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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 20, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on July 20, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application Number 18/040748, now U.S. Patent No. 12,569,836 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1, 3 and 4 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 1 claims “an alkaline solution containing 15 to 120 parts by weight of potassium hydroxide (KOH), 20 to 130 parts by weight of sodium tetraborate (Na2B40710H20), 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 (H202), or a mixture thereof” but also claims “wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency.” By the alkaline solution containing potassium hydroxide…“or a mixture thereof,” KOH is not required. Thus the latter limitation “wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency” is unclear if KOH is positively recited as a required component of the alkaline solution or IF KOH is included, it provides the function of to increase carbon dioxide capture efficiency. If KOH is a required component of the alkaline solution, it should not be listed as an alternative with sodium tetraborate (Na2B40710H20), sodium hydroxide (NaOH), sodium silicate (Na2SiO3), hydrogen peroxide (H202), as claimed by “or a mixture thereof.” The original claim required all the listed components as part of the alkaline solution.
If potassium hydroxide is a required component of the claimed catalyst, this should be clear by it not being included in a list as an alternative component.
Claims 3 and 4 are rejected as dependent on claim 1.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20190085254 A1) in view of Alcove Clave et.al., (US2018/0280946 A1; hereinafter Alcove Clave) and CN 103848440 or alternatively in view of Alcove Clave et.al., (US2018/0280946 A1; hereinafter Alcove Clave), CN 103848440 and Ashworth (US 6363869 B1; hereinafter Ashworth).
Regarding claim 1, restated below, where the examiner has underlined the terms:
A catalyst 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 zeolite is a crystallized synthetic zeolite prepared from an alumina-based raw material, a silica-based raw material, and sodium hydroxide;
wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency; and
and wherein the catalyst captures carbon dioxide and simultaneously converts the captured carbon dioxide into sodium carbonate or sodium bicarbonate (sodium hydrogen carbonate) to remove carbon dioxide.
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 providing a catalyst comprising the same list of at least one oxide and the same list of at least one metal 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 of at least one liquid compound and states “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.
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).
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have utilized zeolite in the catalyst taught by Lee to remove exhaust gas (flue gas) contaminants as taught by Alcove Clave.
Alcove Clave does not teach providing the zeolite, ZSM-5 being preferred, as a crystallized synthetic zeolite prepared from an alumina-based raw material, a silica-based raw material and sodium hydroxide.
CN 103848440 teaches that ZSM-5 can be prepared via a simple synthesis process, short crystallization time and with high specific surface area by using a silicon source, an aluminum source and an alkali source and hydrothermally crystallizing. The silicon source can be ethyl orthosilicate, the aluminum source can be sodium aluminate and the alkali source can be sodium hydroxide (translation Abstract, [0021]).
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize ZSM-5 zeolite as taught by Alcove Clave made by a process using ethyl orthosilicate (silica-based), sodium aluminate (alumina-based) and sodium hydroxide and crystallizing as taught by CN 103848440 as a process for making ZSM-5 that is a simple synthesis process, has short crystallization time and provides ZSM-5 with high specific surface area.
The claim lists potassium hydroxide as an alternative in a list ending “or a mixture thereof” thus not a required component of the catalyst. Thus the claimed “wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency” is directed to function if potassium hydroxide if it was included in the alkaline solution.
Alternatively, regarding “wherein the potassium hydroxide (KOH) is included as an alkaline solution to increase carbon dioxide capture efficiency”, if interpreted as potassium hydroxide positively included as part of the alkaline solution, Lee does not teach inclusion of 15 to 120 parts by weight of potassium hydroxide (KOH) in the catalyst.
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 have utilized KOH in the catalyst taught by Lee to remove flue gas contaminants as taught by Ashworth. 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 be capable of performing the capture of CO2 with subsequent conversion to carbonates absent evidence to the contrary. See MPEP 2173.05(g).
Regarding claim 4 modified Lee teaches all of the limitations of claim 1, thus the property of the catalyst having a pH in the range of 12 to 14 would be expected absent evidence to the contrary.
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Zeolite in the Instant Invention Is Fundamentally Different from Alcove Clave's Zeolite. The instant claims are amended to contain a crystallized synthetic zeolite prepared by adding sodium aluminate (NaAl(OH)4), sodium silicate (Na2SiO3), and sodium hydroxide to a reactor and stirring at 30°C to 70°C for 1 to 10 hours. This is a zeolite synthesized in situ as part of the catalyst manufacturing process, serving as a structural matrix for integrating the oxide and metal components.
Alcove Clave, by contrast, teaches a commercially obtained MIT zeolite (specifically ZSM-5 and related isotypes) with SiO2/Al2O3 mole ratios of 30 to 100. This zeolite functions as a component in a solid, calcined plate-type catalyst designed for selective catalytic reduction of NOx and mercury oxidation at 300-450°C. There is no teaching or suggestion in Alcove Clave of incorporating a crystallized synthetic zeolite into a liquid-phase carbon dioxide capture catalyst.
This is not persuasive because the claim does not have limitation to crystallized synthetic zeolite prepared by adding sodium aluminate (NaAl(OH)4), sodium silicate (Na2SiO3), and sodium hydroxide to a reactor and stirring at 30°C to 70°C for 1 to 10 hours such that the zeolite is synthesized in situ as part of the catalyst manufacturing process, serving as a structural matrix for integrating the oxide and metal components. Alcove Clave is not limited to commercially obtained MIT zeolite and the claim is not limited to a liquid phase carbon dioxide capture catalyst.
