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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20190085254 A1) in view of Ashworth (US 6363869 B1; hereinafter Ashworth) in further view of Alcove Clave et.al., (US2018/0280946 A1; hereinafter Alcove Clave) and Salmon, et.al., (“CO2 Capture by Alkaline Solution for Carbonate Production: A Comparison between a Packed Column and a Membrane Contactor”, Appl. Sci. 2018, 8, 996; hereinafter Salmon).
Regarding claim 1, restated below, where the examiner has underlined the terms “oxide”, “metal”, “zeolite” and “alkaline solution” for ease of discussion:
A catalyst for capture and conversion of carbon dioxide, comprising:
an oxide containing 15 to 90 parts by weight of SiO2, 15 to 100 parts by weight of Al203, 10 to 50 parts by weight of Fe2O3, 5 to 15 parts by weight of TiO2, 20 to 150 parts by weight of MgO, 10 to 20 parts by weight of MnO, 20 to 200 parts by weight of CaO, 15 to 45 parts by weight of Na2O, 20 to 50 parts by weight of K2O, 5 to 20 parts by weight of P2O3, or a mixture thereof;
a metal containing 0.0035 to 0.009 parts by weight of Li, 0.005 to 0.01 parts by weight of Cr, 0.001 to 0.005 parts by weight of Co, 0.006 to 0.015 parts by weight of Ni, 0.018 to 0.03 parts by weight of Cu, 0.035 to 0.05 parts by weight of Zn, 0.04 to 0.08 parts by weight of Ga, 0.02 to 0.05 parts by weight of Sr, 0.002 to 0.01 parts by weight of Cd, 0.003 to 0.005 parts by weight of Pb, or a mixture thereof;
75 to 420 parts by weight of a zeolite;
and an alkaline solution containing 15 to 120 parts by weight of potassium hydroxide (KOH), 20 to 130 parts by weight of sodium tetraborate (Na2B407-1OH20), 15 to 120 parts by weight of sodium hydroxide (NaOH), 50 to 250 parts by weight of sodium silicate (Na2SiO3), 10 to 50 parts by weight of hydrogen peroxide (H2O2), or a mixture thereof;
wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency.”
First, regarding the preamble of claim 1, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. In the instant case, the catalyst as claimed in claim 1 would be expected to perform CO2 capture and conversion based solely on its composition. Capturing and converting CO2 provides no structural limitations to the catalyst and therefore does not further limit the catalyst. See MPEP 2111.02.
Lee teaches a catalyst for desulfurization when stating “Accordingly, the present invention has been made keeping in mind the problems encountered in the related art, and the present invention is intended to provide a catalyst for desulfurization, which may be simply and easily applied upon combustion of fossil fuel and has superior desulfurization effects, a method of preparing the catalyst for desulfurization, and a desulfurization method using the catalyst for desulfurization [0012] and “In addition, the present invention provides a desulfurization method using the above catalyst for desulfurization , comprising adsorbing and removing sulfur oxide by mixing the catalyst for desulfurization with a combustible substance and combusting the combustible substance [0023]. Lee teaches “Flue gas desulfurization methods, including desulfurization of exhaust gas after combustion of fossil fuel containing sulfur gas, are classified into wet methods and dry methods [0005]. Lee further teaches the same list of oxides and the same list of metals in the same ranges for each compound as required and as shown above in the limitations for this claim [0012]. Additionally, Lee teaches an alkaline solution when stating “Also, the liquid compound may include 20 to 130 parts by weight of sodium tetraborate (Na2B4O7 – 10 H2O ), 15 to 120 parts by weight of sodium hydroxide (NaOH), 50 to 250 parts by weight of sodium silicate (Na2SiO3) and 10 to 50 parts by weight of hydrogen peroxide (H2O2)” [0014]. The examiner notes that each of the alkaline solution components listed in [0014] have the same ranges as required in the limitations for this claim.
Lee does not teach the inclusion of a zeolite in the catalyst and Lee does not teach inclusion of 15 to 120 parts by weight of potassium hydroxide (KOH) in the catalyst.
