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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Reference numerals 150 and 129 in Fig. 19 do not appear in the instant Specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-22 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.
The term “hydrogen-based” in Claims1, 5, 6, 8, 9, 10, 12, and 21 is a relative term which renders those claims indefinite. The metes and bounds of what constitutes a sufficient amount of, or presence of hydrogen in the gas is unclear. The term “hydrogen-based” is not defined by the claims, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 2 recites “wherein a plurality of stacked bodies including the one or more stacked bodies are stacked.” This recitation creates a literal lack of antecedent basis for “a plurality of stacked bodies including the one or more stacked bodies.” Even if this set of stacked bodies is stacked, it is not properly introduced as a claimed element, rendering the claim indefinite. Appropriate correction is require to establish a nexus between “one or more stacked bodies” in Claim 1 and “a plurality of stacked bodies.”
Claim 1 recites “predetermined temperature” in Line 16. As used, “predetermined temperature” is a relative term rendering the claim indefinite. The term “predetermined temperature” is not defined by the claims, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The absence of a temperature change is a literal predetermined temperature. It is unclear which temperature value the recitation is trying to limit and under what conditions and range of conditions. Appropriate correction is required.
Claim 1 recites in Lines 16-17 “the hydrogen-based gas is heated to a predetermined temperature by the heat generating element.” As the claim is drawn to an apparatus and not a method, it is unclear what tangible element this limitation establishes. Appropriate correction is required to establish the claimed apparatus features.
Claim 4 recites in Line 2 and Claim 9 recites in Line 2, “bottomed cylindrical shape.” It is unclear what is meant by “bottomed” and whether this is meant to describe the shape of the heat generating element, indicate a position, indicate a location, or some other meaning entirely. Appropriate correction is required to establish the shape of the heat generating element.
Claim 6 recites “a non-permeated gas recovery line configured to allow the first chamber to connect to a hydrogen tank.” It is unclear whether the limitations following “allow” are an intended use or are concrete elements of the claimed hydrogen heating device. Applicant is encouraged to recite concrete and tangible elements of the claimed apparatus. Appropriate correction is required to establish the configuration of the non-permeated gas recovery line as it relates to the first chamber and hydrogen tank.
Claim 7 recites “The non-permeated gas recovery line includes a non-permeated gas flow rate control unit configured to control a flow rate of the non-permeated gas based on the temperature of the heat generating element detected by a temperature sensor provided in the temperature adjustment unit.” Which presents the following issues:
Claim 7 recites “based on the temperature” in Line 3 which renders the Claim indefinite. It is unclear what the term “based on” conveys, how one is to configure the non-permeated gas flow rate control unit to control a flow rate “based on” the temperature, and how this connects to the non-permeated gas recovery line. The term “based on” does not clearly indicate what tangible feature is required, or how one is to carry out the claimed invention.
Claim 7 recites the limitation “the temperature adjustment unit” in Lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required to establish the presence of any temperature adjustment unit.
Claim 9 recites “an entire inner surface of the heat generating element.” Because there is only one inner surface of the heat generating element, recitation of “an” “entire inner surface” renders unclear which surface is being referenced. Appropriate correction is required to establish which surface is being referenced.
Similarly, Claim 10 recites “an entire one surface” in Lines 3-4. It is unclear what surface or surfaces are being referenced. Appropriate correction is required.
Claim 15 recites “The sealed container accommodates a plurality of heat generating elements including the heat generating element and other heat generating elements, the plurality of heat generating elements each has a plate shape, and are arranged with a gap provided between each other so as to face each other, and a plurality of first chambers including the first chamber and other first chambers and a plurality of second chambers including the second chamber and other second chambers are provided inside the sealed container, and are alternately arranged in an arrangement direction of the plurality of heat generating elements.” This claim presents the following issues of clarity:
There is a literal lack of antecedent basis for “other heat generating elements,” “other first chambers,” and “other second chambers,” rendering the claim indefinite. It is unclear whether these components are part of the claimed apparatus or reference is to some other component entirely. There is a lack of nexus between the introduction of a plurality of elements and any additional elements.
