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 .
This application is in response to preliminary amendment filed on 01/09/2026
Claims 1-9 are pending. Applicant has elected Group I, claims 1-7, during the telephone interview on 07/15/2026. Claims 7-8 are withdrawn as non-elected Group II-III claims.
Election/Restriction
4. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to an acid gas absorbents, classified in B01D2252/504.
II. Claim 8, drawn to a method of removing acid gas, classified in B01D53/40.
III. Claim 9, drawn to an acid gas removal apparatus, classified in B01D47/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case Group I’s product can be used in materially different methods that Group II’s, such as in organic synthesis as an emulsifier/phase transfer reagent.
Inventions II and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case process of Group II can utilize different apparatus for an acid gas removal that includes absorption tower, a first heater, a phase separation tank, a second heater, regeneration tower, and third heater. Further Group III’s apparatus can be used for materially different methods than Group II’s such as removing CH4, Hg, and/or moisture from a mixed gas.
Inventions I and III are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I (i.e., Group I) has separate utility such as an emulsifier/phase transfer reagent for organic synthesis. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• the inventions have acquired a separate status in the art in view of their different classification, and/or
• the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and/or
• the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
5. A telephone call was made to attorney Scott Lee on 07/15/2026 to request an oral election to the above restriction requirement and applicant has elected over the phone Group I, claims 1-7 without traverse.
Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
Claims 1-7 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.
Claims 1, 6 recites “the component (A)” and “the component (B)” lacks antecedent basis and further is not clear asto what “the component (A)” and “the component (B)” refers to and how the ratio of B/A is achieved. Clarification is requested. For examining purpose, examiner has interpreted “the component (A)” as the first amine compound represented by formula (a1) or (a2) and “the component (B)” as the second amine compound represented by formula (b).
Regarding dependent claims 2-5 and 7 these claims do not remedy the deficiencies of parent claim 1 noted above and are rejected for the same rationale.
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.
8. Claims 1-7 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Nakano et al (US PGPUB No.: 2023/0104687 A1).
Claims 1-6, Nakano discloses an acid gas absorbent that includes first amine compound comprising of formula 1a (reads on a1) or formula 1b (reads on a2) as disclosed in presently claim 1 where Nakano mention a value of 0 or 1 (reads on p value of presently claimed invention of claim 5), m is number of 1-3 (reads on claim 4), n is a number of 1-4 (reads on claim 3), R1’s are each independently hydrogen or an unsubstituted or substituted alkyl group having 3 or less carbon atoms, R2's are each independently hydrogen or an unsubstituted or substituted alkyl group having 3 or less carbon atoms, and at least two of R2's contained in one -CR3 are not hydrogen, R3 is hydrogen, an unsubstituted alkyl group having 4 or fewer carbon atoms or a substituted alkyl group having 4 or fewer carbon atoms (see paragraphs 0013-0020).
Further Nakano discloses a second amine represent by formula 2 as disclosed in presently claimed invention in step (B)-(see paragraphs 0052-0054, reads on second compound).
Nakano discloses a solvent (paragraphs 0013,0033).
Nakano does not explicitly disclose or suggest B/A ratio of content rate of the component (B) to a content rate of the component (A) is 2.5 to 15 of claim 1 and 3 to 12 of claim 2.
However, Nakano discloses a content rate of the component A is 10 to 60 mass% based on total mass of the acid gas absorbent (see paragraph 0051, reads also on claim 6) and the content rate of the component B is 1-40 mass% (paragraph 0110, for example, if A content rate is 10 mass% and content rate of B is 40 mass% then B/A ratio would be 4). Therefore, it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention that B/A ratio of a content rate of component B to content rate of the component A from 2.5 to 15 of claim 1 and 3 to 12 of claim 2 would be expected unless otherwise unexpected results are shown by applicant.
Regarding Claim 7, Nakano discloses further comprising additive selected from the group consisting of an antioxidant, a pH adjusting agent, an antifoaming agent and an anticorrosive (se claim 7, paragraph 0112).
9. Claims 1-7 are rejected under AIA 35 U.S.C. 103 as being unpatentable over WO2020/169477 (published 8-27-20; PCT filed 2-14-20) (’477) as illustrated by the 2008 Enamine, Ltd. SDS for 2-(piperazin-1-yl)ethan-1-ol (“Enamine”)[1].
