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 is in response to the Amendment dated October 8, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Arguments
Claim Rejections - 35 USC § 103
I. Claim(s) 19, 25, 27, 37, 40-41 and 43 have been rejected under 35 U.S.C. 103 as being
unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297).
The rejection of claims 19, 25, 27, 37, 40-41 and 43 under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 20-22 and 34-36 have been rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413).
The rejection of claims 20-22 and 34-36 under 35 U.S.C. 103 as being unpatentable over
WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413) has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 30 and 39 have been rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Torres et al. (US Patent Application Publication No. 2019/0240621 A1).
The rejection of claims 30 and 39 under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Torres et al. has been withdrawn in view of Applicant’s amendment.
IV. Claim(s) 31 has been rejected under 35 U.S.C. 103 as being unpatentable WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413) as applied to claims 20-22 and 34-36 above, and further in view of Eastman et al. (US Patent Application Publication No. 2008/0283411 A1).
The rejection of claim 31 under 35 U.S.C. 103 as being unpatentable WO 2020/010447
(‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413) as applied to claims 20-22 and 34-36 above, and further in view of Eastman et al. has been withdrawn in view of Applicant’s amendment.
V. Claim(s) 32 has been rejected under 35 U.S.C. 103 as being unpatentable over WO
2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Karnwiboon et al. (“Solvent Extraction of Degradation Products in Amine Absorption Solution for CO2 Capture in Flue Gases from Coal Combustion: Effect of Amines,” Energy Procedia (2017 Jul 1), Vol. 114, pp. 1980-1985).
The rejection of claim 32 under 35 U.S.C. 103 as being unpatentable over WO
2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Karnwiboon et al. has been withdrawn in view of Applicant’s amendment.
VI. Claim(s) 33 has been rejected under 35 U.S.C. 103 as being unpatentable WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2018/160888 (‘888).
The rejection of claim 33 under 35 U.S.C. 103 as being unpatentable WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2018/160888 (‘888) has been withdrawn in view of Applicant’s amendment.
VII. Claim(s) 42 has been rejected under 35 U.S.C. 103 as being unpatentable over WO
2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1) and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Jiang et al. (“Ion Exchange Membranes for Electrodialysis: A Comprehensive Review of Recent Advances,“ Journal of Membrane and Separation Technology (2014 Dec 3), Vol. 3, No. 4, pp. 185-205).
The rejection of claim 42 under 35 U.S.C. 103 as being unpatentable over WO
2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. and WO 2005/108297 (‘297) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Jiang et al. has been withdrawn in view of Applicant’s amendment.
Response to Amendment
Claim Rejections - 35 USC § 112
Claims 19-22, 25, 27, 30-37 and 39-43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 19
lines 11-13, “wherein in (d), a total concentration of said one or more carbonate or bicarbonate ions in said electrolyte solution is no more than 2.0 M” is new matter.
Paragraph [0140] of US Patent Application Publication No. 2024/0218530 discloses that:
An electrolyte may comprise a solution with a particular ionic strength or molarity. An electrolyte may have an ionic strength of about 0.01 moles/liter (M), 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or about 3.0M. An electrolyte may have an ionic strength of at least about 0.01M, 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or at least about 3.0M or more. An electrolyte may have an ionic strength of no more than about 3.0M, 2.5M 2.0M, 1.5M, 1.4M, 1.3M, 1.2M, 1.1M, 1.0M, 0.9M, 0.8M, 0.7M, 0.6M, 0.5M, 0.4M, 0.3M, 0.2M, 0.1M, 0.05M, or no more than about 0.01M or less. A salt in an electrolyte may have a molarity of about 0.01 moles/liter (M), 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or about 3.0M. A salt in an electrolyte may have a molarity of at least about 0.01M, 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or at least about 3.0M or more. A salt in an electrolyte may have a molarity of no more than about 3.0M, 2.5M 2.0M, 1.5M, 1.4M, 1.3M, 1.2M, 1.1M, 1.0M, 0.9M, 0.8M, 0.7M, 0.6M, 0.5M, 0.4M, 0.3M, 0.2M, 0.1M, 0.05M, or no more than about 0.01M or less. A salt in an electrolyte may have a molarity in a range from about 0.01M to about 0.1M, about 0.01M to about 0.2M, about 0.01M to about 0.5M, about 0.01M to about 1.0M, about 0.01M to about 3.0M, about 0.1M to about 0.2M, about 0.1M to about 0.5M, about 0.1M to about 1.0M, about 0.1M to about 3.0M, about 0.2M to about 0.5M, about 0.2M to about 1.0M, about 0.2M to about 3.0M, about 0.5M to about 1.0M, about 0.5M to about 3.0M, or about 1.0M to about 3.0M.