The recitation “arrangement direction” renders the claim indefinite. It is unclear what is meant by “arrangement direction” as this term has not been defined in the claims or instant Specification. Appropriate correction is required to establish the position of the alternately arranged plurality of first and second chambers.
Claims 11-14, 16-20 are rejected for their dependency on a rejected claim.
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 1-22 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Iwamura et al. WO 2020122097 A1.
Regarding Claim 1, Iwamura et al. ‘097 discloses a heat generating device that generates heat by absorbing and releasing hydrogen contained in a hydrogen-based gas, comprising a closed container configured to allow the hydrogen-based gas to be led in and a heat generating element [0006]. Notwithstanding the 112(b) rejections above, Iwamura et al. ‘097 discloses a temperature sensor and thermocouple [0018] and a control unit that adjusts temperature [0151], meeting the limitation for a temperature adjustment unit and for the hydrogen gas being heated to a predetermined temperature by the heat generating element.
Iwamura et al. ‘097 discloses a heat generating element provided inside the sealed container and configured to generate heat by occluding and discharging the hydrogen, the heat generating element includes a multilayer film supported by the support, the multilayer film has a first layer made of a hydrogen storage metal or a hydrogen storage alloy and having a thickness of less than 1000 nm, and a second layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, or ceramics and having a thickness of less than 1000 nm [0062], meeting the limitations of the instant Claim.
Regarding Claim 2, Iwamura et al. ‘097 discloses stacked multilayers at [0062], meeting the limitation of the instant Claim for a plurality of stacked bodies including the one or more stacked bodies are stacked.
Regarding Claim 3, Iwamura et al. ‘097 discloses the sealed container is partitioned by the heat generating element into a first chamber and a second chamber, and the first chamber and the second chamber have different hydrogen pressures, and the hydrogen permeates through the heat generating element by utilizing a hydrogen pressure difference between the first chamber and the second chamber [0022], (Fig.1).
Regarding Claim 4, Iwamura et al. ‘097 discloses the heat generating element has a bottomed cylindrical shape (Fig. 2) The first chamber is defined by an inner surface of the heat generating element, and the second chamber is defined by an outer surface of the heat generating element and an inner surface of the sealed container (Fig. 1) [0010].
Regarding Claim 5, Iwamura et al. ‘097 discloses the first chamber has an inlet for leading in the hydrogen-based gas. The second chamber has an outlet for leading out the hydrogen-based gas, and the hydrogen pressure in the first chamber is higher than the hydrogen pressure in the second chamber [0010, 0151], (Fig. 1).
Regarding Claim 6, Iwamura et al. ‘097 discloses a non-permeated gas recovery line configured to allow the first chamber to connect to a hydrogen tank, and configured to recover a non-permeated gas that does not permeate through the heat generating element in the hydrogen-based gas led through the inlet into the first chamber and to return the non-permeated gas into the hydrogen tank [0151-0165].
Regarding Claim 7, Iwamura et al. ‘097 discloses The non-permeated gas recovery line includes a non-permeated gas flow rate control unit configured to control a flow rate of the non-permeated gas based on the temperature of the heat generating element detected by a temperature sensor provided in the temperature adjustment unit [0151].
Regarding Claim 8, Iwamura et al. ‘097 discloses a nozzle portion provided between the inlet and the heat generating element and configured to eject, onto the heat generating element, the hydrogen-based gas led through the inlet to an inside of the sealed container [0199-0200].
Regarding Claim 9, Iwamura et al. ‘097 discloses the heating element has a bottomed cylindrical shape, and the nozzle portion has a plurality of ejection ports arranged in an axial direction of the heat generating element, and is configured to eject the hydrogen-based gas through the plurality of ejection ports onto an entire inner surface of the heat generating element (Fig. 1) [0049, 00102].
