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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07 JANUARY 2026 has been entered.
Claim Status
Rejected Claims: 1-7 and 9-12
Withdrawn Claims: 13-20
Cancelled Claims: 8
Response to Amendment
The amendment filed on 07 JANUARY 2026 has been entered.
In view of the amendment to the claims, the amendment of claims 1 and 9 and the cancellation of claim 8 have been acknowledged.
In view of the amendment to claim 1 and the cancellation of claim 8, the rejection under 35 U.S.C. 103 has been modified such that the previous rejection of claim 8 has been added to the rejection of claim 1 to match the claim amendment.
Response to Arguments
Applicant’s arguments filed on 07 JANUARY 2026 have been fully considered.
Applicant argues, regarding previous claim 8, which is now incorporated into claim 1 via the amendment, that Federspiel et al (US Patent Application No. 20080014622 A1) hereinafter Federspiel only teaches the use of immobilized enzymes to remove CO-2 from blood, that Eisaman et al (US Patent Application No. 20170342006 A1) hereinafter Eisaman does not teach catalysts or molecules to modify membrane contactors to improve CO-2 removal from an aqueous solution, and that Bennett et al (Robert Bennett, Sarah Clifford, Kenrick Anderson, Graeme Puxty, Carbon Capture Powered by Solar Energy, Energy Procedia, Volume 114, 2017, Pages 1-6, ISSN 1876-6102, https://doi.org/10.1016/j.egypro.2017.03.1139) hereinafter Bennett teaches photoacids can be used to remove CO2 with the use of light, but Bennett does not teach modifying membrane contactors with the photoacids to remove CO2 and that impermissible hindsight was used because the combination lacks motivation for one of ordinary skill in the art to combine because the enzyme carbonic anhydrase functions completely differently to the photoacids as taught by Bennett and so claim 1 is allowable (Arguments filed 07 JANUARY 2026, Page 1 to Page 3, Paragraph 1).
Regarding Applicant’s arguments for previous limitations recited in claim 8 and current claim 1, firstly, Applicant asserts that “Bennett does not teach using photoacids to modify membrane contactors to remove CO2”, which is an incorrect statement. See an excerpt from Bennett below where a photoreactor design utilizing photoacids and a gas-liquid membrane contactor for the release of captured CO2 from solution via light is directly taught as an alternative photoreactor. Therefore, Bennett teaches the modification of a membrane contactor with photoacids to remove CO2 from solution.
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Secondly, one of ordinary skill in the art would be motivated to switch from an enzyme as taught by Federspiel to a photoacid as taught by Bennett because the two are known alternatives for CO2 capture and release from solutions and Bennett teaches that photoacids can improve capture capacity. The functions of the molecules are different, but the general results of removing CO2 from solution in a gas-liquid membrane contactor are the same. Instant claim 1 describes a list of a variety of molecules that are interchangeable for use in the gas-liquid contactor, including an inorganic coordination compound that mimics carbonic anhydrase and photoacids, essentially stating that the two mechanisms of enzymatic CO2 removal and pH change CO2 removal are in fact interchangeable for the purpose of modifying the gas-liquid contactor. Therefore, claim 1 is not allowable over the cited prior art.
Applicant argues, regarding the dependent claims 2-7 and 9-12, that claim 1 is allowable and so claims 2-7 and 9-12 are also allowable (Arguments filed 07 JANUARY 2026, Page 3, Paragraphs 1-2).
Regarding Applicant’s arguments for dependent claims 2-7 and 9-12, claim 1 is not allowable and so claims 2-7 and 9-12 are also not allowable.
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.
Claims 1-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Federspiel et al (US Patent Application No. 20080014622 A1) hereinafter Federspiel in view of Eisaman et al (US Patent Application No. 20170342006 A1) hereinafter Eisaman in view of Bennett et al (Robert Bennett, Sarah Clifford, Kenrick Anderson, Graeme Puxty, Carbon Capture Powered by Solar Energy, Energy Procedia, Volume 114, 2017, Pages 1-6, ISSN 1876-6102, https://doi.org/10.1016/j.egypro.2017.03.1139) hereinafter Bennett.