There is no relationship between the salt and the one or more carbonate or bicarbonate ions recited in the disclosure.
The Examiner has carefully considered the entire specification as originally filed,
however, there is found no literal support in the specification for the newly added limitation in amended claim 19. Applicant has not provided the page number and line numbers from the
specification as to where the newly added limitations are coming from. Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
Claim 43
lines 1-3, “wherein in (d), the total concentration of said one or more carbonate or bicarbonate ions in said electrolyte solution is less than 1.5 M” is new matter.
Paragraph [0140] of US Patent Application Publication No. 2024/0218530 discloses that:
An electrolyte may comprise a solution with a particular ionic strength or molarity. An electrolyte may have an ionic strength of about 0.01 moles/liter (M), 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or about 3.0M. An electrolyte may have an ionic strength of at least about 0.01M, 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or at least about 3.0M or more. An electrolyte may have an ionic strength of no more than about 3.0M, 2.5M 2.0M, 1.5M, 1.4M, 1.3M, 1.2M, 1.1M, 1.0M, 0.9M, 0.8M, 0.7M, 0.6M, 0.5M, 0.4M, 0.3M, 0.2M, 0.1M, 0.05M, or no more than about 0.01M or less. A salt in an electrolyte may have a molarity of about 0.01 moles/liter (M), 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or about 3.0M. A salt in an electrolyte may have a molarity of at least about 0.01M, 0.05M, 0.1M, 0.2M, 0.3M, 0.4M, 0.5M, 0.6M, 0.7M, 0.8M, 0.9M, 1.0M, 1.1M, 1.2M, 1.3M, 1.4M, 1.5M, 2.0M, 2.5M, or at least about 3.0M or more. A salt in an electrolyte may have a molarity of no more than about 3.0M, 2.5M 2.0M, 1.5M, 1.4M, 1.3M, 1.2M, 1.1M, 1.0M, 0.9M, 0.8M, 0.7M, 0.6M, 0.5M, 0.4M, 0.3M, 0.2M, 0.1M, 0.05M, or no more than about 0.01M or less. A salt in an electrolyte may have a molarity in a range from about 0.01M to about 0.1M, about 0.01M to about 0.2M, about 0.01M to about 0.5M, about 0.01M to about 1.0M, about 0.01M to about 3.0M, about 0.1M to about 0.2M, about 0.1M to about 0.5M, about 0.1M to about 1.0M, about 0.1M to about 3.0M, about 0.2M to about 0.5M, about 0.2M to about 1.0M, about 0.2M to about 3.0M, about 0.5M to about 1.0M, about 0.5M to about 3.0M, or about 1.0M to about 3.0M.
There is no relationship between the salt and the one or more carbonate or bicarbonate
ions recited in the disclosure.
The Examiner has carefully considered the entire specification as originally filed, however, there is found no literal support in the specification for the limitation in amended claim 43. Applicant has not provided the page number and line numbers from the specification as to where the newly added limitations are coming from. Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
Claim Rejections - 35 USC § 103
I. Claim(s) 19, 25, 27, 37, 40-41 and 43 is/are rejected under 35 U.S.C. 103 as being
unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938).
