DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2022/0250908, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 12 September 2025 after the Final Rejection dated 12 March 2025 (hereinafter “FOA”). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the FOA has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 September 2025 has been entered.
Response to Amendment
The Amendment filed 12 September 2025 has been entered. Claims 1, 3, and 7-8 have been amended; new claims 20-21 have been added. As such, claims 1, 3-11, and 13-21 remain pending; claims 4-6 and 13 remain withdrawn as a result of previous restriction; and claims 1, 3, 7-11, and 14-21 are under consideration on the merits.
It is noted that any rejection previously set forth in the FOA and not repeated herein is overcome and/or hereby withdrawn. New grounds of rejection are set forth below.
Claim Rejections - 35 USC § 112
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.
Claim 20 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 20 (dependent upon claim 7) recites “wherein the filling container has a corrosion rate of at most 0.44 µm/y”. However, the spec does not provide adequate written description support for said corrosion rate. The spec provides four examples of the filling container filled with the sulfur dioxide mixture, and four calculated corrosion rates corresponding to each example, said corrosion rates being 0.93 µm/y, 0.72 µm/y, 0.54 µm/y, and 0.44 µm/y [0047-0049; Table 1]. As such, the spec does not provide any example(s) where the corrosion rate is less than 0.44 µm/y, i.e. does not provide any example(s) within the claimed range. Further, the general disclosure of the spec does not include a discussion/analysis pertaining specifically to said corrosion rate or ranges thereof – in other words, the spec does not explicitly disclose a corrosion rate range.
While the spec does not provide written description support for the claimed range of “at most 0.44 µm/y”, in view of the four exemplary corrosion rate values corresponding to the respective Examples 1-4, it is the Examiner’s position that said values provide sufficient support for a claimed corrosion rate range of 0.44 µm/y to 0.93 µm/y. In order to overcome the 112(a) rejection, it is respectfully suggested to cancel claim 20, or amend the claim in accordance with the aforesaid supported range of 0.44 µm/y to 0.93 µm/y.
Appropriate action is required.
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, 3, 7-11, and 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tanimoto et al. (WO 2017/221594; “Tanimoto”) in view of Benesch et al. (US 2005/0271544; “Benesch”) and Kensho et al. (JP 2012-066962; “Kensho”) (all references previously cited/copies previously provided).
Regarding claim 1, Tanimoto discloses a mixture of hydrogen sulfide (H2S) and water (H2O), and a container filled with said mixture [p. 1 ln. 10-12; p. 2 ln 63-67]. In general, Tanimoto is directed to the use of hydrogen sulfide as a process gas in the semiconductor manufacturing industry (i.e. microfabrication), or in the production of various chemicals and medicines, wherein high-purity hydrogen sulfide is required. Tanimoto recognizes that trace amounts of moisture present in the container reduce the quality of the hydrogen sulfide gas upon removal – as hydrogen sulfide gas is removed, moisture evaporates less than the hydrogen sulfide and becomes more-concentrated in the container over time, resulting in increasing concentration of said moisture in the hydrogen sulfide gas phase, thereby reducing the purity thereof and resulting in corrosion of equipment surfaces, e.g. metals by interaction with hydrosulfuric acid, i.e. aqueous hydrogen sulfide [p. 1 ln. 13–p. 2 ln. 57, p. 3 ln. 111-114, p. 7 ln. 271-283].
The mixture of Tanimoto is filled into the container such that at least a portion of the mixture is liquid, and the moisture concentration in the gas phase is equal to or greater than 0.001 mole ppm and less than 75 mole ppm; further, the ratio of V/G0 (internal volume, L of container relative to initial filling amount, kg) is 1.47 L/kg to 2.10 L/kg; furthermore, the water concentration of the liquid phase (moisture concentration of the liquid phase, as claimed) is equal to or greater than 0.01 mole ppm and less than 15 mole ppm [p. 2 ln. 68-77, p. 3 ln. 96-110, 120-138]. The container is suitably stainless steel, since corrosion is effectively prevented by the reduced amount of moisture – the use of expensive, corrosion-resistant alloys such as Hastelloy™ is eliminated [p. 3 ln. 88-89, 106-108, p. 4 ln. 152-162, 171-181].
Tanimoto teaches hydrogen sulfide (H2S) as the process gas in the mixture, and therefore is silent regarding the mixture containing sulfur dioxide (SO2) and water.
