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 election without traverse of claims 1-11 in the reply filed on 5/18/26 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.
Claims 6, 9, 10 and 21 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.
Claim 6 as amended appears to be new matter. The only disclosure of having oxygen-containing functional groups of silica nanoparticles is in [0029.] There is no further disclose that these functionalizations provide any discriminate adsorption or desorption, that is any selective adsorption of a specific greenhouse gas.
These claims recite functionalizing the activated carbon for “a specific aqueous greenhouse gas” and separately collecting the specific greenhouse gas. Claim 9 recites each of the adsorption apparatuses [in series] outputs a specific … gas. There is no support for these claim elements in the disclosure. Claim 21 is even more specific. The only disclosure the examiner could find is “In some examples, functionalizing can include binding proteins or perhaps releasing in response to varying electrical charges,” which provides no significant detail for both functionalizing as well as for “perhaps releasing in response to varying electrical charges.” Also, varying electrical charges is unclear and speculative. Does it mean, positive, negative or neutral charge, or varying the electrical current to achieve different desorption temperature? Therefore, there is no evidence in the disclosure to show that applicant has possession of the claimed invention.
There must be a teaching of what type of functionalization in each apparatus would make the adsorption/desorption specific as claimed for that apparatus.
Arguments traversing these rejections: argument citing [0030] [sic] (should be [0029]) is not persuasive – it just quotes a generic statement, but fails to show any details. Regarding [0020], there is no disclosure teaching what functional group(s) would perform this type of discriminate separation.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/432975. Details in the table below.
This is a provisional nonstatutory double patenting rejection.
Application
Claim nos.
Ref. 18/432975
Claim nos.
Remarks
1-6
1-6
Ref. claims are narrower – anticipation. Gas or aqueous feed are processes, not patentable in apparatus claims.
7
7
Container vs. reservoir no patentable difference
8
8
First and second in ref. is specific to plurality.
9-10
9-10
Only recites function
The terminal disclaimer applicant filed on 9/16/26 was disapproved. Reason for the disapproval is provided on the notice of disapproval filed 9/25/26.
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.
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) 1-5 are rejected under 35 U.S.C. 103 as unpatentable over WO 2012/020755 in view of Verougstraeat et al., “Electrical swing adsorption on 3D-printed activated carbon monoliths for CO2 capture from biogas,” Separation and Purification Technology 299 (2022) 121660.
At the outset, the term “electrothermal” is giving no patentable weight because applicant provides no further disclosure as to the structure and function of this term as applied to the swing adsorption.
Claims are directed to an apparatus. Therefore, the configuration with respect to receiving feed water or outputting purified water and greenhouse gases are purely functional language, which the apparatus in WO is capable of.
A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). "[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)
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503
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Teaching of WO is annotated in fig. 1 above. For detailed explanation, see the rejection 2 below.
WO teaches desorption of adsorbed gases by a pre-heated desorption purge gas in [0029], but fails to teach directly heating the apparatus by electrical heating. However, using electrical heating of adsorption columns for regeneration is not new and is known in the art. Further, Verougstraeat teaches desorption of adsorbed gases from carbon monoliths using electrical heating before purging with purge gas. Verougstraeat also teaches studies on capacity retention after repeat cycles using electric heating in table 2 as a function of applied voltage. This shows that the direct electrical heating at relatively higher voltage affords higher capacity retention in repeat cycles. Therefore, it would have been obvious to one of ordinary skill in the art to use the teaching of Verougstraeat in the teaching of WO for such improvements.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as unpatentable over WO 2012/020755 and Verougstraeat as applied in rejection 1, and further in view of Hosseini et al, “Technological Applications of Honeycomb Monoliths in Environmental Processes: A Review,” Brunel University Research Archive, https://bura.brunel.ac.uk › bitstream › FullText.pdf.
Fig. 1 of WO is copied herein with some annotations showing the relevant parts claimed. The apparatus in WO has two activated carbon adsorption columns having honeycomb structure (“monolith”) and fiber carbon adsorbent (see [0059],) the requisite inlet and outlet ports with interchangeable valves so that while one of them is in adsorption cycle, the other can be in desorption cycle as claimed. See [0054]. Details – [0046]-[0061].
WO mentions honeycomb structure and carbon fiber for the carbon adsorption column. WO does not teach functionalized carbon monolith. However, functionalized carbon nanofiber honeycomb structures are known and commercially available (sources like from Mast Carbon International, UK) and is not a patentable invention. Hosseini teaches such technologies as known for years, and functionalizing can be specific for gases, and includes oxygen containing group (table 3). Therefore it would have been obvious to one of ordinary skill in the art to have such functionalized carbon monoliths (claim 6) for removing specific greenhouse gases, such as for carbon capture, in the teaching of WO. Also combining prior art elements according to known methods to yield predictable results is prima facie obvious (See MPEP 2143.)
“Coal based” in claim 5 is not patentable unless otherwise shown: it only signifies the source of carbon.
Claim 7-10, series arrangement and collection containers: providing plurality of devise in series is not patentable because it is obvious to one of ordinary skill to provide plural devices in series to increase the adsorption capacity as required. It is also obvious to provide plural devises in series with different functionality for the purpose of separately collecting different species of desorbed components if so desired – known in the art as shown by Hosseini. Providing storage tanks for the collected greenhouse gases is also obvious, sine the other possibility would be releasing then to the atmosphere, which beats the desired purpose.
MPEP 2143, Rationales for combining: Combining prior art elements according to known methods to yield predictable results; use of known technique to improve similar devices (methods, or products) in the same way; applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claim 11, chromatographic column: a chromatographic column is simply a column of adsorbent, in this case not different from the activated carbon monolith. Applicant has not disclosed any different type of chromatographic column for this purpose. Since the disclosed monolith column is capable of discriminately adsorbing the greenhouse gases, the examiner finds claim 11, (under the broadest reasonable interpretation,) as added parallel or series column, such as in claim 8. Alternately, having a chromatographic analytical column to routinely analyze the feed wastewater, well-known in the art, would have been obvious to monitor the water for operational purposes. See the rationales for combining stated supra.
Response to Arguments
Arguments directed at the 112 rejections are addressed therein.
Applicant’s arguments with respect to claim(s) rejected on merits have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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, Prem Singh can be reached at 5712720579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
