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 (“RCE”) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/26/26 submission has been entered via the 9/9/26 RCE.
Response to Arguments
Applicant's 9/9/26 arguments vis-a-vis 35 U.S.C. 112(b)/2nd par. rejections, simply stating that the rejections were addressed by the 9/9/26 amendments, have been fully considered but are not persuasive. Notwithstanding said amendments, the rationale for said rejections remains applicable and proper, adjusted as necessitated by the amendments.
Applicant's 9/9/26 arguments vis-a-vis prior art rejections over JP2002-293537A (2002) (incl. English machine transl’n, herein “EMT”) (“’537”), simply stating that the rejections were addressed by the 9/9/26 amendments (i.e. ‘537’s maximum aq. NaOH concentration of 12% is sufficiently distant from the claimed minimum of 15% to preclude an obviousness finding - Remarks at p. 5), have been fully considered and are persuasive in view of said amendments. As these rejections are thus withdrawn, claims 1 and 24-26 would appear to be allowable for the above-detailed reason if re-written to overcome the 35 U.S.C. 112 rejections detailed below.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1 and 24-26 are rejected under 35 U.S.C. 112(b)/2nd par. as 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 “an aqueous solution with 0% sodium hydroxide”, but this is merely water, not aq. NaOH nor an aq. solution with any NaOH therein. The foregoing internal contradiction/inconsistency causes confusion as to claim 1’s scope and how to avoid infringing it (MPEP 2173.02), rendering claim 1 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.), and Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing Columbia v. Symantec).
Applicant is hereby advised that, as independent claim 1 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claim 26 is rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to include all the limitations of the claim upon which it depends. Claim 26 recites “…to give an aqueous solution containing sodium hydroxide at a concentration of 13 to 21%, and the aqueous solution is used in the carbon dioxide gas absorption step”, and depends from claim 1, which recites “a carbon dioxide gas absorption step of allowing an aqueous sodium hydroxide solution at a concentration of 15 to 20% to absorb carbon dioxide gas…” MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.). Since claim 26 may be infringed without necessarily also infringing claim 1, e.g. by forming a 13% aq. NaOH solution that is used in claim 1’s CO2 gas absorption step, claim 26 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from Examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. Examiner can normally be reached M-F 8:30-5:00 (Central). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach Examiner by telephone are unsuccessful, Examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ September 17, 2026
Primary Examiner
Art Unit 1736