Regarding Claim 10, Iwamura et al. ‘097 discloses the heat generating element has a plate shape, and the nozzle portion is configured to eject the hydrogen-based gas onto an entire one surface of the heat generating element [0101, 0199-0200].
Regarding Claim 11, Iwamura et al. ‘097 discloses the heat generating element has a cylindrical shape having two open ends, one end of the heat generating element is connected to the inlet, and the other end of the heat generating element is connected to the non-permeated gas recovery line (Fig. 1) [0049, 00102].
Regarding Claim 12, Iwamura et al. ‘097 discloses a lead-in line configured to allow the hydrogen-based gas stored in a hydrogen tank to be led into the sealed container, wherein the temperature adjustment unit is configured to heat the heat generating element by heating the hydrogen-based gas circulating through the lead-in line by a heater provided in the lead-in line (Fig. 1) [0049, 00102].
Regarding Claim 13, Iwamura et al. ‘097 discloses a first hydrogen occluding and discharging unit provide in the first chamber, made of a hydrogen storage metal or a hydrogen storage alloy, and configured to occlude and discharge the hydrogen; a second hydrogen occluding and discharging unit provided in the second chamber, made of a hydrogen storage metal or a hydrogen storage alloy, and configured to occlude and discharge the hydrogen [0060]; and a hydrogen pressure control unit configured to perform switching control between a first mode in which the hydrogen pressure in the first chamber is higher than the hydrogen pressure in the second chamber and a second mode in which the hydrogen pressure in the second chamber is higher than the hydrogen pressure in the first chamber [0015].
Regarding Claim 14, Iwamura et al. ‘097 discloses the hydrogen pressure control unit is configured to heat the first hydrogen occluding and discharging unit and cool the second hydrogen occluding and discharging unit in the first mode, and heat the second hydrogen occluding and discharging unit and cool the first hydrogen occluding and discharging unit in the second mode [0014-0015].
Regarding Claim 15, Iwamura et al. ‘097 discloses the sealed container accommodates a plurality of heat generating elements including the heat generating element and other heat generating elements, the plurality of heat generating elements each has a plate shape, and are arranged with a gap provided between each other so as to face each other, and a plurality of first chambers including the first chamber and other first chambers and a plurality of second chambers including the second chamber and other second chambers are provided inside the sealed container, and are alternately arranged in an arrangement direction of the plurality of heat generating elements [0051-0062].
Regarding Claim 16, Iwamura et al. ‘097 discloses the first layer is made of any one of Ni, Pd, Cu, Mn, Cr, Fe, Mg, Co and an alloy thereof, and the second layer is made of any one of Ni, Pd, Cu, Mn, Cr, Fe, Mg, Co, an alloy thereof, and SiC [0063-0064].
Regarding Claim 17, Iwamura et al. ‘097 discloses the multilayer film has a third layer made of a hydrogen storage metal, a hydrogen storage alloy, or ceramics different from the first layer and the second layer and having a thickness of less than 1000 nm, in addition to the first layer and the second layer [0073].
Regarding Claim 18, Iwamura et al. ‘097 discloses the third layer is made of any one of CaO, Y2O3, TiC, LaB6, SrO, and BaO [0074].
Regarding Claim 19, Iwamura et al. ‘097 discloses the multilayer film has a fourth layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, the second layer, and the third layer and having a thickness of less than 1000 nm in addition to the first layer, the second layer, and the third layer [0010].
Regarding Claim 20, Iwamura et al. ‘097 discloses the fourth layer is made of any one of Ni, Pd, Cu, Cr, Fe, Mg, Co, an alloy thereof, SiC, CaO, Y2O3, TiC, LaB6, SrO, and BaO [0064].
