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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/199,502
`
`03/12/2021
`
`YUKIMUNEKANI
`
`083710-3306
`
`1092
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`GREENE,JASON M
`
`1773
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`02/27/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-7 and 9-11 is/are rejected.
`Claim(s) 8 is/are objectedto.
`OO Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 12 March 2021 is/are: a)[v) accepted or b)() 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)[4) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230221
`
`Application No.
`Applicant(s)
`47/199,502
`KANI etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JASON M GREENE
`1773
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`

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`Art Unit: 1773
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`DETAILED ACTION
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`Notice ofPre-AlA or AIA Status
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`1.
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`Thepresent application,filed on or after March 16, 2013, is being examined underthefirst
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`inventorto file provisions of the AIA.
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`2.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and
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`103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for
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`the rejection will not be considered a new groundofrejectionif the priorart relied upon, and the rationale
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`supporting the rejection, would be the same undereitherstatus.
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`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventoror a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`Thespecification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 4 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject matter
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`which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the
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`applicant), regards as the invention.
`
`Claims 4 and 5 recite the first and second porous membersincluding the cathode and anode gas
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`diffusion layers, respectively. However,it is not clear how this is possible since the first and second
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`porous membersarelocated in thefirst and second flow paths, respectively, in the remover, while the
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`cathode and anode gas diffusion layers are located in the compressor. In other words, claims 4 and 5 as
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`currently written require the first and second porous members to be simultaneously located in both the
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`compressor and the remover, which doesnot appear to be physically possible.
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`The Examiner notesthat it appears as though claims 4 and 5 may have been intended to be
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`written such thatthe first and second porous members are formed from the same material as the cathode
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`and anodediffusion layers, as such has been assumed for purposes of examination. If this is correct, the
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`Examiner suggests Applicants amendthe claims accordingly.
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`Claim Rejections - 35 USC § 103
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`5.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`filing date of the claimed invention toa 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.
`
`6.
`
`Claims 1, 6, 7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yakumaru et
`
`al. (US 2018/0187319 Al) in view of International Patent Application Publication WO 01/19728 Al.
`
`With regard to claim 1, Yakumaru et al. discloses a compression apparatus comprising a
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`compressor(electrochemical hydrogen pump 16) that includes an electrolyte membrane (4), an anode
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`catalyst layer (3A) disposed ona first main surface of the electrolyte membrane(4), a cathode catalyst
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`layer (3C) disposed on a second main surface of the electrolyte membrane(4), an anode gas diffusion
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`layer (2A) on the anode catalyst layer (3A), a cathode gas diffusion layer (2C) disposed on the cathode
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`catalyst layer (3C), and a voltage applicator (voltage applicant device 13, see e.g. paragraph [0080]) that
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`applies a voltage between the anodecatalyst layer (3A) and the cathode catalyst layer (3C), in which
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`application of the voltage by the voltage applicator (13) causes movementof, through theelectrolyte
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`membrane(4) and onto the cathode catalyst layer (3C), a proton extracted from an anode fluid (seee.g.
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`paragraph [0077]) that has been supplied onto the anode catalyst layer (3A), to produce compressed
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`hydrogenat Fig. 2, the abstract, and paragraphs [0068 ]-[0080].
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`Yakumaruetal. does not disclose the compression apparatus comprising a removerincluding a
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`water-permeable membrane.
`
`WO ‘728 discloses a compression apparatus comprising a compressor (hydrogen generation
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`device) including an electrolyte membrane, an anode, and a cathode(see page3, line 4 to page 4, line 7),
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`and a remover(dryer 50) that includes a water-permeable membrane(58), a first flow path (through
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`chamber 54) which is disposed onafirst main surface of the water-permeable membrane(58) and through
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`which a cathode gas discharged from the compressor flows, and a second flow path (through chamber 56)
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`disposed on a second main surface of the water-permeable membrane (58) and through which a gas
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`(sweep gas) at a lower pressure than the cathode gas flows, the remover removingat least one of water
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`vaporor liquid water contained in the cathode gas flowing throughthefirst path at the abstract,Fig. 2,
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`page 3, line 4 to page 4,line 7 and page 11, line 4 to page 13, line 14.
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`It would have been obvious to one of ordinary skill in the art to incorporate the remover of WO
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`*728 into the compression apparatus of Yakumaruetal. to remove water from the hydrogen gas generated
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`by the compressor without using a drying tube or an adsorbent, as suggested by WO ‘728at page4, line 9
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`to page 5, line 27 and page 11, Imes 4-20.
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`Yakumaru et al. and WO *728 do not teach the compressor and removerbeing provided as a
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`single body.
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`It would have been obvious to one of ordinary skill in theart to provide the compressor and
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`removeras a single body for convenience to avoid having to provide two separate individual parts that
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`would need to be shipped andinstalled separately. Additionally, providing the compressor and remover as
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`a single body ensures that the compressor does not operate without an associated water removerto avoid
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`providing wet hydrogen that could damage downstream componentsorresult in unsafe operating
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`conditions. See also MPEP 2144.04(V)(B) whichstates that making parts integral without otherwise
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`altering the operation of the device is merely a choice of design.
