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 2-18-26 election without traverse of Group I (claims 1-9) is acknowledged. Claims 10-18 are withdrawn from further consideration per 37 CFR 1.142(b) as drawn to nonelected Groups, there being no allowable generic or linking claim.
Drawings
The 4-21-23 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
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 1-9 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.
Regarding claims 1-2, 5, and 8, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). While the limitations following “such as” are interpreted via the broadest reasonable interpretation “BRI” standard (MPEP 2111.03) as merely exemplary and not required, these rejections nevertheless require addressing.
Applicant is hereby advised that, as independent claim 1 and various dependent claims are rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Here, claim 2 recites the broad recitation “the first alkaline, aqueous scrubbing liquid comprises a dissolved metal hydroxide,” and also recites “preferably the first alkaline, aqueous scrubbing liquid comprises potassium hydroxide (KOH)”, which is the narrower statement of the range/limitation; claim 4 recites the broad recitation “used as a fuel to provide electricity”, and also recites “preferably in a fuel cell”, which is the narrower statement of the range/limitation; claim 6 recites the broad recitation “the pH of the second alkaline, aqueous scrubbing liquid being higher than the pH of the first alkaline, aqueous scrubbing liquid”, and also recites “preferably the pH of the second alkaline, aqueous scrubbing liquid being 12 to 14 and the pH of the first alkaline, aqueous scrubbing liquid being 8 to 10”, which is the narrower statement of the range/limitation; claim 8 recites the broad limitation “…being diluted by an aqueous stream”, and also recites “preferably said aqueous stream being provided by… and concentrating it,” which is the narrower statement of the range/limitation. Claims 2, 4, 6, and 8 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because there is a question or doubt as to whether the features introduced by such narrower language are (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) required features of the claims. While interpretation (a) has been applied via the BRI standard (MPEP 2111.03) as merely exemplary and not required, these rejections must nevertheless be addressed.
Double Patenting
The nonstatutory double patenting (“NSDP”) 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 NSDP 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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
A timely filed terminal disclaimer (“TD”) in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on NSDP 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 TD must be signed in compliance with 37 CFR 1.321(b). The filing of a TD by itself is not a complete reply to a NSDP rejection. A complete reply requires that the TD 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 TD forms which may be used; see 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 (“eTD”) may be filled out completely online using web-screens. An eTD meeting all requirements is auto-processed and approved immediately upon submission. For more information about eTDs, see www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Instant claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of US 11,219,860 (2022) (“’860”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope and do not manifest any non-obvious differences. Regarding instant claim 1, ‘860 claims the claimed steps. See ‘860 at, e.g., clm. 1. While ‘860 also claims an additional step/feature (i.e. the 3rd-to-last par. of ‘860’s clm. 1), this is not a non-obvious difference between ‘860 and instant claim 1; the omission of an element or limitation with a corresponding loss of function has been held to be an obvious variation. See In re Kuhle, 188 USPQ 7, 9 (CCPA 1975); Ex parte Wu, 10 USPQ 2031 (BPAI 1989); MPEP 2144.04 II. A.
Regarding instant claims 2-9, ‘860 so claims. See ‘860 at (respectively), e.g., clms. 12-13, 2, 8-9, 10, 1 and 7, 3, 15-18, and 4.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1-5 and 8 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Torres et al., US 2019/0240621 (published 8-8-19) (“Torres”). Regarding claim 1, Torres teaches in Figs. 1-2 a method of scrubbing a gas, such as flue gas or exhaust gas, comprising carbon dioxide to deplete the gas of the carbon dioxide (CO2), the method comprising:
- scrubbing the gas in a scrubber (carbon capture device 42) with a first alkaline, aq. scrubbing liquid (alkaline capture solution) to dissolve CO2 as HCO3- and/or CO3-2 in the first alkaline, aq. scrubbing liquid, thereby providing a first spent aq. scrubbing liquid comprising HCO3- and/or CO3-2, the first spent aq. scrubbing liquid having a pH of 10.6 [0030], [0034];
- feeding the first spent aq. scrubbing liquid to an anode chamber of an electrolytic cell (electrolyzers 46-48) comprising the anode chamber and a cathode chamber separated by a membrane (cation exchange membrane) [0020]-[0021], [0027], [0030], [0052];
- regenerating the first spent aq. scrubbing liquid in the electrolytic cell by electrolysis, the electrolysis increasing the pH of the first spent aq. scrubbing liquid in the cathode chamber, the electrolysis further depleting the first spent aq. scrubbing liquid of HCO3- and CO3-2 in the anode chamber by decreasing the pH, the regeneration further comprising generating H2(g) in the cathode chamber and a gaseous mixture of O2 and CO2 in the anode chamber by electrolysis [0030]-[0032]; and
- withdrawing regenerated alkaline, aq. scrubbing liquid from the cathode chamber and re-circulating it to the scrubber;
wherein:
- the H2(g) is withdrawn from the cathode chamber [0032]; and
- the gaseous mixture of O2 and CO2 is withdrawn from the anode chamber (labeled O2+CO2 in Fig. 2) [0037]. While Torres teaches the claimed method except that its first spent aq. scrubbing liquid has a pH of 10.6 instead of ~7-9 as claimed, as Torres teaches that the pH of the capture solution can vary [0033], Torres is thus understood to regard the aq. scrubbing liquid’s pH as a result effective variable. As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired pH of Torres’ first spent aq. scrubbing liquid, such as within the claimed range, via routine experimentation- it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claim 2, Torres’ first alkaline, aq. scrubbing liquid comprises a dissolved metal hydroxide (KOH) [0018].
