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 .
The election is noted. Claims 14-22 are withdrawn. Due to the species election, claims 4, and 9-11 are also withdrawn. However, applicants should be mindful of the totality of teachings of the below-cited references.
Normally successive amendments ae not permitted, however the rule is waived on this occasion, noting that the second submission was still within the original time period set for response.
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 5 and 6 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 5 is unclear as to when and how hydrogenation is done, and what the heat requirements are.
Claim 6 is unclear as to whether the change is between runs or during the process. If the latter, then it is unclear how it is accomplished.
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.
Claims 1-3, 5-8, 12, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. 20220255101 taken with Burcher et al. 20210017021.
Seo teaches, especially in paras 12-21 and 51 and fig. 1, exothermic and endothermic H carriers. The endothermic dehydrogenation agent is organic liquid. The elected siloxane is not taught by Seo, however Burcher does in para 67 in a similar system. Using it in the process of Seo is obvious to provide a hydrogen carrier.
For clams 2 and 3, methylcyclohexane is taught in Seo para 17.
For claim 5, Seo para 48 teaches initiation of the cycle without adding heat.
For claim 6, in so far as dehydrogenation of a H2 adduct reduces the amount thereof (‘adjusted’), option ii is merely a mathematical restatement of what is already required in/implied by claim 1. See also the above rejection under ‘112.
For claims 7 and 8, see Burcher para 67.
For claim 12, para 57 teaches controlling the reaction rate.
For clam 13, para 51 teaches connecting the chambers, suggesting a common wall.
The following is noted:
Lin ‘419 teaches in para 208 dodecahydroethylcarbozole in a similar system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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