DETAILED ACTION
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 .
Status of the Claims
This is a final Office action in response to Applicant’s arguments and remarks filed on 10/03/2025. Claims 1-8, 10-12, 15-18 and 20 are pending in the current office action. Claims 1, 5, 10 and 16 were amended by Applicant.
Status of the Rejection
The objection to claim 1 is withdrawn in view of Applicant’s amendments.
The rejections of claims 5 and 16 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-8, 10-12, 15-18 and 20 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
New rejections of claims 1-8, 10-12, 15-18 and 20 under 35 U.S.C. § 103 are necessitated by Applicant’s amendments.
List of Acronyms
AEM – Anion exchange membrane
BPM – Bipolar membrane
BPMED – Bipolar membrane electrodialyzer
CEM – Cation exchange membrane
ED – Electrodialysis
M-CEM – Monovalent-selective cation exchange membrane
RO – Reverse osmosis
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Eisaman ‘181 (US Pat. No. 9586181 B2) in view of Mani ‘225 (US Pat. No. 6221225), Eisaman ‘006 (US Pat. Pub. 2017/0342006 A1) and Nagasawa et al. (“New Recovery Process of Carbon Dioxide from Alkaline Carbonate Solution via Electrodialysis” AIChE Journal 55 (2009) 3286-3293).
Regarding claim 1, Eisaman ‘181 teaches an electrodialyzer (title) comprising:
one or more multi-compartment cells, each of the one or more multi-compartment cells comprising:
a cathode (“negative electrode 303” col. 8 lines 24-41 and Fig. 3);
a catholyte compartment, wherein the cathode is in contact with the catholyte compartment (“two electrode compartments (not shown) located each end of the electrodialysis stack 308 such that it flows across the electrodes 302 and 303” col. 8 lines 8-23);
an anode (“positive electrode 302” col. 8 lines 24-41 and Fig. 3);
an anolyte compartment, wherein the anode is in contact with the anolyte compartment (“two electrode compartments (not shown) located each end of the electrodialysis stack 308 such that it flows across the electrodes 302 and 303” col. 8 lines 8-23);
at least two membrane cells (“one or more two-compartment cells” col. 4 lines 36-43) between the catholyte compartment and the anolyte compartment (“any number of electrodialysis cells 309” col. 7 line 56 - col. 8 line 7 and Fig. 3 shows at least two membrane cells), each membrane cell comprising:
an ocean water compartment (“acidified solution compartments 306” col. 8 lines 24-41 and Fig. 3) receiving an ocean water stream (“process solution 301 is a seawater solution.” col. 8 lines 8-23, see also Fig. 1);
a base compartment (“basified solution compartments 307” col. 7 line 54 through col. 8 line 7) receiving a base solution stream (see below); and
a bipolar membrane (BPM) separating the ocean water compartment and base compartment (“BPMs 304” Fig. 3), wherein the BPM generates proton (H+) and hydroxide ion (OH-) fluxes via water dissociation reactions at a BPM interface (“The BPMs 304 effectively dissociate water into H+ and OH- ions” col. 8 lines 24-41), where the proton flux is provided to the ocean water compartment so as to convert the ocean water stream into an output stream of acidified ocean water (“process solution 301 becomes acidified in the acidified solution compartments 306 because of the transport of the H+ ions into the acidified solution compartments 306” col. 8 lines 24-41), and the hydroxide ion is provided to the base compartment to increase alkalinity of the base solution stream (“The process solution 301 also becomes basified in the basified solution compartments 307 because of the transport of the OH- ions into the basified solution compartments 307.” col. 8 lines 24-41);
wherein a first one of the at least two membrane cells is immediately adjacent to the catholyte compartment and wherein the catholyte compartment is in contact with the ocean water compartment of the first one of the at least two membrane cells (Fig. 3 shows a first one of the “acidified solution compartments 306” of a first membrane cell is adjacent to the catholyte chamber); and
wherein a second one of the at least two membrane cells is immediately adjacent to the anolyte compartment (Fig. 3 shows a second one of the at least two membrane cells is adjacent to the anolyte compartment);
a first cation exchange membrane (CEM) separating the catholyte compartment and the saltwater-ocean water compartment of the first one of the at least two membrane cells (“The electrodialysis stack 308 also includes two end membranes, one at either end of the BPMED stack 308 (not shown). Each of these end membranes may be a … CEM” col. 7 line 55 through col. 8 line 7);
a second CEM separating the anolyte compartment and the base compartment of the second one of the at least two membrane cells (“The electrodialysis stack 308 also includes two end membranes, one at either end of the BPMED stack 308 (not shown). Each of these end membranes may be a … CEM” col. 7 line 55 through col. 8 line 7); and
a mixer configured to combine the output stream of acidified ocean water and a portion of the increased alkalinity base solution stream to output a restored alkalinity ocean water stream for discharge into an ocean (“a recombination unit 114. The recombination unit 114 may be, for example, a separate tank which receives the acidified and basified solutions from their respective tanks 105 and 104 after the solutions have made the desired number of passes through the BPMED apparatus. When the acidified and basified solutions are recombined, they once again become neutralized, and in the case of seawater can be pumped directly back into the sea.” col. 6 lines 18-30 and Fig. 1).