Regarding claim 3, Torres teaches the method according to claim 1, wherein the method further comprises separating the gaseous mixture of oxygen and carbon dioxide into: a first stream rich in O2 and/or depleted of CO2; and a second stream rich in CO2 and/or depleted of O2; [0032], [0053].
Regarding claim 4, Torres teaches the method according to claim 1, wherein H2 withdrawn from the cathode chamber is used as a fuel [0019], [0025], [0032]; Fig. 1. While Torres appears silent as to using its H2 as a fuel to provide electricity, Examiner takes official notice that a common and well-known use for fuels (such as H2 or otherwise) is to provide electricity, e.g. at (electricity-generating) power plants. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Torres’ H2 for such a purpose. This conclusion of obviousness is further supported by the fact that using a prior art material for a usual/customary purpose cannot confer patentability without more. See, e.g., Ex parte Stoddard, 154 USPQ 184, 184-85 (Bd. App. 1967). See also MPEP 2143 (C)&(D); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-21 (2007).
Regarding claim 5, Torres withdraws an aq. stream still comprising some HCO3- from the anode chamber; concentrating the withdrawn aq. stream comprising some HCO3- to provide a concentrated stream comprising HCO3- (see esp. mixing tanks 60/62 in Fig. 6) and re-circulating the concentrated stream comprising HCO3- to the electrolytic cell (it is noted that the treatment of the aq. stream from the anode chamber in the next anode chamber, and in the tank 50 for removing CO2, implicitly causes a certain (unspecific) "concentration", the solution is then recirculated to the electrolytic device via line 52); [0030]-[0032], [0052]-[0053], and Figs. 2 & 6.
Regarding claim 8, Torres teaches that part of its regenerated alkaline, aq. scrubbing liquid is re-circulated to its cathode chamber (it is noted that the treatment of the aq. stream from the anode chamber in the next anode chamber, and in the tank 50 for removing CO2, implicitly causes a certain (unspecific) "concentration", the solution is then recirculated to the electrolytic device via line 52); [0030]-[0032], [0052]-[0053], and Figs. 2 & 6.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Torres in view of Constantz et al., US 2015/0246314 (published 9-3-15) (“Constantz”). Regarding claim 9, Torres’ teachings and suggestions are as detailed above. While Torres does not teach that CO2 and/or O2 withdrawn from the anode chamber is compressed into liquid CO2 and/or compressed O2, Constantz so teaches.
Constantz teaches that CO2 product gas may be pressurized prior to injection into a subsurface geological location for long-term storage/sequestration thereof (thus preventing the undesired release of the greenhouse gas CO2 into the atmosphere). [0027] & [0170] In view of the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Torres’ overall methodology by compressing its captured product CO2 into liquid CO2 as taught by Constantz, to thereby achieve Constantz’s taught advantage of enabling the oceanic/subterranean long-term storage/sequestration thereof. MPEP 2143 I.(G).
Potentially Allowable Subject Matter
Claims 6-7 would be allowable if rewritten to overcome the above NSDP and 35 U.S.C. 112(b)/2nd par. rejections thereof and to include all of the limitations of the base claim and any intervening claims. Regarding claims 6-7, the most pertinent prior art, detailed above, does not teach or suggest performing the claimed steps in the claimed sequence.
Conclusion
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 on 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 on (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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ June 16, 2026Primary Examiner, Art Unit 1736
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