DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 2-7, 9-11, and 13-14 have been amended. Claims 1-18, and 25 are pending in the instant application. Claims 16-18, and 25 remain withdrawn. Claims 1-15 are under examination on the merits.
Response to Amendment
The Amendment by Applicants’ representative Mr. Frank Rosenberg on 11/16/2025 has been entered.
Response to Arguments/Amendments
Claim objection
Applicant’s amendments to claims 3-4, 6-7, and 9-14 overcome the objection. The objection is hereby withdrawn.
Claim rejection under 35 U.S.C.§112(b)
Applicant’s amendments to claims 5, and 10-11 overcome the rejection. The rejection is hereby withdrawn.
Claim rejection under 35 U.S.C.§102(a)(1)
Applicant’s argument over Exception under 35 U.S.C. §102(b)(1)(A) has been fully considered, but is not sufficient to overcome the rejection. The present application names five persons as joint inventors, and the cited Miles publication names four persons as co-authors with only two shared joint inventors and co-authors. It would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies. Therefore, the rejection is maintained.
To overcome the rejection, Applicants can include a statement regarding any grace period inventor-originated public disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a grace period inventor-originated public disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the AIA 35 U.S.C. 102(b)(1)(A) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(a). See MPEP §§ 717.01(a)(1) , 2155.01, and 2155.03. An applicant is not required to identify any grace period inventor-originated public disclosures or to use the format specified in 37 CFR 1.77, but identifying any such disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to a grace period inventor-originated public disclosure, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the grace period public disclosure is attributable to the inventor or a joint inventor, provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant should also provide a copy of the grace period inventor-originated public disclosure (e.g., copy of a printed publication). The format specified in 37 CFR 1.77(b)(6) may not be the basis to add information about inventor-originated grace period public disclosures to the specification after the filing date of the application. Such an amendment may be considered new matter. Applicants should use 37 CFR 1.130(a) to submit such information after filing.
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130 ) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the grace period disclosure itself or the patent application specification that the disclosure is an inventor-originated disclosure, the applicant may establish that the AIA 35 U.S.C. 102(b)(1)(A) exception applies by way of an affidavit or declaration under 37 CFR 1.130(a). MPEP § 2155.01 discusses the use of affidavits or declarations to show that a disclosure was an inventor-originated disclosure made during the grace period.
Claim rejection under 35 U.S.C.§103(a)
Applicant’s arguments have been fully considered, but are found not persuasive.
In response to applicant's argument that “There is not a proper motivation to modify Sekizkardes… that the worker of ordinary skill would not have believed that the alleged modification would further improve the absorbent's CO2 uptake capacity and CO2 selectivity because if Sekizkardes' amine were added to Patel's polymer, the worker of ordinary skill would expect the amine to block the CO2-philic amidoxime; and furthermore, modifying Sekizkardes' polymer with the amidoxime moiety would eliminate the carboxylic acid functional groups that Sekizkardes states are responsible for retaining the amines”, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one ordinary skill would not expect the amine to block the CO2-philic amidoxime because the alkyl amine is also a part of the claimed sorbent material of claim 1. In term of motivation for modifying Sekizkardes' polymer with the amidoxime moiety, Patel et al. teaches amidoxime-modified polymer intrinsic microporosity chemical sorbents (Amidoxime-PIM-1) for improving CO2 capture capacity up to 17% and micropore surface area by 20% without losing its film (e.g. fiber) forming ability (see Abstract at p.9989; and Fig. 1 at p.9990). Patel et al. also discloses the sorbent Amidoxime-PIM-1 has CO2 uptake selectivity over N2 under various pressures (see Figs. 2-3 at p.9990-9991). In addition, both Sekizkardes et al., Patel et al., and Applicant claimed sorbent materials are used for CO2 capture. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that “Modifying Sekizkardes would not have led to predictable results”, the argument is not persuasive because both references are used for the same application for CO2 uptake, and the modification would have led to predictable results.
In response to applicant's argument that “The claimed invention is additionally patentable in view of the unexpected and superior results” by comparing the CO2 uptake of PIM-1 and PIM-1-AO with PIM-AO-DETA in Fig. 1(A) shows that the invention provides a greater extent of improvement than could be expected based on the prior art, the argument is not persuasive because Applicant’s specification does not disclose Fig. 1(A), but Fig. 2(A), which does not demonstrate unexpected result of improvement by side-by-side comparison of the CO2 uptake over the cited prior art references. The rejection is maintained.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6, 9, and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miles et al., Energy Technology, (2020), 8, 2000419 (1-6). Miles et al. was published on Aug. 19, 2020, exactly 1 year prior to the effective filing date of the present application, which is U.S. Provisional Application No. 63/234,974.
Applicant’s claim 1 is drawn to a sorbent material, comprising: a polymer comprising an amidoxime moiety; and an alkyl amine disposed on a surface of the polymer.
Miles et al. discloses a sorbent material comprising PIM-1-AO-DETA
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or PIM-1-AO-PEI for CO2 adsorption, see Figures 1-4. Miles et al. discloses amines are either present within or blocking the micropores of PIM-1-AO, see right column at 2000419(2). Therefore, Miles et al. anticipates claims 1-3, 6, 14, and 15.
In terms of claim 9, Miles et al. discloses a sorbent material comprising PIM-1-AO-DETA or PIM-1-AO-PEI for CO2 adsorption with pore width distribution (see Figure 2), which demonstrates the sorbent material is in the form of a powder.