Applicant argues that Alcove Clave explicitly states: "Preferably the composition does not comprise phosphorus. P acts as a poison for the activity of a catalytic formulation." The Examiner dismissed this argument because the claims recite P203 rather than P205 (phosphorus pentoxide). However, this distinction is unconvincing-Alcove Clave's teaching is directed to phosphorus broadly, not to any particular phosphorus oxide. P203 is a phosphorus-containing compound that would release phosphorus upon interaction with the catalyst system. One of ordinary skill in the art reading Alcove Clave's warning that "P acts as a poison" would not selectively exclude only P205 while considering P203 acceptable-the poisoning concern applies to phosphorus irrespective of its oxidation state. This statement from Alcove Clave would strongly discourage the ordinary skills in the art from making the present invention. Therefore, the ordinary skills in the art would not be motivated to combine Alcove Clave's zeolite with Lee's composition that includes P203.
This is not persuasive because claim 1 as amended does not require P203. Alcove Clave only states that “Preferably the composition does not comprise phosphorus”, thus only a preference and Lee does not require P203 as part of its catalyst. Thus it would have been obvious to use zeolite as taught by Alcove Clave with the catalyst of Lee that does or does not contain P2O3, but preferably with embodiments that do not contain P2O3.
Applicant argues that the references operate in fundamentally incompatible regimes:
" Lee teaches a desulfurization catalyst that forms a metal chelate compound and is
mixed directly with a combustible substance (coal) before combustion at 600-900°C.
" Alcove Clave teaches a solid plate-type catalyst calcined at 400-900°C for treating
exhaust gas in power plants.
" Ashworth teaches spraying aqueous KOH into hot flue gas (250-500°F) as a dry
scrubber.
The instant invention is a liquid-phase catalyst (a solution) that captures and converts CO2 in a scrubber at ambient/near-ambient conditions. One of ordinary skill would have no reason to take a solid plate catalyst concept (Alcove Clave) and integrate it into a liquid chelate composition (Lee), then additionally add a spray-dry scrubbing agent (Ashworth), and arrive at the claimed liquid catalyst. The Examiner has not articulated a reason why a skilled artisan would expect that such a combination would function as a CO2 capture catalyst, particularly in solution form.
This is not persuasive because the invention is not claimed as a liquid-phase catalyst in solution form. Lee, Alcove Clave and Ashworth are each directed to treating exhaust gas to remove sulfur oxide, thus motivation to combine the components as set forth in the current rejection.
Applicant argues that the specification demonstrates that inclusion of KOH in the catalyst composition provides 2.5 to 4 times greater CO2 capture compared to identical formulations without KOH. Specifically:
. With KOH (Example, KLC-20): 0.392 kg/h CO2 per 1 kg of catalyst
. Without KOH (Comparative Example 1, KLC-11): 0.11 kg/h
. Without KOH (Comparative Example 2, KLC-18): 0.156 kg/h
This dramatic improvement is unexpected and synergistic. Ashworth teaches KOH only for acid gas removal (SO2, NOx, HCl, HF) from flue gas-Ashworth does not teach or suggest that KOH would enhance CO2 capture efficiency in a multi-component catalyst system. The Examiner's dismissal that "increasing CO2 capture efficiency is merely the result obtained from adding KOH" ignores that a 2.5-4x improvement is not a predictable or routine outcome. This evidence of unexpected results can rebut the prima facie case of obviousness under MPEP 716.02.
This is not persuasive because evidence of unexpected results has to be commensurate with the claimed invention. The specification example is made with all the claimed oxides, all the claimed metals, and all the claimed materials in the alkaline solution and each of a specific amount. The claimed invention only requires one of each oxide, one of each metal and one of each material in the alkaline solution. Also even if all listed components are included, the example is not commensurate in scope with the claimed ranges of all the components. As set forth in the 112(b) rejection, claim 1 is not clear if potassium hydroxide is a required component and thus the comparative examples not having potassium hydroxide can be considered as within the scope of the invention as claimed.
Applicant argues that the Examiner asserts that the CO2 capture and conversion to carbonates is an inherent feature of the combined composition. However, the instant specification demonstrates through controlled experiments that not all compositions of oxides, metals, and alkaline solutions capture CO2 at the claimed efficiency. The comparative examples (without KOH) did capture some CO2, but at vastly lower rates (0.11-0.156 kg/h/kg vs. 0.392 kg/h/kg). This demonstrates that the claimed CO2 capture performance is a function of the specific combination including KOH, not an inherent property of any oxide/metal/alkaline composition.
This is not persuasive because claim 1 is not limited to a claimed efficiency and even the comparative examples do show CO2 capture.
Applicant argues that the Examiner relies on four separate references (Lee, Ashworth, Alcove Clave, and Salmon) to reconstruct the claimed invention. This level of combination raises concerns about impermissible hindsight under In re McLaughlin. The Examiner's motivation to combine appears to use the applicant's own specification as a roadmap, particularly the statement at paragraph 26 that the catalyst can serve as a desulfurization agent. A motivation based on the applicant's own disclosure is improper hindsight reasoning.
This is not persuasive because all of the claimed limitations are addressed by the references cited (currently three or four) with motivation from the references for the making the modifications. Motivation in the current rejection is not based on applicant’s own disclosure. It is to be noted however that the specification does indicate that catalyst used for carbon dioxide capture and conversion can also be used for desulfurization, which appears to indicate that catalyst used for one purpose is also suitable for the other.
CONCLUSION
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melvin C Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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