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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-8, in the reply filed on May 19, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claim 9 (method) is withdrawn from consideration as being directed to a non-elected invention.
Drawings
The drawings were received on May 12, 2025. These drawings are acceptable.
Claim Rejections - 35 USC § 112
Claims 3 and 4 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.
Claim 3
lines 4-5, “the operating temperature” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Claim 4
line 3, “the operating temperature” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
See also claim 4, line 4.
Claim Rejections - 35 USC § 102
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 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)(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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Goeltz (US Patent Application Publication No. 2024/0150908 A1).
Regarding claim 1, Goeltz teaches an electrolysis system (= a system 100) [page 7, [0056]] comprising:
• an electrolysis cell (= an electrochemical cell 105) [page 7, [0056]]; and
• a mediator reduction tank (= a regenerator 110) [page 7, [0056]] that is connected to the electrolysis cell (= out of the electrochemical cell and into the regenerator 110) [page 7, [[0056]; and Fig. 1:
PNG
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398
758
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],
wherein the electrolysis cell has:
۰ an anode electrode that electrochemically oxidizes a reduced form of a mediator (=
wherein the contacting of the anode 125 with the anolyte 140 oxidizes the reduced redox
mediator to form an oxidized redox mediator) [page 7, [0056]]; and
۰ a cathode electrode (= cathode 135) [page 7, [0056]] that performs at least one of generation of hydrogen by electrochemical reduction of protons or water and generation of an organic hydride by electrochemical reduction of a hydrogenation target substance (= water is reduced to hydrogen gas and hydroxide at the cathode) [page 8, [0056]], and
۰ the mediator reduction tank non-photochemically reduces an oxidized form of the mediator generated in the electrolysis cell (= reducing the oxidized redox mediator in the anolyte flowed into the regenerator) [page 1, [0004]].
Regarding claim 2, Goeltz teaches wherein the mediator reduction tank causes the
oxidized form to react with water or hydroxide ions (= the regenerator can include hydroxide ions) [page 5, [0037]] so as to produce the reduced form and oxygen (= reducing the oxidized redox mediator in the anolyte 150 flowed into the regenerator 110 to form O2 and to form a reduced redox mediator) [page 7, [0056]].
Regarding claim 3, Goeltz teaches wherein the mediator is composed of a redox couple (= any metal ion capable of being converted from a lower oxidation state to a higher oxidation state) [page 3, [0025]) having an electrode potential that is more noble than an electrode potential at which oxygen is generated at the anode electrode at the operating temperature of the electrolysis cell (= examples of the metal ion in the corresponding metal oxyanion include, but are not limited to, manganese, iron, chromium, et seq.) [page 3, [0025]].
Regarding claim 4, Goeltz teaches wherein the operating temperature of the mediator
reduction tank is adjusted1 to a temperature higher (= the regenerator can operate at any suitable temperature, such as a temperature of 25° C. to 500° C.) [page 5, [0036]] than the operating temperature of the electrolysis cell (= operating the electrochemical cell at any suitable temperature, such as a temperature of 25° C. to 150° C.) [page 4, [0031]].
Regarding claim 5, Goeltz teaches wherein the anode electrode oxidizes the reduced form by a reaction that does not involve gas generation (= the method can be free of producing oxygen gas at the anode) [page 5, [0037]].
Regarding claim 6, Goeltz teaches wherein the electrolysis cell and the mediator
reduction tank are physically separated from each other (= an electrochemical cell 105 and a regenerator 110) [page 7, [0056]; and Fig. 1].
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.
I. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeltz (US Patent Application Publication No. 2024/0150908 A1) as applied to claims 1-6 above, and further in view of Sugimasa et al. (US Patent Application Publication No. 2009/0000574 A1).
Regarding claim 7, Goeltz teaches the electrolysis system of at least claims 1-6 as
applied above. The reference does not explicitly teach wherein the cathode electrode generates2
the organic hydride.
Like Goeltz, Sugimasa teaches generating hydrogen by water electrolysis (page 1, [0009]).
Recently, as a way of the hydrogen storage superior to other ones from safety, portability and storability of view, a hydrocarbon organic hydride system using hydrocarbons such as cyclohexane, dekalin has been focused. These hydrocarbons are liquid state at the room temperature and have good transportability (page 1, [0007]).
