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 Objections
Claims 1–4, 9–10, 13–14, 16–17 are objected to because of the following informalities:
The term “at least one of moisture and air contaminants” are recited multiple times without providing proper antecedent basis in Claims 1–4, 9–10, 13–14, 16–17. It is confusing for example, if the term “air contaminants” refers to the exact same composition in different claims.
Similar issue with the term “moisture”, which is first recited in claim 1, and in claim 6, it is recited as “adsorb moisture” while in claim 7, is it recited as “store the moisture”. Please use “a” “an” “the” properly in claims.
Claim 12 is objected because the term “a building HVAC system” is recited twice, and the second recited term should be “[[a]] the building HVAC system.” Claim 12 is also objected because the term “dehumidified and purified air” should be “the dehumidified and purified air”.
Claim 16 is objected because the term “he building HVAC” should be “he building HVAC system”. Same issue in claim 20.
The claim set is replete with issues like this, please make sure to write claims properly to avoid unnecessary confusion.
Claim Rejections - 35 USC § 112(b)
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.
Claims 8–20 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 is indefinite because it is unclear if the claimed “a plurality of electrothermal swing adsorption apparatuses” each have the same structure of the claimed “electrothermal swing adsorption apparatus in claim 1.
Claims 9–10 are indefinite because it depends on claim 8.
Claim 10 is indefinite because the limitation of “the outputs” lacks antecedent basis.
Claim 12 is indefinite because the term “the at least one moisture and air contaminants” lacks antecedent basis.
Claims 13–20 are indefinite because they depend on claim 12.
Claim 20 is indefinite because it is unclear if the claimed “a plurality of electrothermal swing adsorption apparatuses” each have the same structure of the claimed “electrothermal swing adsorption apparatus in claim 1.
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, 12–17 and 20 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”).
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 at least one 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 at least one 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);
wherein the electrothermal swing adsorption system desorbs at least one of moisture and 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);
wherein the electrothermal swing adsorption apparatus discharges a removal output flow stream of at least one of moisture and 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].
Regarding claim 2:
Modified Lee discloses that the electrothermal swing adsorption apparatus of claim 1, wherein the at least one carbon monolith of the first chamber adsorbs at least one of moisture and air contaminants and the at least one carbon monolith of the second chamber desorbs at least one of moisture and air contaminants simultaneously as the at least one carbon monolith of the first chamber adsorbs at least one of moisture and 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 at least one carbon monolith of the second chamber adsorbs at least one of moisture and air contaminants and the at least one carbon monolith of the first chamber desorbs at least one of moisture and air contaminants simultaneously as the at least one carbon monolith of the first chamber adsorbs at least one of moisture and 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 at least one of moisture and air contaminants such that adsorption occurs in one of the first chamber and the second chamber while desorption occurs in the other of the first chamber and 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 each carbon monolith is 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 comprises a reservoir to store the moisture desorbed from the at least one carbon monolith of the second chamber.
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, further comprising a plurality of electrothermal swing adsorption apparatuses that are arranged in series such that each electrothermal swing adsorption apparatus adsorbs at least one or more of moisture and air contaminants from the feed of the air because 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 electrothermal swing adsorption apparatus discharges the removal output flow stream for at least one of moisture and 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 electrothermal swing adsorption apparatus comprises a reservoir to store the outputs at least one of moisture and 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.
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) comprising:
feeding air from a 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 and 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).
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 at least one of moisture and air contaminants from a second carbon monolith with the purge gas in the second chamber, wherein the second carbon monolith previously adsorbed at least one of moisture and 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 at least one of moisture and 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).
Regarding claim 16:
Modified Lee discloses that the method of claim 13, further comprising reversing the feed of air from the building HVAC from the first chamber to the second chamber and reversing the feed of the purge gas from the second chamber to the first chamber when the first carbon monolith has adsorbed a predetermined amount of the at least one of moisture and 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 reversing the feed of air and purge gas, Lee p. 213).
Regarding claim 17:
Modified Lee discloses that the method of claim 16, further comprising:
adsorbing the at least one of moisture and 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 at least one of moisture and 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 system comprises a plurality of electrothermal swing adsorption apparatuses that are arranged in series, wherein the feed of air of the building HVAC or industrial process air is fed into each electrothermal swing adsorption apparatus in series and each electrothermal swing adsorption apparatus adsorbs moisture or a specific air contaminant (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 prluaity 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.).
Claims 5 and 18–19 are rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail 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 each carbon monolith comprises 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 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).
Claim 11 is rejected under 35 U.S.C. 103 as being obvious over Lee in view of McGrail 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.
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.
Conclusion
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/Qianping He/Examiner, Art Unit 1776
1 Lee is the 13-page NPL dated Jul. 29, 2024.