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, claims 15-29, in the reply filed on 10/13/2025 is acknowledged.
Claims 30 and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/13/2025.
Claim Objections
Claims 15, 19 and 28 are objected to because of the following informalities:
Claim 15, line 1 should read “for carbon dioxide (CO2) removal” for clarity
Claim 15, line 2 should read e.g. “as part of” because the cause does not make sense as written
Claim 15, line 5 should read “the expiration or breathing gas stream” because it is understood to be referring to that of line 1
Claim 15, line 12 should read “discharging the respective plates” for clarity
Claim 19, line 2 should read “the expiration or breathing gas stream” because it is understood to be referring to that of claim 15
Claim 28, line 1 should read “an expiration or breathing gas stream” for clearer antecedent basis
Appropriate correction is required.
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 15-29 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.
Regarding claim 15 (and thus its dependent claims 16-29), lines 9-11 recite “a plurality of plates” and “each of the plates comprises at least two electrodes,” but then line 12 recites “the at least two electrodes,” wherein it is unclear from the claim to which of the plurality of plates “the at least two” belongs. As best understood, for purposes of examination, claim 1, line 13 will be considered to read “the at least two electrodes of each of the plurality of plates,” and lines 15-16 will be considered to read “to each of the active electrodes and/or each of the counter electrodes”.
Regarding claims 16-20 and 23-25 (and their dependent claims 21-22), the claims recite “the electrodes,” wherein it is unclear in the claims which of the active and/or counter electrodes of which of the plurality of plates are being referenced, e.g. are the claims directed to “each” electrode, the electrodes of a particular plate, “active electrodes” of all plates, “counter electrodes” of all plates, or some other grouping? For purpose of examination, prior art that meets the instant limitations for any two or more electrodes will be considered to read on the instant claims.
Regarding claim 18, the limitation “comprising at least two plates” in line 2 appears redundant, since claim 15 already recites “a plurality of plates,” which, by definition, means at least two plates, and it is unclear in the claim what it means for a device to “have a pressure” or what it means for a flow rate to be “nominal.” It is also unclear in the claim whether the scope of the distance d “between the plates or the electrodes thereof” encompasses the distance between each plate (each of which comprises electrodes) as well as the distance between each electrode of each plate or if, as best understood from instant Fig. 2, it is intended to encompass only the former, and “is selected therefor” in line 3 reads as an active method and/or mental step, which is improper in an apparatus claim. To address this rejection, Applicant could rewrite the claim to read e.g. “The device of claim 15, comprising a distance d between adjacent plates that is adapted to provide a pressure resistance of less than 2 mbar at a flow rate from 20 L/min to 65 L/min,” where page 8, lines 7-8, and page 9, lines 25-31, of the instant specification indicate that distances d that provide these results include 0.8-5.4mm, e.g. 2 mm.
Regarding claim 19 (and thus its dependent claims 20-25), “is selected” in lines 2-3 reads as an active method and/or mental step, which is improper in an apparatus claim. Applicant could address this rejection by amending claim 19 to read “is configured”.
Regarding claim 22, “by selecting” in line 2 reads as an active method and/or mental step, which is improper in an apparatus claim. Applicant could address this rejection by rewriting the claim to read e.g. “The device of claim 21, comprising an amount of (anthra)quinone and a total surface area in the container sufficient to provide CO2 removal at concentrations as low as about 400 ppm.” [Note: since the specification as originally filed does not provide any examples of amounts or total surface areas considered suitable for this purpose, it is understood to be within the scope of routine experimentation to arrive at suitable values.]
Regarding claim 26, “by adjusting” reads as an active method step, which is improper in an apparatus claim. To address this rejection, Applicant could amend the claim to read e.g. “The device of claim 15, comprising a sufficient number plates in the container to allow the device to be operated for at least one day.” However, it is unclear in the specification what minimum number of plates this corresponds to, particularly since charging and discharging the plates extends the operational life. For purposes of examination, any disclosure of operating a CO2 device for at least one day suggests the instant intended result.
Regarding claim 27, it appears that the claim is attempting to define the subject matter in terms of results to be achieved, which merely amounts to a statement of the underlying problem, without providing clear technical features for achieving this result, and which would encompass all possible solutions to the problem. See MPEP 2173.05(g). To address this rejection, Applicant must make the minimum structural requirement(s) (e.g. materials, plate structures/arrangements, cycling protocols, etc.) for providing the intended results clear, so that comparisons to the prior art can be properly assessed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 15-17, 19-25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Voskian et al. (US 2017/0113182 A1; hereinafter “Voskian”) in view of Lambert (US 6,279,576 B1; hereinafter “Lambert”).
