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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 1/5/2026 is acknowledged.
Claims 26-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/5/2026.
Claims 15-25 are pending examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 15-19 contain language that pertains to the capacity of the system.
Claim 15 recites “oxygen output capacity of a natural forest relative to the same assumed surface area by at least 5 times.” There is no upper limit to this limitation such that one of ordinary skill in the art would not be enable to know does and does not pertain, connect or make use of the invention.
Likewise claims 16-19 have similar language with minimum language (“at least”) but not set upper limit that discloses and enables the claimed invention.
As to the Wands Factors:
There are no specific examples or guidance to set forth the limits.
The burden of experimentation necessary to determine the limits is unruly as the limits relate to natural forests which have no specific definition and thus no specific limit.
The nature of the invention is clear, but the capacity and/or use of the invention do not specific correlate to the generic structure of the invention at hand.
The state of the prior art is clear in relation to the generic structure (i.e. components), but not in relation to the capacity which is undetermined/infinite.
The other Wands factors are considered but not expounded on at this time.
Claims 20-25 are rejected as being dependent on claim 15.
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 23-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 23 recites the limitation "wherein the flow channel for solar radiation absorption." There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites that there is a flow channel, but there is no basis for how the solar radiation is absorbed by the flow channel. Appropriate correction is required.
Claims 24-25 are rejected as being dependent on claim 23.
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, 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 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2552010A of McNeight (as provided in IDS dated 5/5/2023).
As to claims 15-19, McNeight teaches of a system comprising:
an electrolysis unit configured for oxygen production, the electrolysis unit connected to a water supply line for receiving a quantity of water, the electrolysis unit adapted to separate the received quantity of water by electrolysis into oxygen and hydrogen and the electrolysis unit includes an oxygen outlet for discharging the oxygen to an outside atmosphere (McNeight, p. 3 lines 20-34, p. 5 lines 16-19, p. 6 lines 10-12 and Figs. 1 and 3);
a hydrogen transport unit adapted to provide the hydrogen for storage and further processing (McNeight, p. 6 lines 10-12 and Figs. 1 and 3);
a carbon dioxide absorption unit for purifying ambient air of an outside atmosphere surrounding the plant, the carbon dioxide absorption unit including an air inlet for supplying the ambient air and a downstream absorber unit adapted to extract a quantity of carbon dioxide from the ambient air, the carbon dioxide absorption unit includes an air outlet for discharging the purified ambient air into the outside atmosphere (McNeight, p. 5 lines 27-36 and Figs. 1 and 2); and
at least one carbon dioxide transport unit adapted to provide the carbon dioxide quantity for storage and further processing (McNeight, p. 6 lines 10-12 and Fig. 3).
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As seen in Figs. 1-3, there is an electrolysis unit (13) that has an inlet for water and output for hydrogen and oxygen. The oxygen can be released to the atmosphere. The hydrogen can be collected and stored in containers (31) for further processing. The system also has a carbon dioxide absorption unit (12) that absorbs carbon dioxide and released CO2 depleted air. The captured carbon dioxide can also be collected and stored in containers (31).
In claims 15-19 there is claim language related to the capacity of the system. It would be obvious to one of ordinary skill in the art to scale a system as desired to produce oxygen or capture carbon dioxide as required by the system (see MPEP 2144.04 IVA).
As to claim 20, McNeight teaches that each component is a separate apparatus, thus comprising an area (bottom) that is connectable to a foundation (McNeight, p. 4 lines 24-27 and Figs. 1 and 3).
Claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over McNeight as applied to claim 15 above, and further in view of US 2012/0003722 of Polak et al.
As to claim 21-22, McNeight teaches to the system of claim 15.
McNeight does not teach the carbon absorption unit comprises a chimney.
Polak teaches of a system for removing carbon dioxide from the atmosphere (Polak, Abstract).
Polak additionally teaches various versions of carbon dioxide absorption system that use chimney constructions to capture large volumes of carbon dioxide such that the system can include immobilized amines for carbon capture (like that in McNeight) or using cooling towers (i.e. chimneys) as per Polak which can increase the rate of capture (Polak, [0040] – [0041], [0044] – [0045], [0049] – [0052], [0056] and Figs. 1 and 2).
Polak additionally teaches that the size of the cooling tower (i.e. chimney height and diameter) can be optimized or scaled to obtain the desired air flow rate and capacity in order to provide a sufficient flow of air for carbon capture (Polak, [0036] – [0038]), thus deeming obvious the dimensions of the chimney.
Polak teaches that the chimney structure includes at least one flow channel which extends transversely to the chimney and an absorber unit in between an air outlet and air inlet (Polak, [0041] – [0046] and Figs. 1 and 2).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify McNeight as per Polak so as to utilize the desired carbon dioxide absorption unit in order to facilitate increase capture and quantity of carbon dioxide from the atmosphere.
As to claim 23, McNeight in view of Polak teach to the system of claim 21.
McNeight does not teach a solar radiation surface as a top of the flow channel capable of being heated by solar energy to produce radiant heat.
Polak teaches of a system for removing carbon dioxide from the atmosphere using cooling towers (Polak, Abstract).
Polak additionally teaches that the system includes a flow channel with a roof (26) so as to provide a pathway for atmospheric air to the cooling tower for carbon capture such that, additionally, the air is able to be exposed to solar radiation and thus provide radiant heat to air entering the system to increase the carbon dioxide absorption (Polak, [0041] – [0045] and Fig. 1A).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify McNeight as per Polak in order to utilize a roof to the flow channels in order to provide atmospheric air to the system for carbon capture.
As to claim 24, McNeight in view of Polak teach to the system of claim 23.
McNeight does not teach of the cooling towers (chimney).
Polak teaches of a system for removing carbon dioxide from the atmosphere using cooling towers (Polak, Abstract).
Polak teaches that they system can utilize one or more cooling towers to remove the desired amount of carbon dioxide from the air as well as provide the desired air flow through the system (Polak, [0037]).
Polak additionally teaches the cooling towers can be built as desired such that each cooling tower includes flow channels with a roof (26) so as to provide a pathway for atmospheric air to the cooling tower for carbon capture (Polak, [0041] – [0045] and Fig. 1A).
Therefore it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify McNeight as per Polak so as to utilize a plurality of cooling towers in order to remove the desired quantity of air for carbon capture.
Claim Objections
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 25 states that at least one photovoltaic unit is arranged on a solar radiation absorption surface of a flow channel. This allows for the air within the flow channel to be exposed to sunlight to generate radiant heat to increase the temperature of the air flow while at the same time generate electricity for the system by the PV unit. This combination of placement and structure is not anticipated or obvious in view of the prior art.
Typically when a PV cell is placed on a surface, you do not want to overheat the cell. Thus having the foundation of the cell specifically exposed to sunlight to generate heat while capturing the sunlight to generate energy is novel.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-39 of copending Application No. 18/277,920 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current invention are encompassed by the reference application in that each set of claims requires an electrolysis unit, hydrogen transport device, carbon dioxide absorption unit, carbon dioxide transport device and outlets to add oxygen back to atmospheric environment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759