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 .
Specification
The disclosure is objected to because it contains references to claims (e.g. page 11-13). The applicant is reminded that in U.S. patent practice, patent claims are interpreted in light of specification, and therefore, specification constructed by referencing the claims is improper. Further, as content of any of the claims is not certain until after the claims have been allowed, said uncertainty leaves the specification indefinite. The portions of the specification containing claim numbers should be edited to include the required text from the original claims and to remove the references to any claim numbers. Appropriate correction is required. The applicant is reminded that no new matter should be added.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Insights into dual functions of amino acid salts as CO2 carriers and CaCo3 regulators for integrated CO2 absorption and mineralization by Zheng et al. (Zheng) in view of U.S. Patent Publication No. 2011/0277474 by Constantz et al. (Constantz).
In regard to claim 1, Zheng teaches a method comprising: obtaining a water comprising at least a divalent metal ion (abstract, rejected brine, calcium ions; pg. 2, column 2, paragraph 3, simulated brine); introducing an accelerator into the produced water (abstract, potassium glycinate; pg. 2, column 2, paragraph 3); wherein the accelerator comprises a zwitterionic compound (abstract, potassium glycinate; pg. 2, column 2, paragraph 3); introducing a carbon dioxide gas into the produced water (abstract, CO2; pg. 2, column 2, paragraph 3); allowing the carbon dioxide gas to react with the divalent metal ion in the presence of the accelerator to form a carbonate salt of the divalent metal ion (abstract, CaCO3; pg. 2, column 2, paragraph 3); and removing the carbonate salt of the divalent metal ion from the produced water to form a treated water having a lower divalent metal ion concentration than the produced water (pg. 3, column 2, paragraph 2).
Zheng does not explicitly teach the water is a produced water from a subterranean formation. Zheng teaches the water is a rejected brine or a simulated brine (abstract; pg. 2, column 2, paragraph 3). Zheng teaches the reject brine is a by product from saline water desalination (pg. 1, column 1, paragraph 2).
Constantz teaches removing carbonate from a liquid stream ([0021]). Constantz teaches the liquid stream is from a subterranean formation ([0021]). Constantz teaches a brine may be a subterranean brine ([0056]; [0084]; [0116]; [0156]). Constantz teaches removal of carbon dioxide ([0071]). Constantz teaches sources of brine include tailings pond, riverbed, brackish water, sea water, or man-made brines ([0084]; [0116]).
It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to incorporate a brine from a subterranean formation, as taught by Constantz, in the method of Zheng as subterranean formations are a well-known source of brines. Both Zheng and Constantz are directed towards removing carbon dioxide from liquid streams and are the same field of endeavor.
Zheng teaches a reaction of carbon dioxide gas with a calcium ion in the presence of potassium glycinate (abstract; pg. 2, column 2, paragraph 3,). Zheng does not explicitly teach the reaction takes place in the presence of micelles, forming a plurality of micelles from the accelerator, a portion of the carbonate salt forms within the plurality of micelles. However, the instant specification at paragraph [0018]-[0020] utilizes the same chemical components and teaches that a micelle is formed by the accelerator; since the reaction utilizes the same chemical components of the claims it will, inherently, display recited properties of forming a micelle. See MPEP 2112.
In regard to claim 4, Zheng teaches the divalent metal ion comprises a calcium ion, a magnesium ion, or any combination thereof (abstract, CaCO3; pg. 2, column 2, paragraph 3).
In regard to claim 5, Zheng teaches absorbent concentrations along with calcium and carbon dioxide rations (pg. 2, column 2, paragraph 3; pg. 3, column 2, paragraph 2). Zheng teaches carbon dioxide desorption depends on concentrations and conditions (pg. 2, column 2, paragraph 3; pg. 3, column 2, paragraph 2). Zheng does not teach specific concentrations of sodium ions, calcium ions, magnesium ions, or potassium ions; however, as the method cost, carbon dioxide adsorption, and efficiency of operation are variables that can be modified, among others, by adjusting said concentrations of sodium ions, calcium ions, magnesium ions, and potassium ions, the precise concentrations of sodium ions, calcium ions, magnesium ions, and potassium ions would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed concentrations of sodium ions, calcium ions, magnesium ions, and potassium ions cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the concentrations of sodium ions, calcium ions, magnesium ions, and potassium ions in the method of modified Zheng to obtain the desired balance between the construction cost, carbon dioxide adsorption, and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 6, Zheng teaches the produced water further comprises a chloride anion, a bicarbonate anion, a sulfate anion, or any combination thereof (pg. 3, column 2, paragraph 1, magnesium chloride).
