel cell (Figure 1, [0023]-[0024]).
Regarding claim 5, the component separator (21) of Vik includes a reforming reactor, or reformer, and a mixed gas separator, or separation unit, for separating hydrogen and carbon dioxide from the reformer (Figure 1, [0022]-[0029]).
As for claim 6, Vik teaches that the reforming reactor reaction uses steam, i.e. heated water, discharged from the fuel cell ([0050]).
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.
Claims 2 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Vik as applied to claims 1 and 4-5 above, and further in view of Weingaertner et al. (US 2020/0328445).
The teachings of Vik as discussed above are incorporated herein.
Regarding claim 2, Vik teaches the fuel cell power generation system of claim 1 but fails to teach a separator removing impurities from a gas extracted by the condenser.
Weingaertner teaches a fuel cell power generation system comprising a fuel cell (101), wherein a condenser, or heat exchanger (121), is provided to cool, i.e. condense steam, the discharge of the fuel cell (Fig. 3). Weingaertner further teaches a separator, or hydrogen pump separator (350B), provided in the fuel exhaust conduit (312) to remove impurities other than hydrogen in order to provide sufficiently pure hydrogen from the fuel exhaust ([0059], [0061], [0065]).
It would have been obvious to the skilled artisan at the time of the invention to provide a separator such as suggested by Weingaertner in the system of Vik in order to provide sufficiently pure hydrogen from the fuel exhaust.
As for claims 7-8, Vik teaches the system of claim 5, including general heat transfer within the system to improve efficiency ([0051]-[0053]), but fails to teach a cooler as claimed.
Weingaertner teaches a recuperative heat exchanger (121) for cooling gas provided to the reformer (123) using hydrogen from the reformer (the hydrogen that is included in the fuel exhaust is necessarily separated by the reforming reactor) (Figure 3). Weingaertner further teaches that the heat exchanger (121) prevents damage to components in the system by maintaining appropriate temperatures in the system ([0019]).
It would have been obvious to include a cooler to cool using streams within the system of Vik such as suggested by Weingaertner in order to prevent damage to components.
As for claim 9, Weingaertner teaches that heat exchangers in the system may be further used to preheat air ([0021]). It would have been obvious to arrange the heat exchangers, or coolers, of Vik in view of Weingaertner in order to cross the air supply path, i.e. “air taken in the fuel cell”, in order to further preheat the air, thereby heating the air to the appropriate temperature for reaction in the fuel cell. It has been held that rearrangement of parts is within the ordinary level of skill in the art. MPEP 2144.04 VI C
As for claims 10-11, Vik teaches separation of carbon dioxide for storage ([0078]), but fails to teach a storage tank and liquefaction unit.
Weingaertner teaches that carbon dioxide separated from the fuel cell exhaust can be processed and stored as liquid in a storage tank (340), whereinafter it can be used for chemical processes, beverage carbonation, etc. ([Figure 3, [0061]-[0062]). The skilled artisan will understand that, in order to store the carbon dioxide as liquid, Weingaertner inherently teaches a liquefaction unit.
It would have been obvious to the skilled artisan to include a storage tank and liquefaction unit in the system of Vik as suggested by Weingaertner in order to store pure carbon dioxide for later use, thereby reducing the overall waste of the system.
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 1-3 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3 and 6 of copending Application No. 18/785,038 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons provided below.
Claims 1-3 are anticipated by claims 1-3 of ‘038.
Claims 10 and 11 are anticipated by claim 6 of ‘038.
See annotated claims below:
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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 ALIX ECHELMEYER EGGERDING whose telephone number is (571)272-1101. The examiner can normally be reached 8:30am - 4:30pm.
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/ALIX E EGGERDING/ Primary Examiner, Art Unit 1729
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