Regarding Claim 1, Federspiel teaches a device and method for removal of at least a portion of carbon dioxide from an aqueous fluid (Paragraph 0013)
with an example system with a sodium bicarbonate solution passing through (i.e., adding an influent solution) a module (i.e., to a container comprising at least one inlet, at least one outlet; Fig. 5, #10) around a hollow fiber membrane (i.e., at least one gas-liquid contactor; Fig. 5; Paragraph 0013) with a peristaltic pump (i.e., and at least one pump; Fig. 5),
wherein the solution is made with sodium bicarbonate (i.e., wherein the solution comprises at least one dissolved inorganic carbon species in a liquid phase; Paragraph 0013),
wherein the membrane allows carbon dioxide to be removed from the fluid and forms a gas in when joining the carrier gas flowing through the hollow fiber membrane (i.e., wherein the at least one dissolved inorganic carbon species is converted to gas phase CO2 when not dissolved in the solution; Fig. 5; Paragraph 0013),
wherein carbonic anhydrase is present on the membrane and is contacted with the aqueous fluid (i.e., wherein the solution is in contact with a first surface of the at least one gas- liquid contactor; Paragraph 0013)
wherein Fig. 5 depicts sodium bicarbonate solution circulating though one side of the membrane and CO2 being removed through the membrane and being carried out by the carrier gas (i.e., wherein the at least one gas-liquid contactor provides an interface for species transport between the aqueous phase from the at least one dissolved inorganic carbon species and to the gas phase CO2; wherein the at least one gas-liquid contactor separates the gas phase and the liquid phase of the at least one dissolved inorganic carbon species; Fig. 5),
wherein the method reduces the concentration of carbon dioxide in fluids (i.e., wherein the concentration of the at least one dissolved inorganic carbon in the collected solution is lower than in the added solution; Paragraph 0002) where the carbon dioxide in the fluid is in the form of bicarbonate ions (Paragraph 0013),
and wherein the membrane is modified with immobilized carbonic anhydrase (i.e., wherein the at least one gas-liquid contactor is modified with at least one molecule and the at least one molecule increases an interconversion rate of the at least one dissolved inorganic carbon species from the solution in the liquid phase to the gas phase CO2; Paragraph 0013).
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Federspiel does not teach (1) a method for direct ocean capture, (2) collecting a gas stream from the pump wherein the pump connects to a second surface of the at least one gas-liquid contactor, and (3) collecting the solution from the at least one outlet of the container.
However, Eisaman teaches (1) a method for extracting CO2 from seawater (i.e., a method for direct ocean capture)
(2) utilizing membrane contactors using the operation of pumps (Fig. 1, #121, 155) to pull a vacuum on desorption units (i.e., collecting a gas stream from the pump wherein the pump connects to a second surface of the at least one gas-liquid contactor) which improves the removal of carbon dioxide by increasing the surface area and reducing the vapor pressure of the seawater (Paragraphs 0003-0005)
(3) where the decarbonated seawater is transported to a waste tank (i.e., collecting the solution from the at least one outlet of the container; Fig. 1, #171; Paragraph 0017) and the vacuum extracted gas is directed to collection vessel (Fig. 1, #180A; Paragraph 0015) for the purpose of reducing CO2 in the atmosphere by allowing seawater to absorb more atmospheric CO2 (Paragraph 0035) and for reusing the CO2- in processes such as fuel synthesis (Paragraph 0005).
Eisaman is analogous to the claimed invention because it pertains to a method of vacuum stripping carbon dioxide from a solution (Abstract), specifically including seawater (Paragraph 0003). It would have been obvious to one of ordinary skill in the art to modify the method taught by Federspiel with the application to seawater with a vacuum pump and the collection of the CO2 and decarbonated seawater because the process would reduce CO2 in the atmosphere and allow for reuse of the CO2 in processes such as fuel synthesis.
Federspiel in view of Eisaman does not teach wherein the at least one molecule is selected from the group consisting of a buffering molecule, a decorated mixed metal oxide, an inorganic coordination compound that mimics a carbonic anhydrase enzyme, a zinc-cyclen, polymer, an amine-based polymer, polyethyleneimine, a photoacid, an excited-state reversible photoacid, a non-reversible photoacid, a metastable photoacid, a photobase, an excited-state reversible photobase, a non-reversible photobase, a metastable photobase, and any combinations thereof.
However, Bennett teaches that photoacids can be used to remove CO2 from an absorbent using light instead of using heat and explicitly teaches that transparent gas permeable membranes can be used to allow light in for excitation and gas out of the absorbent with the photoacids improving capture capacity of the absorbent and reducing energy use (i.e., wherein the at least one molecule is selected from the group consisting of a photoacid; Conclusion, Page 5).
Bennett is analogous to the claimed invention because it pertains to carbon capture technology and removal of CO2 from a solution with a reversible photoacid (Abstract, Page 1). It would be obvious to one of ordinary skill in the art to modify the carbonic anhydrase made obvious by Federspiel in view of Eisaman with the photoacid as taught by Bennett because the photoacid would reduce the energy requirements of the CO2 desorption due to the light activation of the photoacid.
Regarding claim 2, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Eisaman further teaches the use of seawater for CO2 removal from solutions that contain dissolved inorganic carbon (i.e., wherein the influent solution is selected from the group consisting of oceanwater; Paragraph 0003).
Regarding claim 3, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Eisaman further teaches the acidification of seawater prior to CO2 removal to push the dissolved bicarbonate ions into dissolved CO2 (i.e., wherein the influent solution is titrated to a pH that is lower than the native pH of the influent solution; Paragraph 0005).
