DETAILED ACTION
Claims 1-25 are pending, of which claims 11-13 and 20-25 have been withdrawn.
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
Claims 11-13 and 20-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/22/26.
Applicant’s election without traverse of Species in the reply filed on 4/22/26 is also acknowledged.
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.
Claim 4 is 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 claim 4, the claim recites several different overlapping temperature ranges. As such, it is unclear which of these ranges the temperature must be in to meet the limitations of the claim. For the purposes of examination, claim 4 is interpreted as reciting a temperature range of 30-110 °C, which is the lower and upper bounds of the recited ranges.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(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 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Quach. Exploration of Carbonyl–Olefin Metathesis Reactions: Ring Opening, Ring Closing and Polymerization. Investigation of Cyclopropenimines for Carbon Dioxide Capture and its Conjugate Acids for Per–and Polyfluoroalkyl Substances (PFAS) Remediation. Cornell University, 2023 (“Quach”).
Regarding claim 1, Quach teaches a method for carbon capture and sequestration (see e.g. page 76, first full paragraph, starting “Carbon capture has…”). The method of Quach includes providing a cyclopropenimine having a formula matching the recited formula (see e.g. FIG. 2 on page 78 where the R group connected to the nitrogen can be an n-Bu group, which would include the recited N-C bond). Quach teaches reacting the cyclopropenimine with carbon dioxide in water, which as recognized in the instant application, is a nucleophile (see e.g. page 79, last paragraph, starting “In order to…”, as well as FIG. 4). The carbon dioxide is then released from the product by heating at 80 °C (see e.g. page 80, first paragraph, starting “While such finding…”).
Regarding claim 2, Quach teaches that the product is the recited product where the Nu group is -OH- (see e.g. FIG. 4 on page 79).
Regarding claim 3, the CPI of Quach is the first recited structure, with the n-butyl group connected to the imine nitrogen and cyclohexyl groups on the other nitrogen atoms (see e.g. FIG. 4 on page 79).
Regarding claim 4, the desorption temperature of Quach is 80°C, which is within the claimed ranges (see e.g. page 80, first paragraph, starting “While such finding…”).
Regarding claim 10, the nucleophilic species of Quach is water (see e.g. last paragraph, starting “In order to…”).
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.
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Quach.
Regarding claim 14, the method of Quach includes obtaining carbon dioxide (see e.g. last paragraph, starting “In order to…”). Quach teaches reacting the carbon dioxide with an imine base in the presence of water, which is a nucleophile (Id.). Quach teaches obtaining an NuCO2- salt, which because the nucleophile is water, has the formula of HCO3- (see e.g. FIG. 4 on page 79). Quach teaches releasing the carbon dioxide by heating to 80°C (see e.g. page 80, first paragraph, starting “While such finding…”).
Quach does not specifically state that the carbon dioxide was obtained from atmospheric carbon dioxide. However, Quach states that the purpose of the process is to capture carbon dioxide for the purpose of attenuating the climate crisis (see e.g. page 76, first paragraph, starting “Carbon capture has…”). Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to use the imine to capture carbon dioxide from atmospheric carbon dioxide in order to reduce the amount of carbon dioxide in the atmosphere.
Regarding claim 15, Quach does not specifically teach collecting the carbon dioxide released. However, Quach states that the purpose of the process is to capture carbon dioxide for the purpose of attenuating the climate crisis (see e.g. page 76, first paragraph, starting “Carbon capture has…”). Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to collect the carbon dioxide because otherwise the carbon dioxide would be released into the atmosphere, which would go against the entire purpose of the process.
Regarding claim 16, Quach teaches that the imine moiety is a cyclopropenimine (see e.g. FIG. 2 on page 78).
Regarding claim 17, Quach teaches that the nucleophile is water, which has a hydroxide moiety (see e.g. page 79, last paragraph, starting “In order to…”, as well as FIG. 4).
Regarding claim 18, Quach teaches bubbling the carbon dioxide through a solution of the base, which is a type of mixing (see e.g. page 78, first paragraph, starting “To demonstrate the…”).
Regarding claim 19, Quach teaches that the material is a CPI solution (see e.g. page 79, last paragraph, starting “In order to…”).
Double Patenting
The nonstatutory double patenting 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 nonstatutory double patenting 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, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting 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 terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer 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 terminal disclaimer forms which may be used. Please visit 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 may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11878269. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 13 of the reference patent depends from claim 9 and therefore incorporates all the limitations of claim 9. As such, claim 13 of the reference patent recites reacting a cyclopropenimine having the same structure as claim 1 of the instant application with carbon dioxide. Claim 13 also recites applying an external stimulus, which would include heat, to release the carbon dioxide. Although not recited in claim 13, claim 10 of the reference patent recites reacting with a metal halide in water to generate a carbonate salt. As such, it would have been obvious to incorporate this step into the process of claim 13. Generating the carbonate salt from the CPI-CO2 adduct would appear to involve nucleophilic reaction of the water with the adduct, and therefore the process takes place in the presence of a nucleophile.
Allowable Subject Matter
Claims 5-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 5 recites that the CPI is a pendant group linked to a polymer backbone. Claim 7 recites that the nucleophilic species is a crosslinker having a structure (bis(NuH)) and the product is a gel. Claim 8 recites that the CPI is a surface functionality on a silica material.
There is no teaching or suggestion in Quach that the CPI moiety can be included on a polymer or on a silica material. Further, the only nucleophile suggested by Quach is water, which is not considered a crosslinker with the structure recited in claim 7. Claims 6 and 9 depend from claims 5 and 8, respectively, and recite allowable subject matter for at least the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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