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 .
Response to Arguments
Applicant's 1/26/26 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 1/26/26 amendments, have been fully considered but are not persuasive. As detailed below, the lower endpoints of the as-amended concentration ranges are considered sufficiently close to ‘537’s concentration ranges’ upper endpoints to render the claimed ranges prima facie obvious. As to the claimed BET surface areas, ‘537 is considered to regard its Ca(OH)2 particles’ size and shape as result-effective variables as detailed below, thus rendering the claimed BET surface area of the Ca(OH)2 particles (as well as that of the CaCO3 product particles formed therefrom) prima facie obvious. See below for further details. Said rejections, adjusted as necessitated by the 1/26/26 amendments, are re-asserted as proper.
Claim Interpretation
Claim 24’s term “unused” is considered to mean “unabsorbed”, as an “unused” material cannot later be “reused” since it has not been used in the first place.
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 24-28 are rejected under 35 U.S.C. 112(b)/2nd par. 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 “an aqueous sodium hydroxide solution at a concentration of 0%”, but this is merely water, not aq. NaOH. The foregoing internal contradiction/inconsistency causes confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claim 1 rejected for indefiniteness 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.
Claims 27-28 are 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 claims upon which they depend. Claim 27 recites “[diluting the filtrate] to give an aqueous solution containing sodium hydroxide at a concentration of less than 6%, and the aqueous solution is used in the hydration step”, and indirectly depends from claim 1, which recites “a hydration step of reacting calcium oxide with an aqueous sodium hydroxide solution at a concentration of 0%”. 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 at 1362 (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 27 may be infringed without necessarily also infringing claim 1, i.e. by diluting the aq. NaOH filtrate to an NaOH concentration of 5%, claim 27 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim. Claim 28 depends from claim 27 and is thus rejected for the same reasons vis-à-vis claim 27. Due to the foregoing, claims 27-28 have not been further treated on the merits.
Claims 27-28 are further 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 claims upon which they depend. Claim 27 recites “[diluting the filtrate] to give an aqueous solution containing sodium hydroxide at a concentration of less than 6%, and the aqueous solution is used in the hydration step”, and depends from claim 26, which recites “[concentrating the filtrate’s NaOH concentration to] 13 to 21%, and the aqueous solution is used in the carbon dioxide gas absorption step.” As the aq. NaOH filtrate is concentrated to 13-21% and then used in the CO2 removal step per claim 26, the aq. NaOH filtrate cannot also be diluted to <6% and then used in the hydration step per claim 27. Since claim 27 may be infringed without necessarily also infringing claim 26, i.e. by diluting the aq. NaOH filtrate to an NaOH concentration of 5% and then using it in the hydration step, claim 27 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim. Claim 28 depends from claim 27 and is thus rejected for the same reasons vis-à-vis claim 27. MPEP 608.01(n)III; Multilayer Stretch Cling Film Holdings. Due to the foregoing, claims 27-28 have not been further treated on the merits.
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 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.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1 and 24-26 are rejected under AIA 35 U.S.C. 103 as being unpatentable over JP2002-293537A (2002) (incl. English machine transl’n, herein “EMT”) (“’537”). Regarding claim 1, ‘537 teaches a method comprising the steps of contacting a CO2-comprising mixed gas with 6-12 wt% aq. NaOH to absorb the CO2 and give 8-15wt% aq. Na2CO3, denoted as step 10, hydrating/slaking quicklime (i.e. CaO) with “ordinary” water (i.e. 0 wt% aq. NaOH) to give slaked lime milk (i.e. an aq. Ca(OH)2 suspension), denoted as step 20, and carbonating a 10 wt% concentration of the slaked lime milk by reacting it with the aq. Na2CO3 at 40oC to give CaCO3, denoted as step 30. See ‘537 at, e.g., EMT pp. 2-4 (boxed areas), par. 22 (Ex. 1A), and clms. 1-3; MPEP 2144.05.
