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 .
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected intention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 21 May 2026.
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.
Claim 10 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 10 is indefinite regarding “saturating the…formation” . Geologically, a “formation” can be extremely large, therefore this claim language is indefinite because it is not clear if Applicant intends to saturate a portion of the formation, or the entire formation.
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.
Claim(s) 9, 10, 11, 12, 13, 14, 16, 17, 18 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Johnson US20230392485 which described identifying an iron containing source rock [0006,0031] comprising iron and additional metal [0008] in a downhole environment (fig 8); heating an aqueous based solution (fig 10 @1004) injecting (fig. 10 @1006, [0115]) reacting [0114] to produce hydrogen (0114 line 2) and additional metal [0114] and producing using production well 815 (fig 8) as called for in claim 9.
Regarding claim 10: one of ordinary skill in the art would understand that at least a portion of the formation would be saturated.
Regarding claim 11: “pressurized hot water” [0030]
Regarding claim 12: “fluid can be injected … with or without fracturing” [0030] one of ordinary skill in the art would understand that “with...fracturing” would include pressuring to a pressure greater than fracture gradient.
Regarding claim 13: Johnson provides specific examples of 250°C and 400°C [0046] and 300°C [0047] which anticipates the claimed range (MPEP 2131.03)
Regarding claim 14: “injecting H2S and other fluids to catalyze” [0052]
Regarding claim 16: see, e.g. table 1. The ratio of 2H2O1 (i.e. the water) to 3Fe2SiO4 (i.e. a portion of the rock) is plainly less than 1.
Regarding claim 17: Johnson describes the extracting hydrogen and metal ([0101] last sentence) on site2 and heating and reinjecting (“run through…heater…injected back downhole”-0103)
Regarding claim 18: at least the heating is powered by hydrogen. [0065]—" hydrogen produced … can be burned to generate heat … heating gases or liquids prior to injection into the subsurface formation by hydrogen combustion.”
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(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson US20230392485 in view of Brunet Hydrothermal Production of H2 and Magnetite From Steel Slags: A Geo-Inspired Approach Based on Olivine Serpentinization.
Johnson lacks using spinel as a catalyst .
Brunet ( page 6 first column3) suggests the use of spinel as a catalyst in production of H2 from ultramafic rocks.
It would have been obvious to one of ordinary skill in the art to have modified Johnson to have included spinel as a catalyst as claimed, in order to facilitate the H2 production.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson US20230392485 in view of US20230272698 Darrah.
Johnson broadly teaches the collecting and extracting (0101,0103) but lacks the collecting a collection tank , transporting the to an off-site location, and extracting at the off-site location.
Darrah—in the same field of endeavor—described collecting the post-reaction fluid in a collection tank (fig 4 @412, 0048 “vessels 412A-412N that may be configurable to … receive fluids recovered from the wellbore”) fluidly connected to the at least one production well; transporting the post-reaction fluid to an off-site location (0048 “recovered fluids may be directly transmitted offsite to a remote location not at the wellsite” ). This suggests to one of ordinary skill in the art extracting at the off-site location.
Examiner has shown that the prior art includes each limitation, the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods—adding the pipes tanks of Darrah using known pipefitting techniques, and transporting by pipeline or truck, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable because it merely involves use of predictable systems (pipes and tanks) and relocation of the processing to an off-site location. Therefore, in view of KSR A, the invention of claim 19 is obvious and unpatentable.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson US20230392485 in view of https://www.britannica.com/science/mafic-rock
Johnon describes lithium [0092] and minerals including “olivine” and rock types including “mafic igneous rock” (0006) but does not disclose the claimed rocks including peridotite, olivine basalt, olivine gabbro, and combinations thereof.
Britannica teaches that mafic rock is “dominated” by minerals including “olivine” and is commonly found in the forms of gabbro and basalt. Thus, the species of “olivine basalt” and “olivine gabbro” are known to be under the genus of mafic rock described in Johnson. One of ordinary skill in the art would have found it obvious to have applied the Johnson process to “olivine basalt” or “olivine gabbro” as in claim 20, because they are common types of mafic igneous rock.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/Primary Examiner, Art Unit 3672
1 2H2O has a mass of 36, and 3Fe2SiO4 has a mass of 611; which is a ratio of 0.06
2 (“on-site” is broadly interpreted to include the “ integrated” “coal plant” [0101])
3 “ Experimental data are, however, available at T below 150◦C which suggest that H2 can still be produced through the formation of Fe3+ oxi-hydroxides (Mayhew et al., 2013), with H2 formation being possibly catalyzed by the surface of spinel-structure minerals occurring in ultramafic rocks.”
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