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 .
Response to Amendment
The amendment filed December 22nd, 2025 has been entered. Claims 1-8 and 15-25 remain pending in the application. The amendments to the claims has overcome each and every 112(b) rejection as set forth in the Non-Final Office Action mailed October 1st, 2025.
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks, filed December 22nd, 2025, with respect to the rejection of claims 1 and 4-7 under 35 U.S.C. 102(a)(2) in view of U.S. Patent Publication No. US 2017/0007957 A1 to Wright et al. (hereinafter referred to as Wright) have been fully considered but they are not persuasive.
Applicant has amended claim 1 in an attempt to overcome the rejection under 35 U.S.C. 102(a)(2) in view of Wright; claim 1 now includes the limitation “and including a membrane that is non-permeable to ions.” The Applicant asserts that Wright does not teach such a membrane. The Examiner respectfully disagrees.
The Examiner has interpreted the newly added limitation of a membrane that is non-permeable to ions to comprise a sort of containment structure within the electrochemical cell. As the membrane does not allow passage of ions and, as disclosed by the Applicant, does not participate in the regeneration of the CO2 sorbent, such a membrane would read on any material that does not allow the passage of ions. Wright teaches an electrolytic cell (Fig. 10, electrolytic cell 508) ; the container housing said electrolytic cell would read on the newly added limitation of claim 1.
Applicant argues that Wright does not teach the limitation of claim 4 “wherein a temperature of the solid sorbent is maintained at a constant value through the first, second, and third states.” The Examiner respectfully disagrees.
The Applicant asserts that Wright relies on chemical and electrochemical processes that “conventionally involve temperature variation or at least do not require temperature constancy.” (See Pg. 8 of Applicant Arguments/Remarks) However, as stated in the Non-Final Office Action mailed October 1st, 2025, as there are no temperature differential steps included in the system as taught by Wright, the system as taught by Wright is capable of maintaining the temperature throughout the states of use. See MPEP § 2114(I). Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2112.01(I).
Applicant additionally argues that Wright does not teach “wherein the CO2 bound to the chemical component formed in the second state is provided into the compartment in the first state of a following cycle” as required by claim 7. The Examiner respectfully disagrees.
As stated in the Non-Final Office Action mailed October 1st, 2025, apparatus claims cover what a device is rather than what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the system as taught by Wright. See MPEP § 2114(II). Furthermore, the system as taught by Wright is capable of providing the CO2 bound to the chemical component formed in the second state to a compartment in the first state of a following cycle. See MPEP § 2112.01(I).
Applicant’s arguments, see Applicant Arguments/Remarks, filed December 22nd, 2025, with respect to the rejection of claims 2, 3, and 8 under 35 U.S.C. 103 in view of Wright have been fully considered but they are not persuasive.
Applicant argues that Wright does not teach “wherein the first and second states are repeated before the system proceeds to the third state” as required by claim 3. The Examiner respectfully disagrees.
As previously stated in the Non-Final Office Action mailed October 1st, 2025, the Examiner recognizes that Wright does not explicitly teach wherein the first and second states are repeated before the system proceeds to the third state. However, it would have been obvious to one of ordinary skill in the art that repeating the first and second states as taught by Wright before proceeding to the third state may ensure that all CO2 has been removed from the solid sorbent, resulting in a more efficient regeneration. Additionally, the system as taught by Wright teaches all the structural limitations of the claim. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be used does not differentiate the claimed apparatus from a prior art apparatus. See MPEP § 2114(II). The system as taught by Wright is capable of repeating the first and second states before the system proceeds to the third state. See MPEP § 2112.01(I).
Applicant additionally argues that Wright does not teach “wherein the second and third state is repeated before the system proceeds to the first state in the following cycle” as required by claim 8. The Examiner respectfully disagrees.
As previously stated in the Non-Final Office Action mailed October 1st, 2025, the Examiner recognizes that Wright does not explicitly teach wherein the second and third states are repeated before the system proceeds to the first state in the following cycle. However, it would have been obvious to one of ordinary skill in the art that repeating the second and third states prior to returning to the first state may ensure that all CO2 has been separated from the amine solution and removed from the solid sorbent, resulting in a more efficient regeneration. Additionally, the system as taught by Wright teaches all the structural limitations of the claim. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be used does not differentiate the claimed apparatus from a prior art apparatus. See MPEP § 2114(II). The system as taught by Wright is capable of repeating the first and second states before the system proceeds to the third state. See MPEP § 2112.01(I).
Applicant’s arguments, see Applicant Arguments/Remarks, filed December 22nd, 2025, with respect to the rejection of claims 15-20 under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of claims 15-20 has been withdrawn.
Applicant’s arguments with respect to claims 15-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see Applicant Arguments/Remarks, filed December 22nd, 2025, with respect to the rejection of claims 1 and 4 on the ground of nonstatutory double patenting over U.S. Application No. 18/347614 in view of Wright have been fully considered but they are not persuasive.