While ‘537’s contacting step’s 6-12 wt% aq. NaOH range’s 12 wt% maximum lies slightly below the claimed range’s 13 wt% minimum, and ‘537’s carbonating step’s 10 wt% (slaked) lime milk value lies slightly below the claimed range’s 11 wt% minimum, these gaps/differences are not considered sufficient enough to connote non-obviousness. Indeed, a prima facie case of obviousness exists where the claimed and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (or results). See MPEP 2144.05 I; Titanium Metals Co. of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985); accord, In re Kirsch, Barnby, and Potts, 182 USPQ 286, 290 (CCPA 1974) (finding that prior art teachings lying slightly outside of a claimed range nevertheless negate non-obviousness, especially in the absence of any criticality statements regarding the claimed range).
Further, while ‘537 does not specify the BET surface area of its suspended Ca(OH)2 particles or the resulting CaCO3 formed therefrom, ‘537 does teach that the amount of alkaline/caustic water (i.e. aq. NaOH) employed in its hydration/slaking step desirably causes “the particles of the produced calcium hydroxide [to be] apt to agglomerate. This makes it easier to control the particle shape and particle size of calcium carbonate generated by the reaction [of the Ca(OH)2 particles] with sodium carbonate thereafter[.]” See id. at, e.g., p. 3 (arrowed par.). As such, ‘537 is considered to regard the size and shape of its step 20’s Ca(OH)2 particles as a result-effective variable, as well as the concentration of aq. NaOH employed in its step 20, as the former is affected by the latter. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired aq. NaOH concentration for ‘537’s step 20, such as within the claimed range, to thereby achieve Ca(OH)2 particles sized and shaped as desired (giving properties such as, but not limited to, BET surface area, such as values within the claimed range) to in turn give CaCO3 particles sized and shaped as desired upon conducting carbonation step 30, via routine experimentation. Indeed, it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955). In doing so, the resulting CaCO3 would reasonably be expected to have a BET surface area within the claimed range, as ‘537’s method is at least substantially/sufficiently similar to that claimed such that the BET surface area property of ‘537’s CaCO3 product would reasonably be expected to mirror that claimed; it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In other words, as ‘537 teaches or at least suggests the claims' positive method steps, it matters not whether ‘537 also teaches or suggests the features of the intended result of performing said steps- it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Additionally and/or alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to grind or further agglomerate ‘537’s Ca(OH)2 and resulting CaCO3 to achieve desired BET surface areas therefor, as changes in size and shape are not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04 IVA-B, citing In re Rose, 220 F.2d 459 (CCPA 1955), In re Rinehart, 531 F.2d 1048 (CCPA 1976), Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984), and In re Dailey, 357 F.2d 669 (CCPA 1966).
Regarding claim 24, while ‘537 appears silent as to recycling/reusing unabsorbed CO2 into its absorption/contacting step, it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so, as this would desirably not only ensure more complete CO2 absorption (and thus decreasing the chance/amount of CO2 that may undesirably be leaked/exhausted to the atmosphere), but also decreases the need and cost for additional CO2 starting material. MPEP 2143 I.(G).
Regarding claim 25, ‘537 collects its precipitated CaCO3 via filtration (i.e. separating it from the aq. NaOH filtrate) and washes the filtered-off CaCO3 with a washing liquid (presumed to be water in the absence of details stating otherwise, see MPEP 2144.01). See ‘537 at, e.g., p. 4 (boxed area last par.) and par. 22.
Regarding claim 26, the aq. NaOH filtrate is recycled for use in further CO2 removal steps. See id. Given that ‘537 employs 6-12 wt% aq. NaOH for its CO2 removal step as detailed above (the 12 wt% maximum being regarded as sufficiently close to the claimed minimum of 13 wt% to render the latter prima facie obvious as detailed above), and the presence of the washing water in the filtrate would dilute the NaOH concentration there, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to increase the aq. NaOH filtrate’s concentration to ‘537’s desired 6-12 wt% level either by mixing it with concentrated aq. NaOH or by heating said filtrate (i.e. to concentrate the filtrate by driving off some of the water), as either adding more NaOH or removing excess water are the only ways to increase the concentration of the aq. NaOH. MPEP 2143 I.(E)&(G).
Conclusion
Applicant's amendment necessitated the/any 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/ June 13, 2026
Primary Examiner
Art Unit 1736
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