Regarding claim 15, Voskian discloses a device for CO2 removal (Figs. 1-2B, 4 and 5) (abstract; para [0022]) that is fully capable of being from an expiration or breathing gas stream, suitable for use in a breathing system, part of an anaesthesia arrangement (because nothing would preclude this intended use), the device comprising:
a container (housing 460) for CO2 removal from a gas stream (e.g. Fig. 5; abstract; paras [0022] and [0072-73]), wherein:
the CO2 removal by the container is based on an electro-charging and discharging method (Figs. 2A-B; paras [0048], [0051-52], [0057-59], [0067], [0069], [0072-74], [0114-116]),
the container comprises a plurality of plates (cells 405) ([w]hile only one cell 405 is shown in Fig. 4…it will be readily understood…that a plurality of cells 405 could be positioned in the housing 460, para [0072]; paras [0114-116]) arranged in that the gas stream passes between the plates (e.g. Fig. 5);
each of the plates comprises at least two electrodes (electrodes 410, 430) arranged for charging and/or discharging the plates (Figs. 2A-B; paras [0048], [0051-52], [0057-59], [0067], [0069], [0072-74], [0114-116]); and
the at least two electrodes comprise an active electrode (e.g. positive electrode 430) and a counter electrode (negative electrode 410) separated from the active electrode by a separator (separator 420) (Fig. 4; paras [0072-74]; see also Figs. 2A-B and paras [0057-68]); and
the device further comprises means for providing electricity to the active electrode and/or the counter electrode (power source 440 and wiring 450a/b) (Fig. 4; para [0072]; see also Figs. 2A-B and paras [0057-68]).
While Voskian teaches that system is suitable for ventilation/respiratory applications (para [0086]), Voskian is silent regarding a holder adapted for fitting in a breathing system; and the container being adapted for fitting in the holder, such that the plates are arranged in that the expiration or breathing gas stream passes between the plates. However, Lambert demonstrates that it was well known in the carbon dioxide removal art before the effective filing date of the claimed invention to include, in conjunction with a container for CO2 removal (cartridge 44) (Fig. 4), a holder (container 38) (Fig. 4) adapted for fitting in a breathing system (Figs. 5-6); and the container being adapted for fitting in the holder such that CO2-uptake materials are arranged in that the expiration or breathing gas stream passes between the CO2-uptake materials (Fig. 4; col. 4, line 38-col. 5, line 6). Therefore, it would have been obvious to an artisan before the effective filing date of the claimed invention to modify Voskian to include a holder adapted for fitting in a breathing system; and the container being adapted for fitting in the holder, such that the plates are arranged in that the expiration or breathing gas stream passes between the plates as taught by Lambert, in order to provide the predictable result of standard structure for installing a container for CO2 removal into a breathing system to predictably provide regenerative, optionally continuous, CO2 removal in the breathing system (Voskian paras [0057-59], [0082], [0116]; Lambert abstract).
Regarding claim 16, Voskian in view of Lambert teaches the device of claim 15, wherein Voskian further discloses wherein the plurality of plates are adapted for absorbing CO2 when the electrodes are being charged and for releasing CO2 when the electrodes are being discharged (Figs. 2A-B; paras [0057-59], [0067], [0116]).
Regarding claim 17, Voskian in view of Lambert teaches the device of claim 15, wherein Voskian further discloses that the electrodes can be connected to other electrical devices (para [0100]), but Voskian is silent regarding electronic means to control charging or discharging of the electrodes. However, broadly providing an automatic or mechanical means to replace a manual activity which accomplishes the same result is not sufficient to distinguish over the prior art (MPEP 2144.04 III). It would have been obvious to an artisan before the effective filing date of the claimed invention for modified Voskian to include electronic means to control charging or discharging of the electrodes in order to predictably automate the operation of the device, including the cycling of the electrodes, e.g. to provide for automated continuous treatment of the gas stream (Voskian paras [0077-82]).
Regarding claims 19-21 and 23-25, Voskian in view of Lambert teaches the device of claim 15, wherein Voskian further discloses wherein a surface of the electrodes is selected to react with CO2 in the gas stream, by virtue of being covered with a polymer, the polymer comprising (anthra)quinone (e.g. poly(1,4-anthraquinone (P14AQ)) for attracting CO2 and carbon nanotubes (CNT) for enhancing conductivity of the electrodes (paras [0030-35] and [0109-110]).
Regarding claim 22, Voskian in view of Lambert teaches the device of claim 21, wherein Voskian further discloses the device adapted to be operable for concentrations of CO2 as low as about 400 ppm by selecting an amount of (anthra)quinone and a total surface applicable in the container (para [0088] in view of paras [0024], [0092] and [0115]).
Regarding claim 27, Voskian in view of Lambert teaches the device of claim 15, wherein the limitations of claim 27 are drawn to testing/operation of the claimed device. As the structure meets the claimed limitations and the examiner is unable to test the disclosed features of efficiency loss over 2000 charging/discharging cycles, it would be expected that the device of modified Voskian would meet the claimed limitations absent an objective showing to the contrary, see MPEP 2112. Moreover and/or in the alternative, it would have been obvious to an artisan before the effective filing date of the claimed invention to ensure that the modified device provides the claimed intended results, in order to provide the predictably results of a durable device that maintains sufficient functionality over its lifetime.