Benesch teaches that it is desirable to reduce the moisture levels in sulfur-containing process gases (“acid gases”), especially hydrogen sulfide (H2S), carbonyl sulfide, and sulfur dioxide (SO2), to increase the shelf-life during storage thereof in metal containers [Abstract; 0002-0003, 0013-0018, 0048, 0062-0065, 0068; claims 2, 11].
Kensho teaches that it is desirable to reduce moisture concentration in high-purity sulfur dioxide gas typically utilized in the food, pharmaceutical, and industrial sectors, such as to a level of about 0.00011 ppm (weight) [0001-0003, 0049, 0052].
Each of Tanimoto, Benesch, and Kensho constitute prior art which is directly analogous to the claimed invention – high-purity sulfur-containing gases and the reduction of the moisture content therein. See MPEP 2141.01(a)(I).
In view of the combined teachings of Tanimoto, Benesch, and Kensho, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the container/mixture of Tanimoto by substituting sulfur dioxide (SO2) for hydrogen sulfide (H2S) in the mixture with water (i.e. filling sulfur dioxide/water mixture into the stainless steel container as specified by the disclosure of Tanimoto), as sulfur dioxide would have been readily-recognized as a sulfur-containing “acid gas” utilized in the semiconductor manufacturing industry (processes gases for, e.g. microfabrication), akin to hydrogen sulfide, which requires high purity and low levels of moisture content over the storage duration, and/or in order to allow for storage of said sulfur dioxide in a common stainless steel container to thereby reduce cost(s) associated with/relative to alternative storage materials. See MPEP 2144.04(VII); MPEP 2144.06(II); and MPEP 2144.07.
The aforesaid modification would have resulted in the mixture of Tanimoto (hereinafter interchangeably “modified Tanimoto”) containing sulfur dioxide (in place of hydrogen sulfide) and water (i.e. moisture), said mixture filled into the container – formed from stainless steel such as, e.g. SUS316, SUS316L, SUS304, or SUS304L, and suitably exhibiting a volume of from 1 L to 2,000 L – such that at least a portion of the mixture is liquid, and the moisture concentration in the gas phase equal to or greater than 0.001 mole ppm and less than 75 mole ppm. Further, the ratio of V/G0 (L/kg) would have been 1.47 to 2.10, and the water (moisture) concentration of the liquid phase would have been equal to or greater than 0.01 mole ppm and less than 15 mole ppm.
The sulfur dioxide/water mixture filled into the container, in accordance with modified Tanimoto set forth above, reads on the mixture defined by the limitations of claim 1 – the range of 0.001 mole ppm to less than 75 mole ppm (moisture in gas phase) overlaps with, and thereby renders prima facie obvious the claimed range of 0.005 mole ppm to less than 5,000 mole ppm (see MPEP 2144.05(I)). The range of 0.01 mole ppm to less than 15 mole ppm (water in liquid phase) borders the lower bound of, and encompasses the upper bound of the claimed range 0.01 mole ppm to 1.0 mole ppm, thereby rendering the claimed range prima facie obvious (MPEP 2144.05(I)).
Regarding claim 3, the grounds of rejection of claim 1 above read on the mixture defined by claim 3 – the ratio V/G0 (L/kg) of modified Tanimoto would have been from 1.47 to 2.10, of which overlaps with and thereby renders prima facie obvious the claimed range of 0.80 to 2.00 (MPEP 2144.05(I)).
Regarding claim 7, the grounds of rejection of claim 1 above are incorporated herein by reference and read on the filling container defined by claim 7.
Regarding claim 8, the grounds of rejection of claim 1 above are incorporated herein by reference and read on the filling container defined by claim 8.
Regarding claims 9-11, the grounds of rejection of claim 7 above having incorporated therein the grounds of rejection of claim 1 read on each filling container defined by the respective limitations of claims 9-11. That is, the ratio of V/G0 of 1.47 to 2.10 (L/kg) renders the claimed range 0.80 to 2.00 prima facie obvious (MPEP 2144.05(I)); the volume of the filling container would have been from 1 L to 2,000 L (identical to claimed range); and at least a portion of the filling container would have been formed from stainless steel.
Regarding claims 14-19, the grounds of rejection of claim 8 above having incorporated therein the grounds of rejection of claim 1 read on each filling container defined by the respective limitations of claims 14-19. Additionally, see grounds of rejection of claims 9-11 above.
