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 without traverse of Group II, claims 14-20, in the reply filed on June 1, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1-13 (method) are withdrawn from consideration as being directed to a non-elected invention.
Drawings
The drawings were received on May 21, 2025. These drawings are acceptable.
Specification
The disclosure is objected to because of the following informalities:
page 1, [0001], line 1, please insert the words -- filed on 20 July 2023 -- after the number “18/621,351”.
Appropriate correction is required.
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)(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) 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/204938 (‘938).
Regarding claim 14, WO ‘938 teaches an electrolyzer system (= electrochemical cell 216) [ρ [0063]] comprising:
• an anode (= anode 160) [ρ [0063]];
• a cathode (= a cathode 161) ρ [0063]];
• an aqueous solution comprising carbonate or bicarbonate ions at the cathode, wherein the aqueous solution is substantially free of gaseous carbon dioxide; wherein the aqueous solution is supplied to the cathode (= an aqueous feed 217 comprising CO32- and/or HCO3- is supplied from a carbon capture process 215 to cathode 161) [ρ [0065]]; and
• an ionic membrane between the anode and the cathode, the ionic membrane
separating the anode and the cathode (= an anode 160 and a cathode 161 separated by a BPM
162) [ρ [0063]; and Fig. 2:
PNG
media_image1.png
483
804
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Greyscale
].
WO ‘938 does not explicitly teach hydrogen gas supplied to the anode.
The subject matter would have been anticipated by a person having ordinary skill in the art before the effective filing date of the claimed invention because the hydrogen gas is the material worked upon by the apparatus.
MPEP § 2115 states that “a claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims” in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).”
Furthermore, supplying hydrogen as to the anode is a method step, and thus, is not
structural to the electrolyzer system.
Regarding claim 15, WO ‘938 teaches wherein a pH of the aqueous solution is greater than about 4 (= the aqueous solution has a pH of at least 7 or at least 8) [ρ [0010]].
Regarding claim 16, WO ‘938 teaches wherein a concentration of the carbonate or
bicarbonate ions in the aqueous solution is in a range of from about 0.1 to about 10 M (= the aqueous solution supplied at the cathode comprises bicarbonate at a concentration of at least 3 moles/liter) [ρ [0010]].
Regarding claim 17, WO ‘938 teaches wherein the aqueous solution comprises potassium bicarbonate, cesium bicarbonate, and/or ammonium bicarbonate (= an aqueous solution of either 3.0 M K2CO3 or 3.0 M KHCO3) [ρ [0114]].
Regarding claim 18, WO ‘938 teaches a separator configured to separate hydrogen gas from one or more products produced by the cathode1 (= in embodiments where the product(s) are gaseous the separation stage may comprise a gas liquid separator) [ρ [0067]].
Regarding claim 19, WO ‘938 teaches wherein the aqueous solution comprises an alkali
metal carbonate (= an aqueous solution of either 3.0 M K2CO3 or 3.0 M KHCO3) [ρ [0114]].
Regarding claim 20, WO ‘938 teaches wherein the ionic membrane is a cation exchange
membrane (= a cation exchange membrane (“CEM”) may be used in place of a bipolar membrane ) [ρ [0100]].
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 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.
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