Regarding claim 19, WO ‘447 teaches a method for generating one or more carbon products, comprising:
(a) providing a stream comprising carbon dioxide (CO2) [= the CO2-containing gas (14)]
(page 12, line 11; and Fig. 1);
(b) in a contactor, contacting said stream with an electrolyte solution to capture at least a subset of said CO2 from said stream into said electrolyte solution (= the CO2 capture unit or absorption unit (10) can be a gas/liquid contactor where the CO2-containing gas (14) can be contacted with an aqueous absorption solution (16)) [page 12, lines 10-12], thereby obtaining one or more carbonate or bicarbonate ions (= upon contacting the CO2-containing gas with the
absorption solution, the CO2 is dissolved or absorbed in the aqueous absorption solution and
then transformed, at least partially, into bicarbonate ions (HCO3-)) [page 12, lines 12-15];
(c) directing said electrolyte solution to an electrochemical stack (= the conversion experiments were conducted using the Berlinguette Flow Cell as described in WO 2019/051609, developed by the Berlinguette group at University of British Columbia) [page 21, lines 19-21] comprising an anode (= the anode) and a cathode (= the cathode) [page 20, lines 9-13], wherein said electrolyte solution comprises said one or more carbonate or bicarbonate ions (= the aqueous absorption solution containing the bicarbonate ions (20) can then be pumped through a pump (22) towards the conversion unit (12). The conversion unit (12) comprises an electrolytic cell) [page 12, lines 18-20]; and
(d) while a voltage is applied between said anode and said cathode (= the experiments
were conducted at a temperature of 25°C at a voltage ranging from 3 to 3.5 V) [page 21, lines 21-22] reducing said one or more carbonate or bicarbonate ions to generate said one or more carbon products (= in the electrolytic cell, the bicarbonate ions present in the bicarbonate loaded aqueous solution (20) can be transformed into a gaseous stream comprising CO and H2 (28)) [page 12, lines 21-23].
The method of WO ‘447 differs from the instant invention because WO ‘447 does not
disclose:
a. Wherein the stream is an atmospheric air stream.
b. Wherein said atmospheric air stream is not from an industrial source.
WO ‘447 teaches contacting a CO2-containing gas with an aqueous absorption solution
to produce a bicarbonate loaded stream and a CO2-depleted gas (page 2, lines 24-25).
According to some embodiments, the CO2-containing gas can be a power and/or steam plant flue gas, an industrial exhaust gas, or a chemical production flue gas. In some embodiments, the CO2-containing gas can be a flue gas from a coal power and/or steam station, a flue gas from a gas power and/or steam station, a flue gas from metals production, a flue gas from a cement
plant, a flue gas from a pulp and paper mill, an emission from lime kilns, a flue gas from a bicarbonate unit or a flue gas from a soda ash mill (page 11, line 26, to page 12, line 2).
Olah teaches that:
The present invention discloses an environmentally harmonious and efficient method of converting any carbon dioxide source to methanol. Suitable carbon dioxide sources can be industrial exhaust streams from hydrocarbon (fossil fuel) burning power plants, cement plants natural gas wells, and the like, as well as the atmosphere. The use of this process of converting carbon dioxide to methanol and/or dimethyl ether and their products will also lead to a significant reduction of carbon dioxide, a major greenhouse gas, in the atmosphere thus mitigating global warming (page 6-7, [0054])
The capture and use of existing atmospheric CO2 allows chemical recycling of CO2 as a
renewable and unlimited source of carbon. CO2 absorption facilities can be placed proximate to a hydrogen production site to enable subsequent methanol synthesis. Although the CO2 content in the atmosphere is low (only 0.037%), the atmosphere offers an abundant and unlimited supply because CO2 is recycled. For using atmospheric carbon dioxide efficiently, CO2 absorption facilities are needed. This can be addressed by using efficient CO absorbents such as polyethyleneimines, polyvinylpyridines, polyvinylpyrroles, etc., on suitable solid carriers (e.g., active carbon, polymer, silica or alumina), which allow absorption of even the low concentration of atmospheric CO2. CO2 can also be captured using basic absorbents such as calcium hydroxide (Ca(OH)2) and potassium hydroxide (KOH), which react with CO2 to form calcium carbonate (CaCO3) and potassium carbonate (K2CO3), respectively. CO absorption is an exothermic reaction, which liberates heat, and is readily achieved by contacting CO2 with an adequate base (page 8, [0076]).
WO ‘297 teaches capturing CO2 directly from the atmosphere (page 27, line 15).
