www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`13/984,413
`
`08/08/2013
`
`Kenichi TOkuhil‘O
`
`20296.0022USWO
`
`4464
`
`53148
`
`759°
`
`09/24/2018
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`ALAM' RASHID A
`
`PAPER NUMBER
`
`ART UNIT
`1722
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/24/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`13/984,413
`Examiner
`RASHIDAALAM
`
`Applicant(s)
`Tokuhiro et al.
`Art Unit
`1721
`
`AIA Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 12/12/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1,4—10 and 12—31 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1,4—10 and 12—31 is/are rejected.
`
`[:1 Claim(s)
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
`
`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)I:J Some”
`
`c)C] None of the:
`
`1.[:]
`
`Certified copies of the priority documents have been received.
`
`2.[:]
`
`Certified copies of the priority documents have been received in Application No.
`
`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180411
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`2.
`
`The applicant’s request for reconsideration filed on 12/12/2017 was
`
`received. Claims 1 was amended. Claim 11 was cancelled. Claims 28-31 were added.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`3.
`
`Claims 1, 8, 9, 12-17, 20, 27, 29, and 30, are rejected under pre-AIA 35 U.S.C.
`
`103(a) as being unpatentable over Smith (US 20090321244 A1) in view of Tange (US
`
`2010/0330443 A1 ), Schmittman (US 2002/0090868), and ltoga (US 20110212371 A1 ).
`
`Regarding claims 1 and 29, Smith teaches an energy system being a fuel cell
`
`system comprising a reaction vessel 10 and 12 that is a unit for generating hydrogen
`
`that is a solar hydrogen producing unit (abstract, [0064], fig. 1). The function of the
`
`reaction vessel 10 and 12 is to produce hydrogen by the decomposition of water
`
`([0064]). Smith teaches a fuel cell 32 that uses the hydrogen produced from the
`
`hydrogen producing unit 10 and 12 ([0064], fig. 1). The function of the fuel cell is to
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 3
`
`generate electricity with a reaction between the hydrogen generated by the solar
`
`hydrogen producing unit and an oxidizing gas and discharges water as a reaction
`
`product ([0064]). The fuel cell comprises of a discharge channel that discharges water
`
`that is a reaction product of the fuel cell (fig. 1, [0064]). Smith teaches an external water
`
`supply unit 22 (fig. 1, [0064]). Smith teaches hydrogen storage equipment 28 that
`
`stores hydrogen produced from the solar hydrogen producing unit 10 and 12 and is
`
`used in the fuel cell 32 (fig. 1, [0064]). Smith teaches essential component of a process
`
`for generating hydrogen is a source of hydrogen atoms ([0059]). Water is an abundant,
`
`economical source of hydrogen atoms ([0059]). Starting materials may include water or
`
`a material that liberates water ([0059]). The water used in the process is preferably
`
`processed, using a purification step, to remove impurities ([0059]). Smith states that
`
`such a purification step may include a filtering step ([0059]). Smith teaches a water
`
`distribution system with a fluid path on the fuel cell 32 (fig. 1). However, Smith is silent
`
`about a water distribution mechanism configured to return water serving as the reaction
`
`product discharged from the fuel cell, a water purifier, a first liquid path connecting the
`
`fuel cell to the water purifier, second liquid path connecting the water purifier to the solar
`
`producing unit, and the hydrogen storage equipment comprising a hydrogen storage
`
`alloy.
`
`Tange teaches a fuel cell 70 comprising a hydrogen generating unit 20 (abstract,
`
`fig. 7, [0087]). Thus Tange is analogous art. The fuel cell is connected to a water
`
`distribution line 60 that comprises of a water filter 61 (fig. 7, [0110]). The water filter 61
`
`is taken as the water purifier of the claims. Tange teaches the predictable result of
`
`providing water from the fuel cell to the hydrogen production unit to provide enough
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 4
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`water to facilitate reactions in the hydrogen production unit to achieve a high hydrogen
`
`production rate for the fuel cell ([0112]). Tange and Smith both teach a hydrogen
`
`producing unit, a fuel cell, a water supply line, and a water distribution mechanism. The
`
`examiner is combining the references of Tange and Smith such that the water
`
`distribution system and the water filter of Tange are added to the fuel cell system of
`
`Smith.
`
`It would be obvious to combine the water distribution system and the water filter
`
`from Tange in Smith, because Tange teaches material in system in similar way and this
`
`is a simple combination of one known prior art element for another in order to achieve
`
`predictable results. However, Smith and Tange are silent about a water supply unit
`
`receiving external water and the hydrogen storage equipment comprising a hydrogen
`
`storage alloy.
