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 Amendment
This action is responsive to applicant’s amendment filed 5/14/2026.
Claims 1-4, 6-15 are pending.
The previous rejection of claims 1-4, 6-10, 12-14 under 35 U.S.C. 102(a)(1) as being anticipated by Sasson et al. (US 20180123153) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 11 and 15 under 35 U.S.C. 103 as being unpatentable over Sasson et al. (US 20180123153) in view of Filonenko et al. (ChemCatChem 2014, 6, 1526 – 1530) is maintained in view of applicant’s amendment.
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 Rejections - 35 USC § 103
Claims 1-4, 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sasson et al. (US 20180123153) as applied to claim 1 above, and further in view of Filonenko et al. (ChemCatChem 2014, 6, 1526 – 1530).
Regarding claim 1, Sasson discloses a method for producing hydrogen, wherein hydrogen is generated from a formate using a metal catalyst in the presence of a solvent by a two-phase system reaction in which the solvent is present in a state where an organic phase (catalyst dissolved in one or more organic solvent) and an aqueous phase (aqueous potassium formate KHCO2) are separated. See the abstract, para 0012-13. Sasson discloses dehydrogenation reaction of aqueous formate is catalyzed effectively with the aid of a metal complex, such as ruthenium-containing complex (para 0008 and 0017) but does not disclose the claimed ruthenium complex. Filonenko discloses a ruthenium complex (Ru PNP-pincer catalyst 1, abstract), that meets the claimed ruthenium complex.
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It would have been obvious to one of ordinary skill in the art before the filing date of the invention to replace the ruthenium complex in the method of Sasson with the ruthenium complex taught by Filonenko, which is highly stable and shows superior catalytic performance for FA dehydrogenation independent of the reaction medium (page 1527), because one of ordinary skill in the art would have been able to carry out such a substitution, and the results of effectively dehydrogenation aqueous formate were reasonably predictable.
Regarding claim 2, Sasson discloses a phase transfer catalyst is used for the reaction (para 0039).
Regarding claim 3, Sasson discloses the phase transfer catalyst is a quaternary ammonium salt (para 0039).
Regarding claim 4, Sasson discloses the metal catalyst contains at least one metal selected from ruthenium and iridium (para 0015).
Regarding claim 6, Sasson discloses the formate is a potassium formate (para 0012) .
Regarding claim 7, Sasson discloses the organic phase contains at least one selected from toluene, dioxane, tetrahydrofuran, ethyl acetate, methylcyclohexane, and cyclopentyl methyl ether (para 0030-33).
Regarding claims 8-10, Sasson discloses the formate is a potassium formate (para 0012).
Regarding claims 12-14, Sasson discloses the organic phase contains at least one selected from toluene, dioxane, tetrahydrofuran, ethyl acetate, methylcyclohexane, and cyclopentyl methyl ether (para 0030-33).
Regarding claims 11 and 15, Sasson discloses the organic phase contains at least one selected from toluene, dioxane, tetrahydrofuran, ethyl acetate, methylcyclohexane, and cyclopentyl methyl ether (para 0030-33).
Response to Arguments
Applicant's arguments filed 5/14/2026 have been fully considered but they are not persuasive.
Applicant respectfully submits that the Office failed to establish a prima facie case of obviousness at least because the Office failed to properly determine the differences between the prior art and the claims based on whether the claimed subject matter, as a whole, would have been obvious, the reasoning is fallacious and the mere ability to do something (e.g., substituting a catalyst) has nothing to do with why one would try to do so. Specifically, applicant argues that Sasson does not disclose the catalyst recited in claim 5 and Filonenko does not disclose a biphasic system. Accordingly, Applicant respectfully submits that it would not have been obvious even to a person skilled in the art to use the catalyst recited in claim 5 and to conduct the reaction in a biphasic system.
The Examiner respectfully disagrees with applicant’s arguments. Firstly, applicant's argument is against the references individually. The law held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Secondly, the law also held "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). It is also held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves."). In this case, the ruthenium complex taught by Filonenko is highly stable and shows superior catalytic performance for FA dehydrogenation independent of the reaction medium (page 1527), therefore, it would have been obvious to one of ordinary skill in the art to replace the prior art catalyst with Filonenko’s catalyst known to effectively dehydrogenation aqueous formate, because one of ordinary skill in the art would have been able to carry out such a substitution, and the results (dehydrogenation) to release hydrogen were reasonably predictable. Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claims 1-4, 6-15 remain unpatentable for the reasons of record.
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.
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/HAIDUNG D NGUYEN/ Primary Examiner, Art Unit 1761
7/23/2026
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