Applicant argues that Wright does not teach “an electrochemical cell in fluid communication with the compartment and including a membrane that is non-permeable to ions” of claim 1 and “wherein a temperature of the solid sorbent is maintained at a constant value through the first, second, and third states.” For the reasons stated above, the Examiner respectfully disagrees and maintains the rejection of claims 1 and 4 on the ground of nonstatutory double patenting as set forth in the Non-Final Office Action mailed October 1st, 2025.
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 1-8 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 recites the limitation “an electrochemical cell in fluid communication with the compartment and including a membrane that is non-permeable to ions.” It is unclear whether the recited membrane is impermeable to all ions or just some (e.g., just cations or just anions). The support for this limitation can be found in ¶0050 of the instant specification, where it is stated “The compartments may be divided by a membrane, which is semi-permeable, selectively permeable, or non-permeable to one or more chemical species, components, or ions.” (emphasis added) The specification suggests that the membrane may be non-permeable to “one or more” ions, but the claim language appears to suggest that the membrane is non-permeable to all ions, rendering the claim indefinite. Furthermore, it is unclear how a membrane would be impermeable to all ions; the Applicant is kindly reminded of the written description requirement under 35 U.S.C. 112(a).
Claims 2-8, which depend upon claim 1, are likewise 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-7, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Patent Application No. US 2017/0007957 A1 to Wright et al. (hereinafter referred to as Wright).
Regarding claim 1, Wright teaches an atmospheric CO2 capture system (Abstract “The present invention is directed to methods for removing CO2 from air”) comprising: a compartment housing a solid CO2 sorbent (Fig. 8 depicts CO2 uptake in a closed 128 L container ; ¶0011 “In one aspect, the invention employs a solid anionic exchange membrane as the primary CO2 capture matrix. The ion exchange material may comprise a solid matrix formed of or coated with an ion exchange material.”); an exchange fluid including a chemical component with selectivity towards CO2 (¶0013 “In yet another embodiment of the invention, carbon dioxide is removed from the air using an ion exchange material which is regenerated using a liquid amine solution” ; amines are selective towards CO2); and an electrochemical cell in fluid communication with the compartment (¶0064 “It also is possible to replace the thermal swing for CO2 recovery with an electrodialysis process … Electrodialysis could be applied to the bicarbonate solution generated in the first step, or alternatively, it could be applied to the amine solution that is generated in the final step.”) and including a membrane that is non-permeable to ions (Fig. 10, electrolytic cell 508 ; the container housing said electrolytic cell reads on the non-permeable membrane), the system having a cycle including a first state of sorbing CO2 from incoming air onto the solid CO2 sorbent until a saturation point is reached (¶0090 “The ion exchange media will over time become saturated with CO2 and must be regenerated.”); a second state of regenerating the sorbent by flooding the compartment with the exchange fluid to detach CO2 from the saturated sorbent and bind the detached CO2 to the chemical component (¶0090 “This is achieved by passing a liquid amine solution through the bed … The amine-CO2 solution is then removed and the process is repeated as a cyclic system.”); and a third state of regeneration the chemical component by detaching CO2 from the chemical component in the electrochemical cell and releasing the CO2 from the system (¶0013 “In yet another embodiment of the invention, carbon dioxide is removed from the air using ion exchange material which is regenerated using a liquid amine solution which is then recovered by passing the amine solution into an electrodialysis cell.” ; Fig. 5, step 256 “release/dispose of CO2”).
Regarding claim 4, Wright teaches the system as applied to claim 1 above, wherein a temperature of the solid sorbent is maintained at a constant value throughout the first, second, and third states. As there are no temperature differential steps included in the system as taught by Wright, the system as taught by Wright is capable of maintaining the temperature throughout the states of use. See MPEP § 2114(I).
Regarding claim 5, Wright teaches the system as applied to claim 1 above, wherein the third state further includes providing the regenerated chemical component to the compartment during a second state of a following cycle (¶0091 “The amine-CO2 solution must go through a recovery step in order to complete the cycle … and the amine-OH solution is returned to the bed.”).
Regarding claim 6, Wright teaches the system as applied to claim 1 above, wherein the solid CO2 sorbent is an amine-based sorbent (¶0057 “Preferred are resins functionalized with amine groups.”).
Regarding claim 7, Wright teaches the system as applied to claim 1 above. Wright does not teach wherein the CO2 bound to the chemical component formed in the second state is provided into the compartment in the first state of a following cycle. However, apparatus claims cover what a device is rather than what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the system as taught by Wright. See MPEP § 2114(II). Furthermore, the system as taught by Wright is capable of providing the CO2 bound to the chemical component formed in the second state to a compartment in the first state of a following cycle. See MPEP § 2112.01(I).