The limitation “a base compartment receiving a base solution stream” (emphasis added), as currently drafted, is a limitation drawn to the material worked on by the apparatus i.e., it defines the apparatus by the material it works on, rather than what the apparatus is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked on is an apparatus capable of performing the recited function (MPEP § 2115).
In the instant case, Eisaman ‘181 teaches that basic solution can be recycled through the BPMED apparatus (“Once the acidified and basified solutions flow from the BPMED apparatus 101 and into the acidified and basified solution tanks 104 and 105, the acidified and basified solutions may be flowed back into the BPMED apparatus.” col. 6 lines 11-17). Thus, the basified compartments 307 in the BPMED apparatus of Eisaman ‘181 are capable of receiving a base solution stream. Eisaman ‘181 therefore teaches the limitation “a base compartment receiving a base solution stream”.
Eisaman ‘181 does not teach a plurality of membrane contactors connecting with the one or more multi-compartment cells remove dissolved nitrogen and oxygen gases from an ocean water to generate the ocean water stream.
However, Eisaman ‘006 teaches a system for recovering carbon dioxide using an electrodialyzer (abstract) comprising a plurality of membrane contactors (“Desorption unit 122 contains one or more membrane contactors” para. 14 and Fig. 1) connecting with the electrodialysis cells (“electrodialysis unit 110” para. 23 and Fig. 1) to remove dissolved nitrogen and oxygen gases from an ocean water to generate an ocean water stream (“Desorption unit 122 contains one or more membrane contactors operable to remove, with the aid of vacuum pressure, dissolved oxygen (O2) and nitrogen (N2) in the seawater” para. 14 and Fig. 1), which provides the predictable benefit of preventing contamination of the produced CO2 with O2 and N2 (para. 14).
As Eisaman ‘181 and Eisaman ‘006 each teach BPMEDs, they are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181 by adding a plurality of membrane contactors connecting with the one or more multi-compartment cells remove dissolved nitrogen and oxygen gases from an ocean water to generate the ocean water stream, as taught by Eisaman ‘006. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of preventing contamination of the produced CO2 with O2 and N2, as taught by Eisaman ‘006. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Eisaman ‘181 does not teach the first and second CEMs are monovalent cation exchange membranes (M-CEMs).
However, Mani ‘225 teaches that monovalent cation exchange membranes (M-CEMs) (“CMS (monovalent selective) cation membrane 166” Fig. 6), provide the predictable benefit of reducing membrane fouling relative to non-selective CEMs (col. 26 lines 29-39) in bipolar membrane electrodialyzers (BPMEDs) (col. 1 lines 41-49).
As Mani ‘225 teaches a BPMED, Mani ‘225 is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181 such that the first monovalent cation exchange membrane (CEM) separating the catholyte compartment and the ocean water compartment of the first one of the at least two membrane cells and the second CEM separating the anolyte compartment from the second one of the at least two membrane cells are monovalent cation exchange membranes (M-CEMs). A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of inhibiting membrane fouling, as taught by Mani ‘225. Furthermore, simple substitution of one known element for another (i.e., using the M-CEMs of Mani ‘225 in place of the CEMs of Eisaman ‘181) to achieve predictable results (inhibiting fouling) establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Eisaman ‘181 does not teach, in the embodiment depicted in Fig. 3, the at least two membrane cells are separated by one or more intermediate M-CEMs.
Eisaman ‘181 instead teaches the at least two membrane cells are separated by one or more intermediate AEMs (“AEMs 305” Fig. 3).