Accordingly, sodium hydroxide provides a sufficient driving force to effectively collect CO2 from ambient air. Even-though a lower binding energy might be desirable, the high binding energy of chemical sorbents proves useful in absorbing CO2 from streams with low partial pressures of CO2. As an alternative with a weaker binding energy, sodium or potassium carbonate buffer solutions can be used as sorbents. In this case the absorption can be described by:
CO2 (g) + CO32- + H2O (I) → 2 HCO3- (4)
(page 28, lines 1-8).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the stream described by WO ‘447 with
wherein the stream is an atmospheric air stream; and wherein said atmospheric air stream is not from an industrial source because atmospheric CO2 is an alternative carbon dioxide source to industrial exhaust streams to be captured using basic absorbents and converted to bicarbonate ions.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different field based on the function or property of the known material if the
variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the
prior art elements will perform their expected functions to achieve their expected results when combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
c. Wherein in (d), a total concentration of said one or more carbonate or bicarbonate ions in said electrolyte solution is no more than 2.0 M.
WO ‘447 teaches CO2 + OH- → HCO3- (page 15, Equation 1).
Olah teaches that CO2 can also be captured using basic absorbents such as calcium hydroxide (Ca(OH)2) and potassium hydroxide (KOH), which react with CO2 to form calcium carbonate (CaCO3) and potassium carbonate (K2CO3), respectively (page 8, [0076]).
WO ‘297 teaches that accordingly, sodium hydroxide provides a sufficient driving force to effectively collect CO2 from ambient air (page 28, lines 1-2).
WO ‘938 teaches that:
In some embodiments, the aqueous solution provided at the fluid inlet of the contactor comprises a strong base. In some embodiments the aqueous solution has a pH exceeding pH 8. For example the pH may be in the range of 8 to 10. The aqueous solution may comprise NaOH or KOH. The aqueous solution may optionally comprise catalyst that catalyzes reaction of CO2 to yield carbonate or bicarbonate ions. The catalyst may, for example, comprise an enzyme catalyst such as a carbonic anhydrase. The enzyme catalyst may be operative at temperatures
above 100° C (ρ [0014]).
The aqueous solution precipitates a carbonate and/or bicarbonate after contacting the gas in some embodiments. The concentration of carbonate and/or bicarbonate ions in the aqueous solution may, for example, be in the range of 0.5M to 3M (ρ [0015]).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because reacting an aqueous solution comprising NaOH or KOH with CO2 yields carbonate or bicarbonate ions wherein the concentration of carbonate and/or bicarbonate ions in the aqueous solution ranges from 0.5M to 3M.
Regarding claim 25, WO ‘447 teaches wherein said cathode comprises a catalyst (= the cathode can comprise a silver-coated carbon gas diffusion layer) [page 20, line 11].
Regarding claim 27, WO ‘447 teaches wherein said catalyst comprises one or more metals selected from the group consisting of copper, nickel, platinum, iridium, ruthenium,
palladium, tin, silver, and gold (= the cathode can comprise a silver-coated carbon gas diffusion
layer) [page 20, line 11].
Regarding claim 37, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose wherein said one or more carbon products comprise ethanol.
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because WO ‘447 teaches a method in a similar manner as presently claimed. Similar processes can reasonably be expected to yield
products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the
reference (MPEP § 2116.01).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 40, WO ‘447 teaches wherein in (d), said cathode operates at a current density of at least 100 mA/cm2 (= in some implementations of the process, the electrochemical conversion can be conducted at a current density ranging from 20 to 200 mA۰cm-2) [page 6,
lines 15-16].
Regarding claim 41, WO ‘447 teaches wherein said electrochemical stack comprises a
bipolar membrane positioned between said anode and said cathode (= in some embodiments,
the electrolytic cell can be a bipolar membrane-based electrolytic cell (page 20, lines 9-10); and
the conversion experiments were conducted using the Berlinguette Flow Cell as described in WO 2019/051609, developed by the Berlinguette group at University of British Columbia (page
21, lines 19-21)).
