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 .
Specification Objection
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. This may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. If a satisfactory title is not supplied by the applicant, the Examiner may, at the time of allowance, change the title by an Examiner’s amendment. See MPEP § 1302.04(a).
The following title is suggested: “Leakage Detection using External Coating of an Emission Compound on an Enclosure”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
1) Regarding claims 1-15 the claims require an emission generating compound, however there is no guidance as to how one makes or uses this invention. There is no description of the full compound cable of performing the emission. The disclosure lists the oxidizing agent comprises an oxygen source and the reducing agent comprises a metal and/or a non-metal the non-metal comprises at least one of the group: carbon, sulphur or nitrogen or combinations thereof, the emission generating compound 12 is a pyrotechnical material and a cellulose nitrate or cellulose nitrate with a varying degree of nitration. Though individual elements are disclosed the burden is one the public to find the compound to perform the leakage detection of hydrogen.
In order to make an enablement rejection, the Examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure).
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
In this case, the relevant factors Examiner has considered are the nature of the invention, the state of the prior art, and the amount of direction provided by the inventor.
The nature of the invention is that Applicant has claimed an emission compound without disclosure of the actual components of the compound.
The facts of the instant application appear to be similar to In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976) where a disclosure of an electrical circuit apparatus, depicted in the drawings by block diagrams with functional labels, was held to be nonenabling. There was no indication in the specification as to whether the parts represented by boxes were “off the shelf or must be specifically constructed or modified for applicant’s system”. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant.
Similarly, in In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) claims were directed to a system which comprised several component parts (e.g., computer, timing and control mechanism, A/D converter, etc.) only by generic name and overall ultimate function. The court concluded that there was not an enabling disclosure because the specification did not describe how “complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation” and that “an unreasonable amount of work would be required to arrive at the detailed relationships appellant says that he has solved.” 500 F.2d at 566, 182 USPQ at 302. Thus an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function.
Applicant has provided no guidance as to how one starts with the list of disclosed elements and creates an emission compound.
Therefore, it is not possible for one having ordinary skill in the art to make or use this invention without undue experimentation since there is no disclosure or elements disclosed for a emission compound. The amount of direction provided by the Applicant is to merely elements without disclosure of the function in the manner claimed by the apparatus claim. While Applicant has submitted in the arguments that one having ordinary skill in the art would know how to do this, there is nothing in the prior art either in the references cited by the Applicant or by the Examiner that would lead one to believe that using the elements cited would perform the claimed function.
2) Claims 1-15 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for a hydrogen leak detection device [0002] using thermal imaging [0077-0078] to detect a hydrogen leak using an exothermic compound [0006-0007] on the surface of the hydrogen enclosure. The disclosure does not discuss 1) leakage detection of all encapsulated substances 2) all compounds that generate an emission and 3) all detectors capable of measuring emissions.
Claims 1 & 15 and its dependent claims are rejected under 35 U.S.C. 112(a), as failing to comply with the scope of enablement requirement. In Applicant' s case the breadth of the claims extends beyond the disclosure of a hydrogen leak detection device using thermal imaging to detect a hydrogen leak using an exothermic compound on the surface of the hydrogen enclosure There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” In this case, the relevant Wand factors Examiner has considered are :
2164.01(a) Undue Experimentation Factors [R-01.2024]
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The disclosure does not provide additional working examples of leakage of all substances in enclosures using any compound that has any form of emission upon leakage contact and all detectors capable of measuring the emissions other than the disclosed thermal emission. The working examples are directed a hydrogen leak detection device [0002] using thermal imaging [0077-0078] to detect a hydrogen leak using an exothermic compound [0006-0007] on the surface of the hydrogen enclosure. The inventor has reduced to practice at the time of the filing a hydrogen leak detection device [0002] using thermal imaging [0077-0078] to detect a hydrogen leak using an exothermic compound [0006-0007] on the surface of the hydrogen enclosure. Absence of disclosure of leakage of all substances in enclosures using any compound that has any form of emission upon leakage contact and all detectors capable of measuring the emissions other than the disclosed thermal emission, places on the public the entire quantity of experimentation needed to make or use the full scope of Claims 1-15 and over reaches the disclosed concept.
Claims 1-15 therefore recites subject matter directed to the broadest level of a concept of a universal problem to be solved supported hydrogen leakage detector.
Consistent with office policy, Examiner has weighed all the evidence for and against enablement of this invention and has concluded based on guidance provided by the MPEP and case law (including the Wands factors) that there is not enough evidence in favor of the scope of the enablement of this invention.
Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert' s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered)”.
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.
Claims 1-15 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 seems to be a product claim but the preamble of “A leakage sensitive arrangement comprising an emission generating compound” is not a clear recitation of a product. Looking to the Abstract it seems the product is a leakage detector.