Regarding claim 20, in view of the rejection of claim 20 under 35 U.S.C. 112(a) above and the grounds of rejection of claim 7 above having incorporated therein the grounds of rejection of claim 1, there is a strong and reasonable expectation that the filled container of modified Tanimoto would have necessarily exhibited the claimed corrosion rate of at most 0.44 µm/y, absent factually supported objective evidence to the contrary. See MPEP 2112(V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
That is, given that the sulfur dioxide/water mixture of modified Tanimoto would have been identical or substantially identical to the claimed and disclosed mixture in terms of: (i) moisture concentration of the gas phase (as low as 0.001 mole ppm); (ii) moisture concentration of the liquid phase (as low as 0.01 mole ppm); (iii) method of filling the container to obtain the aforesaid moisture concentrations, including the (iv) dehydration step to remove moisture from the sulfur dioxide/water gaseous mixture through contact with a moisture adsorbent, prior to filling the container, to less than 10 mole ppm [Tanimoto, p. 2 ln. 78-82, p.8 ln 348-354], and (v) the ratio of V/G0 (internal volume of container to initial filling amount of mixture); (vi) the container being formed from, at least in part, stainless steel; (vii) the container exhibiting a volume of 1 L to 2,000 L; and (viii) Tanimoto explicitly disclosing exemplary embodiments where corrosion rates of lower than 0.44 µm/y were achieved in the case of hydrogen sulfide/water mixtures [Tanimoto, p. 7 Example 3, p. 8 Example 4] – there is a strong and reasonable expectation that the filled container of modified Tanimoto would have necessarily exhibited a corrosion rate of at most 0.44 µm/y, absent factually supported objective evidence to the contrary.
Regarding claim 21, of which is dependent upon claim 9 and thereby ultimately dependent upon claim 7, in the alternative to the grounds of rejection of claim 1 (incorporated by reference into rejection of claim 7 above) which rely upon the disclosure of Tanimoto for the specific V/G0 ratio of 1.47 to 2.10 (L/kg), it is noted that Tanimoto states: “In other words, the ratio V/G0 of the internal volume V (unit: L) of the filling container to the initial filling amount G0 (unit: kg) of the hydrogen sulfide mixture into the filling container is not particularly limited, but may be greater than or equal to 1.47 and less than or equal to 2.10” [Tanimoto, p. 5]. That is, the broad disclosure of Tanimoto is reasonably interpreted as encompassing or teaching nonpreferred embodiments of the filled container, i.e. where the ratio of V/G0 is not limited to the range of 1.47 to 2.10 but may be outside of said range. In other words, Tanimoto reasonably teaches that the range of 1.47 to 2.10 is not a requisite, but rather a preference. See MPEP 2123(I) and 2123(II) – a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments; preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
In view of the disclosure/teachings of Tanimoto set forth/cited above, and in view of the aforecited MPEP sections, Tanimoto teaches that the V/G0 ratio of 1.47 to 2.10 corresponds to the container – having a predetermined volume – being filled with the mixture in an amount of 70% to 100% of the upper limit mass value (relative to said predetermined volume) in accordance with the High Pressure Gas Safety Act, Article 48, Paragraph 4 [Tanimoto, p. 5]. The aforesaid Safety Act is identical to that which is indicated in the spec [0027]. Furthermore, Tanimoto teaches that the V/G0 ratio provides for a balance between relatively high fill level of the container (while preventing overfilling to increase safety) and [high] efficiency in transporting said container [Tanimoto, p. 5]. See MPEP 2144.05(II).
In view of the totality of the foregoing, and given that one of ordinary skill in the art recognizes that sulfur dioxide (64.07 g/mol) is about 1.9x the molar mass of hydrogen sulfide (34.08 g/mol), one of ordinary skill in the art would have readily recognized prior to the effective filing date of the claimed invention that (1) the upper limit mass value of the sulfur dioxide/water mixture (relative to a container of predetermined volume) may differ from that of a hydrogen sulfide/water mixture; (2) that the upper limit mass value of the sulfur dioxide/water mixture (modified Tanimoto) may be readily calculated in the same manner relative to the calculation for the hydrogen sulfide/water mixture in accordance with the aforesaid Safety Act; and that (3) it may be desired to fill the sulfur dioxide/water mixture (or any mixture) into the container (or any container) to an amount less than 70% of the upper limit mass value, such as “half-full” or less relative to said upper limit mass value for a predetermined volume (e.g. 60%, 55%, 50%, 45%, 40%, 30%, 20%) in order to, e.g. reduce the weight of the filled containers for transportation based on predetermined customer or locational requirements – of vice versa.
