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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 11 and 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites “A method for reliably verifying an ocean Carbon Dioxide Removal (ocean CDR) system’s contribution to atmospheric CO2 removal […] controlling the ocean CDR system to release the ocean alkalinity product as a series of discrete released batches, wherein each said released batch includes an amount of the base substance, and wherein the discrete released batches are sequentially released in accordance with a selected release frequency […]” The recitation fails to comply with the enabling as set forth by the factors in In re Wands 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) (see also MPEP § 2164.01(a) and § 2164.04).
(A) The breadth of the claims: Claim 1 broadly teaches the method for reliably verifying an ocean Carbon Dioxide Removal (ocean CDR) system’s contribution to atmospheric CO2 removal, but fails to go into specifics where one of ordinary skill would not be able to successfully to make and/or use the invention without undue experimentation (e.g., lack of specific numbers, or what parts of the power spectra would allow to verify the release of alkalinity product).
(B) The nature of the invention: The invention draws to a method of verification of the performance and contributions of the ocean CDR system to the atmospheric CO2 removal.
(C) The state of the prior art: There is prior art regarding methods for releasing a base/alkalinity product on an oceanic scale, but no prior art further discloses releasing batches in a selected release frequency based on the power-spectra for verifying the release of ocean alkalinity product.
(D) The level of one of ordinary skill: A practitioner who has a master’s level in chemistry.
(E) The level of predictability in the art: The relevant art is unpredictable as there is no prior art that discloses an ocean CO2 removal verification method that uses power spectra in determining release frequencies. Additionally, a global scale method involving introducing a large sum of product into the ocean is additionally unpredictable as the scale cannot account for everything (e.g., changes to the climate, sea ecosystem, etc.).
(F) The amount of direction provided by the inventor: The inventor does not provide sufficient direction in the original specification that one skilled in the art could follow in attempting to make and/or use this invention. Specifically, there is no teaching of how to perform the verification of the CDR system used on a ocean.
(G) The existence of working examples: The specifications provided by the instant application does not disclose working examples of the ocean CDR verification method being used in small- or full-scale operations.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The amount of experimentation needed based on the content of the disclosure would be extraordinarily substantial and undue in reliably verifying the contributions of the ocean CDR system to atmospheric CO2 removal. Experimentation to use the invention would be undue and highly risky to the global environment.
In conclusion, based on the above Wands factor analysis, claim 1 fail to comply with the enablement requirement.
Additionally, dependent claims 2-10 fail to fulfill the enablement requirement as they do not add any specific information for carrying out the invention.
Independent claim 11 is similarly rejected for the same reasons as claim 1 above. Dependent claims 12-16 further fail to fulfill the enablement requirement as they do not add any specific information for carrying out the invention.
Claim 17 recites “An ocean Carbon Dioxide Removal (ocean CDR) system […] wherein the selected release frequency coincides with a quiet natural seawater carbonate chemistry variation frequency such that the base substance in the released ocean alkalinity product dispersed into the ocean's seawater along an associated dispersion path away from the outfall location produces a time waveform whose power spectrum contains significant contributions at the quiet natural seawater carbonate chemistry variation frequency.” The recitation fails to comply with the enabling as set forth by the factors in In re Wands 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) (see also MPEP § 2164.01(a) and § 2164.04).
(A) The breadth of the claims: Claim 17 broadly teaches the system of an ocean Carbon Dioxide Remover, but fails to go into specifics where one of ordinary skill would not be able to successfully to make and/or use the invention without undue experimentation.
(B) The nature of the invention: The invention draws to a system for removing carbon dioxide from the ocean.
(C) The state of the prior art: There is prior art regarding methods and systems for releasing a base/alkalinity product on an oceanic scale, but no prior art further discloses the specifics of the alkalinity product release, by using quiet natural seawater carbonate chemistry variation frequency.
(D) The level of one of ordinary skill: A practitioner who has a master’s level in chemistry.
(E) The level of predictability in the art: The relevant art is unpredictable as there is no prior art that discloses an ocean CO2 removal system that uses a release frequency coinciding with a quiet natural seawater carbonate chemistry variation frequency. Additionally, a global scale method involving introducing a large sum of product into the ocean is additionally unpredictable as the scale cannot account for everything (e.g., changes to the climate, sea ecosystem, etc.).
(F) The amount of direction provided by the inventor: The inventor does not provide sufficient direction in the original specification that one skilled in the art could follow in attempting to make and/or use this invention. Specifically, there is no teaching of how to use the ocean CDR system.
(G) The existence of working examples: The specifications provided by the instant application does not disclose working examples of the ocean CDR system being used in small- or full-scale operations.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The amount of experimentation needed based on the content of the disclosure would be extraordinarily substantial and undue in using the ocean CDR system. Experimentation to use the invention undue on an oceanic scale and highly risky to the global environment.
In conclusion, based on the above Wands factor analysis, claim 17 fail to comply with the enablement requirement.
Additionally, dependent claims 18-20 fail to fulfill the enablement requirement as they do not add any specific information for carrying out the invention.
Claims 1, 11 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims above do not have any working examples found in the specifications so that one skilled in the art can follow to understand how to perform the functions of the process and the systems of the invention. The original specification does not convey or provide enough information so that one having ordinary skill in the art could determine that the applicant had possession of the claimed invention at the time of filing.
Additionally, dependent claims 2-10, 12-16, and 18-20 fail to fulfill the written description requirement for the same reasons as claim 1, 11 and 17.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The National Academies of Sciences, Engineering, and Medicine (“A Research Strategy for Ocean-based Carbon Dioxide Removal and Sequestration”, as cited from the IDS, and from henceforth, National Academies) teaches approaches to ocean CO2 removal (ocean CDR) by proposing ocean alkalinity enhancement (OAE) by adding alkalinity via introducing large amounts of pulverized silicate or carbonate rock or their dissolution products. This adds alkalinity to the surface ocean and thereby “locks” CO2 into other forms of dissolved inorganic carbon species. An alternate approach for OAE given by National Academies is the generation of base/alkaline products (i.e., sodium hydroxide), by way of electrochemical methods (see National Academies, Chapter 7, 7.1 Overview).
The prior art of National Academies however fails to teach verifying contributions of atmospheric CO2 removal from the ocean CDR system, by way of using frequency-domain techniques to determine relative contributions, and to verify the release of alkalinity product (as claimed in claim 1 and 11) and using quiet natural seawater carbonate chemistry variation frequency to determine selected release frequency of the alkalinity product (as claimed in claim 17).
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/TRACY CHING-TIAN COLENA/ Examiner, Art Unit 1797 /LYLE ALEXANDER/ Supervisory Patent Examiner, Art Unit 1797
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