In terms of claims 11-13, see Figure 4A of Miles et al.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sekizkardes et al., ACS Applied Materials &Interface, (2019), v.11, p.30987-30991 in view of Patel et al., Chem. Comm., (2012), v.48, p.9989-9991.
Sekizkardes et al. discloses a polymer intrinsic microporosity (PIMs) chemical sorbents utilizing primary amine appendance through acid-base and hydrogen-bonding interactions. The amine-appended PIMs (e.g. PIM-1-C-TA) not only showed a nearly four-fold enhancement in CO2 loading capacity (36.4 cc/g at 0.15 bar and 298K) and very high CO2/N2 selectivity compared to neat PIM-1 but also proved to have stable performance when cycled between adsorption and desorption isotherms under both dry and humid conditions that are typical for postcombustion CO2 capture (see ABSTRACT at p.30987). Sekizkardes et al. also discloses a primary alkylamine appended polymer intrinsic microporosity PIM-1-C3-TA with pore size distribution Figure 1c
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. In addition, Sekizkardes et al. discloses CO2 uptake performance of primary alkylamine appended polymer intrinsic microporosity PIM-1-C1-TA, PIM-1-C2-TA, and PIM-1-C3-TA in Table 1. All the primary alkylamine appended polymers show enhanced CO2 capture capacity over the non-alkylamine appended polymer (PIM-1) under various temperatures and pressures, which demonstrates loading primary (alkyl)amines into the hydrolyzed PIMs resulted in a drastic increase in CO2 uptake capacity (see left column at p.30989). Sekizkardes et al. discloses CO2 uptake performance of PIM-1-C3-TA in Table 1 in Figure 2(A).
Patel et al. discloses amidoxime-modified polymer intrinsic microporosity chemical sorbents (Amidoxime-PIM-1) for improving CO2 capture capacity up to 17% and micropore surface area by 20% without losing its film (e.g. fiber) forming ability (see Abstract at p.9989; and Fig. 1 at p.9990). Patel et al. also discloses the sorbent Amidoxime-PIM-1 has CO2 uptake selectivity over N2 under various pressures (see Figs. 2-3 at p.9990-9991). Patel et al. discloses amidoxime-modified polymer intrinsic microporosity chemical sorbents can be powder (see p.9990). In addition, Patel et al. discloses the solubility of PIMs is one of the major benefits for casting robust, self-standing films by conventional solution-based polymer processing techniques. Membranes offer a low cost, more energy-efficient CO2 capture option. See left column, p.9989.
The difference between Sekizkardes et al. and Applicant’s inventions is the prior art does not teach the amine-appended PIMs polymer absorbent (e.g. PIM-3-C-TA) comprising an amidoxime moiety, but a carboxylate and/or amide moieties.
However, the difference between the instantly claimed sorbent materials and the sorbent material disclosed by Sekizkardes et al. is further taught and/or suggested by Patel et al. Patel et al. teaches amidoxime-modified polymer intrinsic microporosity chemical sorbents (Amidoxime-PIM-1) for improving CO2 capture capacity up to 17% and micropore surface area by 20% without losing its film (e.g. fiber) forming ability (see Abstract at p.9989; and Fig. 1 at p.9990). Patel et al. also discloses the sorbent Amidoxime-PIM-1 has CO2 uptake selectivity over N2 under various pressures (see Figs. 2-3 at p.9990-9991). In addition, both Sekizkardes et al., Patel et al., and Applicant claimed sorbent materials are used for CO2 capture. They are used for the same application. One ordinary skilled in the art would have been motivated to modify the alkylamine modified polymers comprising carboxylate and/or amide moiety disclosed Sekizkardes with the moiety of amidoxime disclosed by Patel to further improve the absorbent’s CO2 uptake capacity and CO2 selectivity N2 in light of Patel’s disclosure (see Figs. 2-3 at p.9990-9991). Therefore, Sekizkardes et al. in view of Patel et al. would have rendered claims 1-3, 6, 9, and 11-15 obvious.
In terms of claims 4-5, and 7-8, Patel et al. discloses amidoxime-modified polymer intrinsic microporosity chemical sorbents (Amidoxime-PIM-1) for improving CO2 capture capacity up to 17% and micropore surface area by 20% without losing its film (e.g. fiber) forming ability (see Abstract at p.9989; and Fig. 1 at p.9990). Patel et al. also discloses the solubility of PIMs is one of the major benefits for casting robust, self-standing films by conventional solution-based polymer processing techniques. Membranes offer a low cost, more energy-efficient CO2 capture option. See left column, p.9989. Therefore, Patel et al. teaches and/or suggests the sorbent of claims 4-5, and 7-8 comprising sorbent fillers to enhance the performance of CO2 capture membranes or films by further including other CO2 absorbent such as porous silica, porous organic polymers.
In terms of claim 10, Patel et al. also discloses the solubility of PIMs is one of the major benefits for casting robust, self-standing films by conventional solution-based polymer processing techniques. Membranes offer a low cost, more energy-efficient CO2 capture option. Cutting a solid continuous structure having a dimension in at least one direction of at least 1 cm, or at least 5 cm is a routine operation for preparing self-standing films by conventional solution-based polymer processing techniques.
Conclusions
Claims 1-15 are rejected.
Claims 16-18 and 25 are withdrawn.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731