Regarding Claim 21, Iwamura et al. ‘097 discloses a lead-in step of leading the hydrogen-based gas into a sealed container [0006]. Iwamura et al. ‘097 discloses temperature adjusting step of adjusting a temepratrue of a heat generating element provided inside the sealed container by a temperature adjustment unit [0052]. Iwamura et al. ‘097 discloses a heat generating step of generating heat from the heat generating element by occluding and discharging the hydrogen in the heat generating element [0006]. The heat generating element includes one or more stacked bodies each including a base support made of at least one of a porous body, a hydrogen permeable film, and a proton conductor, and a multilayer film supported by the support [0006-0008]. The multilayer film has a first layer made of a hydrogen storage metal or a hydrogen storage alloy and having a thickness of less than 1000 nm, and a second layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, or ceramics and having a thickness of less than 1000 nm, and the hydrogen-based gas is heated to a predetermined temperature by the heat generating element [0006-0011].
Regarding Claim 22, Iwamura et al. ‘097 discloses supplying the hydrogen-based gas to a metal treatment furnace [0110], reading on the limitation of the instant claim for a step of blowing a hydrogen-based gas as a reducing gas into the blast furnace through a tuyere of the blast furnace, wherein the hydrogen-based gas is heated by the hydrogen heating device for a blast furnace.
Claims 1-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kobayashi et al. WO 2021100784 A1.
Regarding Claim 1, Kobayashi et al. ‘784 discloses a heat generating device that generates heat by absorbing and releasing hydrogen contained in a hydrogen-based gas, comprising a closed container configured to allow the hydrogen-based gas to be led in and a heat generating element [0006, 0050]. Notwithstanding the 112(b) rejections above, Kobayashi et al. ‘784 discloses a t a control unit that adjusts temperature [0041], meeting the limitation for a temperature adjustment unit and for the hydrogen gas being heated to a predetermined temperature by the heat generating element.
Kobayashi et al. ‘784 discloses a heat generating element provided inside the sealed container and configured to generate heat by occluding and discharging the hydrogen, the heat generating element includes a multilayer film supported by the support, the multilayer film has a first layer made of a hydrogen storage metal or a hydrogen storage alloy and having a thickness of less than 1000 nm, and a second layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, or ceramics and having a thickness of less than 1000 nm [0006], meeting the limitations of the instant Claim.
Regarding Claim 2, Kobayashi et al. ‘784 discloses stacked multilayers at [0123], meeting the limitation of the instant Claim for a plurality of stacked bodies including the one or more stacked bodies are stacked.
Regarding Claim 3, Kobayashi et al. ‘784 discloses the sealed container is partitioned by the heat generating element into a first chamber and a second chamber, and the first chamber and the second chamber have different hydrogen pressures, and the hydrogen permeates through the heat generating element by utilizing a hydrogen pressure difference between the first chamber and the second chamber [0010, 0023], (Fig.1).
Regarding Claim 4, Kobayashi et al. ‘784 discloses the heat generating element has a bottomed cylindrical shape (Figs. 1-2) The first chamber is defined by an inner surface of the heat generating element, and the second chamber is defined by an outer surface of the heat generating element and an inner surface of the sealed container (Fig. 1) [0139-0141].
Regarding Claim 5, Kobayashi et al. ‘784 discloses the first chamber has an inlet for leading in the hydrogen-based gas. The second chamber has an outlet for leading out the hydrogen-based gas, and the hydrogen pressure in the first chamber is higher than the hydrogen pressure in the second chamber [0103-0106], (Fig. 1).
Regarding Claim 6, Kobayashi et al. ‘784 discloses a non-permeated gas recovery line configured to allow the first chamber to connect to a hydrogen tank, and configured to recover a non-permeated gas that does not permeate through the heat generating element in the hydrogen-based gas led through the inlet into the first chamber and to return the non-permeated gas into the hydrogen tank [0136].
