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 6/11/26 arguments vis-a-vis 35 U.S.C. 112 rejections other than in regards to claim 29’s “intensified solvent”, simply stating that the rejections were addressed by the 6/11/26 amendments, have been fully considered and are persuasive in view of said amendments. Said rejections are withdrawn.
Applicant's 6/11/26 arguments vis-a-vis the 35 U.S.C. 112 rejection in regards to claim 29’s “intensified solvent”, stating that the specification definition of the claimed phrase would reasonably apprise one of ordinary skill in the art as to the meaning and scope thereof (Remarks at p. 8), have been fully considered but are not persuasive. As stated in the rejection (repeated hereinbelow), it is the definition’s recitation of “high” in “high CO2 loading” that creates the confusion and thus indefiniteness. As also stated in the rejection, and not rebutted by applicant, the specification’s (p. 21 last par.) optional CO2 loading value/range is not definitive/dispositive. The rejection is re-asserted as proper.
Applicant's 6/11/26 arguments vis-a-vis 35 U.S.C. 102(a)(1) rejections over EP1736231A1 (2006) (“’231”) have been considered but are moot in view of the 6/11/26 amendments incorporating claim 7 (which was not so rejected) into claim 1. Said rejections are withdrawn due to said amendments.
Applicant's 6/11/26 arguments vis-à-vis 35 U.S.C. 103 rejections over ‘231, stating in pertinent part that i) ‘231 does not employ a single combined high-grade heat and low-grade heat regenerator, and ii) the claimed configuration desirably reduces the high-grade heat duty by 50-90% (Remarks at p. 11), have been fully considered but are not persuasive. As to i), ‘231 is in fact regarded as employing such a configuration as claimed. See ‘231 at, e.g., par. 63-67 (label definitions) and 81; Fig. 21 (low-grade heat regenerator 15-M and high-grade heat regenerator 15-L are both combined/contained within overall regenerator 15). Argument ii), which is considered to be an assertion of the criticality of employing the claimed “single combined high-grade heat and low-grade heat regenerator”, is insufficient to overcome the conclusion of obviousness because that portion of the claim is anticipated by ‘231, even though ‘231 only renders the claim prima facie obvious overall. See MPEP 716.01(b), citing In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (stating that “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no [requisite] nexus to the merits of the claimed invention.”) (emphasis Examiner’s). As ‘231 would anticipate amended claim 1 but for the fact that ‘231’s Ex. 12 high-grade heat regenerator 15-L is considered to operate at 110oC rather than at ≥120oC as claimed (this not being a patentable distinction as detailed below), applicant’s criticality assertion and overall arguments are unpersuasive. Said rejections, adjusted as necessitated by the 6/11/26 amendments, are re-asserted as proper.
Claim Objections
Claim 29 is objected to for the following informalities: “wherein the solvent from 15 to 25” must be changed to “wherein the solvent consists of 15 to 25” for grammar purposes (and to comport with its specification support, see pp. 18-19 bridging par. thereof). 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 21 and 29 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 21 depends from claim 19, which has been cancelled. Thus, claim 21 is incomplete and indefinite for not fully setting forth the metes and bounds of the claimed subject matter, and as such is rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. See MPEP 608.01(n)V. See also, e.g., Ex parte Brice, Pearlson, and Simons, 110 USPQ 560 (BPAI 1955) (affirming Examiner’s rejection of a claim “on the sole ground that it was dependent on [a] cancelled claim” and that the rejected claim was “incomplete and not a proper claim”). Due to the foregoing, claim 21 has/have not been further treated on the merits.
Claim 29 recites “an intensified solvent”, which is defined on p. 21 (last par.) of the application-as-filed as “a solvent that can achieve a high CO2 loading… and forms a greater proportion of bicarbonate salts than carbamate salts.” However, what will meet or infringe “high” CO2 loading (the cited paragraph’s optional value/range not being definitive/dispositive) is unclear, causing confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 29 rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. MPEP 2173.02(b). While “high” CO2 loading is interpreted for prior art purposes via the broadest reasonable interpretation standard (MPEP 2111.03) to mean any desired CO2 loading, this rejection nevertheless needs addressing.