Regarding claim 21, Wright teaches an atmospheric CO2 capture system (Abstract “The present invention is directed to methods for removing CO2 from air”) comprising: a compartment housing a solid CO2 sorbent (Fig. 8 depicts CO2 uptake in a closed 128 L container ; ¶0011 “In one aspect, the invention employs a solid anionic exchange membrane as the primary CO2 capture matrix. The ion exchange material may comprise a solid matrix formed of or coated with an ion exchange material.”); an exchange fluid including a chemical component with selectivity towards CO2 (¶0013 “In yet another embodiment of the invention, carbon dioxide is removed from the air using an ion exchange material which is regenerated using a liquid amine solution” ; amines are selective towards CO2); and an electrochemical cell in fluid communication with the compartment (¶0064 “It also is possible to replace the thermal swing for CO2 recovery with an electrodialysis process … Electrodialysis could be applied to the bicarbonate solution generated in the first step, or alternatively, it could be applied to the amine solution that is generated in the final step.”), the system having a cycle including a first state of sorbing CO2 from incoming air onto the solid CO2 sorbent until a saturation point is reached (¶0090 “The ion exchange media will over time become saturated with CO2 and must be regenerated.”); a second state of regenerating the sorbent by flooding the compartment with the exchange fluid to detach CO2 from the saturated sorbent and bind the detached CO2 to the chemical component (¶0090 “This is achieved by passing a liquid amine solution through the bed … The amine-CO2 solution is then removed and the process is repeated as a cyclic system.”); and a third state of regenerating the chemical component by detaching CO2 from the chemical component in the electrochemical cell and releasing the CO2 from the system. Wright does not disclose wherein the system maintains the solid CO2 sorbent at a constant temperature (¶0013 “In yet another embodiment of the invention, carbon dioxide is removed from the air using ion exchange material which is regenerated using a liquid amine solution which is then recovered by passing the amine solution into an electrodialysis cell.” ; Fig. 5, step 256 “release/dispose of CO2”). However, as there are no temperature differential steps included in the system as taught by Wright, the system as taught by Wright is capable of maintaining the temperature throughout the states of use. See MPEP § 2114(I).
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.
Claims 2-3, 8, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wright.
Regarding claim 2, Wright teaches the system as applied to claim 1 above. Wright further teaches the use of an amine wash solution to recover the CO2 sorbent (¶0013 “In yet another embodiment of the invention, carbon dioxide is removed from the air using an ion exchange material which is regenerated using a liquid amine solution”). Wright does not explicitly disclose that the amine is dissolved in an aqueous solution. However, of the possible amine-based solutions, there are only two options available – aqueous or non-aqueous. Amines are soluble in water and it would have been obvious to one of ordinary skill in the art that an aqueous amine solution could be used with a reasonable expectation of success. See MPEP § 2143(I)(E).
Regarding claim 3, Wright teaches the system as applied to claim 1 above. Wright does not teach wherein the first and second states are repeated before the system proceeds to the third state. However, the system as taught by Wright teaches all the structural limitations of the claim. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus. See MPEP § 2114(II). It would have been obvious to one of ordinary skill in the art that repeating the first and second states as taught by Wright before proceeding to the third state may ensure that all CO2 has been removed from the solid sorbent, resulting in a more efficient regeneration. Furthermore, the system as taught by Wright is capable of repeating the first and second states before the system proceeds to the third state. See MPEP § 2112.01(I).
Regarding claim 8, Wright teaches the system as applied to claim 1 above. Wright does not teach wherein the second and third states are repeated before the system proceeds to the first state in the following cycle. However, the system as taught by Wright teaches all the structural limitations of the claim. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus. See MPEP § 2114(II). Furthermore, it would have been obvious to one of ordinary skill in the art that repeating the second and third states prior to returning to the first state may ensure that all CO2 has been separated from the amine solution and removed from the solid sorbent, resulting in a more efficient regeneration.
Regarding claim 22, Wright teaches the system as applied to claim 21 above. Wright does not teach wherein the exchange fluid is in direct fluid contact with both an anode and a cathode of the electrochemical cell during regeneration of the chemical component. However, Wright does teach a separate electrodialysis system for use in extracting hydrochloric acid from seawater (¶0101 “In yet another aspect of this invention, an electrodialysis device is used to extract hydrochloric acid from seawater.”), wherein both an anode and a cathode of the electrochemical cell are exposed to the same fluid (Figs. 13-14). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same configuration of the electrodialysis system as taught by Wright could be used in the regeneration step as well.
Allowable Subject Matter
Claims 23-25 are 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.
Claims 15-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
As to independent claim 15, Wright is the nearest prior art. Neither Wright nor the related prior art teach the electrochemical cell including an electrode and electrolyte comprising metal ions that exchange with CO2 bound to the chemical component, and wherein the metal ions are electroplated at the electrode to regenerate the chemical component. Furthermore, neither Wright nor the related prior art provide a rationale for modifying any of the previously discussed teachings to meet all of the requirements as set forth by claim 15. Claims 16-20, which are dependent upon claim 15, are similarly accepted.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 RACHEL MARIE SLAUGOVSKY whose telephone number is (571)272-0188. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL MARIE SLAUGOVSKY/Examiner, Art Unit 1776
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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