Regarding claim 4, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Federspiel further teaches that the carbonic anhydrase can be immobilized on microporous hollow fiber membranes consisting of polypropylene (i.e., wherein the at least one gas-liquid contactor comprises a material selected from the group consisting of polypropylene; Paragraph 0116).
Regarding claim 5, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Federspiel further teaches that the fibers and carbonic anhydrase can remove CO2 from fluids in which a component of the CO2 is in the form of bicarbonate ion (i.e., wherein the liquid phase of the at least one dissolved inorganic carbon species is selected from the group consisting of bicarbonate).
Regarding claim 6, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 5. Federspiel further teaches that carbonic anhydrase effectively catalyzes the reversible hydration and dehydration reaction of CO2 (i.e., wherein the at least one molecule increases an interconversion rate of bicarbonate dehydration and formation; Paragraph 0008).
Regarding claim 7, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Federspiel in view of Eisaman does not explicitly teach wherein the solution collected from the at least one liquid outlet has a pH value higher than the solution added to the container. However, the removal of CO2 from solution will inherently increase the pH of the solution. Additionally, the applicant agrees with the inherency because the instant specification states “The pH of the influent solution is about 6.0. The pH of the effluent solution is about 6.7 due to the CO2 removal.” (Paragraph 0099).
Furthermore, the limitation “wherein the solution collected from the at least one liquid outlet has a pH value higher than the solution added to the container” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Regarding claim 10, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Federspiel further teaches that the carbonic anhydrase is immobilized on the microporous hollow fiber membrane (i.e., wherein the at least one molecule is on the first surface of the at least one gas-liquid contactor; Paragraph 0116).
Regarding claim 11, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Eisaman further teaches the acidification of seawater prior to CO2 removal to push the dissolved bicarbonate ions into dissolved CO2 (i.e., further comprising acidifying the solution before extracting CO2 from it; Paragraph 0005).
Regarding claim 12, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. In continuous reaction processes, there is a standard trade-off of yield vs. time. Reactions occur fastest at highest reactant concentration and continually slow down as reactants are depleted, meaning that you will achieve a greater quantity of product at higher concentrations. The yield of a reaction is based entirely upon time given to react, where greater time equates to greater yield. Flow rate is equivalent to time in a continuous reactor, where high flow rate is equal to shorter time and low flow rate is equal to a longer time. Thus, low flow rates generating higher yields vs high flow rates generating higher quantities is a standard optimization consideration in all concentration driven processes.
Furthermore, the limitation “wherein a lower flow rate of the solution being added to the container results in a higher extraction yield of CO2 into the gas phase from the at least one dissolved inorganic carbon species in the liquid solution phase” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Federspiel in view of Eisaman in view of Bennett as applied to claim 1 above, and further in view of Adamczyk et al (Adamczyk K, Prémont-Schwarz M, Pines D, Pines E, Nibbering ET. Real-time observation of carbonic acid formation in aqueous solution. Science. 2009 Dec 18;326(5960):1690-4. doi: 10.1126/science.1180060. Epub 2009 Nov 12. PMID: 19965381.) hereinafter Adamczyk.
Regarding claim 9, Federspiel in view of Eisaman in view of Bennett makes obvious the method of claim 1. Federspiel in view of Eisaman in view of Bennett does not teach wherein the photoacid comprises a trisodium salt of 8-hydroxypyrene-1,3,6-trisulfonate.
However, Adamczyk teaches that pyranine, or 8-hydroxypyrene-1,3,6-trisulfonate, is a photoacid known for impacting the carbon dioxide – bicarbonate – carbonate equilibrium (Page 3, Paragraph 1) by speeding up the reactions in the equilibrium (Abstract).
Adamczyk is analogous to the claimed invention because it pertains to photoacids and their use in CO2-rich aqueous environments anticipated under sequestration schemes (Abstract). The prior art Federspiel in view of Eisaman in view of Bennett does not explicitly teach the use of pyranine as the photoacid to be used for CO2 depletion from solution. However, Adamczyk teaches that pyranine is a known alternative photoacid for use in manipulating the carbon dioxide – bicarbonate – carbonate equilibrium and that tests have been done regarding its catalytic effects on the hydration and dehydration of CO2/H2CO3 with explicit association to CO2 sequestration schemes. As such, one of ordinary skill in the art would select pyranine as an alternative to the photoacids made obvious by Federspiel in view of Eisaman in view of Bennett because pyranine is a known photoacid alternative for catalyzing bicarbonate dehydration in aqueous solution. See MPEP 2143(I)(B) for examples of a simple substitution of a known element for another to obtain predictable results.
Conclusion
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/A.A.G./ Examiner, Art Unit 1777
/IN SUK C BULLOCK/ Supervisory Patent Examiner, Art Unit 1772