Claim 1 recites the limitation “the emission generating compound is configured to be exposed to an activation energy resulting from leaking of the substance from an inside of the enclosure; wherein the activation energy causes a chemical reaction of the emission generating compound” where the emission generating compound is “exposed to activation energy” is unclear. The emission generating compound creates energy from exposure to the leaking substance. The leaking substance is not producing the energy.
Claim 7 recites the limitation “the emission generating compound comprises a reaction controller… to make the chemical reaction of the emission generating compound steerable towards” where a “reaction controller” is part of a compound [0102] but also physically steers the compound [0108 in Fig.1 42 reaction controller is a structure] which is unclear.
Claim 10 recites the limitation” wherein the emission receiving space is formed to collect the emission and configured to focus and/or enhance it towards the at least one detector” where the receiving space is claimed to focus and/or enhance the emission towards the at least one detector which is unclear as there is not structure claimed to perform the movement towards the detector. Examiner looks to the specification and the movement is created by [0125-0126 ventilation fluid].
All dependent claims are rejected for their dependence on a rejected base claim.
Indication of Allowable Subject Matter
Claims 10-14 are objected to and would be allowable if:
1) Rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action.
2) Rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 10. The closest prior art is Lamont (US 5763765; “Lamont”).
Lamont discloses a leakage detection device having an emission generating compound; wherein the emission generating compound is applicable on an outside of an enclosure encapsulating a substance from surroundings and is exposed to an activation energy resulting from leaking of the substance from an inside of the enclosure; wherein the activation energy causes a chemical reaction of the emission generating compound; and wherein the chemical reaction actively produces an emission detectable by a detector.
Lamont, nor the prior art, discloses a second enclosure called an envelope wherein the envelope encapsulates the enclosure and the emission generating compound layer in an inner volume; wherein a gap between the enclosure and the envelope in the inner volume provides an emission receiving space; wherein the emission receiving space is accessible by the at least one detector; and wherein the emission receiving space is formed to collect the emission and configured to focus and/or enhance it towards the at least one detector.
Regarding Claims 11-14 are objected to based on their dependence on the indicated allowable material of Claim 10.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102 (a)(1 & 2) as being anticipated by Lamont (US 5763765; “Lamont”).
Claim 1. Lamont discloses a leakage sensitive arrangement (Fig. 3) [Col. 2 lines 25-32: comprising an emission generating compound (12)[Col.5 lines 5-10: includes an electrochemically active portion 12 and an inactive portion 14. Portion 12 is rendered active by the presence of an electrocatalyst, typically in the form of finely comminuted platinum in a layer at each of the membrane/electrode interfaces located on opposite faces of the electrolyte membrane]; wherein the emission generating compound (12) is applicable on an outside of an enclosure (10 & 20) encapsulating a substance from surroundings [Col.5 lines 5-7: a pressurizable gas-containing fixture (most of which is hidden below MEA 10 in FIG. 1) … The pressurized fuel source in tank 32a is preferably hydrogen and the pressurized diluent gas in tank 32b is preferably nitrogen]; wherein the emission generating compound (12) is configured to be exposed to an activation energy [Col.5 lines 5-7: electrochemically active portion 12 and an inactive portion 14. Portion 12 is rendered active by the presence of an electrocatalyst, typically in the form of finely comminuted platinum in a layer at each of the membrane/electrode interfaces located on opposite faces of the electrolyte membrane] resulting from leaking of the substance from an inside of the enclosure (10 & 20)[Col. 5 lines 10-20: The apparatus for detecting and locating leaks in the membrane of MEA 10 includes a pressurizable gas-containing fixture (most of which is hidden below MEA 10 in FIG. 1) with a pressurized gas stream inlet 22 and a pressurized gas stream outlet 24]; wherein the activation energy causes a chemical reaction [Col.2 lines 15-27: to detect perforations in membranes by detecting heat generated by the exothermic reaction of a pair of reactants which are substantially isolated on opposite sides of the membrane, and which contact each other and react only if there is a perforation present. With the use of an appropriate heat detector, such as a thermal imaging device, the location of the perforations in the membranes may also be determined] of the emission generating compound; and wherein the chemical reaction actively produces an emission detectable by a detector (40) [Col.5 lines 45-55: the heat detector comprises an infrared thermal detector. In a preferred apparatus for detecting and locating perforations in a membrane for an electrochemical cell the heat detector comprises an infrared thermal imaging device].
