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 .
Response to Amendments
This is a final office action in response to Applicant's arguments and remarks filed on
07/17/2026.
Status of Rejections
The rejections of claims 2 and 4 are obviated by the Applicant’s cancelations.
The rejection of the claims under 35 USC 101 are maintained.
All other previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claims 1, 3, and 5-7 are pending and under consideration for this Office Action.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1: “a first calculating unit that: acquires…”
Claim 1: “a second calculating unit that substitutes…”
Claim 1: “a third calculating unit that calculates…”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification shows that the first, second, third, and fourth calculating units are generic blackbox devices (see e.g. #42, #44, and #46 on Fig 1) that parts/modules of a controller (see e.g. #10 on Fig 1).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 5-7 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to judicial exceptions without significantly more and are not integrated into a practical application The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
MPEP § 2106 describes the two-step analysis of judicial exceptions in claims. “Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception.” Step 2B determines whether additional elements in the claim contribute to an inventive concept.
Claim 1: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “acquires a dataset …” is an observation, which is considered to be a mental process (see MPEP § 2106.04(a)(2) III: “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: • a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind”). Alternatively, the limitations can be considered an insignificant extra solution activity of “Mere data gathering” (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “uses the dataset and a predetermined calculation formula to calculate…” includes mathematical calculations, according to the specification (see [0046]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “that substitutes a predetermined…to calculate…” includes mathematical calculations, according to the specification (see [0039]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “calculates a deterioration degree…” includes mathematical calculations, according to the specification (see [0046]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “instructing operating conditions…” is considered to be an insignificant extra post-solution activity (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “adds an equilibrium potential…an activation overvoltage…and a resistance overvoltage…to calculate a voltage” includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “…calculates a calculated voltage by substituting…” includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 12 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 13 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 14 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
Therefore, the claim contains judicial exceptions and Prong 2 analysis is necessary.
Step 2A Prong 2:
The abstract ideas have not been integrated into a practical application because the calculations are done to determine a deterioration degree but nothing further is done with the calculated deterioration degree other than insignificant extra post-solution activity of “instructs operating conditions…based on the deterioration degree”. This is similar to the alarm in Parker v. Flook and would be considered generally linking the abstract idea to the field of endeavor (“Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application”, See 2106.05(h)).
Step 2B:
The claim further claims two electrodes, a membrane, and “calculating units”, whose structure is described above in the “Claim Interpretation” section. These elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Berriah et al (US 20090014326 A1): This references discloses a basic electrolytic cell common in the art comprising two electrodes and a membrane (see e.g. [0025]),
Tremblay et al (US 20010039481 A1): The references discloses a controller having a number of processing units for collecting and processing data (see e.g. abstract).
Rantala et a (US 20070125641 A1): The references discloses a controller having a number of processing units for collecting and processing data (see e.g. [0017]).
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Claim 6: The claim further limits claim 1 by claiming an electrolysis module. However, these elements are well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Tremblay et al (US 20010039481 A1): The references also discloses a water electrolysis module (see e.g. abstract and [0003]).
Claim 7: The claimed invention is directed to a judicial exception without significantly more.
Step 2A Prong 1:
The limitation claiming “acquiring a dataset …” is an observation, which is considered to be a mental process (see MPEP § 2106.04(a)(2) III: “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: • a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind”). Alternatively, the limitations can be considered an insignificant extra solution activity of “Mere data gathering” (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “using the dataset and a predetermined calculation formula to calculate…” includes mathematical calculations, according to the specification (see [0046]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “substituting a predetermined reaction…to calculate…” includes mathematical calculations, according to the specification (see [0039]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “calculating a deterioration degree…” includes mathematical calculations, according to the specification (see [0046]). Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “instructing operating conditions…” considered to be an insignificant extra post-solution activity (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
The limitation claiming “adds an equilibrium potential…an activation overvoltage…and a resistance overvoltage…to calculate a voltage” includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming “…calculating a calculated voltage by substituting…” includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 12 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 13 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
The limitation claiming formula 14 includes mathematical calculations. Therefore, this limitation would be considered a mathematical concept, which is an abstract idea (see MPEP § 2106.04(a)(2)I).
