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 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.
Claims 8, 9 and 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites a series arrangement, but fails to disclose and claim what exactly is the series arrangement. There are two counter-current streams in the apparatus. Therefore, series arrangement in one or both streams make three possibilities. Note that the specificity in separating greenhouse gases as implied in claim 9 would not be possible in the case when both streams are in series.
Claim 9 recites, “…outputs the concentrated aqueous greenhouse gas flow stream for a specific aqueous greenhouse gas.” This element of the claim is unclear. The examiner assumes this as to mean that each of the adsorption apparatus in the plurality is capable of adsorbing and desorbing a specific greenhouse gas by its difference in functionalization, or by application of a different specific electrical current or the resulting temperature due to such current. See the 112(a) rejection below for further explanation.
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 and 10 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.
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. 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.
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
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. 102(a1) as being anticipated by WO 2012/020755..
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
806
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Greyscale
Teaching of WO is annotated in fig. 1 above. For detailed explanation, see the rejection 2 below.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as unpatentable over WO 2012/020755 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. 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.
Conclusion
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. 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
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