Claim 2. Dependent on the arrangement of claim 1. Lamont further discloses the chemical reaction of the emission generating compound (12) is an exothermic oxidation reaction [Col. 5 lines 60-67: when processed by electronic analyzer 44 and displayed on monitor 46 (see FIG. 3) will indicate whether and where hot spots occur from the exothermic reaction of air with hydrogen passing through a perforation in the membrane, the reaction being catalyzed by catalyst in the electrocatalyst layer on the upper face of the membrane]]; and wherein detection of the detector (40) is based on exothermic oxidation products comprising matter and/or energy [Col. 5 lines 60-67: when processed by electronic analyzer 44 and displayed on monitor 46 (see FIG. 3) will indicate whether and where hot spots occur from the exothermic reaction of air with hydrogen passing through a perforation in the membrane, the reaction being catalyzed by catalyst in the electrocatalyst layer on the upper face of the membrane].
Claim 3. Dependent on the arrangement of claim 1. Lamont further discloses the activation energy for the emission generating compound (12): is initially generated in the emission generating compound (12) itself by contact between the emission generating compound and the leaking substance [Col. 5 lines 60-67: when processed by electronic analyzer 44 and displayed on monitor 46 (see FIG. 3) will indicate whether and where hot spots occur from the exothermic reaction of air with hydrogen passing through a perforation in the membrane, the reaction being catalyzed by catalyst in the electrocatalyst layer on the upper face of the membrane].and wherein the activation energy causes a self-boosting effect through the chemical reaction of the emission generating compound leading to the detectable emission [Col. 5 lines 60-67].
Claim 4. Dependent on the arrangement of claim 1. Lamont further discloses the leaking substance is hydrogen [Col. 5 lines 60-67: when processed by electronic analyzer 44 and displayed on monitor 46 (see FIG. 3) will indicate whether and where hot spots occur from the exothermic reaction of air with hydrogen passing through a perforation in the membrane, the reaction being catalyzed by catalyst in the electrocatalyst layer on the upper face of the membrane] and the chemical reaction of the emission generating compound (12) is initiated by leaking hydrogen from the enclosure (10 & 20) [Col.2 lines 15-27: to detect perforations in membranes by detecting heat generated by the exothermic reaction of a pair of reactants which are substantially isolated on opposite sides of the membrane, and which contact each other and react only if there is a perforation present. With the use of an appropriate heat detector, such as a thermal imaging device, the location of the perforations in the membranes may also be determined].
Claim 5. Dependent on the arrangement of claim 1. Lamont further discloses the emission generating compound (12) is applied as an emission generating compound layer (12) at a surface of the enclosure (10 & 20)[Col. 5 lines 5-15: FIG. 1, a membrane electrode assembly 10 includes an electrochemically active portion 12 and an inactive portion 14. Portion 12 is rendered active by the presence of an electrocatalyst, typically in the form of finely comminuted platinum in a layer at each of the membrane/electrode interfaces located on opposite faces of the electrolyte membrane].
Claim 7. Dependent on the arrangement of claim 1. Lamont further discloses the emission generating compound (12) comprises a reaction controller [Col 5. Lines 5-15: Portion 12 is rendered active by the presence of an electrocatalyst, typically in the form of finely comminuted platinum in a layer at each of the membrane/electrode interfaces located on opposite faces of the electrolyte membrane]. and wherein the reaction controller is configured to make the chemical reaction of the emission generating compound steerable towards at least one of: generation of activation energy upon contact with the substance [Col 5. Lines 5-15: Portion 12 is rendered active by the presence of an electrocatalyst, typically in the form of finely comminuted platinum in a layer at each of the membrane/electrode interfaces located on opposite faces of the electrolyte membrane].
Claim 8. Dependent on claim 1 a detection system for leaking substances. Lamont further discloses comprising: at least one detector (40); and the leakage sensitive arrangement of claim 1 comprising an emission generating compound layer (12); wherein the at least one detector (40) is located in a detection distance towards the emission generating compound layer (12); and wherein the at least one detector (40) is configured to generate a detection signal upon contact with an emission of the emission generating compound layer (12) in the detection distance [Col. 5 lines 45-67].
Claim 9. Dependent on the system of claim 8. Lamont further discloses an enclosure (10 & 20) for storing the leaking substance [Col. 5 lines 10-20: The apparatus for detecting and locating leaks in the membrane of MEA 10 includes a pressurizable gas-containing fixture (most of which is hidden below MEA 10 in FIG. 1) with a pressurized gas stream inlet 22 and a pressurized gas stream outlet 24].
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lamont (US 5763765; “Lamont”),
Claim 6. Dependent on the arrangement of claim 1. Lamont discloses an inactive layer with the active layer [Col.5 lines 5-15] Lamont does not explicitly disclose:
the emission generating compound layer is covered by a protective layer; wherein the protective layer hampers deactivation of chemical reactivity of the emission generating compound; and wherein the emission generating compound layer is chemically reactive to the substance leaking through the protective layer.