In regard to claim 7, Zheng teaches chloride concentration, bicarbonate anions (pg. 3, column 2, paragraph 1, magnesium chloride). Constantz teaches sulfate anions ([0086]). Modified Zheng does not teach specifically teach concentrations of chloride, bicarbonate anions, and sulfate anions; however, as the method cost, carbon dioxide adsorption, and efficiency of operation are variables that can be modified, among others, by adjusting said concentrations of chloride, bicarbonate anions, and sulfate anions, the precise concentrations of chloride, bicarbonate anions, and sulfate anions would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed concentrations of chloride, bicarbonate anions, and sulfate anions cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the concentrations of chloride, bicarbonate anions, and sulfate anions in the method of modified Zheng to obtain the desired balance between the construction cost, carbon dioxide adsorption, and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 8, Zheng teaches the accelerator comprises an amino acid salt (abstract, potassium glycinate; pg. 2, column 2, paragraph 3).
In regard to claim 9, Zheng teaches the amino acid salt is a sodium salt or a potassium salt (abstract, potassium glycinate; pg. 2, column 2, paragraph 3).
In regard to claim 10, Zheng teaches the amino acid salt comprises potassium glycinate (abstract, potassium glycinate; pg. 2, column 2, paragraph 3).
In regard to claim 11, Zheng teaches the carbon dioxide gas is introduced into the produced water by bubbling (pg. 3, column 2, paragraph 1, CO2 gas was bubbled).
In regard to claims 12-13, Zheng does not teach the carbon dioxide gas is introduced into the produced water at a flow rate of about 1 mL/min to about 10 mL/min. Zheng does not teach carbon dioxide gas is introduced into the produced water for a period of time ranging from about 30 min to about 1 hour (reading on claim 13). Constantz teaches the amount of carbon dioxide inside the chamber is dependent on the flow rate, desired pH, and size of cell ([0168]). Constantz optimization of the components is within the scope of the invention ([0168]). Constantz teaches a person having ordinary skill will appreciate flow rates, mass transfer, and heat transfer may vary and may be optimized for systems ([0213]).
As the pH, mass transfer, and system parameters such as efficiency of operation are variables that can be modified, among others, by adjusting said flow rate and time of introduction of carbon dioxide, the precise flow rate of carbon dioxide would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed flow rate of carbon dioxide cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the flow rate of carbon dioxide and time in the method of modified Zheng to obtain the desired balance between the pH, mass transfer, and efficiency of operation (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 14, Zheng teaches the reaction of the carbon dioxide gas with the divalent metal ion is at a temperature of about 25°C to about 75°C (pg. 2, column 2, paragraph 3, 40°C and 60°C).
In regard to claim 15, Zheng teaches the carbonate salt of the divalent metal ion is removed from the produced water by filtration (pg. 3, column 2, paragraph 2, nylon filter).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Insights into dual functions of amino acid salts as CO2 carriers and CaCo3 regulators for integrated CO2 absorption and mineralization by Zheng et al. (Zheng) in view of U.S. Patent Publication No. 2011/0277474 by Constantz et al. (Constantz), as noted above, further in view of WO 2022098411 by Song et al. (Song).
In regard to claim 3, modified Zheng teaches the limitations as noted above.
Modified Zheng does not teach the produced water having a total dissolved solids concentration of about 50,000 mg/L to about 1,000,000 mg/L.
Song teaches a fluid including sea water, produced water, or brine has a salinity of about 60,000 mg/L of total dissolved solids (pg. 19-20). It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize a brine with a total dissolved solids concentration of about about 50,000 mg/L to about 1,000,000 mg/L as this is a known property of brines.
Claims 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Insights into dual functions of amino acid salts as CO2 carriers and CaCo3 regulators for integrated CO2 absorption and mineralization by Zheng et al. (Zheng) in view of U.S. Patent Publication No. 2011/0277474 by Constantz et al. (Constantz) further in view of WO 2022098411 by Song et al. (Song).
In regard to claim 16, Zheng teaches a method comprising: obtaining a water comprising at least a divalent metal ion (abstract, rejected brine, calcium ions; pg. 2, column 2, paragraph 3, simulated brine); introducing potassium glycinate into the produced water (abstract, potassium glycinate; pg. 2, column 2, paragraph 3); bubbling carbon dioxide gas into the produced water (abstract, CO2; pg. 3, column 2, paragraph 1, CO2 gas was bubbled). ); allowing the carbon dioxide gas to react with the one or more metal ions in the presence of the potassium glycinate to form a carbonate salt of the divalent metal ion (abstract, CaCO3; pg. 2, column 2, paragraph 3); and removing the precipitate from the produced water by filtration to form a treated water having a lower divalent metal ion concentration than the produced water (pg. 3, column 2, paragraph 2).
Zheng does not explicitly teach the water is a produced water from a subterranean formation. Zheng teaches the water is a rejected brine or a simulated brine (abstract; pg. 2, column 2, paragraph 3). Zheng teaches the reject brine is a by product from saline water desalination (pg. 1, column 1, paragraph 2).
Constantz teaches removing carbonate from a liquid stream ([0021]). Constantz teaches the liquid stream is from a subterranean formation ([0021]). Constantz teaches a brine may be a subterranean brine ([0056]; [0084]; [0116]; [0156]). Constantz teaches removal of carbon dioxide ([0071]). Constantz teaches sources of brine include tailings pond, riverbed, brackish water, sea water, or man-made brines ([0084]; [0116]).