Regarding the zeolite, Alcove Clave teaches “The present invention relates to a catalyst for treating an exhaust gas” [0001] and “According to a first aspect there is provided a catalyst for treating an exhaust gas comprising SO2, NOx and elemental mercury in the presence of a nitrogenous reductant, the catalyst comprising a composition containing oxides of: (i)Molybdenum (Mo) and /or Tungsten (W); (ii) Vanadium (V); (iii) Titanium (Ti), and] (iv) an MFI zeolite, wherein the composition comprises, based on the total weight of the composition: (i) 1 to 6 wt % of MoO3 and / or 1 to 10wt % WO3, and (ii) 0.1 to 3 wt % V2O5, and (iii) 48.5 to 94.5 wt % TiO2; and (iv) 35 to 50 wt % MFI zeolite [0017-0026]. Alcove Clave further teaches “The composition comprises an MFI zeolite in an amount of from 4 to 50 wt % based on the total weight of the composition” and “Useful MFI isotypes include ZSM-5, [Fe-Si-O ]-MFI, AMS-1B, AZ-1 , Bor-C, Boralite, Encilite, FZ-1, LZ-105, Mutinaite, NU–4, NU–5, Silicalite, TS-1, TSZ, TSZ-III, TZ-01, USC-4, USI-108, ZBH, ZKQ-1B, and ZMQ-TB with ZSM-5 being particularly preferred . Typical SiO2 / Al2O3 mole ratios for such materials are 30 to 100. Such zeolites are known in the art and can be obtained commercially” [0037]. Alcove Clave additionally teaches that the catalyst composition may include additives when noting “During this step, other additives, such as film forming agents, dispersing agents, thickening agents and the like, can also be added to the kneaded mass. The resulting mass is kneaded again to form a catalyst mass. The additives, which may include glass particles, alumina, silica, silica - aluminas, ceramics, clays, inorganic oxides, minerals, polymers, or other materials, make up the balance of the solids content” [0045]. The examiner notes that metal oxides, P2O3, sodium borate, sodium hydroxide and sodium silicate in the catalyst of Lee are inorganic oxides. The examiner notes that Alcove Clave teaches inclusion of a zeolite at 4-50 wt % in the catalyst. This limitation is clearly met since the required 75-420 parts zeolite in the catalyst corresponds to a zeolite loading of 5-63 % when the required parts of zeolite (on the low and high end) and the remaining required compounds (on the low and high end) are calculated (MPEP 2144.05).
Thus, prior to the effective filing dates of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize zeolites in the catalyst taught by Lee to remove exhaust gas (flue gas) contaminants as taught by Alcove Clave. The examiner notes that flue gas also contains CO2, so it would have been obvious to use the catalyst taught by Lee to recover CO2 from flue gas. Support for this view may be found in the instant specification [paragraph 26]. The teaching or suggested motivation for doing so being to include materials known to be effective for removal of polluting gases during in exhaust gas treatment [0001].
Regarding the potassium hydroxide (KOH), Ashworth teaches “I have discovered a process using an aqueous solution of potassium hydroxide to reduce acid gases, nitrogen oxides, sulfur oxides, hydrogen chloride and hydrogen fluoride from carbonaceous fuel combustion flue gas” [Col 2, lines 47-50] and “Aqueous potassium hydroxide (KOH) is spray dried into the flue gas upstream of the particulate control device. The KOH reacts with SO2 and SO3 to form K2SO4, NO and NO2 to form KNO3” [Col 2, lines 55-58] and “These salts are captured as particulate and removed with the carbonaceous-fuel fly ash from an ESP or baghouse”. [Col 2, lines 59-61] and “As the KOH solution comes into intimate contact with the hot flue gas, the water component of the atomized solution evaporates and the KOH, at the molecular level, reacts with the acid gas components in the flue gas stream [Col 4, lines 63-67] and “Therefore, KOH injected as a solution (particles at the molecular level) will have an infinite surface area for reaction and 100% KOH utilization will be quickly achieved in the spray-dry scrubber” [Col 4, lines 23-26]. It is noted that the claim further recites the inclusion of KOH “to increase CO2 capture efficiency”, however increasing CO2 capture efficiency is merely the result obtained from adding KOH to the catalyst composition. As outlined above, Ashworth motivates the skilled artisan to include KOH in the catalyst composition. A skilled artisan would be conversant in incorporating an effective amount of KOH, including the 15-120 part of KOH as required in the limitations for this claim. Any effects resulting from adding KOH to the catalyst does not provide any structural limitations to the catalyst. See MPEP 2173.05(g).
Thus, prior to the effective filing dates of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize KOH in the catalyst taught by Lee to remove flue gas contaminants as taught by Ashworth. The examiner notes that flue gas also contains CO2, so it would have been obvious to use the catalyst taught by Lee to recover CO2 from flue gas. Support for this view may be found in the instant specification [paragraph 26]. The teaching or suggested motivation for doing so being the KOH “provides for reduction of acid gases, nitrogen oxides, sulfur oxides, hydrogen chloride and hydrogen fluoride from carbonaceous fuel combustion flue gases”[Ashworth Col 1, lines 1-20].
Regarding claim 1, modified Lee teaches all of the limitations of claim 1 and further requires “wherein the catalyst for capture and conversion of carbon dioxide captures carbon dioxide and simultaneously converts the captured carbon dioxide into sodium carbonate or sodium bicarbonate (sodium hydrogen carbonate) to remove carbon dioxide”. This phrase amounts to intended use of the catalyst of claim 1. The claim does not set forth any on the structural limitations of the catalyst, therefore the catalyst of claim 1 would be expected to perform the capture of CO2 with subsequent conversion to carbonates. See MPEP 2173.05(g).
Salmon teaches a process for converting CO2 to carbonates and bicarbonates when noting “Physical and chemical absorptions took place and, therefore, new components appeared (carbonates and bicarbonates” [p. 3, Experimental section, bottom of page] and shows the following equations [p. 2, bottom of page]:
PNG
media_image1.png
110
420
media_image1.png
Greyscale
Salmon further teaches “The CO2 capture by NaOH solution was experimentally studied by means of a membrane contactor and an absorption column connected in parallel so that both set ups can be used
independently in the same installation (Figure 1).” [p. 3, Experimental, section 2.2].
