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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show how the cooling tower cools water in the exhaust air and outputs exhausted air with the high CO2 content and high water content as described in the specification.
Note: the drawings should illustrate how the cooling tower interacts with the exhaust air from the AHU so as to produce exhausted air with the high CO2 content and high water content.
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Correction of the following is required:
The claims call for the limitation “air-conversion element” (see at least line 8 of claim 1). The specification fails to provide clear support for said “air-conversion element”. In other words, the specification does not allow the meaning of the terms in the claims to be ascertainable by reference to the description. To overcome this objection, applicant should:
(A) clarify the record by amending the written description such that it expressly recites what structure performs the function recited in the claim element in a manner that does not add prohibited new matter to the specification; or
(B) state on the record what structure performs the function recited in the means- (or step-) plus-function limitation.
See 112 section below, and MPEP, 37 CFR 1.75(d)(1).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a. air-conversion element in at least claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-18 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 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.
The specification; including claims 1, 9, and 19, have been amended to incorporate the limitation “an air-conversion element configured to convert the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion”. This subject matter constitutes new matter as it was not properly described in the application as filed. The manner by which solar photothermochemical alkane reverse combustion converts the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content was not presented at the time of filing. Accordingly, doubt as to possession of the claimed invention at the time of filing is raised.
Claims 1-18 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 enablement requirement. The claim(s) contains 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.
Regarding the limitation “an air-conversion element configured to convert the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion” (in claims 1, 9, and 16), the specification does not provide adequate written description (enough supporting details/explanations) on how this function would be practiced by one of ordinary skills in the art without undue experimentation.
Therefore, doubts are consequently raised with respect to the possession of the claimed invention at the time the invention was filed.
Based on the evidence regarding the each of the wands factors listed below, the specification, at the time the invention was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention.
A: Nature of the invention.
The claimed invention requires that the “air-conversion element configured to convert the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion”. One skilled in the art would not ascertain how this limitation is achieved; given that supporting details/explanations are not disclosed by the appellant specification.
B: The amount of direction provided by the inventor.
As the specification does not provide enough guidance on how the air-conversion element converts the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion, one skilled in the art would not be able to practice the claim invention without additional guidance from the inventor.
C: Existence of working examples.
The existence of working examples illustrating the how the air-conversion element converts the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion is lacking. Additional instruction would be needed in order to provide one skilled in the art with the necessary information to produce a working example.
Dependent claims 2-8, 10-15, and 17-18 are rejected under 112(a) for depending upon a claim that fails to comply with the written description requirement.
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.
Claim(s) 1-18 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “an air-conversion element”, which is indefinite as it is unclear which particular structure the applicant is referring to as “air-conversion element”. The specification is devoid of adequate structure for the claimed air-conversion element. In other words, there is no disclosure of any particular structure, either explicitly or inherently, that is used as an air-conversion element to convert the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content. Since the specification does not provide sufficient details such that one of ordinary skill in the art would understand which mechanical structure perform the claimed function, the claim is indefinite.
MPEP 2181 states that a claim limitation expressed in means- (or step-) plus- function language "Shall be construed to cover the corresponding structure...described in the specification and equivalents thereof." "If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b)." In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994). The proper test for meeting the definiteness requirement is that the corresponding structure of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure will perform the recited function. If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b).
the specification states that “the air-conversion element 131 is configured to use sunlight or another energy source to convert the exhausted air into fuel and air through solar photothermochemical alkane reverse combustion”. This statement does not cure the indefiniteness above; because it does not state what the air-conversion element is; rather, what it does.
A similar issue is found in claims 9 and 16. Applicant is encouraged to address these claims accordingly.
Claim 1 recites “an air-handling unit (AHU) which outputs exhaust air with high CO2 content”. This limitation recites both an apparatus and the method steps of using the apparatus. It is unclear whether infringement occurs when one creates the apparatus or when one actually uses the apparatus (see MPEP 2173.05(p), In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
The terms “high CO2 content”, “high water content”, “low CO2 and water content”, and “high oxygen (02) content” in claim 1 are relative terms which renders the claim indefinite. Said terms are not defined by the claim; and the specification does not provide appropriate standard for ascertaining the requisite degree of each term. In other words, because it is unclear what percentage or amount would constitute “high” and “low”, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 also calls for the limitation “low CO2 and water content” in line 9; which limitation is indefinite as it is unclear if the limitation is referring to both low CO2 content and low water content; or low CO2 content only, and water content. Appropriate correction is required.
A similar issue is found in claims 9 and 16. Applicant is encouraged to address claims 9 and 16 accordingly.
Claim(s) 2-8, 10-15, and 17-18 is/are indefinite for their dependency on an indefinite base claim.
Response to Arguments
Applicant's arguments filed on 08/21/2025 have been fully considered.
It was pointed out to the applicant that the limitation “an air-conversion element configured to convert the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content through solar photothermochemical alkane reverse combustion” constitutes new matter as it was not properly described in the application as filed. In other words, the manner by which solar photothermochemical alkane reverse combustion converts the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content was not presented at the time of filing. Accordingly, doubt as to possession of the claimed invention at the time of filing is raised.
Furthermore, the specification does not provide adequate written description (enough supporting details/explanations) on how solar photothermochemical alkane reverse combustion converts the exhausted air into fuel and air with low CO2 and water content and high oxygen (O2) content is practiced by one of ordinary skills in the art without undue experimentation.
In view of the above, the instant claims are rejected under 35 U.S.C. 112(a) & (b).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Olmstead (US 20220176312 A1) discloses an air-handling system (Fig. 1A), comprising an output of exhaust air with relatively high CO2 content (see CO2 laden air); a cooling tower #104, which is receptive of the exhaust air from the AHU and which is configured to cool water in the exhaust air and to output exhausted air with the relatively high CO2 content and relatively high water content; and a CO2 storage system #110 for storing and packaging CO2 drawn from the cooling tower ([0149-0152]).
Wallman (US 9504989 B2) and Meirav (US 8491710 B2) teaches a system for removing and storing carbon dioxide from air streams.
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 LIONEL W NOUKETCHA whose telephone number is (571)272-8438. The examiner can normally be reached on Mon - Fri: 08:00 AM - 04:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763