It can be inferred that the inactive layer is protective. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the inactive layer as a protective layer for Lamont’s active layer because the protective layer improves the reliability of the active layer against fouling degradation.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lamont (US 5763765; “Lamont”) in view of Nakakubo (US 20060115697; “Nakakubo”).
Claim 15. Lamont discloses a method for leakage detection (Fig. 1)[Abstract], the method comprising: providing an emission generating compound (12) at an outside of an enclosure (10 & 20) [Col.5 lines 5-7: a pressurizable gas-containing fixture (most of which is hidden below MEA 10 in FIG. 1) … The pressurized fuel source in tank 32a is preferably hydrogen and the pressurized diluent gas in tank 32b is preferably nitrogen]; providing at least one detector (40) in a detection distance to the enclosure (10 & 20)[Col. 5 lines 40-67]; operating the at least one detector (40) while operating the enclosure (10 & 20) with a substance [Col. 5 lines 40-67]; bringing leaking substance of the enclosure or burning leaking substance in contact with the emission generating compound (12) to yield an emission [Col 2 lines 24 -38]; detecting, by the at least one detector (40), the emission; generating, by the at least one detector (40), a detection signal (46)[Col. 5 lines 45-60]. Lamont further discloses a metered valve for controlling the gas inlet and outlet [Col. 5 lines 5-25]. Lamont does not explicitly disclose:
stopping operation of the enclosure with the substance by closing shutoff valves, based on the detection signal.
Nakakubo teaches a substance shutoff device for shutting down communication of at least one of an inflammable substance and an oxidizer when the inflammable substance and the oxidizer are brought into contact with each other to thereby prevent continuation of the contact between the inflammable substance and the oxidizer [Abstract]. Nakakubo further teaches stopping operation of the enclosure with the substance by closing shutoff valves, based on the detection signal [0085: the substance shutoff means described in Example 1 is provided in at least one of a fuel flow path and an oxidizer flow path. Further, the substance shutoff means may be disposed at a valve or the like provided in a flow path, thus enabling the valve to be closed to thereby shut down the gas. As the detection means for detecting fuel leak, a member may be employed which generates heat by contact between the oxidizer and the fuel. For example, a catalyst portion which generates heat upon reaction between the oxidizer and the fuel may be used. In a case where the catalyst portion is used as the detection means, a catalyst layer of a fuel cell may be used as the catalyst portion, or another catalyst portion may be provided separately from the catalyst layer of the fuel cell].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Nakakubo’s shutting of a valve when the thermal monitoring exceeds a threshold value with Lamont’s leakage monitoring because when dealing with flammable gasses safety is improved with valve cutoff of the gas when safety conditions are exceeded [Nakakubo 0037].
Prior Art Considered but not Utilized
The prior art made of record and not relied upon and is considered pertinent to applicant's disclosure is provided in the following table:
Prior Art Document Identifier
Inventor
Comment
US 20090131617
Thorn; David L. et al.
applying to a surface a coating comprising a polymer that undergoes a chemical reaction with a fluid to produce a volatile odorant;
US 20040115818
Puri, Pushpinder Singh et al.
the chemical reaction results in a detectable odor being emitted from the chemical material layer.
US 20160103082
KIMURA; Mitsuteru
hydrogen gas sensor element and a hydrogen gas concentration part which has, on a membrane thermally isolated from a substrate, a heater, a temperature sensor and a hydrogen gas.
US 20070111313
Saloka; George
a hydrogen-sensitive coating 32 is applied to the exterior surfaces of various components of the fuel cell system 10. These may include, for example, the exterior surface 23 of the hydrogen storage tank 20 and/or the exterior surfaces of the line fitting 28; the hydrogen distribution line 16; the regulator and/or regulators 18; the hydrogen inlet fitting 14; and/or the fuel cell enclosure 13, respectively.
JP 2008140108
KINOSHITA M
gas leakage detecting unit (3) is operated, when the detection target gas around a gas turbine is more than predetermined concentration. The two temperature abnormality detecting units (4,5) are operated, when the temperature around the gas turbine is more than predetermined temperature. A determination unit (6) emits the signal for emergency stopping of gas turbine,
RU 2666324
Semakov Ivan Vasilevich et al.
the automatic gas leakage detection and control system, including a detection unit, comprising a microcontroller with sensors of monitored parameters and a transmitter, an audible alarm device and an emergency valve associated with the microcontroller, as well as a detection unit, is provided with a sensor for monitoring the presence of odorant concentration,
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Monica S Young whose telephone number is (303)297-4785. The examiner can normally be reached M-F 08:30-05:30 MST.
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, Peter Macchiarolo can be reached at 571-273-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONICA S YOUNG/Examiner, Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
Prosecution Insights