`
`Schmittman teaches an energy system comprising of a fuel cell 22, a solar
`
`hydrogen producing system 28, 18, and a water distribution system 12, 14, 15,16,20
`
`(abstract, fig. 2, [0017], [0037]-[0038], [0029], [0009], [0010], [0025]). The electrical
`
`source 28 is powered by solar electrical system which powers the hydrogen producing
`
`unit ([0029]). Thus, Schmittman is analogous art. Schmittman teaches an external
`
`water supply 15 (fig. 2). Pre-filtered and purified water could be introduced directly into
`
`the product water storage tank 20 through an external valve 15 ([0025]). This is taken
`
`as the water supply unit receiving external water.
`
`It would be obvious to combine the water supply unit from Schmittman in Smith,
`
`because Schmittman teaches material in system in similar way and this is a simple
`
`combination of one known prior art element for another in order to achieve predictable
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 5
`
`results. However, Smith, Tange, and Schmittman are silent about and the hydrogen
`
`storage equipment comprising a hydrogen storage alloy.
`
`|toga teaches fuel cell system includes a fuel cell; a circulating system that
`
`circulates and supplies fuel off-gas discharged from the fuel cell to the fuel cell; a pump
`
`that pumps a fluid in the circulating system; a discharge valve through which the fluid in
`
`the circulating system is discharged to the outside; and a control device that controls the
`
`pump and the discharge valve (abstract).
`
`|toga teaches the fuel cell system comprises
`
`of a water distribution system as well ([0008]-[0010], fig. 1). This makes |toga
`
`analogous art.
`
`|toga teaches hydrogen may be supplied via a hydrogen storage alloy
`
`([0021]). The difference between |toga and Smith is that Smith teaches hydrogen may
`
`be supplied via a hydrogen storage alloy. The examiner is combining the hydrogen
`
`storage alloy from |toga in to Smith.
`
`It would be obvious to combine the hydrogen storage alloy unit from |toga in
`
`Smith, because |toga teaches material in system in similar way and this is a simple
`
`combination of one known prior art element for another in order to achieve predictable
`
`results.
`
`Regarding claim 8, Tange teaches the water is flowed from the fuel cell 70 to the
`
`water filter 61 to the hydrogen producing unit 20 which is connected to the fuel cell to
`
`provide the fuel cell with hydrogen (fig. 7, [0110]-[0119]). Tange teaches a great
`
`amount of excess water is used to produce the hydrogen and flowed through the
`
`system ([0110]-[0119]). Since a great amount of excess water is used and not all the
`
`water is reacted ([0110]-[0119]), some water is returned back to the fuel cell after
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 6
`
`passes through the filter (fig. 7, [0110]—[0119]). This water that is not reacted naturally
`
`will humidify the fuel cell and cool the fuel cell.
`
`Regarding claim 9, Tange teaches the water is recirculated through the system
`
`and through the filter 61 (fig. 7, [0110]). All of the water is purified and any unreacted
`
`water is also purified. Thus, the water purifier purifies water remaining after the interior
`
`of the stack of the fuel cell is humidified and water serving as a reaction product
`
`discharged from the fuel cell.
`
`Regarding claims 12-14, Smith and Tange teach as stated above. However,
`
`Smith and Tange are silent about a water storage equipment and a heat exchanger as a
`
`cooler.
`
`Schmittman teaches the pipe 23 by which the water is flowed is the water
`
`storage equipment and the water is present in the pipe, which is temporarily stored.
`
`Since the claim states “temporarily stored”, the pipe by which the water exits the fuel is
`
`the water storage equipment (see fig. 2 of Schmittman). Further Schmittman teaches a
`
`heat exchanger 36 which is taken as the first cooler of claims 13 and 14 (fig. 2, [0037]).
`
`It would be obvious to combine the storage of water and the heat exchanger from
`
`Schmittman in Smith, because Schmittman teaches material in system in similar way
`
`and this is a simple combination of one known prior art element for another in order to
`
`achieve predictable results.
`
`Regarding claims 15 and 16, Smith and Tange teach as stated above. However,
`
`Smith and Tange are silent about a heat exchanger as a cooler.
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 7
`
`Schmitmann teaches a heat exchanger 36 cooling/condensing the water
`
`discharged from the fuel cell 22 (fig. 2). The heat exchanger 36 is taken as the second
`
`cooler. The examiner is taking the first cooler and the second cooler of the claims to be
`
`the same cooler since they are not differentiated in the claims because they depend on
`
`claim 1.