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`With regard to claim 6, WO *728 discloses the remover (dryer 50) being arranged suchthatthe
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`first flow path (56) is located above the second flow path (58) at Fig. 2. Furthermore,the recited
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`limitation is directed to an intended mannerof operating the device (how it is disposed in operation) and
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`as such does not further limit the structure of the apparatus. See MPEP 2114(II).
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`With regard to claim 7, Yakumaru et al. and WO °728 do notdisclose the remover being disposed
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`on a bottom side of the compressor.
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`However, such a limitation is directed to an intended manner of operating the device (how the
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`compressoris disposed in operation such that one portion forms “the bottom”) and as such does not
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`furtherlimit the structure of the claimed apparatus. The Examinernotes that the compressoris capable of
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`operating in any orientation such that any portion could be arranged as the bottom. Furthermore, shifting
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`the location of the remover without otherwise altering the operation of the device is merely a choice of
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`design. See MPEP 2144.04(VI)(C).
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`With regard to claim 9, WO *728 teaches using nitrogenorair as the lower pressure gas, but does
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`not mention a hydrogen-containing gas.
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`However, use of a hydrogen-containing gas as the lowerpressuregas is seen as being directed to
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`an intended mannerof operating the device, and as such does notfurther limit the structure of the claimed
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`apparatus. See MPEP 21 14(ID). The limitation is also, or alternatively, seen as being directed to a material
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`to be worked on by the device, which does not further limit the structure of the claimed apparatus. See
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`MPEP 2115. The Examinerparticularly notes that the remover of WO *728is fully capable of operating
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`with hydrogenor a hydrogen-containing gas as the sweep gassince such a gasstill provides the necessary
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`difference in waterpartial pressure.
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`With regard to claim 10, Yakumaru etal. discloses a cooling device for the compressor (16) at
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`paragraph [0083]. The cooling device is seen as cooling the entire compressor(16), including the cathode
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`gas in the compressor(16) that flows throughthe first flow path.
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`With regard to claim 11, Yakumaru et al. and WO *728 do not disclose the remover being stacked
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`with respect to the compressor suchthatthe recited layers are stacked.
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`However, one of ordinary skill in the art would have rec ognized that the compressor and remover
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`could be arranged in such a wayif desired to e.g. provide a compression apparatus that can be
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`accommodatedin an available space. Furthermore, shifting the location of the remover without otherwise
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`altering the operation of the device is merely a choice of design. See MPEP 2144.04(VI)(C).
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`7.
`
`Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yakumaru et al. (US
`
`2018/0187319 A1) in view of International Patent Application Publication WO 01/19728 A1, and further
`
`in view of Ahnet al. (US 2014/0150287 Al).
`
`With regard to claims 2 and 3, WO ‘728 does not disclose first and second porous members being
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`disposedin the first and second flow paths, respectively,
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`Ahnet al. discloses providing a porous support on each side of a water-permeable membraneat
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`the abstract and paragraphs [0028] and [0070].
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`It would have been obvious to one of ordinary skill in the art to incorporate the porous supports
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`on each side of the membrane of Ahnetal. into the remover of WO *728 to provide additional mechanical
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`support for the membrane, a suggested by Ahnet al. at paragraphs [0028] and [0070]. Such porous
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`supports would belocatedin the first and second flow paths on respective sides of the water-permeable
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`membrane.
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`With regardto claims 4 and 5, the materials of the cathode and anodegas diffusionlayers of
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`Yakumaru et al. could be provided as the support layers for the water-permeable membranesince they are
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`porous and recognized as being suitable for providing mechanical support for a membrane.
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`Allowable Subject Matter
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`8.
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`Claim 8 is objected to as being dependent upona rejected base claim, but would be allowable if
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`rewritten in independent form includingall of the limitations of the base claim and any intervening
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`claims.
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`9.
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`The following is a statement of reasons for the indication of allow able subject matter:
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`With regardto claim 8, the prior art made of record does notteach or fairly suggest the
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`compression apparatus of claim 8 wherein a heat-insulating memberis provided between the compressor
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`and the remover.
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`Conclusion
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`10.
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to JASON M GREENEwhose telephone numberis (571)272-1157. The examiner can
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`normally be reached Mon-Fri 7:00AM - 3:30PM.
`
`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://w w w.uspto.gov/interview practice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Magali Slawskican be reached on 571-270-3960. The fax phone numberfor the organization wherethis
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`application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Centeris available to registered users. To
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`file and managepatent submissions in Patent Center,visit: https://patentcenter.uspto.gov. Visit
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`https://w w w.uspto. gov/patents/apply/patent-center for more information about Patent Center and
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`https://w w w.uspto. gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you wouldlike
`
`assistance from a USPTO CustomerService Representative, call 800-786-9199 (IN USA OR CANADA)
`
`or 571-272-1000.
`
`/Jason M Greene/
`Primary Examiner, Art Unit 1773
`
`jmg
`February 22, 2023
`
`