Regarding Claim 7, Kobayashi et al. ‘784 discloses the non-permeated gas recovery line includes a non-permeated gas flow rate control unit configured to control a flow rate of the non-permeated gas based on the temperature of the heat generating element detected by a temperature sensor provided in the temperature adjustment unit [0040].
Regarding Claim 8, Kobayashi et al. ‘784 discloses a flow path, meeting the limitation for a nozzle portion provided between the inlet and the heat generating element and configured to eject, onto the heat generating element, the hydrogen-based gas led through the inlet to an inside of the sealed container [0078].
Regarding Claim 9, Kobayashi et al. ‘784 discloses the heating element has a bottomed cylindrical shape, and the flow path, meeting the limitation for the nozzle portion has a plurality of ejection ports arranged in an axial direction of the heat generating element, and is configured to eject the hydrogen-based gas through the plurality of ejection ports onto an entire inner surface of the heat generating element (Fig. 1) [0078].
Regarding Claim 10, Kobayashi et al. ‘784 discloses the heat generating element has a plate shape, and the nozzle portion is configured to eject the hydrogen-based gas onto an entire one surface of the heat generating element [0025, 0132-0133, 0168].
Regarding Claim 11, Kobayashi et al. ‘784 discloses the heat generating element has a cylindrical shape having two open ends, one end of the heat generating element is connected to the inlet, and the other end of the heat generating element is connected to the non-permeated gas recovery line (Fig. 1) [0101-0102].
Regarding Claim 12, Kobayashi et al. ‘784 discloses a lead-in line configured to allow the hydrogen-based gas stored in a hydrogen tank to be led into the sealed container, wherein the temperature adjustment unit is configured to heat the heat generating element by heating the hydrogen-based gas circulating through the lead-in line by a heater provided in the lead-in line (Fig. 1) [0037].
Regarding Claim 13, I Kobayashi et al. ‘784 discloses a first hydrogen occluding and discharging unit provide in the first chamber, made of a hydrogen storage metal or a hydrogen storage alloy, and configured to occlude and discharge the hydrogen; a second hydrogen occluding and discharging unit provided in the second chamber, made of a hydrogen storage metal or a hydrogen storage alloy, and configured to occlude and discharge the hydrogen [0060]; and a hydrogen pressure control unit configured to perform switching control between a first mode in which the hydrogen pressure in the first chamber is higher than the hydrogen pressure in the second chamber and a second mode in which the hydrogen pressure in the second chamber is higher than the hydrogen pressure in the first chamber [0039-0041].
Regarding Claim 14, I Kobayashi et al. ‘784 discloses the hydrogen pressure control unit is configured to heat the first hydrogen occluding and discharging unit and cool the second hydrogen occluding and discharging unit in the first mode, and heat the second hydrogen occluding and discharging unit and cool the first hydrogen occluding and discharging unit in the second mode [00039-0041].
Regarding Claim 15, Kobayashi et al. ‘784 discloses the sealed container accommodates a plurality of heat generating elements including the heat generating element and other heat generating elements, the plurality of heat generating elements each has a plate shape, and are arranged with a gap provided between each other so as to face each other, and a plurality of first chambers including the first chamber and other first chambers and a plurality of second chambers including the second chamber and other second chambers are provided inside the sealed container, and are alternately arranged in an arrangement direction of the plurality of heat generating elements [0058].
Regarding Claim 16, Kobayashi et al. ‘784discloses the first layer is made of any one of Ni, Pd, Cu, Mn, Cr, Fe, Mg, Co and an alloy thereof, and the second layer is made of any one of Ni, Pd, Cu, Mn, Cr, Fe, Mg, Co, an alloy thereof, and SiC [0054-0055].
Regarding Claim 17, Kobayashi et al. ‘784 discloses the multilayer film has a third layer made of a hydrogen storage metal, a hydrogen storage alloy, or ceramics different from the first layer and the second layer and having a thickness of less than 1000 nm, in addition to the first layer and the second layer [0125].