`
`It would be obvious to combine the heat exchanger from Schmittman in Smith,
`
`because Schmittman teaches material in system in similar way and this is a simple
`
`combination of one known prior art element for another in order to achieve predictable
`
`results.
`
`Regarding claim 17, Smith teaches the solar hydrogen producing unit 10 is a
`
`reaction cell, which inherently comprises of an electrode, that is housed in a housing as
`
`shown in fig.
`
`1 (fig. 1, [0036], and [0064]).
`
`Regarding claim 20, Smith teaches the system uses hydrogen gas as the fuel
`
`gas for the anode chamber (abstract, fig. 1, [0064]-[0067]). Smith teaches oxygen as
`
`an oxidizing gas for the cathode chamber (abstract, fig. 1, [0064]-[0067]). The way a
`
`fuel cell functions is that hydrogen is fed to the anode side, so this claim is met.
`
`Regarding claim 27, as modified, the addition of the water purifier (filter) of Tange
`
`on the liquid path of Smith forms a second liquid path that is not provided with a tank
`
`because it is a second liquid path that is isolated between the filter and the solar
`
`hydrogen producing unit.
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 8
`
`Regarding claim 30, Smith teaches the system may also include a means 22 of
`
`providing water 14 into the 10 cell of the reaction vessel. Such means (e.g. a pump)
`
`may include circulating the water 14 in a liquid or a gas state ([0064]). Thus, the means
`
`for providing the water is also a storage vessel for water because the water is
`
`circulated. The means to provide water 22 is storing the water the time the water is
`
`reintroduced during circulation of the water back in to the fuel cell ([0064], fig. 1).
`
`4.
`
`Claims 4-5 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
`
`over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1), Schmittman (US
`
`2002/0090868), and ltoga (US 20110212371 A1), as applied to claim 1, in view of
`
`Anderson (US 2005/0109393 A1).
`
`Regarding claims 4-5, Smith, Smith, Tange, Schmittman, and ltoga, teach above.
`
`However, Smith, Smith, Tange, Schmittman, and ltoga are silent about a water level
`
`sensor and a control unit as well as the set value is set to a water level at which an
`
`electrode unit of the solar hydrogen producing unit is not exposed from an electrolyte.
`
`Anderson teaches a fuel cell system comprising a fuel cell, a solar powered
`
`electrolysis unit, and a liquid distribution system (abstract, fig. 1). This makes Anderson
`
`analogous art. The electrolysis unit is connected with the source of water, receives
`
`water from the source of water, provides the electrolysis of the water, and produces
`
`hydrogen gas and oxygen gas ([0009]). The solar panel is connected with the
`
`electrolysis unit, receives solar rays, and provides electrical energy to the electrolysis
`
`unit ([0009]). The byproduct of the electrolysis unit is hydrogen which is provided to the
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 9
`
`fuel cell (abstract, [0007]). The electrolysis unit comprises of a water level sensor
`
`([0010]). The examiner is substituting the solar powered electrolysis unit from Anderson
`
`for the solar powered electrolyzer of Yagi. Anderson further teaches a controller
`
`([0009]). The electrolysis chamber 31 may be filled with water from the water tank 90 or
`
`any other source of water via the water fill inlet 36 and the water fill valve 361 up to a
`
`preset level. The water level in the electrolysis chamber may be monitored and
`
`controlled by the system controller 70 ([0026]). Thus, the set value is set to a water
`
`level at which an electrode unit of the solar hydrogen producing unit is not exposed from
`
`an electrolyte. The water level sensor detects the water level of the electrolysis unit
`
`([0026]). The sensor detects when the electrolysis unit is filled ([0026]). Thus,
`
`Anderson teaches a water level sensor in order to recirculate the water in the system
`
`and avoid the water to buildup in the system. Anderson teaches a controller taken as
`
`the control unit of the claims. Since a controller of Anderson is connected to all of the
`
`components of the system (fig. 1), the functions described above are capable of being
`
`performed. The water level sensor sends a signal to a control unit when the water level
`
`decreases to a set value set in advance, causes the water supply unit to supply a
`
`predetermined amount of conducting water to the solar hydrogen producing unit upon
`
`receiving the signal.
`
`It would be obvious to substitute the water supply unit from Anderson in Smith,
`
`because Anderson teaches material in system in similar way and this is a simple
`
`substitution of one known prior art element for another in order to achieve predictable
`
`results.