However, Eisaman ‘181 further teaches that either CEMs or AEMs may be used in alternation with BPMs to form the membrane cells (“In a two-compartment configuration, adjacent membranes may alternate between BPM and AEM to form a membrane stack of the form BPM, AEM, BPM, AEM, etc.; or adjacent membranes may alternate between BPM and CEM to form a membrane stack of the form BPM, CEM, BPM, CEM, etc.” col. 4 lines 18-35).
Furthermore, Nagasawa teaches that a BPMED comprising alternating BPMs and CEMs provides the maximum energy efficiency for CO2 recovery (“the BP-C arrangement is the most appropriate configuration for CO2 recovery in terms of the power requirement among the three arrangements studied.” p. 3292 col. 2 conclusions §).
Furthermore, Mani ‘225 teaches that monovalent cation exchange membranes (M-CEMs) (“CMS (monovalent selective) cation membrane 166” Fig. 6), provide the predictable benefit of reducing membrane fouling relative to non-selective CEMs (col. 26 lines 29-39) in BPMEDs (col. 1 lines 41-49).
As Nagasawa teaches BPMEDs for capturing carbon dioxide, Nagasawa is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that the at least two membrane cells are separated by one or more intermediate M-CEMs, rather than one or more intermediate AEMs. A person having ordinary skill in the art would have been motivated to make this modification because Nagasawa teaches a configuration using CEMs provides the benefit of reducing the energy requirement of the system relative to the configuration using AEMs, and Mani ‘225 teaches M-CEMs provide the predictable benefit of reducing membrane fouling relative to non-selective CEMs. A person having ordinary skill in the art would have had a reasonable expectation of success making this modification, because Eisaman ‘181 explicitly teaches a BP-C membrane arrangement is a suitable for their system. Furthermore, simple substitution of one known element for another (i.e., using M-CEMs in place of AEMs) to achieve predictable results (improving energy efficiency and reducing membrane fouling) establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Eisaman ‘181 does not teach the anolyte compartment is in contact with the base compartment of the second one of the at least two membrane cells, and the second M-CEM separates the anolyte compartment from the base compartment of the second one of the at least two membrane cells.
However, Mani ‘225 further teaches it is suitable to have the anolyte compartment adjacent to the base compartment of a bipolar electrodialysis cell having the repeating membrane pattern BP-A (Fig. 1a) or BP-C (Fig. 1b).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181 such that the anolyte compartment is in contact with the base compartment of the second one of the at least two membrane cells and the second M-CEM separates the anolyte compartment from the base compartment of the second one of the at least two membrane cells, as taught by Mani ‘225. A person having ordinary skill in the art would have been motivated to make this modification because Mani ‘225 teaches this is a suitable arrangement for the unit cells in a BPMED. Simple substitution of one known element for another (i.e., starting the repeating units with a base compartment adjacent to the anolyte chamber, as taught by Mani ‘225, rather than an acid/ocean water compartment adjacent to the anolyte chamber in the system of Eisaman ‘181) to achieve predictable results (creating a functional BPMED) establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Regarding claim 2, Eisaman ‘181 further teaches the electrodialyzer is used to remove carbon dioxide from ocean water (“A method for desorbing CO2 from an ocean comprises flowing seawater and electrode solution into a BPMED apparatus,” abstract).
Regarding claim 3, modified Eisaman ‘181 teaches the limitations of claim 1, as described above.
Eisaman ‘181 further teaches the ocean water compartment receives a stream of filtered ocean water (see below).
The limitation “the ocean water compartment receives a stream of filtered ocean water”, as currently drafted, is a limitation drawn to the material worked on by the apparatus i.e., it defines the apparatus by the material it works on, rather than what the apparatus is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked on is an apparatus capable of performing the recited function (MPEP § 2115).
In the instant case, Eisaman ‘181 teaches that the solution fed to the BPMED chambers is seawater or an RO brine (col. 4 line 62 through col. 5 line 17). The ocean water compartments of Eisaman ‘181 are therefore capable of receiving a stream of filtered ocean water.
Eisaman ‘181 thus teaches the limitation “the ocean water compartment receives a stream of filtered ocean water”.
Regarding claim 4, modified Eisaman ‘181 teaches the limitations of claim 1, as described above.
Eisaman ‘181 further teaches the base compartment receives a stream of NaOH (see below).
