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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 October 2024, 02 January 2025, and 13 August 2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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: ‘22A and Atm.
The drawings are objected to because:
In Figs. 8, 9, 16, 23, and 24, reference character “20” has been used to designate “water supply conduit” rather than “water” as described in the specification.
The markings in the drawings are too dark (or too light) to distinguish between the various structural elements illustrated in the drawings and to identify the materials of which the structural elements are comprised. All of the figures should be reviewed and changes should be made where appropriate to more clearly illustrate the structural features of the invention.
Regarding Figs. 6B and 7B, multiple reference characters (40, 45) have been used to designate the same structural element. Only one reference character and its associated lead line should be used to designate a given structural element in each drawing.
Regarding Fig. 7A, it is unclear what the series of three dots represent. There are multiple series of dots shown in the figure. Figs. 7B, 10, 11A, 11B, 12 - 15, and 17 - 22 contain similar errors.
In Figs. 10 - 12, 17 - 20, and 27, some of the reference characters are illegible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The disclosure is objected to because of the following informalities:
In line 2 of paragraph 00203, “100-“ should be changed to “100”.
In line 14 of paragraph 00214, “compression” should be changed to “expansion”.
Appropriate correction is required.
Claim Objections
Claims 1, 2, 21, and 73 are objected to because of the following informalities:
In line 3 of claim 1, “by” should be inserted after “bounded”.
In line 2 of claim 2, “the” should be inserted before “auxiliary gas release subsystem”.
In line 3 of claim 21, “by” should be inserted after “bounded”.
In line 3 of claim 73, “by” should be inserted after “bounded”.
Appropriate correction is required.
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, 2, 9 - 11, 21 - 25, 27, 35, 38, 47 - 49, 73, 81, 92, and 93 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.
Regarding claim 81, it is unclear whether “a higher, exit temperature” refers to the exit temperature as recited in claim 73, from which claim 81 depends, or if it represents an additional limitation.
There is insufficient antecedent basis for the following limitations in the claims:
Claim 1, line 12: “the lower end”. Examiner notes that “the lower end” is recited twice in line 12. It is unclear whether “the lower end” refers to the lower end of the gas compressor/expander subsystem or the lower end of the shaft.
Claim 1, line 13: “the upper end”. It is unclear whether “the upper end” refers to the upper end of the gas compressor/expander subsystem or the upper end of the shaft.
Claim 21, line 12: “the lower end”. Examiner notes that “the lower end” is recited twice in line 12. It is unclear whether “the lower end” refers to the lower end of the gas compressor/expander subsystem or the lower end of the shaft.
Claim 21, line 13: “the upper end”. It is unclear whether “the upper end” refers to the upper end of the gas compressor/expander subsystem or the upper end of the shaft.
Claim 38, line 2: “the liquid conduit”
Claim 73, line 11: “the lower end”. Examiner notes that “the lower end” is recited twice in line 12. It is unclear whether “the lower end” refers to the lower end of the gas compressor/expander subsystem or the lower end of the shaft.
Claim 73, line 12: “the upper end”. It is unclear whether “the upper end” refers to the upper end of the gas compressor/expander subsystem or the upper end of the shaft.
Claim 81, line 6: “the temperature”
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, 2, 9 - 11, 21 - 25, 27, 35, 38, 47 - 49, 73, 81, 92, and 93 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 10,859,207 Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the ‘207 patent recites all of the structural limitations recited in claims 1 and 21 of the present application.
Claim 4 of the ‘207 patent recites all of the structural limitations recited in claim 73 of the present application.
Claim Rejections - 35 USC § 103
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, 21, 22, 24, 25, 27, 35, 38, and 47 - 49 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US 2003/0021631).
Regarding claims 1 and 21, Hayashi discloses a compressed gas energy storage system comprising: a) an accumulator (rock-bed cavity 11) having a primary opening, an upper wall (top wall of cavity 11), a lower wall (bottom wall of cavity 11) and an accumulator interior at least partially bounded the upper wall and lower wall, the accumulator for containing a layer of compressed gas atop a layer of liquid when in use; b) a gas compressor/expander subsystem (compressor and generator disposed at an electric power generating facility 26) spaced apart from the accumulator (11) and a gas conduit (gas pipe 16) having an upper end in communication with the gas compressor/expander subsystem and a lower end in communication with the accumulator interior for conveying compressed gas into the compressed gas layer of the accumulator when in use; c) a shaft (12) having a lower end adjacent the primary opening, an upper end spaced apart from the lower end, and a shaft sidewall extending upwardly from the lower end to the upper end and at least partially bounding a shaft interior for containing a quantity of a liquid (liquid in bentonite slurry 13), the shaft being fluidly connectable to a liquid source/sink via a liquid supply conduit (mud feed pipe 18); d) a partition (plug 19) covering the primary opening and separating the accumulator interior from the shaft interior, the partition having an outer surface in communication with the shaft interior and an opposing inner surface in communication with the accumulator interior; e) an auxiliary gas release subsystem (openings/spaces between rock particles in the ceiling part 15 through which gas leaks out of the cavity 11) configured to facilitate release of gas from the layer of gas within the accumulator; and f) wherein, when in use, at least one of the layer of compressed gas and the layer of liquid bears against and exerts an internal accumulator force on the inner surface of the partition and the quantity of liquid within the shaft bears against and exerts an external counter force on the outer surface of the partition (Figs. 1 - 4; paragraphs 0024 - 0030 and 0032). Although Hayashi fails to explicitly teach a net force acting on the partition while the compressed gas energy storage system is in use is a difference between the accumulator force and the counter force and is less than the accumulator force, the system as taught by Hayashi would obviously be required in order for the system to operate as designed.
