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 .
DETAILED ACTION
Application Status
This application is a 371 of PCT/GB2021/051805, 01/12/2023.
Claims 1-20 are currently pending in the instant application.
The preliminary amendment filed on 11/24/2025, without any amendment of the claims 1-20 is acknowledged.
Election/Restriction
Applicant's election with traverse of Group I, Claims 1-8, and 15-18, drawn to a method for capturing CO2 from a gas stream, the gas stream containing CO2, the method comprising: contacting the gas stream containing CO2 with a capture composition in a gas-liquid contacting apparatus to generate a loaded capture composition, the capture composition comprising: i. a first liquid phase comprising at least one capture reagent; and ii. a second liquid phase; wherein the second liquid phase is an effective solvent for CO2 and is chemically inert to CO2; wherein the first liquid phase comprises an aqueous solution of at least one salt of at least one carboxylic acid; and wherein the method further comprises releasing said CO2 from the loaded capture composition in the response filed on 11/24/2025 is acknowledged.
Arguments: The traversal is on the ground(s) that there would be no burden of search for the coexamination of Group I and II, which is drawn to a method for capturing CO2 from a gas stream, the gas stream containing CO2, the method comprising: contacting the gas stream containing CO2 with a capture composition in a gas-liquid contacting apparatus to generate a loaded capture composition, the capture composition comprising: i. a first liquid phase comprising at least one capture reagent; and ii. a second liquid phase; wherein the second liquid phase is an effective solvent for CO2 and is chemically inert to CO2; wherein the first liquid phase comprises an aqueous solution of at least one salt of at least one carboxylic acid; and wherein the method further comprises releasing said CO2 from the loaded capture composition, wherein the first liquid phase further comprises an enzyme, wherein the enzyme is a natural carbonic anhydrase or an engineered carbonic anhydrase, because there is no common inventive step having as per Special Technical feature with overlapping scope.
Response: Applicants arguments have been fully considered but are not deemed persuasive because both methods are each unrelated methods, and using chemically distinct entities. There is no shared teach technical feature between the method of Group I and II because Group I does not use any enzyme, but using a carboxylic acid, an inorganic chemical, but Group II uses an enzyme carbonic anhydrase both natural and engineered.. Thus, the inventions listed as Groups I – II lacking “a Priori” and No technical features are shared between independent claim 1 of Group I, and Group II of claims 9-10, i.e., the method of Group II is totally different from the method of Group I and no technical features are shared, and thus, the inventions listed as Groups I – II lack Unity of Invention, and prior art is not consulted to determine the Unity of Inventions of Group I, and II (see, slides of USPTO Guidance, May 2022 for Unity of Invention).
PNG
media_image1.png
704
1442
media_image1.png
Greyscale
Besides, 37 CFR 1.475 does not provide for multiple products and/or methods within a single application. Therefore, inventions of Group I - II lack unity of invention.
Restriction is clearly permissible even among related inventions as defined in MPEP 808, and 35 U.S.C. 121/371 allows restriction of inventions, which are independent or distinct.
Claims 9-14 and 19-20 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.
Applicants request for rejoinder is noted. However, current claims of elected Group I are not allowable at this time. When Group I would be allowable, rejoinder request would be evaluated at that time.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-8, and 15-18 are present for examination.
Priority
Acknowledgement is made of applicants claim for foreign priority under 35 U.S.C. 119(a)-(d) to a foreign patent application UNITED KINGDOM 2010908.8, filed on 07/15/2020.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 05/05/2023, 10/12/2023, 01/09/2024, 05/20/2025 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner. The signed copies of 1449 are enclosed herewith.
Specification Objections
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see, pg 3). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. See MPEP § 608.01.
Drawings Objections
Drawings submitted on 01/12/2023 are not accepted by the Examiner because Drawing is not clearly legible. Appropriate correction is required.
Claim Objections
Claims 2 (depends on claim 1), 3-8, and 15-18 are objected to with the recitation “A method”. The method should be changed to “The method”. Appropriate correction is required.
Claim 18 is objected to in the recitation “(iii)reducing”, which should be changed to “(iii) reducing” Appropriate correction is required.
