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 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.
The factual inquiries 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.
The claims are rejected as follows:
Claims 1–4, 6–10 are rejected under 35 U.S.C. 103 as being obvious over Lee et al., Carbon dioxide removal using carbon monolith as electric swing adsorption to improve indoor air quality, (“Lee”)1 in view of McGrail et al., US 2021/0055010 A1 (“McGrail”), and in further view of Addiego et al., US 2013/0207034 A1 (“Addiego”).
Regarding claim 1:
Lee discloses that an electrothermal swing adsorption system (Lee’s electric-Swing adsorption—ESA system, Lee Fig. 1, p. 211) comprising:
an electrothermal swing adsorption apparatus (as shown in Lee Fig. 5, p. 213) comprising:
a first chamber comprising a first carbon monolith (Lee’s monolith bed A as shown Fig. 5, and a detailed monolith structure is shown in Lee Fig. 2, Lee Figs. 2 and 5, ps. 212–213); and
a second chamber comprising a second carbon monolith (Lee’s monolith bed B as shown Fig. 5, and a detailed monolith structure is shown in Lee Fig. 2, Lee Figs. 2 and 5, ps. 212–213);
wherein the electrothermal swing adsorption apparatus is configured to receive a feed of air (Lee discloses its device is for improve indoor air quality, which means it is configured to receive a feed of air, Lee Fig. 1, p. 211);
the electrothermal swing adsorption system desorbs at least one of moisture or air contaminants from the feed of air (Lee discloses its ESA system first adsorbs carbon dioxide, and then regenerates and desorbs carbon dioxide from ambient air, carbon dioxide reads on the claimed “air contaminants”, Lee Fig. 1, ps. 211–212);
the electrothermal swing adsorption apparatus discharges a removal output flow stream of the at least one of moisture or air contaminants (Lee discloses its ESA device emits waste gas, which is the claimed “removal output flow stream”, Lee Fig. 1, p. 211).
Lee does not disclose that the electrothermal swing adsorption apparatus discharges a dehumidified flow stream.
In the analogous art of indoor air purification systems controlling CO2 levels, McGrail discloses a building HVAC system controlling CO2 levels from building air, McGrail [0021]. McGrail also discloses its system controls humidity in the building, McGrail [0021]. McGrail discloses its technology is a significant improvement over today's vapor-compression cooling systems delivers humidity management in conditioned building spaces with zero energy penalty, McGrail [0044]. McGrail discloses its humidity management system comprising nanostructured desiccant porous material located within a structured material, McGrail [0005]. It would have been obvious to include McGrail’s nanostructured desiccant porous material in Lee’s monolith structure because humidity level is important for human well-being and McGrail discloses its humidity management system has not energy penalty.
With such modification, modified Lee’s electrothermal swing adsorption apparatus discharges a dehumidified flow stream the same way as disclosed by McGrail [0021].
Lee as modified by McGrail does not disclose that the first carbon monolith and the second carbon monolith have bulk densities in a range from 0.05 g/cm3 to 0.4 g/cm3.
In the analogous art of carbon monolith structure configured to absorb carbon dioxide, Addiego discloses a bulk density of greater than 0.22 g/cc exhibits very high carbon dioxide adsorption capacity, Addiego [0090]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to modify Lee’s monolith to have a bulk density consistent with the range disclosed by Addiego for an increased carbon dioxide adsorption capacity. Wish such modification, modified Lee would have a range overlaps with the claimed range and support a prima facie case of obviousness. MPEP 2144.05(I).
Additionally, the instant disclosure does not teach the claimed bulk density range is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 2:
Modified Lee discloses that the electrothermal swing adsorption apparatus of claim 1, wherein the first carbon monolith of the first chamber adsorbs the at least one of moisture or air contaminants simultaneously as the second carbon monolith desorbs the at least one of moisture or air contaminants (Lee discloses a two-bed configuration to maintain a continuous and cyclical operation, where one bed encapsulates the adsorption stage while the other is the desorption phase, Lee p. 213, para. 3.3; also noted here that this limitation describes a process rather than the actual structure of the claimed apparatus, and Lee has disclosed that its device is capable of performing adsorption and desorption at the same time).
Regarding claim 3:
Modified Lee discloses that the electrothermal swing adsorption apparatus of claim 1, wherein the second carbon monolith adsorbs the at least one of moisture or air contaminants simultaneously as the first carbon monolith desorbs at least one of moisture or air contaminants (Lee discloses a two-bed configuration to maintain a continuous and cyclical operation, where one bed encapsulates the adsorption stage while the other is the desorption phase, Lee p. 213, para. 3.3; also noted here that this limitation describes a process rather than the actual structure of the claimed apparatus, and Lee has disclosed that its device is capable of performing adsorption and desorption at the same time).