Regarding claim 43, the method of WO ‘447 differs from the instant invention because WO ‘447 does not disclose wherein in (d), the total concentration of said one or more carbonate or bicarbonate ions in said electrolyte solution is less than 1.5 M.
WO ‘447 teaches CO2 + OH- → HCO3- (page 15, Equation 1).
Olah teaches that CO2 can also be captured using basic absorbents such as calcium hydroxide (Ca(OH)2) and potassium hydroxide (KOH), which react with CO2 to form calcium carbonate (CaCO3) and potassium carbonate (K2CO3), respectively (page 8, [0076]).
WO ‘297 teaches that accordingly, sodium hydroxide provides a sufficient driving force to effectively collect CO2 from ambient air (page 28, lines 1-2).
WO ‘938 teaches that:
In some embodiments, the aqueous solution provided at the fluid inlet of the contactor comprises a strong base. In some embodiments the aqueous solution has a pH exceeding pH 8. For example the pH may be in the range of 8 to 10. The aqueous solution may comprise NaOH or KOH. The aqueous solution may optionally comprise catalyst that catalyzes reaction of CO2 to yield carbonate or bicarbonate ions. The catalyst may, for example, comprise an enzyme catalyst such as a carbonic anhydrase. The enzyme catalyst may be operative at temperatures
above 100° C (ρ [0014]).
The aqueous solution precipitates a carbonate and/or bicarbonate after contacting the gas in some embodiments. The concentration of carbonate and/or bicarbonate ions in the aqueous solution may, for example, be in the range of 0.5M to 3M (ρ [0015]).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because reacting an aqueous solution comprising NaOH or KOH with CO2 yields carbonate or bicarbonate ions wherein the concentration of carbonate and/or bicarbonate ions in the aqueous solution ranges from 0.5M
to 3M.
II. Claim(s) 20-22 and 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over
WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated herein.
Regarding claim 20, the method of WO ‘447 differs from the instant invention because WO ‘447 does not disclose subsequent to (d), separating said one or more carbon products from said electrolyte solution.
WO ‘447 teaches that the conversion experiments were conducted using the Berlinguette Flow Cell as described in WO 2019/051609, developed by the Berlinguette group at University of British Columbia (page 21, lines 19-21).
WO ‘609 teaches that the electrolyzer outlet was introduced into a condenser before being vented directly into the gas-sampling loop of the gas chromatograph (GC, Perkins Elmer; Clarus 580) [pages 22-23, [0111]].
WO ‘413 teaches that:
It is further preferred that the reduced carbon dioxide product or product mixture is gaseous (such as gaseous carbon monoxide, methane or ethylene). This gives the advantage in that separation of the product is easier as compared to the separation of liquid reduction products (page 17, lines 16-19).
The apparatus may further comprise a separation unit, such as a stripper unit, connected to the electrochemical cell (page 21, lines 23-24).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method described by WO ‘447 with
subsequent to (d), separating said one or more carbon products from said electrolyte solution because connecting a separation unit to the electrochemical cell separates a product from the
product mixture.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different field based on the function or property of the known work if the variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the
prior art elements will perform their expected functions to achieve their expected results when combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
Regarding claim 21, WO ‘447 teaches directing at least a portion of said electrolyte
solution back to said contactor to capture additional CO2 (= then, the mixture of the
bicarbonate depleted stream (16) and separated carbonic anhydrase or analogue thereof (34) can be sent back to the gas/liquid absorption unit (10)) [page 17, lines 20-22].
Regarding claim 22, WO ‘609 teaches wherein said separating is performed in absence of a distillation unit (= the electrolyzer outlet was introduced into a condenser before being vented directly into the gas-sampling loop of the gas chromatograph (GC, Perkins Elmer; Clarus 580)) [pages 22-23, [0111]].
WO ‘413 teaches wherein said separating is performed in absence of a distillation unit (= the apparatus may further comprise a separation unit, such as a stripper unit, connected to the electrochemical cell) [page 21, lines 23-24].
Regarding claim 34, WO ‘447 teaches wherein said portion of said electrolyte solution reenters said electrochemical stack prior to being directed back to said contactor (= hence, in a continuous process) [page 10, lines 21-24; and page 12, line 32].