The limitation “the base compartment receives a stream of NaOH”, as currently drafted, is a limitation drawn to the material worked on by the apparatus i.e., it defines the apparatus by the material it works on, rather than what the apparatus is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked on is an apparatus capable of performing the recited function (MPEP § 2115).
In the instant case, Eisaman ‘181 teaches that the basic solution produced by the BPMED comprises NaOH (see Fig. 3) and can be recirculated in the BPMED (“Once the acidified and basified solutions flow from the BPMED apparatus 101 and into the acidified and basified solution tanks 104 and 105, the acidified and basified solutions may be flowed back into the BPMED apparatus.” col. 6 lines 11-17). Thus, the basified compartments 307 in the BPMED apparatus of Eisaman ‘181 are capable of receiving a stream of NaOH. Eisaman ‘181 therefore teaches the limitation “the base compartment receives a stream of NaOH”.
Regarding claim 5, modified Eisaman ‘181 teaches the limitations of claim 1, as described above. Eisaman ‘181 further teaches the catholyte compartment and the anolyte compartment each receive a recirculated electrolyte solution (“Electrode solution 103 is also flowed through the BPMED apparatus 101 at either end of the apparatus;” col. 4 line 62 through col. 5 line 17 and see Fig. 1, which shows the solution is recirculated).
Regarding claim 8, modified Eisaman ‘181 teaches the limitations of claim 1, as described above.
As stated by applicant in the instant specification, M-CEMs, by definition, allow a transfer of monovalent cations and reject the transfer of anions and multivalent cations (see e.g., para 34).
Thus, as modified Eisaman ‘181 teaches the intermediate membranes are M-CEMs, modified Eisaman ‘181 necessarily teaches the limitation “each of the intermediate M-CEMs is configured to allow a transfer of monovalent cations from the ocean water compartment to the base compartment of an adjacent cell, while rejecting the transfer of anions and multivalent cations from the ocean water compartment to the base compartment in the adjacent cell”.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Eisaman ‘181 in view of Mani ‘225, Eisaman ‘006, and Nagasawa, as applied to claim 5 above, and further in view of Beh et al. (“A Redox-Shuttled Electrochemical Method for Energy-Efficient Separation of Salt from Water” ACS Sustainable Chem. Eng. 2019, 7, 13411−13417).
Regarding claims 6-7, modified Eisaman ‘181 teaches the limitations of claim 5, as described above.
Modified Eisaman ‘181 does not teach the recirculated electrolyte solution includes a one-electron, electrochemically reversible redox couple (claim 6) wherein the one-electron, electrochemically reversible redox couple is selected from the group consisting of Na3/Na4-[Fe(CN)6] and K3/K4-[Fe(CN)6] (claim 7).
However, Beh teaches an electrodialyzer (abstract), wherein the electrolyte solution includes a one-electron, electrochemically reversible redox couple, wherein the one-electron, electrochemically reversible redox couple is Na3/Na4-[Fe(CN)6] (“0.1 M Na4Fe(CN)6, 0.1 M Na3Fe(CN)6, and 10 ppt NaCl as the redox shuttle” results and discussion § para. 2, and Fig. 1), which provides the predictable benefit of improving the efficiency of salt removal at high salt concentrations (“In principle, electrochemical processes such as electrodialysis (ED) … can be used on feedwaters of any salinity but realistically face several important constraints that have made them more suitable for brackish water at lower salinity than seawater.” Introduction § para. 3, and “At seawater salinities, SUPER [i.e., the electrodialyzer] can achieve an SEC [i.e., gravimetric specific energy consumption, a measure of efficiency] comparable to or lower than RO [i.e., reverse osmosis] but with all the advantages of a modular, low-pressure, low-fouling, conventional ED [i.e., electrodialysis] process. … By exploiting a very small amount of carefully chosen redox shuttle in a symmetric cell architecture, SUPER represents the first example of a viable nonthermal process for treating both seawater and hypersaline brines.” conclusions § para. 2).