Regarding claim 4:
Modified Lee discloses that the electrothermal swing adsorption apparatus of claim 1, wherein the first chamber and the second chamber operate in a cyclical fashion to perform continuous adsorption and desorption of the at least one of moisture or air contaminants such that the adsorption occurs in one of the first chamber or the second chamber while the desorption occurs in the other of the first chamber or the second chamber (Lee discloses a two-bed configuration to maintain a continuous and cyclical operation, where one bed encapsulates the adsorption stage while the other is the desorption phase, Lee p. 213, para. 3.3; also noted here that this limitation describes a process rather than the actual structure of the claimed apparatus, and Lee has disclosed that its device is capable of performing adsorption and desorption in a cyclical fashion).
Regarding claim 6:
Modified Lee discloses that the electrothermal swing adsorption system of claim 1, wherein the first carbon monolith and the second carbon monolith are each optimized to adsorb moisture or a specific air contaminant (Lee’s carbon monolith is optimized to adsorb a specific air contaminant, which is carbon dioxide, Lee entire document).
Regarding claim 7:
Modified Lee does not disclose that the electrothermal swing adsorption system of claim 2, wherein the electrothermal swing adsorption apparatus further comprises a reservoir to store the at least one of moisture or air contaminants desorbed from the second carbon monolith.
However, McGrail discloses its discharged water from the desiccant bed is sucked into a vacuum pump and then discharged into ambient, McGrail Fig. 1, [0023]. It would have been obvious to include McGrail’s vacuum pump in the system to discharge adsorbed water during regeneration, and McGrail’s vacuum pump or the ambient would both read on the claimed “reservoir.”
Regarding claim 8:
Modified Lee discloses that the electrothermal swing adsorption system of claim 1, wherein:
the electrothermal swing adsorption apparatus is a first electrothermal swing apparatus; the electrothermal swing adsorption system further comprises a second electrothermal swing adsorption apparatus; the first electrothermal swing apparatus and the second electrothermal swing apparatus are arranged in series; and s each of the first electrothermal swing apparatus and the second electrothermal swing adsorption apparatus adsorbs the at least one of moisture or air contaminants from the feed of the air (Lee discloses instead of parallel placement of two beds, a serial placement of multiple beds can also improve efficiency, Lee p. 220).
Regarding claim 9:
Modified Lee discloses that the electrothermal swing adsorption system of claim 8, wherein each of the first electrothermal swing apparatus and the second electrothermal swing adsorption apparatus discharges the removal output flow stream for the at least one of moisture or air contaminants (Lee’s carbon monolith connected in series each discharges moisture as modified in claim 1 or air contaminates of CO2, Lee Fig. 1, p. 211).
Regarding claim 10:
Modified Lee does not disclose that the electrothermal swing adsorption system of claim 9, wherein each of the first electrothermal swing apparatus and the second electrothermal swing adsorption apparatus comprises a reservoir to store outputs of the at least one of moisture or air contaminants.
However, as discussed in claim 7, McGrail discloses its discharged water from the desiccant bed is sucked into a vacuum pump and then discharged into ambient, McGrail Fig. 1, [0023]. It would have been obvious to include McGrail’s vacuum pump in the system to discharge adsorbed water during regeneration, and McGrail’s vacuum pump or the ambient would both read on the claimed “reservoir.” In this specific configuration of a series of electrothermal swing apparatus connected in series, It would have been obvious for one ordinary skill in the art at the time of filing for all the carbon monoliths to have both CO2 and water adsorption capability to increases adsorption capacity, and a person of ordinary skill in the art would be motivated to connected each of the electrothermal swing adsorption apparatus to McGrail’s vacuum pump and discharge water vapor into ambient during the regeneration process, and thus read on the claim.
Claim 5 is rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail and Addiego as applied to claim 1 above, and in further view of Kaneko et al., US 5997613 A (“Kaneko”).
Regarding claim 5:
Modified Lee does not disclose that the electrothermal swing adsorption system of claim 1, wherein the first monolith and the second carbon monolith each comprise coal-based activated carbon fibers.
In the analogous art of gas phase adsorption using activated carbon, Kaneko discloses an activated carbon fiber prepared from coal tar, Kaneko col. 2, ll. 46–54. Kaneko discloses its activated carbon fibers improves adsorption capacity and facilitate an effective regeneration treatment irrespective of the degree of adsorption involved, Kaneko col. 1, ll. 48–51. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Lee’s activated carbon monolith to be made of Kaneko’s activated carbon fibers prepared from coal tar for the benefits disclosed.
Claim 11 is rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail and Addiego as applied to claim 1 above, and in further view of Cui et al., US 2022/0062858 A1 (“Cui”).