Claim 6 is objected to in the recitation “chosen from a list”, which should be changed to “selected from a group” Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-8, 15-17 and 18 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 is indefinite in the recitation “i. and ii.”, but claim 1 contains multiple sentences with multiple periods. According to MPEP: Claims must be drafted as a single sentence. Claim 1, which can be changed to (i) or i) and ii) or (ii), without any period in the middle of the claim. Clarification and correction are required.
Claim 18 (depends on claim 1) is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 18 recites the phrase “for example” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 15 (depends on claim 1) is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 15 recites the phrase “may be” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections – Improper Markush Grouping
Claim 2 is rejected under the judicially approved “improper Markush grouping” doctrine. See Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. §112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011), page 7166.
Claim 2 is a “Markush”-type claims that recite a plurality of contacting apparatus as species such as” a packed column (with random or structured packings, in co-flow, counter-flow, or cross- flow configurations), a spray tower, a plate or tray column, a stirred tank reactor (in either continuous or batch configuration), a tubular flow reactor (under either laminar or turbulent flow condition), a bubble column reactor, a falling film reactor, or a membrane contactor”.
A Markush claim may be rejected under the judicially approved “improper Markush grouping” doctrine when the claim contains an improper grouping of alternatively useable species. A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a “single structural similarity,” and (2) the species do not share a common use.
Claim 2 is rejected as reciting an improper Markush group because they do not share a structural similarity nor a common use. When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate.
Clarification and correction are required.
Claim 6 is rejected under the judicially approved “improper Markush grouping” doctrine. See Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. §112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011), page 7166.
Claim 6 is a “Markush”-type claims that recite a plurality of carboxylate salt s species such as “acetic acid, propanoic acid, butyric acid and its branched derivative, pentanoic acid and its branched derivatives, hexanoic acid and its branched derivatives, heptanoic acid and its branched derivatives, and octanoic acid and its branched derivatives”.
A Markush claim may be rejected under the judicially approved “improper Markush grouping” doctrine when the claim contains an improper grouping of alternatively useable species. A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a “single structural similarity,” and (2) the species do not share a common use.
Claim 6 is rejected as reciting an improper Markush group because they do not share a structural similarity nor a common use. When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate. Clarification and correction are required.
Claim Rejections - 35 U.S.C. § 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, 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.
According to MPEP 2143:
“Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products)
in the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in
either the same field or a different one based on design incentives or other market
forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art
reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.”
Claim 1-8, 15 -17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Rayner et al. (System for the capture and release of acid gases. WO2015/092427A2, published 06/25/2015) in view of common knowledge of a skilled artisan.
The Broadest Reasonable Interpretation (BRI) of claim 1, which is drawn to a method for capturing CO2 from a gas stream, the gas stream containing CO2,the method comprising: contacting the gas stream containing CO2 with a capture composition in a gas-liquid contacting apparatus to generate a loaded capture composition, the capture composition comprising :i. a first liquid phase comprising at least one capture reagent; and ii. a second liquid phase; wherein the second liquid phase is an effective solvent for CO2 and is chemically inert to CO2;wherein the first liquid phase comprises an aqueous solution of at least one salt of at least one carboxylic acid; and wherein the method further comprises releasing said CO2 from the loaded capture composition.
