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 11 September 2025 is acknowledged.
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 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.
As to claim 3, the term “strongly” in the claim is a relative term which renders the claim indefinite. The term “strongly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term strongly renders indefinite the electrolyte solution.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0381116 A1 to Kashi et al. (Kashi).
As to claim 1, Kashi teaches a carbon dioxide treatment apparatus comprising a capturing device for direct air capture of the carbon dioxide, an electrochemical reaction device that electrochemically reduces the carbon dioxide captured from the capturing device, the reaction device comprising a first electrolytic cell that electrochemically reduces the carbon dioxide to carbon monoxide, and a second electrolytic cell that electrochemically reduces the carbon monoxide produced by the first electrolytic cell to ethylene (Paragraphs 0184, 0185 and 0216; Figures 5 and 8).
As to claim 2, Kashi teaches the apparatus of claim 1. Kashi further teaches that the apparatus comprises a carbon monoxide supply path that is provided between the first electrolytic cell and the second electrolytic cell that supplied the carbon monoxide produced by the first cell to the second cell (Paragraphs 0184 and 0185; Figure 5).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0170166 A1 to Li et al. (Li) in view of Kashi.
As to claim 1, Li teaches a carbon dioxide treatment apparatus comprises a capturing device (14) that captures carbon dioxide and an electrochemical reaction device (12) that electrochemically reduces the carbon dioxide captured by the capturing device, the electrochemical reaction device comprising an electrolytic cell that electrochemically reduces the carbon dioxide to ethylene (Paragraphs 0055-0058; Figure 10). However, Li teaches that the reduction of carbon dioxide to ethylene occurs in a single cell and thus fails to teach a second electrolytic cell.
However, Kashi also discusses the electrolytic reduction of carbon dioxide to ethylene and teaches that instead of converting the carbon dioxide to ethylene in a single stage the reduction can occur in a double stage with a first electrolytic cell reducing the carbon dioxide to carbon monoxide and a second electrolytic cell reducing the carbon monoxide to ethylene, the two stage reduction allowing different configurations to achieve a high product concentration and also allowing for the second cell to operate at a lower voltage (Paragraphs 0184-0186; Figure 5).
Therefore it would have been obvious to one or ordinary skill in the art at the time filing to modify the single stage reduction of Li with a two stage reduction with a first electrolytic cell reducing the carbon dioxide to carbon monoxide and a second electrolytic cell reducing the carbon monoxide to ethylene allowing different configurations to achieve a high product concentration and also allowing for the second cell to operate at a lower voltage as taught by Kashi.
As to claim 2, the combination of Li and Kashi teaches the apparatus of claim 1. Kashi further teaches that the apparatus comprises a carbon monoxide supply path that is provided between the first electrolytic cell and the second electrolytic cell that supplies the carbon monoxide produced by the first cell to the second cell (Paragraphs 0184 and 0185; Figure 5).
As to claim 3, the combination of Li and Kashi teaches the apparatus of claim 2. Li further teaches that the capturing device (14) comprises a carbon dioxide absorption unit that dissolves and absorbs the carbon dioxide in a “strongly” alkaline electrolytic solution, an alkali hydroxide, the carbon dioxide dissolved in the solution supplied to the electrochemical reaction device (Paragraphs 0052 and 0055-0058; Figure 10).
As to claim 4, the combination of Li and Kashi teaches the apparatus of claim 3. Li further teaches that the first electrolytic cell includes a cathode (38), an anode (33), an electrolytic membrane (36) that is provided between the anode and the cathode, a cathode side liquid flow path (28) that is provided adjacent to the cathode (38) and in which the electrolytic solution with dissolved carbon dioxide flows and an anode side liquid flow path (32) that is provided adjacent to the anode (33) and through which the electrolytic solution is capable of flowing (Paragraph 0057 and 0058; Figure 10).
Kashi further teaches that the second electrolytic cell is gas fed and further teaches that a preferred gas fed cell comprises a cell with an electrolyte buffer layer, the cell comprising a cathode, an anode, an electrolyte membrane (MEA) that is provided between the cathode and the anode, a cathode side gas flow path that is provided adjacent to the cathode and in which a gas flows, carbon monoxide, and a cathode side liquid flow path that is provided adjacent to the cathode and through which the electrolytic solution is capable of flowing, and an anode side liquid flow path that is provided adjacent to the cathode, through which the electrolytic solution is capable of flowing (Paragraphs 0190 and 0191, Figure 6). Thus in combination the carbon monoxide supply path is provided to connect an outlet of the cathode side liquid flow path of the first cell and an inlet of the cathode side gas flow path of the second cell.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kashi as applied to claim 1 above, and further in view of “Selective synthesis of propylene via homologation of ethylene with dimethyl ether at low temperatures on zeolites” to Struelens et al. (Struelens).
As to claim 5, Kashi teaches the apparatus of claim 1. However, Kashi fails to teach that the ethylene product is further reacted. However, Struelens teaches that propene is growing in demand over ethylene and that a beneficial way to convert ethylene to propylene is through homologation with corresponding multimerization (dimerization and trimerization) (Section 1. Introduction and Section 4. Conclusion). Therefore, it would have been obvious to one or ordinary skill in the art at the time of filing to covert ethylene to propylene through homologation with corresponding multimerization, and thus a homologation reaction device of some type, in order to convert the ethylene to a more valuable product as taught by Struelens.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/588,058 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims, while including additional limitations, claim all the limitation of the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794