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, 3, 5, 8, 21, and 23-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP1736231A1 (2006) (attached to applicant’s 1-9-23 IDS) (“’231”). Regarding claims 1, 3, 5, 8, 21, 24, and 26-27, ‘231 teaches a method comprising, in Ex. 12, contacting a CO2-comprising (e.g. flue) gas 11 with CO2-lean solvent 16 in absorber column 13 to give a CO2-rich solvent 14, passing it through a cross-over heat exchanger 23 to a low-grade heat regenerator 15-M (parts 23 and 15-M thus being in fluid communication with absorber 13) operating at 112.6-107oC to form a CO2-lean solvent, which is fed through a low-grade heat reboiler 21 (thus in fluid communication with absorber low-grade heat regenerator 15-M) to pass to high-grade heat regenerator 15-L at 110oC (this is regarded as reboiler 21’s operating T) and thereafter to high-grade heat reboiler 18, which operates at 123.4-137oC; low-grade heat regenerator 15-M and high-grade heat regenerator 15-L are combined to form overall regenerator unit 15. See ‘231 at, e.g., par. 63-67 (label definitions) and 81; Fig. 21.
‘231’s components 15-M, 21, 15-L, and 18 are in fluid communication as claimed; CO2-comprising solvent 28 leaving low-grade heat reboiler 21 passes to high-grade heat regenerator 15-L as claimed. See id. CO2-comprising solvent travels from low-grade heat regenerator 15-M to low-grade heat reboiler 21, and then to high-grade heat regenerator 15-L. See id.
While ‘231’s Ex. 12 high-grade heat regenerator 15-L is considered to operate at 110oC as detailed above, it nevertheless 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 operating T therefor, such as within the ≥120oC claimed range, via routine experimentation- 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).
Regarding claim 23, while ‘231 does not appear to introduce such a gas into either of its regenerators or reboilers, 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 to achieve and/or maintain a desired operating T, as this would be a simpler and thus more cost effective way of doing so rather than employing chillers to achieve such an effect. MPEP 2143 I.(G).
Regarding claim 25, although ‘231 does not specify the residual CO2 loading (if any) of its CO2-lean solvent 16, it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to repeat ‘231’s solvent regeneration steps until a desired residual CO2 loading (if any) is achieved, such as within the claimed range, via routine experimentation- it is “well within the expected skill of the technician to operate a process continuously [or thus, repeatedly]." See, e.g., In re Dilnot, 319 F.2d 188, 138 USPQ 248, 252 (CCPA 1963) (internal citations omitted) and In re Citron, 140 USPQ 220, 222 (CCPA 1964) (affirming BPAI’s upholding of Examiner’s rejection of claims repeating prior-taught steps as obvious); MPEP 2144.04 V.E. See also MPEP 2144.05, citing In re Aller.
Claim 29 is rejected under AIA 35 U.S.C. 103 as being unpatentable over ‘231 as illustrated by CA2817549C (2018) (“’549”)1. Regarding claim 29 (interpreted as detailed above), ‘231 teaches the effectiveness and appropriateness of employing alkanolamines such as MDEA as its CO2 solvent, making it prima facie obvious to do so. See ‘231 at, e.g., par. 35; MPEP 2143 I.(E) & 2144.07. While ‘231 is silent as to whether MDEA forms a greater proportion of bicarbonate salts than carbamate salts, ‘549 so teaches. See ‘549 at, e.g., par. 4.
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/ August 21, 2026
Primary Examiner
Art Unit 1736
1 Note: ‘549 is not meant to be combined with ‘231, but is merely cited to illustrate certain properties about ‘231’s amine solvents upon which ‘231 is silent.
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