As Beh teaches an electrodialyzer specially adapted for use with sea water, Beh is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that the recirculated electrolyte solution comprises the one-electron, electrochemically reversible redox couple (claim 6) i.e., Na3/Na4-[Fe(CN)6] (claim 7), as taught by Beh. A person having ordinary skill in the art would have been motivated to make this modification in order to achieve the predictable benefits of improving the efficiency of the electrodialyzer, and allowing it to run at higher salt concentrations, as taught by Beh. Furthermore, combining prior art elements (i.e., the Na3/Na4-[Fe(CN)6] electrolyte of Beh with the system of Eisaman ‘181) to yield predictable results (improving the energy efficiency and maximum suitable salt concentrations) establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claims 10-12, 15-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Eisaman ‘181 (US Pat. No. 9586181 B2) in view of Eisaman ‘952 (US Pat. Pub. 2017/0341952 A1), Mani ‘225 (US Pat. No. 6221225), and Eisaman ‘006 (US Pat. Pub. 2017/0342006 A1).
Regarding claim 10, Eisaman ‘181 teaches an electrodialyzer (“BPMED apparatus” abstract), comprising:
one or more multi-compartment cells, each of the one or more multi-compartment cells comprising:
a cathode (“negative electrode 403” col. 9 lines 31-47 and Fig. 4);
a catholyte compartment, wherein the cathode is in contact with the catholyte compartment (“Electrode solution 103 is also flowed through the BPMED apparatus 101 at either end of the apparatus;” col. 4 line 62 through col. 5 line 17 and Fig. 1);
an anode (“positive electrode 402” col. 9 lines 31-47 and Fig. 4);
an anolyte compartment, wherein the anode is in contact with the anolyte compartment (“Electrode solution 103 is also flowed through the BPMED apparatus 101 at either end of the apparatus;” col. 4 line 62 through col. 5 line 17 and Fig. 1);
one or more three-membrane cells, a range fully encompassing the claimed range (“one or more three-compartment cells” abstract), each membrane cell comprising:
a first compartment (“center compartment 408” col. 8 line 66 - col. 9 line 20 and Fig. 4);
a second compartment (“acidified solution compartment 407” Id.);
an anion exchange membrane (AEM) separating the first compartment and the second compartment (Fig. 4 shows “AEM 405” separates compartments 407 and 408 and see col. 8 line 66 - col. 9 line 20);
a third compartment (“basified solution compartment 409” col. 8 line 66 through col. 9 line 20 and Fig. 4); and
a bipolar membrane (BPM) separating the second compartment and the third compartment (Fig. 4 shows “BPM 404” separates compartments 407 and 408 and see col. 8 line 66 through col. 9 line 20), wherein the BPM generates proton (H+) and hydroxide ion (OH-) fluxes via water dissociation reactions at a BPM interface (“The BPMs 404 effectively dissociate water into H+ and OH- ions under the applied voltage,” col. 9 lines 31-47), where the proton flux is provided to the second compartment so as to convert an input ocean water stream to the second compartment into an output stream of acidified ocean water (Fig. 4 shows the H+ from the BPMs is provided to “acidified compartment 407”), and the hydroxide ion flux is provided to the third compartment to increase a base concentration of a stream received by the third compartment (Fig. 4 shows the OH- from the BPMs is provided to “basified solution compartment 409”);
a first cation exchange membrane (CEM) separating the catholyte compartment and the first compartment of one of the three-membrane cells (“The BPMED stack 411 also includes two end membranes, one at either end of the BPMED stack 411 (not shown). Each end membrane may be a … CEM” col. 9 lines 21-30) wherein the first CEM is the only membrane that separates the catholyte compartment and the first compartment of one of the three-membrane cells (Fig. 4 shows that a “center compartment 408” is adjacent to the catholyte chamber, and thus the final “CEM 406” will be the only membrane separating the catholyte compartment and the first compartment of the adjoining three-membrane cell);
a second CEM separating the anolyte compartment and the third compartment of a second one of the three-membrane cells (“The BPMED stack 411 also includes two end membranes, one at either end of the BPMED stack 411 (not shown). Each end membrane may be a … CEM” col. 9 lines 21-30); and
one or more intermediate cation exchange membranes (CEMs) separating each three-membrane cell in the electrodialyzer (“CEMs 406” and Fig. 4 shows each “CEM 406” is located between “center compartment 408” and “basified solution compartment 409”),
wherein the first and second compartments comprise a stream of ocean water (“process solution 401 that is seawater,” col. 9 lines 31-47, and Fig. 4 shows “process solution 401” is supplied to “center compartment 408” and “acidified solution compartment 407”); and
a mixer configured to combine the output stream of acidified ocean water and a portion of the increased base concentration stream to output a restored alkalinity ocean water stream for discharge into an ocean (“a recombination unit 114. The recombination unit 114 may be, for example, a separate tank which receives the acidified and basified solutions from their respective tanks 105 and 104 after the solutions have made the desired number of passes through the BPMED apparatus. When the acidified and basified solutions are recombined, they once again become neutralized, and in the case of seawater can be pumped directly back into the sea.” col. 6 lines 18-30 and Fig. 1).
