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 .
Claim Interpretation
The claimed phrase “hydroxide-ion-exchanged… polymer material” is considered to be an embedded product-by-process limitation within composition claim 1. Since it has been held that the patentability of a product and its method of production are determined separately, the claimed process limitation(s) have not been accorded patentable weight, except to the extent that the process steps suggest structural features of the resulting product (here, merely that the claimed composition comprises hydroxide ions). See In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985), In re Brown, 173 USPQ 688, 688 (CCPA 1977), and In re Fessman, 180 USPQ 324, 326 (CCPA 1977); MPEP 2113.
The claimed phrase “poly(N-vinyl guanidine)-based polymer material” is interpreted via the broadest reasonable interpretation standard (MPEP 2111.03) to mean that the polymer material merely comprises poly(N-vinyl guanidine) and does not connote any specific concentration range thereof.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to a CO2 capture composition, classified in B01D2253/202.
II. Claims 9-15, drawn to a CO2 capture method, classified in B01D53/62.
III. Claims 16-18, drawn to a method of making a CO2 capture composition, classified in B01J20/3085.
IV. Claims 19-20, drawn to a CO2 capture system, classified in B01D53/18.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, Group I’s product can be used in materially different methods than Group II’s, such as in removing NOx, SOx, H2S, and/or Hg.
Inventions I and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, Group I’s product can be made by materially different methods than Group III’s, such as by electrolytic hydroxide generation (e.g. electrolysis of water) and application of hydroxide so produced to Group I’s product.
Inventions I and IV are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different designs. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to related methods. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different modes of operation and/or effects. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and IV are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, Group IV’s product can be used in materially different methods than Group II’s, such as in removing NOx, SOx, H2S, and/or Hg.
Inventions III and IV are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, Group IV’s product can be made by materially different methods than Group III’s, such as by electrolytic hydroxide generation (e.g. electrolysis of water) and application of hydroxide so produced to Group IV’s product.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention; and/or
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a)/1st par.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a 12/31/25 telephone conversation with Heather Flanagan, Esq. a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be mad/e by applicant in replying to this Office action. Claims 9-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product/apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all elected claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Note: the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the/any patent issues. See MPEP § 804.01.
Drawings
The 7/28/23 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 § 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.
Claims 1-2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitchell et al., US 2002/0007166 (published 1/17/02) (“Mitchell”). Regarding claims 1-2, Mitchell discloses superabsorbent polymer (“SAP”) particles (this shape being considered to be analogous to the claimed “beads”), comprising a resin “typically [ ] present in the hydroxide (OH)… form[,]” such as poly(vinylguanidine) (“PVG”); the PVG’s production mixture is treated with NaOH and as such is considered to be hydroxide ion-exchanged as claimed. See Mitchell at, e.g., par. 4, 111-114 and 186 (Ex. 13).
Regarding claims 6-8, Mitchell’s OH-exchanged PVG (“OH-PVG”) is present as a 2.6% solids solution @ pH 11.54. See id. at, e.g., par. 186.
Claim Rejections - 35 USC § 102/103 and 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.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claim 5 is rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Mitchell, or, in the alternative, under AIA 35 U.S.C. 103 as being unpatentable over the same. Regarding claim 5, Mitchell’s disclosures are as detailed above. Mitchell’s OH-PVG SAP, as an SAP, is used in absorbing water, indicating that it is water-resistant. See Mitchell at, e.g., par. 3-4, 111-114 and 186. As to the claimed steam-resistance, this is considered a mere property that is reasonably expected to be possessed by Mitchell’s OH-PVG SAP, given that Mitchell’s OH-PVG SAP anticipates claim 1’s structural/compositional limitations, as a chemical composition and its properties are inseparable. MPEP 2112.01 II. Additionally and/or alternatively, the presence of the claimed property by Mitchell’s OH-PVG SAP would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. See MPEP 2112.01 I, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). It would not be reasonable to expect identical or at least substantially similar compositions to have different properties.
Claims 2-4 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Mitchell. Additionally and/or alternatively regarding claim 2, Mitchell teaches that its OH-PVG SAP can be provided in preferable forms such as beads, rendering it prima facie obvious to do so. See Mitchell at, e.g., par. 84-85; MPEP 2143 I.(G) & 2144.04 IV.A.
Regarding claim 3, Mitchell teaches that its OH-PVG SAP can preferably be provided as fibers, such as with diameters of as little as ~50 µm (i.e. ~50,000 nm), rendering it prima facie obvious to do so. See Mitchell at, e.g., par. 88-89; MPEP 2143 I.(G) & 2144.04 IV.A. To the extent that applicant may argue that such a diameter does not qualify the foregoing fiber as a nanofiber as claimed, it is noted that applicant’s specification does not define what diameter or other dimension is required to qualify as a nanofiber. As such, Mitchell’s aforementioned ~50,000 nm OH-PVG SAP fibers are considered to qualify as nanofibers as claimed; any difference from the claimed nanofibers thus reduces to one of mere nomenclature, which cannot alone connote patentability. See Ex parte Stanley, 121 USPQ 621, 625 (BPAI 1958) (holding that mere nomenclature differences do not patentably distinguish a claim from the prior art), and Sellers v. Cofrode 35 F. 131 (C.C.E.D. Pa. 1888) (per curiam) (stating that a difference in naming “does not tend to distinguish”). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975) (reaching conclusion so as to prevent “the allowance of claims drawn to unpatentable subject matter merely through the employment of descriptive language not chosen by the prior art”).
Regarding claim 4, Mitchell teaches that is basic/alkaline polymeric resins such as its OH-PVG SAP materials can be crosslinked with such crosslinking agents as glutaraldehyde, rendering it prima facie obvious to do so. See Mitchell at, e.g., par. 111-115, 132-133, and 137; MPEP 2144.07.
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 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 at (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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ March 18, 2026
Primary Examiner
Art Unit 1736