Regarding claim 35, WO ‘447 teaches wherein a pH of said portion of said electrolyte
solution is increased upon said reentry into said electrochemical stack (= a pH of the aqueous adsorption solution can range from 8.5 to 10.5) [page 5, lines 15-17].
Regarding claim 36, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose wherein a concentration of one or more hydroxide ions in said portion of said electrolyte solution is increased upon said reentry into said electrochemical stack.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because WO ‘447 teaches a method in a
similar manner as presently claimed. Similar processes can reasonably be expected to yield
products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the
reference (MPEP § 2116.01).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
III. Claim(s) 30 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as
applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Torres et al. (US Patent Application Publication No. 2019/0240621 A1).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated herein.
Regarding claim 30, the method of WO ‘447 differs from the instant invention because WO ‘447 does not disclose wherein prior to entering said contactor, said electrolyte solution has a pH from about 5 to about 7.
Torres teaches that:
FIG. 2 shows one embodiment of a system for CO2 capture and hydrogen generation 40. FIG. 2 includes a carbon capture device 42, which may be a unit operation open to an
atmosphere, where the atmosphere is whatever gaseous environment in which the unit operates. This may be open air, a mixture of gasses, the exhaust conduit of a combustion process, etc. The carbon capture unit captures the CO2 from the atmosphere in an alkaline capture solution, as discussed above. The alkaline capture solution 44, in one embodiment having a pH of 10.6, then flows to a series of electrolyzers, starting with an initial electrolyzer 46. Each electrolyzer in the series raises the acidity of the solution until it reaches a point at which the captured CO2
bubbles out of the capture solution after passing through a final electrolyzer in the series 48 and entering a flash tank 50. As mentioned before, it is possible that the initial electrolyzer, the final
electrolyzer, and the return electrolyzer are the same electrolyzer, meaning that the series of electrolyzers is a series of 1 (ρ [0030]).
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because electrolyzing raises the acidity
of the solution captured from the CO2 from the atmosphere in an alkaline capture solution of a
carbon capture unit.
Regarding claim 39, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose wherein subsequent to (b), said electrolyte solution has a pH of at
least 8.
WO ‘447 teaches that a pH of the aqueous adsorption solution can range from 8.5 to 10.5 (page 5, lines 16-17).
The invention as a whole would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention because the CO2 is captured from the atmosphere into an aqueous adsorption solution having a pH ranging from 8.5 to 10.5.
Furthermore, WO ‘447 teaches a method in a similar manner as presently claimed. Similar processes can reasonably be expected to yield products which inherently have the same
properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the
reference (MPEP § 2116.01).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical
comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
IV. Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as applied to claims
19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2019/160413 (‘413) as applied to claims 20-22 and 34-36 above, and further in view of Eastman et al. (US Patent Application Publication No. 2008/0283411 A1).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated
herein.
Regarding claim 31, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose directing said one or more carbon products to a condenser.
WO ‘447 teaches that the conversion experiments were conducted using the Berlinguette Flow Cell as described in WO 2019/051609, developed by the Berlinguette group at University of British Columbia (page 21, lines 19-21).
WO ‘609 teaches that the electrolyzer outlet was introduced into a condenser before being vented directly into the gas-sampling loop of the gas chromatograph (GC, Perkins Elmer; Clarus 580) [pages 22-23, [0111]].
Eastman teaches that:
The hydrocarbons produced at the cathode of the electro-hydrocarbon device may be emitted from the device either as liquids or, because it may be necessary to operate the device at temperatures high enough to vaporize the alcohol, as gases. If the hydrocarbons produced at
the cathode of the electro-hydrocarbon device are emitted as gases, then the hydrocarbons subsequently can be condensed to a liquid as is commonly known in the art (page 11, [0251]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by WO ‘447 by
directing said carbon product to a condenser because products produced at the cathode of an
electrolytic device emitted as gases are liquified by condensing.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different field based on the function or property of the known work if the
variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when
combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
V. Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Karnwiboon et al. (“Solvent Extraction of Degradation Products in Amine Absorption Solution for CO2 Capture in Flue Gases from Coal Combustion: Effect of Amines,” Energy Procedia (2017 Jul 1), Vol. 114, pp.