Regarding Claim 18, Kobayashi et al. ‘784 discloses the third layer is made of any one of CaO, Y2O3, TiC, LaB6, SrO, and BaO [0125].
Regarding Claim 19, Kobayashi et al. ‘784 discloses the multilayer film has a fourth layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, the second layer, and the third layer and having a thickness of less than 1000 nm in addition to the first layer, the second layer, and the third layer [0127].
Regarding Claim 20, Kobayashi et al. ‘784 discloses the fourth layer is made of any one of Ni, Pd, Cu, Cr, Fe, Mg, Co, an alloy thereof, SiC, CaO, Y2O3, TiC, LaB6, SrO, and BaO [0129].
Regarding Claim 21, Kobayashi et al. ‘784 discloses a lead-in step of leading the hydrogen-based gas into a sealed container [0032], a temperature adjusting step of adjusting a temperature of a heat generating element provided inside the sealed container by a temperature adjustment unit [0027], a heat generating step of generating heat from the heat generating element by occluding and discharging the hydrogen in the heat generating element [0021]. Kobayashi et al. ‘784 discloses the heat generating element includes one or more stacked bodies each including a base support made of at least one of a porous body, a hydrogen permeable film, and a proton conductor, and a multilayer film supported by the support [0067-0070]. The multilayer film has a first layer made of a hydrogen storage metal or a hydrogen storage alloy and having a thickness of less than 1000 nm, and a second layer made of a hydrogen storage metal or a hydrogen storage alloy different from the first layer, or ceramics and having a thickness of less than 1000 nm, and the hydrogen-based gas is heated to a predetermined temperature by the heat generating element [0057].
Regarding Claim 22, Kobayashi et al. ‘784 discloses supplying the hydrogen-based gas to a metal heat treatment furnace [0078], reading on the limitation of the instant claim for a step of blowing a hydrogen-based gas as a reducing gas into the blast furnace through a tuyere of the blast furnace, wherein the hydrogen-based gas is heated by the hydrogen heating device for a blast furnace.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 12287126 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe a heat utilization system for hydrogen-based gas having the same elements as the device of the instant claims.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-33 of U.S. Patent No. US 11499789 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe a heat utilization system and heat generating device for hydrogen-based gas having the same elements as the device of the instant claims.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 12618592 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe a heat generating device having a tubular (cylindrical) shape, the same claimed elements, and read on the limitations of the instant application.
Claims 1-3 and 5-8, 10, 12-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 11971199 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe a heat generating device having the same claimed elements, and read on the limitations of the instant application.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 12287126 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe a heat utilization system having a the same claimed elements, a heat generating device having a tubular (cylindrical) shape, and read on the limitations of the instant application.
Claims 1-22 are provisionally rejected on the grounds of nonstatutory double patenting of claims 1-10 of copending Application No. 19/098,413 (US 20250257908 A1). Although the conflicting claims are not identical, they are not patentably distinct from each other because they describe a heat generating device having a tubular (cylindrical) shape, the same claimed elements, and read on the limitations of the instant application. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-3 and 5-8, 10, 12-22 are provisionally rejected on the grounds of nonstatutory double patenting of claims 1-17 of copending Application No. 18/605,069 (US 20240255192 A1). Although the conflicting claims are not identical, they are not patentably distinct from each other because they describe a heat generating device having the same claimed elements, and read on the limitations of the instant application. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-3 and 5-8, 10, 12-15, 17, 19, and 21-22 are provisionally rejected on the grounds of nonstatutory double patenting of claims 1-6 of copending Application No. 17/916,356 (US 20230152009 A1). Although the conflicting claims are not identical, they are not patentably distinct from each other because they describe a heat generating device having the same claimed elements, and read on the limitations of the instant application. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 2000042388 A teaches a hydrogen purification membrane for storing hydrogen gas.
US 20080166573 A1 teaches a hydrogen storage structure featuring multilayer absorption structures.
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