Therefore, the claim contains judicial exceptions and Prong 2 analysis is necessary.
Step 2A Prong 2:
The abstract ideas have not been integrated into a practical application because the calculations are done to determine a deterioration degree but nothing further is done with the calculated deterioration degree other than insignificant extra post-solution activity of “instructing operating conditions…based on the deterioration degree”. This is similar to the alarm in Parker v. Flook and would be considered generally linking the abstract idea to the field of endeavor (“Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application”, See 2106.05(h)).
Step 2B:
The claim further claims two electrodes, a membrane, “a water electrolysis module”. This element is well understood, routine and conventional across most arts at this point and therefore would not amount to significantly more.
Berriah et al (US 20090014326 A1): This references discloses a basic electrolytic cell common in the art comprising two electrodes and a membrane (see e.g. [0025]),
Tremblay et al (US 20010039481 A1): The references discloses a controller having a number of processing units for collecting and processing data (see e.g. abstract).
Therefore, the claim is rejected for failing to satisfy the requirements of 35 USC 101.
Any claims dependent on the above claims are also rejected for failing to satisfy the requirements of 35 USC 101.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berriah et al (US 20090014326 A1) in view of Tremblay et al (US 20010039481 A1), Liso et al (“Modelling and Experimental Analysis of a Polymer Electrolyte Membrane Water Electrolysis Cell at Different Operating Temperatures”, Energies, 2018, 11, 3273, pages 1-18), and Ono et al (US 11024856 B2).
Claim 1: Berriah discloses a device for supporting deterioration determination (see e.g. abstract), the device comprising:
a first calculating unit (“Data acquisition unit”, see e.g. Fig 2) that: acquires a dataset including a plurality of reaction condition values and a voltage each of which is measured, or derived from a value measured (see e.g. [0037]), in a first period and in a second period after the first period (see e.g. Fig 9) and related an electrolysis module (see e.g. [0029]); and uses the dataset and a predetermined calculation formula to calculate a parameter group (“regression parameters”) of the calculation formula for each period (see e.g. [0068]) ;
a second calculating unit that substitutes a predetermined reaction condition value in the calculation formula in which the parameter group is incorporated to calculate a comparison target value for each period (see e.g. [0038]);
a third calculating unit (“processing module”, see e.g. Fig 2) that calculates a deterioration degree of the electrolysis module (see e.g. [0064]) based on a difference between: a first comparison target value calculated from the calculation formula in which the parameter group in the first period is incorporated; and a second comparison target value calculated from the calculation formula in which the parameter group in the second period is incorporated (see e.g. [0010]; [0049]);
a driving support unit that instructs operating conditions of the water electrolysis module based on the deterioration degree (see e,g. [0050]-[0051], [0060]),
wherein the water electrolysis module has an oxygen generating electrode, a hydrogen generating electrode, and a membrane that separates the oxygen generating electrode and the hydrogen generating electrode (see e.g. [0025]),
wherein the first calculating unit calculates a calculated voltage by substituting the reaction condition value into the calculation formula (see e.g. [0065]-[0066]), corrects at least one coefficient included in the calculation formula so that the calculated voltage is close to the measurement voltage (via regression modeling, see e.g. [0065]-[0066]; [0068]), and calculates the parameter group including the corrected coefficient as a component (see e.g. [0065]-[0066]), and
the second calculating unit substitutes the predetermined reaction condition value into the calculation formula in which the parameter group in the first period is incorporated to calculate a calculated voltage (Vsim1) as the first comparison target value, and substitutes the predetermined reaction condition value into the calculation formula in which the parameter group in the second period is incorporated to calculate a calculated voltage (Vsim2) as the second comparison target value (the voltages are calculated and stored at different times, see e.g. [0038]; [0082]);
Berriah does not explicitly teach that the electrolysis module does a water electrolysis reaction. Berriah instead teaches a chlor-alkali reaction (see e.g. abstract and [0005]). However, the method of Berriah is designed to determine the damage of a cell based on the changes in voltage (see e.g. abstract) due to failing membrane (see e.g. [0008]). Tremblay discloses a method and apparatus for monitoring electrolyser performances and for diagnosing and predictive identification of faults and events likely to affect the manufacturing processes that uses those electrolysers (see e.g. [0001]), making it analogous art (see MPEP § 2141.01(a) I). Tremblay also teaches water electrolysis cells (see e.g. [0003]) are subject to similar situations, such as damaged membranes (see e.g. [0050]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the device of Berriah by applying the detecting methods to a water electrolysis cell to check for damaged membranes and/or failing cell conditions.