It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to incorporate a brine from a subterranean formation, as taught by Constantz, in the method of Zheng as subterranean formations are a well-known source of brines. Both Zheng and Constantz are directed towards removing carbon dioxide from liquid streams and are the same field of endeavor.
Modified Zheng does not teach the produced water having a total dissolved solids concentration of about 50,000 mg/L to about 1,000,000 mg/L.
Song teaches a fluid including sea water, produced water, or brine has a salinity of about 60,000 mg/L of total dissolved solids (pg. 19-20). It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize a brine with a total dissolved solids concentration of about about 50,000 mg/L to about 1,000,000 mg/L as this is a known property of brines.
Zheng teaches a reaction of carbon dioxide gas with a calcium ion in the presence of potassium glycinate (abstract; pg. 2, column 2, paragraph 3,). Zheng does not explicitly teach the reaction takes place in the presence of micelles, forming a plurality of micelles from the accelerator, a portion of the carbonate salt forms within the plurality of micelles, introducing potassium glycinate into the produced water to form a plurality of micelles from the potassium glycinate. However, the instant specification at paragraph [0018]-[0020] utilizes the same chemical components and teaches that a micelle is formed by the accelerator; since the reaction utilizes the same chemical components of the claims it will, inherently, display recited properties of forming a micelle. See MPEP 2112.
In regard to claims 18-19, Zheng does not teach the carbon dioxide gas is introduced into the produced water at a flow rate of about 1 mL/min to about 10 mL/min. Zheng does not teach carbon dioxide gas is introduced into the produced water for a period of time ranging from about 30 min to about 1 hour (reading on claim 19). Constantz teaches the amount of carbon dioxide inside the chamber is dependent on the flow rate, desired pH, and size of cell ([0168]). Constantz optimization of the components is within the scope of the invention ([0168]). Constantz teaches a person having ordinary skill will appreciate flow rates, mass transfer, and heat transfer may vary and may be optimized for systems ([0213]).
As the pH, mass transfer, and system parameters such as efficiency of operation are variables that can be modified, among others, by adjusting said flow rate of carbon dioxide and time introduced, the precise flow rate of carbon dioxide and time introduced would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed flow rate of carbon dioxide and time introduced cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the flow rate of carbon dioxide and time introduced in the method of modified Zheng to obtain the desired balance between the pH, mass transfer, and efficiency of operation (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 20, Zheng teaches the carbon dioxide gas is reacted with the one or more divalent metal ions at a temperature of about 25°C to about 75°C (pg. 2, column 2, paragraph 3, 40°C and 60°C).
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
The 112b rejections have been removed in light of the current claim amendments.
In regard to the Applicant’s argument regarding the objection to the instant specification, the Examiner does not find this persuasive.
As noted above: The disclosure is objected to because it contains references to claims (e.g. page 11-13). The applicant is reminded that in U.S. patent practice, patent claims are interpreted in light of specification, and therefore, specification constructed by referencing the claims is improper. Further, as content of any of the claims is not certain until after the claims have been allowed, said uncertainty leaves the specification indefinite. The portions of the specification containing claim numbers should be edited to include the required text from the original claims and to remove the references to any claim numbers. Appropriate correction is required. The applicant is reminded that no new matter should be added.
In regard to the Applicant’s argument Zheng teaches a method in which the order of reagent additions is different than claimed; Zheng teaches a method in which the amino acid salt solution is loaded with CO2 and then CaCl2 (divalent metal salt); the divalent salt in Zheng is introduced to the water last after the amino acid salt and CO2 have already been added; the order of steps in the claim is different; because Zheng introduces CaCl2 there is no motivation to utilize the produced water of Constantz in the method of Zheng; it would be impossible for Zheng to reproduce its experiments using produced water since there would be no way to introduce CaCl2 last, the Examiner does not find this persuasive.
The order of performing process steps is prima facie obvious in the absence of new or unexpected results; the selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). The Applicant has not provided evidence of new or unexpected results.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to incorporate a brine from a subterranean formation, as taught by Constantz, in the method of Zheng as subterranean formations are a well-known source of brines. Both Zheng and Constantz are directed towards removing carbon dioxide from liquid streams and are the same field of endeavor.
In regard to the Applicant’s argument given the order of additions taught in Zheng the position that micelles would inherently form in Zheng is incorrect; because carbamate and HCO3- are formed from the AAS there would no longer be AAS available for forming micelles contrary to the inherency position, the Examiner does not find this persuasive.
The order of performing process steps is prima facie obvious in the absence of new or unexpected results; the selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). The Applicant has not provided evidence of new or unexpected results.
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 KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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, Vickie Kim can be reached at 571-272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KARA M PEO/Primary Examiner, Art Unit 1777
Prosecution Insights