Regarding claim 11:
Modified Lee does not disclose that the electrothermal swing adsorption system of claim 1, wherein the electrothermal swing adsorption system achieves moisture removal efficiencies of at least 396 mg/g at a relative humidity of 98% and temperature of 298 K.
In the analogous art of desiccants, Cui discloses a super-adsorbing porous thermos-responsive desiccants, Cui discloses a TRHC desiccant can adsorb 4g water for each gram of desiccant, at 20 °C (298 K) and 98% relative humidity (RH), Cui [0048]. Cui therefore discloses a moisture removal efficiency of at least 396 mg/g at the claimed relative humidity and temperature. Cui discloses its desiccant has superior performance properties, and enable the use of condenser heat or low-grade building waste heat, which may improve system efficiency, Cui [0062], [0044]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to use Cui’s desiccant in modified Lee for the benefits disclosed. With such modification, modified Lee would have a moisture removal efficiency that falls within the claimed range.
Claims 12–17 and 20 are rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail, and in further view of Golden et al., US 2003/0205131 A1 (“Golden”).
Regarding claim 12:
Modified Lee discloses that a method of dehumidifying and purifying air from a building HVAC system utilizing an electrothermal swing adsorption system (as discussed in claim 1, it would have been obvious to include McGrail’s nanostructured desiccant porous material in Lee’s monolith structure because humidity level is important for human well-being and McGrail discloses its humidity management system has not energy penalty, with such modification, modified Lee discloses a method of dehumidifying and purifying air from a building HVAC system, Lee Fig. 1, ps. 211 and 220), the method comprising:
feeding air from the building HVAC system into a first chamber of an electrothermal swing adsorption apparatus (feeding air from a building HVAC system into Lee’s monolith Bed A as shown in Lee Fig. 5, p. 213);
adsorbing the at least one of moisture or air contaminants with a first carbon monolith in the first chamber (the step of adsorbing moisture using McGrail’s desiccant material or using Lee’s monolith to adsorb CO2, Lee Fig. 5, p. 213); and
discharging an output flow stream from the first chamber of the electrothermal swing adsorption apparatus of dehumidified and purified air (shown as “gas out” in Lee’s Fig. 5).
Modified Lee does not disclose that the first carbon monolith having an air permeability in a range from 1x10-10 m2 to 8.5x10-11m2.
In the analogous art of gas separation swing adsorption systems, Golden discloses an adsorbent used in its filter with an air permeability of at least 15 Darcy (equivalent to 1.48 × 10⁻¹¹ m²), Golden claim 2. It would therefore have been obvious for one ordinary skill in the art at the time of filing to modify Lee’s monolith to have an air permeability as disclosed by Golden because such air permeability are known in the art to be suitable for gas separation for swing adsorption systems. With such modification, modified Lee would have an air permeability overlapping the claimed range and support a prima facie case of obviousness. MPEP 2144.05(I).
Additionally, the instant disclosure does not teach the claimed air permeability range is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 13:
Modified Lee discloses that the method of claim 12, further comprising:
feeding a purge gas (Lee discloses a step of displaces enriched CO2 Gas in the void of monolith and replaces the desorbs gas with fresh air, Lee p. 212, para. 3.2, Lee’s “fresh air” is the claimed “purge gas”) into a second chamber (Lee’s monolith Bed B, Lee Fig. 5, p. 213) of the electrothermal swing adsorption apparatus that is separate from the first chamber (see Lee Fig. 5); and
desorbing the at least one of moisture or air contaminants from a second carbon monolith with the purge gas in the second chamber, wherein the second carbon monolith previously adsorbed the at least one of moisture or air contaminants (Lee discloses that its two-bed devices can operate in a continuous and cyclical operation, with one bed encapsulates the adsorption sate while the other is in the desorption phase, Lee p. 213 para. 3.3; Lee also discloses desorption phase is the rinse or regeneration step, where enriched CO2 gas in the void of monolith is replace with fresh air, Lee p. 212, para. 3.2).
Regarding claim 14:
Modified Lee discloses that the method of claim 13, further comprising discharging a removal stream from the second chamber of the electrothermal swing adsorption apparatus of the at least one of moisture or air contaminants (as shown in Lee’s Fig. 1, where waste gas comprising air contaminants of CO2 is discharged from Lee’s ESA device, Lee Fig. 1, p. 211).
Regarding claim 15:
Modified Lee discloses that the method of claim 13, further comprising applying an electrical current to the second carbon monolith in the second chamber to raise a temperature of the second carbon monolith to desorb the at least one of moisture and air contaminants from the second carbon monolith (Lee its activated carbon monolith function as a heating element, which allow electrical current to pass through and allowing efficient regeneration by joule effect, Lee p. 211).
