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/Restriction
Applicant’s 5/22/26 confirmation of the 12/16/25 election without traverse of Group I (claims 1-12) is acknowledged. Claims 13-20 are withdrawn from further consideration per 37 CFR 1.142(b) as drawn to nonelected Groups, there being no allowable generic or linking claim.
Response to Arguments
Applicant's 5/22/26 arguments vis-a-vis the Drawings objection, simply stating that the objections were addressed by the 5/22/26 amendments, have been fully considered and are persuasive in view of said amendments. The objection is withdrawn.
Applicant's 5/22/26 arguments vis-a-vis 35 U.S.C. 112 rejections, simply stating that the rejections were addressed by the 5/22/26 amendments, have been fully considered and are persuasive in view of said amendments. These rejections are withdrawn.
Applicant's 5/22/26 arguments vis-a-vis 35 U.S.C. 102(a)(1) rejections over Asprion et al., US 7,004,997 (2006) (“Asprion”), stating in pertinent part that i) Asprion does not disclose claim 1’s comparative reaction rate, ii) Asprion does not disclose certain conditions (T, loading, and concentration, etc.) that affect the claimed comparative reaction rate), and iii) Asprion does not disclose claim 1’s comparative solubility, have been fully considered but are not persuasive. Regarding i), Asprion’s cited composition is reasonably regarded as meeting/possessing such a property, especially given Asprion’s anticipation of the compositional and concentration limitations of claims 1 and 10-11, the latter two depending from claim 1 and thus requiring all of its limitations. MPEP 2112 I-II & 2112.01. Regarding ii), in addition to the analysis vis-à-vis i), it is noted that no such conditions are claimed (MPEP 2145 VI), in addition to the fact that such an argument relates to a method claim; claim 1 is a composition claim. Regarding iii), Asprion’s cited composition is reasonably regarded as meeting/possessing such a property, especially given Asprion’s anticipation of claim 1’s compositional and concentration limitations. MPEP 2112 I-II & 2112.01. Applicant’s argument regarding the cited disclosures and analysis also overlooks the previously-laid statement (repeated hereinbelow) that MDEA’s two hydroxyl groups would reasonably be expected to promote its solubility in water (and thus have a greater solubility in water compared to the cited “low” aq. solubility of PZ, this comparative relative solubility being as required by claim 1), as ‘like dissolves like’; this unrebutted position in the previous Office Action is taken to be an admission or at least acquiescence as to its accuracy. Further, applicant’s argument that Asprion’s cited teachings regarding the relative solubility of its PZ and MDEA in water “undercuts any assertion” that such a “blend necessarily forms [a] stable aqueous solution…”, made without citation to objective evidence, is regarded as a mere unpersuasive opinion of counsel. MPEP 2145 & 2145 I. Applicant’s argument that “Anticipation requires that the elements be necessarily present across the full scope of Asprion’s disclosure” is also inaccurate: even a single disclosed anticipatory embodiment amongst many others will still anticipate a claim. MPEP 2131.02 II. Said rejections, adjusted as necessitated by the 5/22/26 amendments, are re-asserted as proper.
Claim Interpretation
Claim 1’s recitation “suitable for use… bed gas capture system” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67 (CCPA 1976); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). See also MPEP 2111.02 II, citing Kropa v. Robie, Rowe v. Dror, 112, F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”), and Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (similar statement). Intended-use language within the body of a claim likewise raises a question/doubt as to the limiting effect thereof. See MPEP 2103 I. C. Absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article’s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987); MPEP 2111.02 II, citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”). See also In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (stating that “a mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable”). Thus, if the prior art structure is capable of performing the intended use, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citing, inter alia, In re Zierden).
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.
Claim 2 is rejected under 35 U.S.C. 112(b)/2nd par. 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. Regarding claim 2, it is unclear how the first amine compound can have “a solubility that is greater than [its] solubility in water.” This uncertainty creates confusion as to the claimed scope and how to avoid infringement thereof, as the first-listed “solubility” does not refer to a specific solvent or solution, etc. (so a comparison cannot be made), rendering claim 2 rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asprion et al., US 7,004,997 (2006) (“Asprion”). Regarding claims 1, 4-8, and 10-11, Asprion discloses an aq. liquid sorbent composition for sorbing H2S or CO2, particularly preferably containing at least 30 wt% and at most 70 wt% total amine content, of which particularly preferably at least 15 wt% and at most 40 wt% is piperazine (“PZ”, the 1st amine compound as claimed) whereas the remainder of the amine content is methyldiethanolamine (“MDEA”, the 2nd amine compound as claimed); a specific aq. composition is disclosed comprising 20 wt% PZ and 40 wt% MDEA (i.e. 1:2 ratio by wt.%). See Asprion at, e.g., col. 3, ln. 36-41 and 60-63, and col. 4, ln. 4-7 and 24-34; Ex. 1 (60 wt% total aq. amine content, 20 wt% PZ, remainder MDEA). Asprion’s disclosure that “the solubility of [PZ] in aqueous solution is low” (see id. at, e.g., col. 2, ln. 2-3), coupled with its silence as to MDEA (not to mention MDEA’s two hydroxyl groups promoting the solubility thereof in water, as ‘like dissolves like’), is considered to meet the claimed comparative solubility limitation. MPEP 2112 (use of reasonable inferences drawn from prior art disclosures may properly be used in anticipation rejections). As to the claimed comparative reaction rate limitation, Asprion’s cited composition is reasonably regarded as meeting/possessing such a property, especially given Asprion’s anticipation of claims 10-11, which depend from claim 1 and thus require all of its limitations. MPEP 2112 & 2112.01 I-II.
Regarding claims 2-3, given Asprion’s aforementioned disclosure as to PZ’s low aq. solubility, and the fact that Asprion’s overall aq. liquid sorbent composition is in solution phase rather than suspension phase, claim 2’s comparative solubility property limitation is reasonably expected to be met/present, i.e. the presence of MDEA assists in solubilizing the PZ in the aq. solvent (e.g. via MDEA’s also comprising lone-pair-bearing heteroatoms as PZ does, etc.; ‘like dissolves like’); PZ and MDEA are thus also reasonably expected to meet claim 3’s solubility limitation(s) for the same reasons. MPEP 2112 & 2112.01 I-II.
Regarding claim 9, as detailed above vis-à-vis claim 1 (from which claim 9 depends), Asprion’s cited composition is reasonably regarded as meeting/possessing such a comparative reaction rate property when measured at the claimed T values, especially given Asprion’s anticipation of employing PZ (claim 10’s “most prefer[red]” 1st amine) and MDEA (one of claim 11’s two “more prefer[red]” 2nd amines), which depend from claim 1 and thus require all of its limitations. MPEP 2112 & 2112.01 I-II.
Regarding claim 12, Asprion employs its aq. liquid sorbent composition at a 40-100oC operating T and does not disclose any phase separation and/or amine decomposition. See Asprion at, e.g., col. 4, ln. 53-56.
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 the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The 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 the examiner by telephone are unsuccessful, the 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/ July 25, 2026
Primary Examiner
Art Unit 1736
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