Regarding claim 22, Hayashi further discloses a liquid conduit (18 ) providing fluid communication between the liquid (13) in the shaft interior and the layer of liquid (17) in the accumulator (11), whereby liquid can flow between the shaft interior and the layer of liquid in the accumulator in response to changes in the pressure of the layer of compressed gas (Fig. 1; paragraphs 0027 - 0029).
Regarding claim 24, Hayashi further discloses the liquid conduit (18) passes through the partition (19) (Figs. 1, 2, and 4).
Regarding claim 25, Hayashi further discloses a second end of the liquid conduit (18) is submerged in the layer of liquid (17) and remains fluidly isolated from the layer of gas when the compressed gas energy storage system is in use (Fig. 1).
Regarding claim 27, Hayashi discloses all of the claim limitations except the specific pressure difference (about 0.3 atm to about 6 atm) across the partition when the compressed gas energy storage system is in use. Examiner takes the position that the specific range of pressure differences lacks criticality in the claims and is a design consideration within the skill of the art.
Regarding claim 35, Hayashi further discloses the upper wall of the accumulator (11) is substantially planar and is oriented substantially horizontally (Figs. 1 and 2).
Regarding claim 38, Hayashi further discloses the liquid conduit (18) passes beneath the partition (19) (Figs. 1, 2, and 4).
Regarding claim 47, Hayashi further discloses the partition (19) is a bulkhead positioned to seal the primary opening (Figs. 1, 2, and 4; paragraph 0029).
Regarding claim 48, Hayashi further discloses the partition (19) is formed at least partially from concrete (paragraph 0029).
Regarding claim 49, Hayashi further discloses the partition (19) is at least partially buried under the ground and the partition is at least partially comprised of the ground (the top part 15 of the cavity 11 is comprised of ground and the plug 19 is connected to the top wall of the cavity, the top wall comprising ground) (Figs. 1 and 2). Examiner takes the position that since the plug 19 must be connected to the top wall in order to function as designed, the portion of the top wall that abuts/connects to the plug is a part of the partition because it forms part of the partition between the interior of the accumulator and the interior of the shaft (Figs. 1 and 2; paragraph 0029).
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. in view of Flynt (US 3,831,373).
Regarding claim 2, Hayashi fails to disclose an auxiliary gas release conduit having an inlet in communication with the accumulator interior and an outlet and wherein the auxiliary gas release conduit is spaced apart from the gas conduit. Flynt teaches a gas conduit (22), an accumulator (reservoir 26), and an auxiliary gas release conduit (31) having an inlet in communication with the accumulator interior and an outlet and wherein the auxiliary gas release conduit is spaced apart from the gas conduit (Fig. 1; col. 3, line 49 - col. 4, line 60). Examiner notes that Flynt teaches a system comprising a single gas conduit in communication with an accumulator interior (Fig. 2) and a system comprising a gas conduit in communication with an accumulator interior and an auxiliary gas release conduit in communication with an accumulator interior (Fig. 1). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the gas conduit and auxiliary gas release conduit as taught by Fig. 1 of Flynt for the single gas conduit as disclosed by Hayashi as a design consideration within the skill of the art.
Regarding claim 10, Hayashi fails to disclose a gas release valve that is in fluid communication with the layer of compressed gas and is selectably openable to permit the release of gas from within the accumulator. Flynt teaches a gas release valve (33) that is in fluid communication with the layer of compressed gas and is selectably openable to permit the release of gas from within the accumulator (26) (Fig. 1; col. 4, lines 35 - 38) to control the flow of air out of the accumulator. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the gas conduit and auxiliary gas release conduit as taught by Fig. 1 of Flynt for the single gas conduit as disclosed by Hayashi as a design consideration within the skill of the art.