The organic hydride reactor of the embodiment supplies hydrogen generated by this hydrogen generator to the hydrogenation catalyst and produces the organic hydride by the hydrogenation reaction between the organic compound and hydrogen. While the hydrogenation catalyst is able to be set outside or inside of the hydrogen chamber 1004, from a viewpoint of high efficiency of the system and its miniaturization, it is desirable to put inside the hydrogen chamber 1004. The hydrogen generator part as shown in FIG. 1, it is able to operate at the high temperature over 100 degrees C. by using a high temperature-resistant electrolyte, such as a highly concentrated alkaline solution. While the water electrolysis reaction is prone have a large reaction overvoltage, the overvoltage decreases at the high temperature and the reaction speed as well as the reaction efficiency also becomes high (page 2, [0025]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the cathode electrode taught by Goeltz with wherein the cathode electrode generates the organic hydride. The person with ordinary skill in the art would have been motivated to make this modification because producing an organic hydride by the hydrogenation reaction between an organic compound and hydrogen from water electrolysis would have been a way of hydrogen storage superior to other ones from safety, portability and storability, where these hydrocarbons are liquid state at the room temperature and would have had good transportability as taught by Sugimasa in [0007] and would have decreased the overvoltage of the water electrolysis reaction at a high temperature and the reaction speed as well as the reaction efficiency also becomes high as taught by
Sugimasa in [0025].
II. Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeltz (US
Patent Application Publication No. 2024/0150908 A1) as applied to claims 1-6 above, and further in view of de Fátima Palhares et al. (“Hydrogen Production by a Low-Cost Electrolyzer Developed Through the Combination of Alkaline Water Electrolysis and Solar Energy Use,” International Journal of Hydrogen Energy (2018 Mar 1), Vol. 43, No. 9, pp. 4265-4275).
Regarding claim 8, Goeltz teaches the electrolysis system of at least claims 1-6 as applied above. The reference does not explicitly teach a power supply that supplies power derived from renewable energy to the electrolysis cell.
Like Goeltz, de Fátima Palhares teaches water electrolysis (= Title).
Electrolysis is a relatively simple process for obtaining hydrogen and can be combined
with use of renewable energy sources, such as solar photovoltaic energy, for clean, sustainable gas production (page 4265, abstract).
The electrolytic cell was directly connected to the photo voltaic panel (page 4269, left
column, lines 17-18; and Fig. 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolysis system taught by Goeltz with a power supply that supplies power derived from renewable energy to the electrolysis cell. The person with ordinary skill in the art would have been motivated to make this modification because combining an electrolyzer for a process for obtaining hydrogen with a renewable energy source would have provided a clean, sustainable gas production as taught by de Fátima
Palhares on page 4265, abstract; page 4269, left column, lines 17-18; and Fig. 3.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Albrecht et al. (US Patent Application Publication No. 2023/0094222 A1) is cited to teach that:
In an example, the thermal reactor 180 receives the transferring electrolyte solution 182 from the electrochemical cell 150 and applies heat 184 to subject the redox mediator to the thermal reaction wherein the redox mediator in the higher oxidation state (Redox Mediator (H)) is reduced to the lower oxidation state (Redox Mediator (L)). In an example the thermal reaction in the reactor 180 also reduces at least a portion of the hydroxide ions 172 present in the transferring electrolyte solution 182 to form oxygen gas 186 and water (page 8, [0143]).
Amstutz et al. (US Patent Application Publication No. 2015/0017494 A1) is cited to teach that:
The catalytic beds 11 are assembled as follows: In a glass column (e.g. chromatography column) a frit is placed at the bottom with a view to separating the catalyst doped silica or carbon particles and the electrolyte. A hydrogen or oxygen collector is present at the upper aperture of the column, and the gas is then stored in a hydrogen 14 or oxygen 15 storage tank.
The choice of catalyst dictates the efficiency of the chemical conversion of the mediators, and the gases generated. The selectivity and the catalytic activity of the catalyst are two important aspects that have to be examined before possible application in a dual-circuit RFB (page 5, [0043]).
Itoh et al. (“Electrochemical Coupling of Benzene Hydrogenation and Water Electrolysis,” Catalysis Today (2000 Feb 25), Vol. 56, No. 1-3, pp. 307-314) is cited to teach that:
The next target is the hydrogenation process, in which hydrogen will be supplied from water electrolysis using a polymeric electrolyte. An idea postulated in this study is to combine the water electrolysis and hydrogenation in a polymer electrolyte cell. Fig. 2 represents the principle schematically. Such a direct hydrogenation process is expected to be more efficient
because the hydrogen generated on the cathode during water electrolysis can be utilized in-situ (page
308, bridging paragraph).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The
examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 The manner of operating the device does not differentiate an apparatus claim from the prior art. See MPEP § 2114(II).
2 Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP § 2114.
Prosecution Insights