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 .
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 1-10 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.
As to claims 1-10, The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
As to claim 2, the claim recites the limitation “at least one first supply conduit”; however, claim 1 already introduces the limitation “supply conduits”, therefore it is unclear as to if the limitation intends to refer to one the previously recites supply conduits or to a new and separate limitation.
Further as to claim 2, the claim recites the limitation "the respective substack". There is insufficient antecedent basis for this limitation in the claim.
Further as to claim 2, the claim recites the limitation “at least one second supply conduit”; however, claim 1 already introduces the limitation “supply conduits”, therefore it is unclear as to if the limitation intends to refer to one the previously recites supply conduits or to a new and separate limitation.
As to claim 3, the claim recites the limitations “the supply conduit”, “the respective insulating section”, “the respective end” and "the respective substack". There is insufficient antecedent basis for these limitations in the claim.
As to claim 4, the claim recites the limitations “the respective insulating section”, “the respective end” and "the respective substack". There is insufficient antecedent basis for these limitations in the claim.
As to claim 7, the claim recites the limitations “the respective ends”, “the substacks” and “the respective insulating sections”. There is insufficient antecedent basis for these limitations 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 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, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/206568 A1 to Eckert et al. (Eckert).
As to claims 1, 8 and 9, Eckert teaches a plurality of electrolysis cells (2) that are electrically connected in series and arranged successively in a stack (3) in a stack direction, the electrolysis cells (2) connected to an electrical energy source (monopolar power source), a cell supply unit (4) for supplying the electrolysis cell with an operating material and a plurality of supply conduits (6/7a/7b/8a/8b/9) connected to the cell supply unit (4) and to opposite ends of the successively arranged electrolysis cells (Paragraphs 0033-0037; Figure 1 and 3). The cell supply unit (4) is capable of being electrically coupled to a negative electric potential of the electrical energy source thus meeting the functional limitation of “a negative electric potential of the electrical energy source is electrically couplable to an electric reference potential of the cell supply unit” (MPEP 2114). Furthermore, Eckert specifically teaches that the cell supply unit is indirectly coupled to negative electric potential of the voltage source (ground/earthing) of the electrical energy source (12) via a control electrode (10) in the form of a pipe section (Paragraphs 0033-0037; Figure 3).
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.
Claims 2, 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Eckert as applied to claim 1 above, and as further discussed below.
As to claims 2, 7 and 10, Eckert teaches the apparatus of claim 1. Eckert fails to further teach that the plurality of cells are provided in at least two substacks. However, the duplication of parts is not patentably significant (MPEP 2144.04 VI B) rendering obvious the provision of two substacks. Eckert teaches that the fluid flow to each cell of the individual cells of the stack is provided with parallel fluid flow; thus, it would have been obvious to maintain the parallel fluidic connection, rendering obvious two substacks connected in parallel to the cell supply unit and the control electrode pipe section.
Eckert further teaches that the cells, and thus the substacks, are connected via a plurality of supply lines, each supply line formed of an insulating sections (non-conductive plastic) and each supply line at least indirectly electrically coupled to the negative electrode potential of the power supply through the control electrode pipe sections (10) between the substacks the and cell supply unit (4) (Paragraphs 0020, 0033-0037; Figure 1 and 3). The insulating pipe sections thus insulating the ends of the cells of one substack from the cells of another substack.
Claims 3, 4, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Eckert as applied to claim 2 above, and further in view of US 2003/0192613 A1 to Wang (Wang).
As to claims 3, 4, 5 and 6, Eckert teaches the apparatus of claim 1. Eckert teaches that the insulating supply pipes extend to the stack, and thus the substack as rendered obvious. However, Eckert teaches that the insulating supply pipes are insulating by nature of being formed as plastic non-conductive pipes (Paragraph 0020) and fails to teach insulation layers arranged on the insides of the supply pipes.
However, Wang also discussion pipes where corrosion prevention is desired and teaches that by forming the pipe of a material such as iron coated with an aluminum oxide inner lining the resulting pipe can have both the high strength of iron and high corrosion resistance, aluminum oxide also being an insulating material (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art to form the pipes of Eckert with a higher strength metal material, such as iron, coating with aluminum oxide, an insulating material comprising a corrosion-resistant-metal-containing substance, in order to allow for the insulating and corrosion resistant properties as desired with the added benefit of a strong pipe as taught by Wang.
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, 2, 8 , 9 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 10, 11 and 12 of copending Application No. 18/292,364 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the same limitations are claimed albeit with additional limitations and wording changes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 9 of copending Application No. 18/552,686 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the same limitations are claimed albeit with additional limitations and wording changes.
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 CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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