Claims 73 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. in view of Bove et al. (US 2013/0061591). Hayashi discloses a compressed gas energy storage system comprising: a) an accumulator (rock-bed cavity 11) having a primary opening, an upper wall (top wall of cavity 11), a lower wall (bottom wall of cavity 11) and an accumulator interior at least partially bounded the upper wall and lower wall, the accumulator for containing a layer of compressed gas atop a layer of liquid when in use; b) a gas compressor/expander subsystem (compressor and generator disposed at an electric power generating facility 26) spaced apart from the accumulator (11) and a gas conduit (gas pipe 16) having an upper end in communication with the gas compressor/expander subsystem and a lower end in communication with the accumulator interior for conveying compressed gas into the compressed gas layer of the accumulator when in use; c) a shaft (12) having a lower end adjacent the primary opening, an upper end spaced apart from the lower end, and a shaft sidewall extending upwardly from the lower end to the upper end and at least partially bounding a shaft interior for containing a quantity of a liquid (liquid in bentonite slurry 13), the shaft being fluidly connectable to a liquid source/sink via a liquid supply conduit (mud feed pipe 18); and e) a partition (plug 19) positioned at the lower end of the shaft (12) and covering the primary opening and separating the accumulator interior from the shaft interior, the partition having an outer surface in communication with the shaft interior and an opposing inner surface in communication with the accumulator interior; wherein at least one of the layer of compressed gas and the layer of liquid bears against and exerts an internal accumulator force on the inner surface of the partition and the quantity of liquid within the shaft bears against and exerts an external counter force on the outer surface of the partition (Figs. 1 - 4; paragraphs 0024 - 0030 and 0032). Although Hayashi fails to explicitly teach a net force acting on the partition while the compressed gas energy storage system is in use is a difference between the accumulator force and the counter force and is less than the accumulator force, the system as taught by Hayashi would obviously be required in order for the system to operate as designed. Hayashi fails to disclose a thermal storage subsystem provided in fluid communication between the gas compressor/expander subsystem and the accumulator, whereby thermal energy is extracted from the compressed gas exiting the gas compressor/expander subsystem at an exit temperature and stored in the thermal storage subsystem and the temperature of the gas exiting the thermal storage subsystem is reduced to a storage temperature that is less than the exit temperature. Bove teaches a thermal storage subsystem (thermal energy system 60) provided in fluid communication between the gas compressor/expander subsystem (compressor 52) and the accumulator (62), whereby thermal energy is extracted from the compressed gas exiting the gas compressor/expander subsystem at an exit temperature and stored in the thermal storage subsystem and the temperature of the gas exiting the thermal storage subsystem is reduced to a storage temperature that is less than the exit temperature (Fig. 3; paragraphs 0039, 0040, and 0045). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the system as disclosed by Hayashi with the thermal storage subsystem as taught by Bove to improve the efficiency of power generation using a compressed air energy storage system.
Claims 92 and 93 rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. in view of Bove et al. as applied to claim 73 above, and further in view of Grennan (US 5,634,340).
Regarding claim 92, Hayashi in view of Bove discloses all of the claim limitation(s) except the gas the compressor/expander subsystem comprises a first compression stage and at least a second compression stage downstream from the first compression stage, and wherein the thermal storage subsystem comprises a first thermal storage stage in fluid communication between the first compression stage and the second compression stage, and a second thermal storage stage in fluid communication the second compression stage and the layer of gas in the accumulator. Grennan teaches the gas the compressor/expander subsystem comprises a first compression stage (compression section 2) and at least a second compression stage (compression section 10) downstream from the first compression stage, and wherein the thermal storage subsystem comprises a first thermal storage stage (cooler 6) in fluid communication between the first compression stage and the second compression stage, and a second thermal storage stage (cooler 88) in fluid communication the second compression stage and the layer of gas in the accumulator (gas storage chamber 32) (Fig. 1; col. 3, lines 26 - 67). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the plurality of compression stages and the plurality of thermal storage stages as taught by Grennan to improve compression efficiency by utilizing staged compression with cooling between stages.
Regarding claim 93, Hayashi in view of Bove discloses all of the claim limitation(s) except the gas the compressor/expander subsystem comprises a first expansion stage (expansion section 48) and at least a second expansion stage (expansion section 56) downstream from the first expansion stage, and wherein the thermal storage subsystem comprises a third thermal storage stage (combustor 44) in fluid communication between the layer of gas in the accumulator (32) and the first expansion stage, and a fourth thermal storage stage (combustor 52) in fluid communication between the first expansion stage and the second expansion (Fig. 1; col. 4, lines 1 - 21). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the plurality of expansion stages and the plurality of thermal storage stages as taught by Grennan to improve expansion efficiency by utilizing staged expansion with heating between stages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
2/11/2026