Regarding claim 28, Voskian in view of Lambert teaches a breathing system comprising the device for CO2 removal from a gas stream according to claim 15, in order to provide the predictable results of CO2 removal from a breathing gas stream as discussed above regarding claim 15 and see e.g. Voskian Figs. 1-6 in view of Lambert Figs. 2 and 6 and Lambert col. 7 line 55-col. 8, line 21.
Regarding claim 29, Voskian in view of Lambert teaches an anaesthesia arrangement comprising the breathing system according to claim 28, in order to provide the predictable results of CO2 removal from an anesthetic gas stream as discussed above regarding claim 15 and see e.g. Voskian Figs. 1-6 in view of Lambert Figs. 2 and 6 and Lambert col. 7 line 55-col. 8, line 21.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Voskian view of Lambert as applied to claim 15 above, and further in view of McKenna (US 5,964,221; hereinafter “McKenna”).
Regarding claim 18, Voskian in view of Lambert teaches the device of claim 15, wherein Voskian further discloses at least two plates, wherein a distance d between the plates or the electrodes thereof is the same as instantly disclosed, i.e. 2 mm (para [0115]), but Voskian does not explicitly disclose that this provides a device adapted for having a pressure less than 2 mbar at a nominal flow rate from 20 L/min to 65 L/min. However, McKenna teaches that it was known in the carbon dioxide removal art before the effective filing date of the claimed invention that the spacing between CO2 absorbing sheets/plates was known before the effective filing date of the claimed invention to control the flow rate and pressure/resistance through a CO2 removal device (col. 6, lines 45-50 and ) and that specifically a[n internal drop/resistance] pressure less than 2 mbar (minimal pressure drop, col. 3, lines 9-10; 0.5 inch (12.7 mm) pressure drop [which is ~1.2 mbar], col. 10, line 57) at a nominal flow rate from 20 L/min to 65 L/min (40 L/min, col. 8, lines 56-57) are desirable. Therefore, it would have been obvious to an artisan before the effective filing date of the claimed invention for the device of modified Voskian to be adapted for having a pressure less than 2 mbar at a nominal flow rate from 20 L/min to 65 L/min as taught by Voskian (i.e. by virtue of having the same spacing as instantly disclosed) and further taught by McKenna, in order to ensure the predictable result of the device being functional under typical breathing system flows without significant back pressure.
Claim(s) 26 is rejected under 35 U.S.C. 103 as being unpatentable over Voskian view of Lambert as applied to claim 15 above, and further in view of Eddaoudi et al. (US 2017/0246584 A1; hereinafter “Eddaoudi”).
Regarding claim 26, Voskian in view of Lambert teaches the device of claim 15, wherein Voskian further teaches selecting a number of the plates in the container for CO2 removal over a period of time (paras [0008], [0057-59], [0076-85], [0115]; [t]he number of cells or sets of cells may be scaled to the requirements of a particular application as needed, para [0086]), but Voskian does not explicitly state that the number is adjusted such that the device is adapted for being operable for at least one day. However, Eddaoudi teaches that it was known in the carbon dioxide removal art before the effective filing date of the claimed invention that it was desirable for a CO2 removal cartridge to be operable for at least one day (high CO2 removal…with an average continuous operation of about 24 hours using a pre-packed commercial cartridge…use of recyclable [materials] allow the same regeneratable cartridge much longer durations than 24 hours, paras [0039-40]). Therefore, it would have been obvious to an artisan before the effective filing date of the claimed invention for modified Voskian to include a number of plates adjusted such that the device is adapted for being operable for at least one day as taught by Eddaoudi, in order to provide the predictable result of a durable CO2 removal device that does not need to be changed frequently (Eddaoudi paras [0039-40]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional references regarding electro-swing CO2 capture: Voskian et al. (US 2021/0060485 A1 and 2020/0023307 A1); Flanders et al. (US 2022/0136119 A1); Landskron (US 2018/0085703 A1); Umeda et al. (JP 2019-203193); Yan et al. (US 2020/0161684 A1); Jacquelin (FR 2235732). Additional reference regarding electrolytic removal of CO2 from breathing gas: De Respiris (US 3,494,842). Additional references regarding filter/scrubber canister holders/containers for breathing systems: Crudace et al. (GB 2453594 A); Currin et al. (US 2016/0095994 A1); Dowgul (US 4,193,966); Fife (US 4,781,184); Hazelton (US 2,701,030); Niemann et al. (US 2007/0084463 A1); Pentecost (US 2,891,542); Smith (US 5,558,088).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHRYN E DITMER whose telephone number is (571)270-5178. The examiner can normally be reached M-Th 7:30a-4:30p, F 7:30a-11:30a ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy Lee can be reached at 571-270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHRYN E DITMER/Primary Examiner, Art Unit 3785