Eisaman ‘181 does not teach that the second CEM is the only membrane that separates the anolyte compartment and the third compartment of the second one of the three-membrane cells. In other words, Eisaman ‘181 does not teach a “basified solution compartment 409” is directly adjacent to the anolyte compartment.
However, Eisaman ‘952 teaches a BPMED for the removal of carbon dioxide from ocean water (see e.g., para. 18 and Figs. 1-2), wherein a third compartment i.e., a basified solution chamber (“basified solution compartment 210A” para. 42 and Fig. 2), is directly adjacent to the anolyte compartment (Fig. 2 shows “basified solution compartment 210A” is directly adjacent to “electrode solution compartment 250A” i.e., the anolyte compartment) and separated only by the end cap membrane (“end cap membranes 245A” para. 42 and Fig. 2).
As Eisaman ‘181 and Eisaman ‘952 each teach BPMEDs for CO2 capture, they are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that the second CEM is the only membrane that separates the anolyte compartment and the third compartment of the second one of the three-membrane cells, as taught by Eisaman ‘952. A person having ordinary skill in the art would have been motivated to make this modification because Eisaman ‘952 teaches arranging the basified solution compartment adjacent to the anolyte chamber is a suitable arrangement for a BPMED configured for CO2 capture. Furthermore, simple substitution of one known element for another (i.e., using the arrangement of Eisaman ‘952 wherein the basification chamber is adjacent to the anolyte chamber in place of the arrangement of Eisaman ‘181 wherein the acidification chamber is adjacent to the anolyte chamber) to achieve predictable results (providing a BPMED suitable for CO2 capture) establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Eisaman ‘181 does not teach the first CEM, the second CEM, and the intermediate CEMs are monovalent selective cation exchange membranes (M-CEMs).
However, Mani ‘225 teaches that monovalent cation exchange membranes (M-CEMs) (“CMS (monovalent selective) cation membrane 166” Fig. 6), provide the predictable benefit of reducing membrane fouling relative to non-selective CEMs (col. 26 lines 29-39) in bipolar membrane electrodialyzers (BPMEDs) (col. 1 lines 41-49).
As Mani ‘225 teaches a BPMED, Mani ‘225 is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181 such that first CEM, the second CEM, and the intermediate CEMs are monovalent selective cation exchange membranes (M-CEMs), as taught by Mani ‘225. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of inhibiting membrane fouling, as taught by Mani ‘225. Furthermore, simple substitution of one known element for another (i.e., using the M-CEMs of Mani ‘225 in place of the CEMs of Eisaman ‘181) to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)).
Eisaman ‘181 does not teach the stream of ocean water comprised by the first and second compartments is a stream of filtered ocean water.
However, Eisaman ‘952 further teaches that filtering ocean water before it is supplied to a BPMED (“Treatment unit 104 may include filtering systems such as: nanofilters, RO units, ion exchange resins, precipitation units, microfilters, screen filters, disk filters, media filters, sand filters, cloth filters, and biological filters (such as algae scrubbers), or the like.” para. 23 and Fig. 1) provides the predictable benefit of protecting the BPMED from unnecessary or harmful components found in the ocean water (“For example, removal of chemicals in the water may mitigate scale buildup in electrodialysis unit 110.” para. 23).
As Eisaman ‘952 teaches a BPMED, Eisaman ‘952 is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that the stream of ocean water comprised by the first and second compartments is a stream of filtered ocean water, as taught by Eisaman ‘952. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of protecting the BPMED from unnecessary or harmful components in the ocean water, as taught by Eisaman ‘952. Furthermore, combining prior art elements (i.e., combining the filter of Eisaman ‘952 with the system of Eisaman ‘181) according to known methods to yield predictable results (filtering the ocean water) establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Modified Eisaman ‘181 does not teach a plurality of membrane contactors connecting with the one or more multi-compartment cells remove dissolved nitrogen and oxygen gases from an ocean water to generate the stream of filtered ocean water.
