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 claims 1-15 in the reply filed on 8/21/2025 is acknowledged.
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.
Claim 1 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 written description requirement. The claim(s) contains 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. Claim 1 recites the slurry flow is “void of chemical catalyst.” No support for this negative amendment is found in the originally filed specification, only a teaching that the design allows for the mixing chamber to act as a catalyst. As such, positively claiming such a negative limitation is considered to be new matter.
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.
Claim(s) 1-7 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng et al. (US 2015/0224442 in IDS).
Regarding claim 1, Peng teaches an apparatus capable of gas capture and sequestration, the apparatus comprising a convergent / divergent apparatus wherein the convergent / divergent apparatus includes a conical convergent section, a cylindrical throat, and a conical outlet; the convergent / divergent apparatus capable of allowing a slurry flow through it at a flow rate wherein the slurry flow could a sequestered material; an inlet at an inlet location having a pressure means to inject a gas into the slurry flow and to interact with the slurry flow responsive to the pressure means reaching a predetermined value; and a mixing chamber with a converging mixing section is fluidically coupled to the conical outlet and downflow of the inlet wherein the slurry flow combines with the gas and is capable of forming a cavitating turbulent flow forming a precipitate within a post conical outlet slurry flow (Figs. 1-3 and [0074]-[0079]).
It is noted that the claims are directed to an apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). Therefore, the specific types of fluids treated (slurry, gas, or lack of catalyst) or the effects of operating the apparatus (precipitation and flow conditions) are not given patentable weight. Peng teaches all claimed structure (the convergent / divergent portions, inlets for gas and slurry, and a mixing chamber as claimed) and thus reads on the limitations of the apparatus claim.
Regarding claims 2-7 and 11-13, all claim limitations are directed to the material worked upon by the apparatus and operational parameters. The Peng apparatus is capable of working on/providing said materials to be worked upon and is capable of being operated as claimed.
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.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US 2015/0224442 in IDS) in view of Gauthier et al. (US 2004/0062689).
Regarding claims 8-10, Peng teaches the apparatus having a throat section and the various portions having diameters and lengths. Peng fails to teach the relative dimensions of the throat diameter to other portions of the apparatus as claimed. Gauthier teaches that for venturi type apparatuses that have the convergent / divergent portions and throat portions, the relative dimensions of the throat diameter to throat length is usually within 0.5-10 times the diameter, which overlaps the range claimed, the ratio of the inlet section diameter to throat diameter being around 1.8-2.5 (1/0.55 to 1/0.4), and the length will be of an appropriate length ([0040]). As such, all relative dimensions would appear to be known for venturi type apparatuses, or it would have been an obvious matter to find a workable range given all other factors are known ("[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Claim(s) 1-7 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farsad et al. (US 2010/0230830) in view of Peng et al. (US 2015/0224442 in IDS).
Regarding claim 1, Farsad teaches that an apparatus where a gas may be contacted with a water source, the apparatus comprising a venturi reactor ([0232]). It is Examiner’s position that one skilled in the art would recognize that a venturi reactor comprises a convergent / divergent apparatus wherein the convergent / divergent apparatus includes a conical convergent section, a cylindrical throat, and a conical outlet; the convergent / divergent apparatus capable of allowing a slurry flow through it at a flow rate wherein the slurry flow could a sequestered material; an inlet at an inlet location having a pressure means to inject a gas into the slurry flow and to interact with the slurry flow responsive to the pressure means reaching a predetermined value; and a mixing chamber with a converging mixing section is fluidically coupled to the conical outlet and downflow of the inlet wherein the slurry flow combines with the gas and is capable of forming a cavitating turbulent flow forming a precipitate within a post conical outlet slurry flow as claimed.
However, it could be argued that not all venturi reactors would have the configuration claimed and thus not inherent. Peng teaches a venturi reactor that comprises a convergent / divergent apparatus wherein the convergent / divergent apparatus includes a conical convergent section, a cylindrical throat, and a conical outlet; the convergent / divergent apparatus capable of allowing a slurry flow through it at a flow rate wherein the slurry flow could a sequestered material; an inlet at an inlet location having a pressure means to inject a gas into the slurry flow and to interact with the slurry flow responsive to the pressure means reaching a predetermined value; and a mixing chamber with a converging mixing section is fluidically coupled to the conical outlet and downflow of the inlet wherein the slurry flow combines with the gas and is capable of forming a cavitating turbulent flow forming a precipitate within a post conical outlet slurry flow (Figs. 1-3 and [0074]-[0079]). Therefore, it would have been obvious to look to the art for specific known and used venturi reactors capable of handing liquids and gases. As such, one skilled in the art would have found it obvious to use the Peng venturi reactor as the specific venturi reactor in Farsad as is merely using a known venturi reactor capable of handling the same materials with a reasonable expectation of success.
It is noted that the claims are directed to an apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). Therefore, the specific types of fluids treated (slurry, gas, or lack of catalyst) or the effects of operating the apparatus (precipitation and flow conditions) are not given patentable weight. Farsad in view of Peng teaches all claimed structure (the convergent / divergent portions, inlets for gas and slurry, and a mixing chamber as claimed) and thus reads on the limitations of the apparatus claim.
Regarding claims 2-7 and 11-13, all claim limitations are directed to the material worked upon by the apparatus and operational parameters. The Farsad in view of Peng apparatus is capable of working on/providing said materials to be worked upon and is capable of being operated as claimed.
Regarding claims 14-15, Farsad teaches that any precipitates from the liquid being treated are passed through a solid liquid separator, such as filtration systems/filters, which would include membrane filters, in order to concentrate the compositions that include precipitates while providing a cleaner supernatant.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farsad et al. (US 2010/0230830) in view of Peng et al. (US 2015/0224442 in IDS), and further in view of Gauthier et al. (US 2004/0062689).
Regarding claims 8-10, Farsad in view of Peng teaches the apparatus having a throat section and the various portions having diameters and lengths. Modified Farsad fails to teach the relative dimensions of the throat diameter to other portions of the apparatus as claimed. Gauthier teaches that for venturi type apparatuses that have the convergent / divergent portions and throat portions, the relative dimensions of the throat diameter to throat length is usually within 0.5-10 times the diameter, which overlaps the range claimed, the ratio of the inlet section diameter to throat diameter being around 1.8-2.5 (1/0.55 to 1/0.4), and the length will be of an appropriate length ([0040]). As such, all relative dimensions would appear to be known for venturi type apparatuses, or it would have been an obvious matter to find a workable range given all other factors are known.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777
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