Regarding claims 1-6, ‘477 teaches an acid gas absorbent comprising an amine of Formula (I) (corresponding to claim 1’s formula (a2), herein “Formula (I) amine”), such as 2-(4-methylpiperazin-1-yl)ethyl-tert-butylamine (“TBAE-MPIP”, i.e. claim 1’s formula (a2) where a =1 (reads on p=1 of claim 5), m =2 (reads on claim 4), n =2 (reads on claim 3), R1 = H, R2 = Me, and R3 = Me,) and a diluent/solvent, e.g. water or an organic solvent. See ’477 at, e.g., p. 2, ln. 38 to p. 3, ln. 27, p. 9, ln. 27 to p. 10, ln. 36, p. 20, ln. 26-29; claims. 1, 5-6, 10, and 14. While ‘477 does not teach a Formula (I) amine having a ring N-H group (i.e. wherein R1 = H in ‘477, equivalent to wherein R3 = H in claim 1), it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘477’s overall methodology by employing such an amine, given that ‘477’s R1 (corresponding to claim 1 formula (a2)’s R3) Me group is a mere C1 homolog of the corresponding C0 R1 (i.e. claim 1’s formula (a2)’s R3) of H and/or is of a sufficiently similar overall structure such that those of ordinary skill in the art before the effective filing date of the claimed invention would reasonably have expected both compounds to have similar properties. MPEP 2144.09 I-II. The obviousness of employing a Formula (I) amine having such a ring N-H group is further supported by the facts that i) ‘477 teaches that its Formula (I) amine is synthesized by reacting the corresponding hydroxyethyl alcohol with a desired 1o or 2o amine (e.g. t-butylamine, dimethylamine, or methyl-t-butylamine), see ’477 at, e.g., p. 7, ln. 21-35 and pp. 26-27 (Ex. 2), and ii) the corresponding ring N-H-bearing alcohol (i.e. 2-(piperazin-1-yl)ethan-1-ol, aka N-hydroxyethylpiperazine, herein “HEP”) was commercially available for purchase/such use in syntheses before the effective filing date of the claimed invention. See Enamine; MPEP 2144.09 IV. The conclusion of obviousness is further supported by the fact that no evidence of criticality or unexpected results associated with employing such an absorbent featuring a ring N-H group was found in the application-as-filed.
In addition, ‘477 teaches that 3o amines (reads on formula b), such as the particularly preferred MDEA, desirably enable the selective removal of H2S over CO2 when both of such acid gases are present in the mixed gas, as 3o amines (such as MDEA) “do not react directly with CO2” but rather by “a slow reaction with the amine and with water to give a bicarbonate ion.” See id. at, e.g., p. 1, ln. 28 to p. 2, ln. 9 and p. 11, ln. 5 to p. 12, ln. 3 (esp. p. 12, ln. 1-3). Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘477’s overall methodology by including a 3o amine such as the particularly preferred MDEA within its absorbent, to achieve ‘477’s taught advantage of enhanced selective H2S removal when CO2 is also present. MPEP 2143 I.(A), (C), & (G).
‘477 does not explicitly disclose or suggest B/A ratios of a content rate of the component B to a content rate of component A is 2.5 to 15 of claim 1 and 3 to 12 of claim 2.
However, 477’ teaches that its absorbent comprises 10-70 wt% of its Formula (I) amine (reads on content rate of component A of claims 1 and 6) and 5-50 wt% of its 3o amine (20-40 wt% being most preferred, reads on content rate of claim 1 for component B), based on the overall amount of the absorbent therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention that B/A ratio of a content rate of component B to content rate of the component A from 2.5 to 15 of claim 1 and 3 to 12 of claim 2 would be expected unless otherwise unexpected results are shown by applicant (for example when content of B is 50 and A is 10 the B/A ratio is 5). See ‘477 at, e.g., p. 7, ln. 17-19 and p. 11, ln. 5-14; MPEP 2144.05.
Regarding claim 7, ‘477 teaches the appropriateness of its absorbent also comprising additives as an anti-foaming agent, rendering it obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so. See id. at, e.g., p. 18, ln. 15-16.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. 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. 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.
/SMITA S PATEL/Primary Examiner, Art Unit 1732 08/07/2026
[1] NOTE: Enamine is not meant to be combined with ’477, but is merely cited to show that 2-(piperazin-1-yl)ethan-1-ol was commercially available -i.e. its synthesis was known to those of ordinary skill in the art- before the effective filing date of the claimed invention.
Prosecution Insights