However, Eisaman ‘006 teaches a system for recovering carbon dioxide using an electrodialyzer (abstract) comprising a plurality of membrane contactors (“Desorption unit 122 contains one or more membrane contactors” para. 14 and Fig. 1) connecting with the electrodialysis cells (“electrodialysis unit 110” para. 23 and Fig. 1) to remove dissolved nitrogen and oxygen gases from an ocean water to generate an ocean water stream (“Desorption unit 122 contains one or more membrane contactors operable to remove, with the aid of vacuum pressure, dissolved oxygen (O2) and nitrogen (N2) in the seawater” para. 14 and Fig. 1), which provides the predictable benefit of preventing contamination of the produced CO2 with O2 and N2 (para. 14).
As Eisaman ‘006 teaches a BPMED, Eisaman ‘006 is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181 by adding a plurality of membrane contactors connecting with the one or more multi-compartment cells remove dissolved nitrogen and oxygen gases from an ocean water to generate the stream of filtered ocean water, as taught by Eisaman ‘006. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of preventing contamination of the produced CO2 with O2 and N2, as taught by Eisaman ‘006. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 11, Modified Eisaman ‘181 does not teach an output stream of the second compartment is input to the first compartment.
However, Eisaman ‘952 further teaches an output stream of the second i.e., acidification, compartment is input to the first i.e., desalination, compartment (“Carbon desorption unit 106 is coupled to receive aqueous HCl from electrodialysis unit 110.” Para. 18, Fig. 2 shows the output stream of the second compartment is HCl, and Fig. 1a shows “carbon desorption unit 106” provides the feed to the “electrodialysis unit 110” via “treatment 104”), to provide the predictable benefit of converting carbonate dissolved in the ocean water feed into gaseous carbon dioxide, which can be easily collected and used in other reactions (see para. 19).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that an output stream of the second compartment is input to the first compartment, as taught by Eisaman ‘952. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving the conversion of carbonate in the first i.e., desalination, chamber to gaseous carbon dioxide, as taught by Eisaman ‘952. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 12, Eisaman ‘181 further teaches the third i.e., basified solution, compartment receives a base stream (see below).
The limitation “the third compartment receives a base stream”, as currently drafted, is a limitation drawn to the material worked on by the apparatus i.e., it defines the apparatus by the material it works on, rather than what the apparatus is. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked on is an apparatus capable of performing the recited function (MPEP § 2115).
In the instant case, Eisaman ‘181 teaches that the basic solution produced by the BPMED can be recirculated in the BPMED (“Once the acidified and basified solutions flow from the BPMED apparatus 101 and into the acidified and basified solution tanks 104 and 105, the acidified and basified solutions may be flowed back into the BPMED apparatus.” col. 6 lines 11-17). Thus, the basified solution compartments 409 in the BPMED apparatus of Eisaman ‘181 are capable of receiving a base stream. Eisaman ‘181 therefore teaches the limitation “the third compartment receives a base stream”.
Regarding claim 15, modified Eisaman ‘181 teaches the limitations of claim 10, as described above.
Eisaman ‘181 further teaches the AEM allows a passage of anions from the first compartment to the second compartment and rejects the passage of cations between the first compartment and the second compartment (by definition AEMs allow anions to pass and reject the passage of cations see e.g., para. 49 of the instant specification).
Regarding claim 16, modified Eisaman ‘181 teaches the limitations of claim 10, as described above.
Eisaman ‘181 further teaches the catholyte compartment and the anolyte compartment each receive a recirculated electrolyte solution (“Electrode solution 103 is also flowed through the BPMED apparatus 101 at either end of the apparatus;” col. 4 line 62 - col. 5 line 17 and see Fig. 1, which shows the solution is recirculated).
Regarding claim 20, modified Eisaman ‘181 teaches the limitations of claim 10, as described above.
Modified Eisaman ‘181 further teaches each of the intermediate M-CEMs is configured to allow a transfer of monovalent cations from the first compartment to the third compartment of an adjacent cell, while rejecting the transfer of anions and multivalent cations from the first compartment to the third compartment in the adjacent cell (M-CEMs, by definition, allow transfer of monovalent cations while rejecting the transfer of multivalent cations and anions see e.g., paras. 28 and 34 of the instant specification).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Eisaman ‘181 in view of Eisaman ‘952, Mani ‘225, and Eisaman ‘006, as applied to claim 16 above, and further in view of Beh et al. (“A Redox-Shuttled Electrochemical Method for Energy-Efficient Separation of Salt from Water” ACS Sustainable Chem. Eng. 2019, 7, 13411−13417).