Berriah in view of Tremblay does not explicitly teach that the calculation formula adds an equilibrium potential of the water electrolysis reaction, an activation overvoltage of an oxygen generating reaction, and a resistance overvoltage of the membrane to calculate a voltage. However, Berriah teaches generating a model of the cells (see e.g. Fig 3B). Liso provides a detailed analysis for modeling electrolytic cells (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The modeling of Liso “can be implemented in system dynamic modelling for hydrogen production and storage where components dynamic is generally slower compared to the cell electrochemical reactions dynamics” (see e.g. abstract) includes factoring in an equilibrium potential of the water electrolysis reaction (see e.g. page 8, section 4.1), an activation overvoltage of an oxygen generating reaction (see e.g. page 8, section 4.2), and a resistance overvoltage of the membrane to calculate a voltage (see e.g. page 9, section 4.3). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Berriah to use the modeling calculations of Liso because this model can quickly and accurately model the system dynamically.
Berriah does not explicitly teach that the third calculating unit calculates a first deterioration degree (d1) using a formula (12): d1 = (Vsim2-Vsim1)/Vsim1. Ono teaches a device for determining the deterioration of an electrochemical reaction unit cell (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The device of Ono calculates deterioration as d1 = (Vsim2-Vsim1)/Vsim1 (see e.g. col 13, Formula 1). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the device of Berriah to use the formula for deterioration degree taught in Ono because Ono teaches this is a suitable means of determining if an electrochemical reaction unit cell has deteriorated.
Claim 3: Berriah in view of Tremblay, Liso, and Ono teaches that the comparison target value is any of the voltage (see e.g. Berriah – [0010]).
Claim 5: Berriah in view of Tremblay, Liso, and Ono teaches that the first period is a period where the water electrolysis module presumably has not been deteriorated (see e.g. Berriah – [0049]).
Claim 6: Berriah in view of Tremblay, Liso, and Ono teaches a device for water electrolysis (see e.g. (see e.g. Tremblay - [0003]), comprising: a water electrolysis module (see e.g. Tremblay - [0003]); and the device for supporting deterioration determination according to claim 1 (see rejection of claim 1 above).