Thus, prior to the effective filing dates of the claimed invention, it would have been obvious to one of ordinary skill in the art to effectively convert CO2 to carbonates and bicarbonates by the process of Salmon using the catalyst of modified Lee. The teaching or suggested motivation for doing so being to remove the global warming gas CO2 by capturing and converting it to recoverable solid materials that find application in other chemical industries.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/040748 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/040748 claims manufacturing a catalyst for capture and conversion of carbon dioxide comprising:
an oxide containing 15 to 90 parts by weight of SiO2, 15 to 100 parts by weight of Al203, 10 to 50 parts by weight of Fe2O3, 5 to 15 parts by weight of TiO2, 20 to 150 parts by weight of MgO, 10 to 20 parts by weight of MnO, 20 to 200 parts by weight of CaO, 15 to 45 parts by weight of Na2O, 20 to 50 parts by weight of K2O, 5 to 20 parts by weight of P2O3, or a mixture thereof;
a metal containing 0.0035 to 0.009 parts by weight of Li, 0.005 to 0.01 parts by weight of Cr, 0.001 to 0.005 parts by weight of Co, 0.006 to 0.015 parts by weight of Ni, 0.018 to 0.03 parts by weight of Cu, 0.035 to 0.05 parts by weight of Zn, 0.04 to 0.08 parts by weight of Ga, 0.02 to 0.05 parts by weight of Sr, 0.002 to 0.01 parts by weight of Cd, 0.003 to 0.005 parts by weight of Pb, or a mixture thereof;
75 to 420 parts by weight of a zeolite;
an alkaline solution containing 15 to 120 parts by weight of potassium hydroxide (KOH), 20 to 130 parts by weight of sodium tetraborate (Na2B407-1OH20), 15 to 120 parts by weight of sodium hydroxide (NaOH),
an alkaline solution containing 50 to 250 parts by weight of sodium silicate (Na2SiO3), and
an alkaline solution containing 10 to 50 parts by weight of hydrogen peroxide (H2O2), the potassium hydroxide, or a mixture thereof;
wherein the obtained catalyst for capture and conversion of carbon dioxide captures carbon dioxide and simultaneously converts the captured carbon dioxide into sodium carbonate or sodium bicarbonate (sodium hydrogen carbonate) to remove carbon dioxide”.
Regarding claim 2, by providing the catalyst with an alkaline solution containing 15 to 120 parts by weight of potassium hydroxide (KOH), a catalyst that captures carbon dioxide in amount of 0.3 to 0.6 hg/h per 1 kg of catalyst is inherently provided.
Regarding claim 3, by providing the catalyst with an alkaline solution containing 15 to 120 parts by weight of potassium hydroxide (KOH), 20 to 130 parts by weight of sodium tetraborate (Na2B407-1OH20), 15 to 120 parts by weight of sodium hydroxide (NaOH), a catalyst with pH in the range of 12 to 14 is inherently provided.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed September 11, 2025 have been fully considered but they are not persuasive.
Applicant argues that Alcove Clave teaches away from use of any phosphorus element in the catalyst while the instant claim 1 is drawn to a catalyst comprising phosphorus pentoxide (P2O5).
This is not persuasive because claim 1 as amended does not require phosphorus pentoxide (P2O5). The listed oxides include phosphorus oxide (P2O3), not phosphorus pentoxide (P2O5).
Applicant argues that the claim requires the catalyst to capture and convert carbon dioxide simultaneously which is not taught by any of Lee, Ashworth of Alcove Clave.
This is not persuasive because per the present specification, a catalyst of oxides, metals, zeolite and aqueous solution sodium tetraborate, sodium hydroxide, sodium silicate and hydrogen peroxide with or without potassium hydroxide result in a catalyst that captures and converts carbons dioxide (Example and Comparative Examples). Thus this property of the catalyst to capture and convert carbon dioxide simultaneously is an inherent feature of the catalyst of the references as combined which contains the oxides, metals, zeolite and alkaline solution as claimed.
Applicant argues that Salmon points out all the shortcomings of the use of oxide, metal or zeolite for capturing carbon dioxide thus teaches away from using alkaline solution with oxide, metal or zeolite.
This is not persuasive because teaching that CaO has challenges is not clear teaching away from use of CaO and the claimed is not limited to requiring CaO, because teaching that zeolite as sorbent are strongly influenced by temperature, pressure and moisture is not a clear teaching away from use. Salmon is merely used to show that carbon dioxide reacts with sodium hydroxide to produce sodium carbonate. Sodium hydroxide would be present in the catalyst as part of the alkaline solution as disclosed by Lee.
CONCLUSION
Applicant's amendment necessitated the 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 the examiner should be directed to MELVIN C MAYES whose telephone number is (571)272-1234. The examiner can normally be reached Mon-Fri 8:00am - 4:30pm.
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 the examiner by telephone are unsuccessful, the examiner’s supervisor, Yvonne L Eyler can be reached on (571)272-1200. 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.
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759