Rayner et al. teach a method for the capture of at least one acid gas in a composition, the release of said gas from said composition, after combustion, and the subsequent regeneration of said composition for re-use, said method comprising performing, the steps of (a) capturing the at least one acid gas by contacting said at least one gas with a capture composition comprising at least one salt of a carboxylic acid and at least one water-miscible non-aqueous organic solvent (creating a phase separation (see, para 58), wherein the capturing composition is loaded in packed column containing mono-ethanolamine (30%w/w) for absorption (see, para 4, 131); (b) releasing said at least one acid gas by adding at least one protic solvent (proton-donor) or agent to said composition; and (c) regenerating the capture composition by partial or complete removal of said added protic solvent or agent from said composition, wherein said at least one protic solvent or agent is selected from water or an alcoholic solvent, wherein said alcoholic solvent is selected from methanol, ethanol, glycerol, ethylene glycol, trifluoroethanol or dihydroxy-methane, sugars, oligosaccharides and amino acids, wherein said at least one protic solvent or agent is added in an amount of from 5-50% v/v, wherein said composition comprising at least one salt of a carboxylic acid and at least one water-miscible non-aqueous solvent comprises water or another protic solvent or agent, wherein said water or another protic solvent or agent is present at a level of from 1-30% v/v relative to the total solvent volume, wherein at least ne salt of a carboxylic acid is a salt of an alkali metal, wherein said carboxylic acid is a an aliphatic carboxylic acid, wherein said aliphatic carboxylic acid is selected from straight chained, branched or cyclic carboxylic acids which may be substituted or unsubstituted, wherein said at least one salt of an aliphatic carboxylic acid is selected from salts of C1-2o aliphatic carboxylic acids including acetic acid, propionic acid, or butyric acid in the form of bicarbonate salt, bicarbonate composed of C, H and O, and meets claim limitation of claim 4 (see, para 15, 47, 57), wherein said at least one water- miscible non-aqueous solvent comprises at least one polar aprotic solvent, wherein said solvent is dimethyl-sulphoxide (DMSO), wherein said at least one salt of a carboxylic acid is initially present in said composition at a level of between 1 M and 14M, wherein said at least one acid gas comprises carbon dioxide gas, wherein said composition comprises a solution, a slurry, a dispersion or a suspension, wherein said at least one acid gas is contacted with the composition at a temperature in the range of from 10° to 50°C, the acid gas is contacted with the composition at pressures in the range of from 1 to 150 bar, wherein said release of said at least one acid gas occurs at temperatures in the range of from 10° to 80°C, wherein partial or complete removal of said at least one protic solvent or agent from the composition is achieved by means of adsorption into hydrophilic or hydrophilic materials, and post combustion capture of CO2 gas (see, Title, abstract, para 4, 7, 12, 15, 21, 23, 25-29, 31, 47, 57, 72, 89, 92, 105, 118, 128, 131, 135, 145, Fig. 1, claims 1-47).
Claim 4 is included in this rejection because carbon dioxide gas mainly composed of Carbon, oxygen and hydrogen, and salt (sodium, magnesium or ammonium of carbonate when in water, HCO3- or salt thereof is in fact composed of Carbon, oxygen and hydrogen, which is indeed taught by Rayner et al.
Claim 15 is included in this rejection because Rayner et al. teach ratio of the two liquids, which are 1:1, 1:3, and 1:5, which is within the scope of the claimed limitation (see, para 145).
Claim 16 is included in this rejection because the increased physical solubility of the CO2 is the inherent property of the second liquid phase than first liquid phase. Since the Office does not have the facilities for examining and comparing applicants' products (first and second liquid) recited by the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Therefore, it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention as a whole before the effective filing of the claimed invention was made by combining the teachings of Rayner et al. with a common knowledge of a skilled artisan in the same field for using separate solution instead of a single solution for capturing CO2 gas from air under the provision of obvious to try of KSR Ruling acid as taught by Rayner et al. to arrive the claimed invention.
One of ordinary skilled in the art would have been motivated to use two separate solution of capturing CO2 gas and stripping in order to produce more captured CO2 gas which is commercially, industrially and financially beneficial.
One of ordinary skilled in the art would have a reasonable expectation of success because Rayner et al. could successfully produce CO2 gas from air.
Thus, the above references render the claims prima facie obvious to one of ordinary skill in the art.
Conclusion
Status of the claims:
Claims 1-8, 15 -17 and 18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IQBAL H CHOWDHURY whose telephone number is (571)272-8137. The examiner can normally be reached on M-F, at 9:00-5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Iqbal H. Chowdhury, Primary Patent Examiner
Art Unit 1656 (Recombinant Enzymes and Protein Crystallography)
US Patent and Trademark Office
Ph. (571)-272-8137 and Fax (571)-273-8137
/IQBAL H CHOWDHURY/
Primary Examiner, Art Unit 1656