While modified Lee does not disclose that the temperature is raised to a range from 100 °C to 150 °C, it would have been obvious for one ordinary skill in the art at the time of filing for the temperature to be raised above 100 degree C because Lee discloses moisture (water) evaporates at 100 °C, and in order to desorb water, temperature has to be at least 100 °C.
Regarding claim 16:
Modified Lee discloses that the method of claim 13, further comprising feeding the air from the building HVAC system to the second chamber and feeding the purge gas to the first chamber when the first carbon monolith has adsorbed a predetermined amount of the at least one of moisture or air contaminants (Lee discloses its two-bed devices maintain a continuous and cyclical operation, with one bed encapsulate the adsorption stage while the other is in the desorption phase, Lee p. 213, to ensure continuous and cyclical operations, Lee’s two adsorption beds has to take turn to regeneration and adsorb, which would necessary involving feeding air to the first chamber and feed purge gas to the second chamber, Lee p. 213).
Regarding claim 17:
Modified Lee discloses that the method of claim 16, further comprising:
adsorbing the at least one of moisture or air contaminants with the second carbon monolith in the second chamber (when Lee’s bed is in adsorption mode, Lee Fig. 5, p. 213); and
desorbing the at least one of moisture or air contaminants from the first carbon monolith with the purge gas in the first chamber (When Lee’s bed is in desorption/regeneration mode, Lee discloses enriched CO2 gas in the carbon monolith is replaced with intake air, which is the purge gas, Lee Fig. 5, ps. 212–213).
Regarding claim 20:
Modified Lee discloses that the method of claim 13, wherein:
the electrothermal swing adsorption apparatus is a first electrothermal swing adsorption apparatus; and
the method further comprises feeding the output flow stream from the first electrothermal swing adsorption apparatus to a second electrothermal swing adsorption apparatus (Lee discloses instead of parallel placement of two beds, a serial placement of multiple beds can also improve efficiency, Lee p. 220; a serial placement of multiple beds would provide a plurality of electrothermal swing adsorption apparatuses with each bed read on one electrothermal swing adsorption apparatuses and air of the building HVAC would be feed into each apparatus in series to allow each apparatus to adsorb moisture, carbon dioxide etc.).
Claim 18–19 are rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail and Golden as applied to claim 12 above, and in further view of Kaneko.
Regarding claim 18:
Modified Lee does not disclose that the method of claim 13, wherein the first carbon monolith and the second carbon monolith comprise coal-based activated carbon fibers.
In the analogous art of gas phase adsorption using activated carbon, Kaneko discloses an activated carbon fiber prepared from coal tar, Kaneko col. 2, ll. 46–54. Kaneko discloses its activated carbon fibers improves adsorption capacity and facilitate an effective regeneration treatment irrespective of the degree of adsorption involved, Kaneko col. 1, ll. 48–51. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Lee’s activated carbon monolith to be made of Kaneko’s activated carbon fibers prepared from coal tar for the benefits disclosed.
Regarding claim 19:
Modified Lee discloses that the method of claim 18, wherein the coal-based activated carbon fibers are optimized to adsorb moisture or a specific air contaminant (Kaneko’s coal-based activated carbon fibers in modified Lee are optimized to adsorb moisture, because Kaneko discloses the coal-based activated carbon fibers is optimized to adsorb water because it has a surface provided with oxygen-containing functional groups to give fibers an increased affinity for water and thus enhanced adsorptive capacity, Kaneko col. 2, ll. 19–25).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1–10 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1–10 of copending Application No. (18/426085). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 of the current invention is substantially the same as claim 1 of the co-pending application except for the current invention filters a feed gas and the co-pending application filters a waste water, which is a liquid. However, both invention is directed to an apparatus, and both claim apparatuses have exact same structures.
Claims 2–10 of the current inventions are similar to claims 2–10 of the co-pending application.
Response to Arguments
Claim Objections
The examiner drops the current claim objection in view of the amendments.
Claim Rejections - 35 USC § 112(b)
The examiner drops the current claim rejection in view of the amendments.
Claim Rejections - 35 USC § 103
The applicant amends the claims to include new limitations in independent claims 1 and 12 and argues the rejection presented in the Non-final Office Action dated Mar. 16, 2026 does not teach or suggest the recited limitations.
In view of the amendment, new prior art references of Addiego, Golden are introduced. Please see rejection above.
Regarding claim 15, a rejection is provided above.
Applicant’s arguments for its dependent claims depends on the allowability of the respective independent claims, and since independent claims are not allowable, applicant’s arguments are not persuasive.
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 QIANPING HE whose telephone number is (571)272-8385. The examiner can normally be reached on 7:30-5:00 M-F.
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, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Qianping He/Examiner, Art Unit 1776
1 Lee is the 13-page NPL dated Jul. 29, 2024.
Prosecution Insights