The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 123-144, 146 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 123 and 146, ‘a moisture’ is unclear. Is gas phase water meant? Is a wet solid material meant? A similar but more clear and direct limitation was removed from claim 126.
Claims 123-127, 130-144 and 146 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. 8524186.
For claims 123 and 146, Kawamura teaches, especially in col. 8, 9, 14, 25 pulverized active carbon with KI and sulfuric acid. The salt is ‘amorphous’ since acid is present with the halide. This differs in not requiring the acid and iodine, however they are recited and thus obvious as a matter of choice for best result. Column 6 lines 51-65 teach moisture. No difference is seen in the effect of the moisture (solubilization of Hg).
For claim 124, I- as the ion is taught, resulting from the KI.
For claim 125, KI is taught.
For claim 126, H2SO4 is taught.
For claim 127, the sulfate comes from the acid.
For claims 130 and 144, additional salts are taught in col. 14 and are obvious for additional effect.
For claims 131-134, 0.02-60 % iodine is taught in para 8, the overlap being obvious selection.
For claims 135 and 142, no difference is seen given the similarity to the present specification and claims. Further, the moisture level is obvious to dry the material but prevent cracking due to over-drying.
For claim 136, active carbon is taught.
For claims 137 and 138, 20-200 microns is taught in para. 8, noting the variation of ‘about’.
For claims 139 and 140, the pore volume (and related area) are obvious to permit the desired level of loading of the salt. The examiner takes Official Notice that there are known carbon sorbents which meet the values claimed.
For claims 141 and 143, given the amount of acid and range of iodine, the overlapping relative amounts are obvious to optimize the deposition.
Claims 123-144 and 146 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of U.S. Patent No. 11219878. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common subject matter.
Applicant's arguments filed 7/16/25 have been fully considered but they are not persuasive.
The claims do not recite HI as the species. Given that this is the actual species (see interview) it is not seen how the prior art would make crystalline HI. Thus, no difference is seen in the specie, and direct language should be used to identify it. The ‘moisture’ issue is newly added to the claims, and the I- ion is the conjugate base of HI. It is not clear why it is argued that the water of Kawamura will not result in HI deposition, especially in the presence of acid. Applicant should demonstrate a difference. If it is implied that the present carbon is hydrophilic, then this is not claimed, and it is not necessary that the sulfuric acid formed from the gas being treated is the agent that causes HI to form because H2O can do that as well- putting aside that the argument is that an acid species is necessary during formation of the sorbent for an amorphous material (eg, HI) to form.
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.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736