Regarding claims 17-18, modified Eisaman ‘181 teaches the limitations of claim 16, as described above.
Modified Eisaman ‘181 does not teach the recirculated electrolyte solution includes a one-electron, electrochemically reversible redox couple (claim 17), wherein the one-electron, electrochemically reversible redox couple is selected from the group consisting of Na3/Na4-[Fe(CN)6] and K3/K4-[Fe(CN)6] (claim 18).
However, Beh teaches an electrodialyzer (abstract), wherein the electrolyte solution includes a one-electron, electrochemically reversible redox couple, wherein the one-electron, electrochemically reversible redox couple is Na3/Na4-[Fe(CN)6] (“0.1 M Na4Fe(CN)6, 0.1 M Na3Fe(CN)6, and 10 ppt NaCl as the redox shuttle” results and discussion § para. 2, and Fig. 1), which provides the predictable benefit of improving the efficiency of salt removal at high salt concentrations (“In principle, electrochemical processes such as electrodialysis (ED) … can be used on feedwaters of any salinity but realistically face several important constraints that have made them more suitable for brackish water at lower salinity than seawater.” Introduction § para. 3, and “At seawater salinities, SUPER [i.e., the electrodialyzer] can achieve an SEC [i.e., gravimetric specific energy consumption, a measure of efficiency] comparable to or lower than RO [i.e., reverse osmosis] but with all the advantages of a modular, low-pressure, low-fouling, conventional ED [i.e., electrodialysis] process. … By exploiting a very small amount of carefully chosen redox shuttle in a symmetric cell architecture, SUPER represents the first example of a viable nonthermal process for treating both seawater and hypersaline brines.” conclusions § para. 2).
As Beh teaches an electrodialyzer specially adapted for use with seawater, Beh is analogous art.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Eisaman ‘181, such that the recirculated electrolyte solution comprises the one-electron, electrochemically reversible redox couple Na3/Na4-[Fe(CN)6], as taught by Beh. A person having ordinary skill in the art would have been motivated to make this modification in order to achieve the predictable benefits of improving the efficiency of the electrodialyzer, and allowing it to run at higher salt concentrations, as taught by Beh. Furthermore, combining prior art elements (i.e., the Na3/Na4-[Fe(CN)6] electrolyte of Beh with the system of Eisaman ‘181) to yield predictable results (improving the energy efficiency and maximum suitable salt concentrations) establishes a prima facie case of obviousness. (MPEP § 2143(I)(A)).
Response to Arguments
Applicant’s argument, see Remarks p. 1, filed 10/03/2025, with respect to the objection to claim 1 has been fully considered and is persuasive. The objection to claim 1 has been withdrawn.
Applicant’s arguments, see Remarks p. 2, filed 10/03/2025, with respect to the rejections of claims 5 and 16 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 5 and 16 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 2-3, filed 10/03/2025, with respect to the rejections of claims 1-5, 8, 10-12, 15-18, and 20 under 35 U.S.C. § 103 have been fully considered and are persuasive. The rejections of claims 1-5, 8, 10-12, 15-18, and 20 under 35 U.S.C. § 103 have therefore been withdrawn. However, Applicant’s amendments necessitate new grounds of rejection.
Applicant’s Argument #1
Applicant argues on p. 2-3 that Eisaman ‘181 does not teach membrane contactor(s) arranged upstream from the electrodialysis cell(s), but only teaches membrane contactor(s) arranged downstream from the electrodialysis cell(s), and that therefore the prior art of record does not teach or render obvious the cumulative limitations of claims 1 and 10 as currently amended.
Examiner’s response #1
Examiner agrees. However, as described in the new rejections of claims 1 and 10 under 35 U.S.C. § 103, above, Eisaman ‘006 both teaches membrane contactor(s) arranged upstream from electrodialysis cell(s), and is considered to provide a person having ordinary skill in the art with a motivation to modify the system of Eisaman ‘181 by adding such membrane contactor(s).
It is therefore considered that Applicant’s amendments to claims 1 and 10 do not patentably distinguish the claims over the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795