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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Species A1 and B1, encompassing claims 1-7, and 9-14, in the reply filed on 10/10/2025 is acknowledged.
NOTE: claims 16-29 depend upon withdrawn claim 15 (Species A2) while claims 31-32 depend upon withdrawn claim 30 (Species A3). Therefore, claims 15-32 are further withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, and 9-14 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.
Claim 1 recites the limitation "each dielectric barrier discharge plasma reactor" in line 2-3. “one or more dielectric barrier discharge plasma reactor” is cited in line 2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required. For the purpose of examination, the above limitation will be interpreted as "each of the one or more dielectric barrier discharge plasma reactors".
Claim 3 recites the limitation "each dielectric barrier discharge plasma reactor" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required. For the purpose of examination, the above limitation will be interpreted as "each of the one or more dielectric barrier discharge plasma reactors".
Claim 11 recites the limitation "each plasma reactor of the plurality" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required. For the purpose of examination, the above limitation will be interpreted as "each of the one or more dielectric barrier discharge plasma reactors".
Due to the dependency to the parent claim, claim 2-7, and 9-14 are rejected.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a 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 obvious before the effective filing date of the claimed invention to a 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5-7, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Han (PG-PUB US 2021/0275983).
Regarding claim 1, Han disclose a plasma generating apparatus (ABSTRACT). The apparatus comprises a plasma reactor packed with dielectric packing material having a catalyst thereupon, wherein the catalyst comprises a transition metal oxide and carbon dioxide is supplied to the plasma reactor (i.e., one or more …, each of the one or more dielectric barrier discharge plasma rector packed with…, Figure 3, paragraphs [0037] – [0039], [0043], & [0049] – [0051]).
The recitation “for producing ethanol from carbon dioxide” in preamble has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
Han teaches at least one dielectric barrier discharge plasma reactor (Figure 3, paragraph [0050]). Moreover, utilizing more than one dielectric barrier plasma reactor is within ordinary skill in the art because it has been held that mere duplication of the essential working parts of a device involves only routine of skill in the art. St. Regis Paper Co. v. Bemis, 193 USPQ8.
It should be noted that the limitation of “configured to receive a plasma reactor gas feed … and to output ethanol” is related to a manner of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Furthermore, “a plasma reactor gas feed” and “ethanol” are material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 2, the limitation of “the CO2-containg source” is not part of the apparatus, rather a material worked upon the device. It has been held that material worked upon a device doe does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 3, Han teaches that the plasma rector comprises a tube having dielectric material (Figure 3, paragraph [0054]).
Regarding claim 5, Han teaches that the catalyst comprises a transition metal and is coated/supported on the dielectric packing material (Figure 3, paragraphs [0037] – [0039] & [0043]).
Regarding claim 6, Han teaches that the catalyst comprises a transition metal oxide that is coated/supported on the dielectric packing material (Figure 3, paragraphs [0037] – [0039] & [0043]).
Regarding claim 7, Han teaches that the catalyst is coated/supported on the dielectric packing material which comprises zeolite and/or metal oxide (Figure 3, paragraphs [0037] – [0039]).
Regarding claim 10, Han teaches a non-thermal plasma reactor (paragraphs [0032] & [0041]).
Regarding claim 12, Han teaches that a heater is provided to heat the plasma reactor (paragraph [0056]).
Regarding claim 13, “the plasma reactor gas feed … ” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 14, “CO2 and H2O” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a 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 obvious before the effective filing date of the claimed invention to a 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Han (PG-PUB US 2021/0275983) as applied to claims 3 and 6 above, and further in view of Ha et al (PB-PUB US 2021/0260558).
Regarding claim 4, Han teaches that the plasma rector comprises a tube having dielectric property (Figure 3, paragraph [0054]), but does not teach the reactor tube comprising quartz. However, Ha et al disclose a plasma reactor (ABSTRACT). Ha teaches that the plasma reactor comprises a tube having dielectric material, such as quartz (Figure 1, paragraph [0012]). The teaching of Ha shows that a reactor tube comprising quartz is an equivalent tube for a plasma reactor. Therefore, utilizing a quartz tube is within ordinary skill in the art because it is an art-recognized equivalent.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Regarding claim 9, Han teaches that the catalyst comprises a transition metal and is coated/supported on dielectric packing material (Figure 3, paragraphs [0037] – [0039] & [0043]), but does not the ratio thereof. However, Ha et al disclose a plasma reactor (ABSTRACT). Ha teaches that a transition metal oxide supported on a dielectric material is used for catalyst, wherein the amount of the catalyst is in a range of 0.5% to 50% of the dielectric support and such catalytic configuration may improve catalyst activity (paragraphs [0023] & [0066]). Therefore, it would be obvious for one having ordinary skill in the art to amount the catalyst in a range of 0.5% to 50% of the dielectric support as suggested by Ha in order to improve catalytic activity within the device of Han.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Han (PG-PUB US 2021/0275983) as applied to claim 6 above.
Regarding claim 9, Han teaches that the shape and size of the dielectric packing material and the catalyst can affect the catalytic reaction (paragraphs [0037] – [0039] & [004]). Thus, the relative amount /ratio of the catalyst to the support is a result-effective variable. Therefore, one having ordinary skill in the art would have realized to optimize the ratio of the catalyst to the support in an attempt to achieve desired results within the device Han.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Han (PG-PUB US 2021/0275983) as applied to claims 1 and 6 above, and further in view of Laroussi (PB-PUB US 2009/0121637).
Regarding claim 11, Han teaches that the plasma reactor comprises an inner electrode and an outer electrode and a power supply for generating plasma, wherein the power supply may be an AC power source (Figure 3, paragraphs [0049], & [0055]), but does not teach the plasma being generated from an RF source. However, Laroussi discloses a plasma generator (ABSTRACT). Laroussi teaches that the apparatus comprises a dielectric tube 1100 to house a first dielectric electrode 130 and a second dielectric 140, wherein a power supply 170 supplies voltage to the electrodes to generate plasma and the power supply may be an AC source or an RF source (Figure 1, paragraphs [0028] – [0034], & [0045]). The teaching of Laroussi shows that an RF source is an equivalent power supply for a plasma reactor. Therefore, utilizing an RF source is within ordinary skill in the art because it is an art-recognized equivalent.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-7, and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 11-13, and 15-17 of U.S. Patent No.11,859,137. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprises substantially the same structure as that of the issued patent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-7, and 9-14 are rejected. Claims 8, and 15-39 are withdrawn.
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/XIUYU TAI/Primary Examiner, Art Unit 1795