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 10
`
`Further, it would be obvious to combine the controller from Anderson in Smith,
`
`because Anderson teaches material in system in similar way and this is a simple
`
`combination of one known prior art element for another in order to achieve predictable
`
`results.
`
`5.
`
`Claims 6-7 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
`
`over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1), Schmittman (US
`
`2002/0090868), ltoga (US 20110212371 A1), and Anderson (US 2005/0109393 A1), as
`
`applied to claim 4, in view of Tamura (US 20090291337 A1).
`
`Regarding claims 6-7, Smith, Tange, Schmittman, ltoga, and Anderson teach as
`
`stated above. However, Smith, Tange, Schmittman, ltoga, and Anderson are silent
`
`about the water level sensor located on the circulation path.
`
`Tamura teaches a hydrogen generator, a fuel cell, a water purifier, and a
`
`circulation path for the water used in the system (abstract, fig. 1). The hydrogen
`
`produced from the hydrogen generator is used in the fuel cell (fig. 1, [0010]-[0019]).
`
`This makes Tamura analogous art. Tamura teaches the use of water level sensors 11
`
`and 12 that are located on the circulation path of the water in the fuel cell system (figs. 3
`
`and 4, [0027]-[0029]).
`
`It would be obvious to combine the location of the water level sensor from
`
`Tamura in Smith, because Tamura teaches material in system in similar way and this is
`
`a simple combination of one known prior art element for another in order to achieve
`
`predictable results.
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 11
`
`6.
`
`Claims 10, 21, and 23, are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1),
`
`Schmittman (US 2002/0090868), and ltoga (US 20110212371 A1), as applied to claim
`
`1, in view of Yagi (JP 2004- 259480).
`
`Regarding claim 10, Smith, Tange, Schmittman, and ltoga teach as stated
`
`above. However, Smith, Tange, Schmittman, and ltoga, are silent about the use of a
`
`semiconducting material.
`
`Yagi teaches an energy system being a fuel cell system comprising a cracking
`
`unit 1 that is an electrolyzer for generating hydrogen that is powered by a solar cell
`
`(abstract, [0020]-[0024], [0039], fig. 1). The function of an electrolyzer is to produce
`
`hydrogen by the decomposition of water. Yagi teaches a fuel cell 3 ([0038], fig. 1). The
`
`function of the fuel cell is to generate electricity with a reaction between the hydrogen
`
`generated by the solar hydrogen producing unit and an oxidizing gas and discharges
`
`water as a reaction product ([0004]-[0013]). The fuel cell comprises of a discharge
`
`channel 13 that discharges water that is a reaction product of the fuel cell (fig. 1,
`
`[0020]). The water that is discharged is fed back in to the electrolyzer for producing
`
`hydrogen for the fuel cell ([0020]). This is taken as a water distribution mechanism.
`
`Yagi teaches a liquid path 13 that is connected to the fuel cell 3 and the solar hydrogen
`
`producing unit 1 (fig. 1, [0020]). This makes Yagi analogous art. Yagi teaches during
`
`the electrolysis of water, the electrolyzer uses a photocatalyst to decompose water into
`
`hydrogen and oxygen, a second electrode electrically ([0039]). A photocatalyst is the
`
`same semiconductive material used by the instant application (see published
`
`specification [0025]). The photocatalyst of Yagi is inherently semiconductive in order to
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 12
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`function to decompose the water in to hydrogen. Yagi teaches the predictable result of
`
`decomposing water.
`
`It would be obvious to combine the semiconductive catalyst from Yagi in Smith,
`
`because Yagi teaches material in system in similar way and this is a simple combination
`
`of one known prior art element for another in order to achieve predictable results.
`
`Regarding claims 21 and 23, Smith, Smith, Tange, Schmittman, and ltoga teach
`
`as stated above. However, Smith, Tange, Schmittman, and ltoga, are silent about the
`
`first liquid path fluidly connects the water purifier to an outlet of the cathode chamber
`
`and the first liquid path is connected to a cathode of the fuel cell.
`
`Yagi teaches the liquid path is connected to the cathode as shown:
`
`
`
`
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`
`(fig. 1). Yagi teaches the predictable result
`
`of providing the fuel cell with raw materials to allow the fuel cell to function as intended.
`
`It would be obvious to combine the connection of the cathode to the distribution
`
`system from Yagi in Smith, because Yagi teaches material in system in similar way and
`
`this is a simple combination of one known prior art element for another in order to
`
`achieve predictable results.
`
`

`

`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 13
`
`7.