In light of the analysis set forth above based on the aforecited MPEP sections and cited disclosure of Tanimoto (including noted (1)-(3) in the preceding paragraph), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the container filled with the sulfur dioxide/water mixture of “modified Tanimoto” set forth above in the grounds of rejection of claims 1 and 7 by having increased or decreased the V/G0 ratio to values greater than 2.10 and less than 1.47 (i.e. outside the bounds of the preferred range of Tanimoto, of which is calculated based on hydrogen sulfide), in order to (or corresponding to) highly-fill(ed)/overfill(ed), or underfill(ed), the container with the sulfur dioxide/water mixture to balance or optimize one or more of: safety, desired/predetermined amount of mixture provided in the tank, and transportation efficiency based on (at least) weight.
The aforesaid modification (routine optimization) would have necessarily been made in view of the High Pressure Gas Safety Act, Article 48, Paragraph 4 as disclosed by Tanimoto, and would have necessarily resulted in the V/G0 ratio of the sulfur dioxide/water mixture filled into the container of modified Tanimoto (having been increased/decreased) being less than 1.47, e.g. 1.10 or less, thereby encompassing and rendering prima facie obvious the claimed V/G0 range of 0.80 to 1.10. As cited above, Applicant is respectfully directed to MPEP 2123(I) and (II), and MPEP 2144.05(I) and (II); further, see MPEP 2144.04(VII).
Response to Arguments
Applicant’s arguments presented on p. 6-7 of the Remarks filed 12 September 2025 (hereinafter “Remarks”) have been fully considered but not found persuasive.
On p. 6 of the Remarks, Applicant first notes that the claims have been amended to recite the moisture concentration of the liquid phase of the sulfur dioxide/water mixture in the filling container being from 0.01 mole ppm to 1.0 mole ppm, and then asserts that none of Tanimoto, Benesch, or Kensho teaches or suggests setting the moisture concentration of the liquid phase to 0.01 mole ppm to 1.0 mole ppm in order to reduce moisture concentration of the gas phase to prevent corrosion of metals.
However, Tanimoto explicitly teaches that the moisture concentration of the liquid phase may range from 0.01 mole ppm to 15 mole ppm (the lower bound of which is identical to Applicant’s claimed range) [Tanimoto, pp. 2-3], and directly attributes the low moisture concentration in the liquid phase to a reduction in corrosion of metals caused by the presence/concentration of moisture in the gas phase [Tanimoto, p. 4]. Further, Tanimoto discloses that the mixture, prior to being filled into the container, is subject to a dehydration step utilizing a moisture adsorbent to reduce the moisture concentration of the mixture, to obtain/control the moisture concentration of the liquid phase of the mixture to be 0.01 mol ppm to 15 mol ppm upon completion of filling of the container [Tanimoto, p. 5]. Furthermore, Tanimoto explicitly discusses reducing corrosion via the foregoing, and exemplifies corrosion rates as low as 0.38 µm/y [Tanimoto, pp. 7-8], of which is lower than the examples set forth in the spec [Table 1, Ex. 1–4]. As such, it is the Examiner’s position that Tanimoto clearly discloses controlling the moisture concentration of the liquid phase of the mixture to reduce the moisture concentration of the gas phase of the mixture to in turn reduce corrosion.
While it is noted that Tanimoto does not disclose a sulfur dioxide/water mixture (as claimed), as asserted by Applicant [Remarks, p. 6], the grounds of rejection are not based solely on the disclosure/teachings of Tanimoto, but rather the disclosure/teachings of Tanimoto taken in view of the teachings of Benesch and Kensho, resulting in the substitution of hydrogen sulfide for sulfur dioxide in the aforesaid mixture (“modified Tanimoto”), filled into the container of Tanimoto in accordance with the entirety of the disclosure of Tanimoto. Given that Applicant does not address the specific teachings/motivation of Benesch and Kensho cited and relied upon by the Examiner in the grounds of rejection to establish the prima facie case of obviousness and substitute the sulfur dioxide for the hydrogen sulfide in the mixture, Applicant has not addressed the grounds of rejection based on the combined teachings of the prior art references. See MPEP 2145(IV). Additionally/alternatively, Applicant has failed to provide any objective evidence to rebut the established prima facie case, and has not demonstrated or asserted (i.e. has not explicitly acknowledged) that the substitution of the hydrogen sulfide with sulfur dioxide would have been nonobvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, of which implies that said substitution (as set forth in grounds of rejection) would have been obvious.
For at least these reasons above, Applicant’s arguments have not been found persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782
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