Claim 7: Berriah discloses a method for supporting deterioration determination (see e.g. abstract), the method comprising:
acquiring a dataset including a plurality of reaction condition values and a measurement voltage each of which is measured or derived from a value measured, in a first period and in a second period after the first period (see e.g. Fig 9);, and related to an electrolysis reaction in a water electrolysis module (see e.g. [0037]);
using the dataset and a predetermined calculation formula to calculate a parameter group (“regression parameters”) of the calculation formula for each period (see e.g. [0068]);
substituting a predetermined reaction condition value in the calculation formula in which the parameter group is incorporated to calculate a comparison target value for each period (see e.g. [0038]); and
calculating a deterioration degree of the electrolysis module (see e.g. [0064]) based on a difference between: a first comparison target value calculated from the calculation formula in which the parameter group in the first period is incorporated; and a second comparison target value calculated from the calculation formula in which the parameter group in the second period is incorporated (see e.g. [0010]; [0049]);
instructing operating conditions of the water electrolysis module based on the deterioration degree (see e,g. [0050]-[0051], [0060]),
wherein the water electrolysis module has an oxygen generating electrode, a hydrogen generating electrode, and a membrane that separates the oxygen generating electrode and the hydrogen generating electrode (see e.g. [0025]),
wherein calculating the parameter group includes calculating a calculated voltage by substituting the reaction condition value into the calculation formula (see e.g. [0065]-[0066]), correcting at least one coefficient included in the calculation formula so that the calculated voltage is close to the measurement voltage (via regression modeling, see e.g. [0065]-[0066]; [0068]), and calculating the parameter group including the corrected coefficient as a component (see e.g. [0065]-[0066]), and
substituting the predetermined reaction condition value into the calculation formula in which the parameter group in the first period is incorporated to calculate a calculated voltage (Vsim1) as the first comparison target value, and substituting the predetermined reaction condition value into the calculation formula in which the parameter group in the second period is incorporated to calculate a calculated voltage (Vsim2) as the second comparison target value (the voltages are calculated and stored at different times, see e.g. [0038]; [0082]);
Berriah does not explicitly teach that the electrolysis module does a water electrolysis reaction. Berriah instead teaches a chlor-alkali reaction (see e.g. abstract and [0005]). However, the method of Berriah is designed to determine the damage of a cell based on the changes in voltage (see e.g. abstract) due to failing membrane (see e.g. [0008]). Tremblay discloses a method and apparatus for monitoring electrolyser performances and for diagnosing and predictive identification of faults and events likely to affect the manufacturing processes that uses those electrolysers (see e.g. [0001]), making it analogous art (see MPEP § 2141.01(a) I). Tremblay also teaches water electrolysis cells (see e.g. [0003]) are subject to similar situations, such as damaged membranes (see e.g. [0050]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Berriah by applying the detecting methods to a water electrolysis cell to check for damaged membranes and/or failing cell conditions.
Berriah in view of Tremblay does not explicitly teach that the calculation formula adds an equilibrium potential of the water electrolysis reaction, an activation overvoltage of an oxygen generating reaction, and a resistance overvoltage of the membrane to calculate a voltage. However, Berriah teaches generating a model of the cells (see e.g. Fig 3B). Liso provides a detailed analysis for modeling electrolytic cells (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The modeling of Liso “can be implemented in system dynamic modelling for hydrogen production and storage where components dynamic is generally slower compared to the cell electrochemical reactions dynamics” (see e.g. abstract) includes factoring in an equilibrium potential of the water electrolysis reaction (see e.g. page 8, section 4.1), an activation overvoltage of an oxygen generating reaction (see e.g. page 8, section 4.2), and a resistance overvoltage of the membrane to calculate a voltage (see e.g. page 9, section 4.3). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Berriah to use the modeling calculations of Liso because this model can quickly and accurately model the system dynamically.
Berriah does not explicitly teach calculating a first deterioration degree (d1) using a formula (12): d1 = (Vsim2-Vsim1)/Vsim1. Ono teaches a device for determining the deterioration of an electrochemical reaction unit cell (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a) I). The device of Ono calculates deterioration as d1 = (Vsim2-Vsim1)/Vsim1 (see e.g. col 13, Formula 1). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of Berriah to use the formula for deterioration degree taught in Ono because Ono teaches that this is a suitable means of determining if an electrochemical reaction unit cell has deteriorated.
Response to Arguments
Applicant's arguments filed 07/17/2026 have been fully considered but they are not all persuasive.
On page 8, the Applicant argues that the amended to claims 1 and 7 have integrated the judicial exception into a practical application. This is not considered persuasive. The limitation pointed to by the Applicant (…”instructs operating conditions”…) is considered to be an insignificant extra post-solution activity (“The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”, see MPEP § 2106.05(g)).
On page 8, the Applicant’s arguments with respect to the rejection(s) of the claim(s) under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 103 over Berriah in view of Tremblay, Liso, and Ono
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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