`
`Claims 18-19 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
`
`over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1), Schmittman (US
`
`2002/0090868), and Itoga (US 20110212371 A1), as applied to claim 17, in view of
`
`Hado (WO 2010146849 A1 with US 20110174610 A1 as an English equivalent).
`
`Regarding claims 18-19, Smith, Tange, Schmittman, and ltoga, teach as stated
`
`above. However, Smith, Tange, Schmittman, and ltoga, are silent about the electrode
`
`unit comprises a photocatalytic semiconductor electrode and a counter electrode, and
`
`the photocatalytic semiconductor electrode comprises a conductive substrate and a
`
`photocatalytic semiconductor layer formed on the surface of the conductive substrate.
`
`Hado teaches a photoelectrochemical cell (1) for a fuel cell ([0057]) is a
`
`photoelectrochemical cell for decomposing water by irradiation with light so as to
`
`produce hydrogen. This photoelectrochemical cell (1) includes: a conductive substrate;
`
`a first electrode (optical semiconductor electrode (3)) including an optical semiconductor
`
`and disposed on a first main surface of the conductive substrate; a second electrode
`
`(counter electrode (4)) disposed in a region on the first main surface of the conductive
`
`substrate where the first electrode is not disposed; an electrolyte containing water and
`
`disposed in contact with a surface of the first electrode and a surface of the second
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`electrode; a rib (5) formed to separate a space above the surface of the second
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`electrode from a space above the surface of the first electrode and to extend along a
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`flow direction of a gas produced on the surface of the second electrode, the rib being
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`formed of a material that allows ions to pass therethrough and prevents a gas from
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`passing therethrough; and a container (2) containing the conductive substrate, the first
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`

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`Application/Control Number: 13/984,413
`Art Unit: 1722
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`Page 14
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`electrode (cathode), the second electrode (anode), the electrolyte, and the rib
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`(abstract).
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`Therefore, it would have been obvious to one skilled in the art at the time of the
`
`invention to have a fuel cell system comprising a solar hydrogen producing unit
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`comprises a housing and an electrode unit, the electrode unit comprises a
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`photocatalytic semiconductor electrode and a counter electrode, and the photocatalytic
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`semiconductor electrode comprises a conductive substrate and a photocatalytic
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`semiconductor layer formed on the surface of the conductive substrate by Smith,
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`Tange, and Schmittman, because Hado teaches a solar hydrogen producing unit
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`comprises a housing and an electrode unit, the electrode unit comprises a
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`photocatalytic semiconductor electrode and a counter electrode, and the photocatalytic
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`semiconductor electrode comprises a conductive substrate and a photocatalytic
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`semiconductor layer formed on the surface of the conductive substrate in order provide
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`a photoelectrochemical cell that allows separate collection of produced hydrogen and
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`oxygen, and prevents the produced gas from covering the electrode surface so as to
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`improve the hydrogen production efficiency.
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`8.
`
`Claim 22, 24, 25, and 26, are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1),
`
`Schmittman (US 2002/0090868), and ltoga (US 20110212371 A1), as applied to claim
`
`1, in view of Yokoyama (US 2009/0011299).
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`

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`Application/Control Number: 13/984,413
`Art Unit: 1722
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`Page 15
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`Regarding claims 22, 24, 25, and 26, Smith, Tange, Schmittman, and ltoga teach
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`above. However, Smith, Tange, Schmittman, and ltoga, are silent about pump on the
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`first liquid path.
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`Yokoyama teaches a fuel cell system as shown:
`
`
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`Yokoyama teaches a control unit 40, a water purifier 71, a fuel cell 2, and a water
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`distribution system 75, PU3, 8V5 (fig. 1). As can be seen, the water exits the fuel cell
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`stack 2 and recirculates back in the system through the water purifier (fig. 1).
`
`Yokoyama teaches a control unit 40, a water purifier 71, a fuel cell 2, a water level
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`sensor 14, and a water distribution system 75, PU3, 8V5 (fig. 1, [0048]). Thus
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`Yokoyama is analogous art. Yokoyama teaches a pump PU3 to flow the water through
`
`

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`Application/Control Number: 13/984,413
`Art Unit: 1722
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`Page 16
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`the system for recycling ([0046] and fig. 1). Since the pump is utilized to flow the water
`
`through the system, one skilled in the art at the time of the invention would have
`
`recognized to move the pump from one side of the water purifying unit to the other side,
`
`or the inlet side which is taken as the first liquid path. Therefore, it would have been
`
`obvious to one having ordinary skill in the art at the time the invention was made to
`
`modify the apparatus of Yokoyama to have a pump on the first liquid path, as such
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`modification would involve a mere change in configuration.
`
`It has been held that a
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`change in configuration of shape of a device is obvious, absent persuasive evidence
`
`that a particular configuration is significant.
`
`In re Dailey, 357 F.2d 669, 149 USPQ 47
`
`(CCPA 1966). Regarding the second liquid path being provided with a second pump,
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`as combined, Smith and Tange teach a first and second fluid path by placing the purifier
`
`of Tange on the fluid path of Yagi (see above). The addition of a second pump for use
`
`to flow the water through the system would have been obvious to one having ordinary
`
`skill in the art at the time the invention was made. Mere duplication of parts has no
`
`patentable significance unless a new and unexpected result is produced.
`
`In re Harza,
`
`124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of
`
`the essential working parts of a device involves only routine skill in the art. St. Regis
`
`Paper Co. v. Bemis Co., 193 USPQ 8.
`
`Thus, the limitation of the second liquid path being provided with a second pump
`
`is satisfied because, as modified, it would have been obvious to add a second pump to
`
`the second liquid path once the filter of Tange is placed on the lilquid path of Smith.
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`Two liquid paths are present and the addition of a second pump on the second liquid
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`path is a mere duplication of parts.
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`

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`Application/Control Number: 13/984,413
`Art Unit: 1722
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`Page 17
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`It would be obvious to combine the pump from Yokoyama in Smith, because
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`Yokoyama teaches material in system in similar way and this is a simple combination of
`
`one known prior art element for another in order to achieve predictable results.
`
`1.
`
`Claims 28 and 31 are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Smith (US 20090321244 A1), Tange (US 2010/0330443 A1),
`
`Schmittman (US 2002/0090868), and ltoga (US 20110212371 A1), as applied to claim
`
`1, in view of Hado (WO 2011058723 A1 with US 20120276464 A1 as an English
`
`equivalent).
`
`Regarding claim 28, Smith, Tange, Schmittman, and ltoga teach as stated
`
`above. However, Smith, Tange, Schmittman, and ltoga are silent about the system
`
`having a compressor.
`
`Hado teaches a fuel cell system comprising a solar hydrogen gas producing cell
`
`500, a hydrogen storage means 610, a fuel cell 620 (abstract, fig. 11, [0166]). Thus
`
`makes Hado analogous art. Hado teaches The hydrogen storage 610 is connected to
`
`the second chamber 580 (see FIG. 10) of the photoelectrochemical cell 500 by a first
`
`pipe 641. The hydrogen storage 610 can be constituted, for example, by a compressor
`
`for compressing the hydrogen generated in the photoelectrochemical cell 500 and a
`
`high-pressure hydrogen tank for storing the hydrogen compressed by the compressor
`
`([0147]). Hado teaches the predictable result of storing compressed hydrogen gas for
`
`use in the fuel cell.
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`

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`Application/Control Number: 13/984,413
`Art Unit: 1722
`
`Page 18
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`It would be obvious to combine the compressor from Hado in Smith, because
`
`Yokoyama teaches material in system in similar way and this is a simple combination of
`
`one known prior art element for another in order to achieve predictable results.
`
`Regarding claim 31, Smith teaches an energy system being a fuel cell system
`
`comprising a reaction vessel 10 and 12 that is a unit for generating hydrogen that is a
`
`solar hydrogen producing unit (abstract, [0064], fig. 1). The function of the reaction
`
`vessel 10 and 12 is to produce hydrogen by the decomposition of water ([0064]). Smith
`
`teaches a fuel cell 32 that uses the hydrogen produced from the hydrogen producing
`
`unit 10 and 12 ([0064], fig. 1). The function of the fuel cell is to generate electricity with
`
`a reaction between the hydrogen generated by the solar hydrogen producing unit and
`
`an oxidizing gas and discharges water as a reaction product ([0064]). The fuel cell
`
`comprises of a discharge channel that discharges water that is a reaction product of the
`
`fuel cell (fig. 1, [0064]). Smith teaches an external water supply unit 22 (fig. 1, [0064]).
`
`Smith teaches hydrogen storage equipment 28 that stores hydrogen produced from the
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`solar hydrogen producing unit 10 and 12 and is used in the fuel cell 32 (fig. 1, [0064]).
`
`Smith teaches essential component of a process for generating hydrogen is a source of
`
`hydrogen atoms ([0059]). Wate