1980-1985).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated herein.
Regarding claim 32, the method of WO ‘447 differs from the instant invention because WO ‘447 does not disclose wherein said electrolyte solution further comprises one or more
formate ions.
Karnwiboon teaches that:
In the presence of CO2 loading, the extraction efficiency of formate decreased due to competitive reactions between carbamate (R1R2NCOO-), bicarbonate (HCO3-) and carbonate (CO32-) with the extractant (page 1980, abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte solution described by WO ‘447 with wherein said electrolyte solution further comprises one or more formate ions because formate is a competitive reaction between carbamate (R1R2NCOO-), bicarbonate (HCO3-) and carbonate (CO32-) with the extractant.
VI. Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of WO 2018/160888 (‘888).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated herein.
Regarding claim 33, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose wherein said contactor comprises a direct air capture unit.
Olah teaches that although the CO2 content in the atmosphere is low (only 0.037%), the atmosphere offers an abundant and unlimited supply because CO2 is recycled. For using atmospheric carbon dioxide efficiently, CO2 absorption facilities are needed (page 8, [0076]).
WO ‘888 teaches that:
Capturing CO2 directly from the atmosphere, referred to as direct air capture (DAC), is one of several means of mitigating anthropogenic greenhouse gas emissions and has attractive economic perspectives as a non-fossil, location-independent CO2 source for the commodity market and for the production of synthetic fuels. The specific advantages of CO2 capture from the atmosphere include: (i) DAC can address the emissions of distributed sources (e.g. cars, planes), which account for a large portion of the worldwide greenhouse gas emissions and can currently not be captured at the site of emission in an economically feasible way; (ii) DAC can address emissions from the past and can therefore create truly negative emissions; and (iii) DAC systems do not need to be attached to the source of emission but are rather location
independent and can for example be located at the site of further CO2 processing (page 3, lines 6-18).
Contact between the capture liquid and the DAC generated CO2-containing gas occurs under conditions such that a substantial portion of the CO2 present in the DAC generated CO2-containing gas goes into solution, e.g., to produce bicarbonate ions. By substantial portion is meant 10 % or more, such as 50% or more, including 80% or more (page 11, lines 1-4).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the contactor described by WO ‘447 with wherein said contactor comprises a direct air capture unit because direct air capture (DAC) captures CO2 directly from the atmosphere. The CO2 present in the DAC generated CO2-
containing gas goes into solution, e.g., to produce bicarbonate ions.
Known work in one field of endeavor may prompt variations of it for use in either the
same field or a different field based on the function or property of the known work if the
variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when
combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
VII. Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/010447 (‘447) in view of WO 2019/051609 (‘609), Olah et al. (US Patent Application Publication No. 2006/0235091 A1), WO 2005/108297 (‘297) and WO 2019/204938 (‘938) as
applied to claims 19, 25, 27, 37, 40-41 and 43 above, and further in view of Jiang et al. (“Ion Exchange Membranes for Electrodialysis: A Comprehensive Review of Recent Advances,“ Journal of Membrane and Separation Technology (2014 Dec 3), Vol. 3, No. 4, pp. 185-205).
WO ‘447, WO ‘609, Olah, WO ‘297 and WO ‘938 are as applied above and incorporated herein.
Regarding claim 42, the method of WO ‘447 differs from the instant invention because
WO ‘447 does not disclose wherein said bipolar membrane has a thickness of no more than about
200 µm.
WO ‘447 teaches that in some embodiments, the electrolytic cell can be a bipolar membrane-based electrolytic cell (page 20, lines 9-10).
Jiang teaches the main properties of some commercially available ion exchange
membranes where FuMA-Tech GmbH’s BPM FBM membrane has thicknesses in the range of
180-200 µm (page 187, Table 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the bipolar membrane described by WO
‘447 with wherein said bipolar membrane has a thickness of no more than about 200 µm
because commercially available bipolar membranes such as FuMA-Tech GmbH’s BPM FBM membrane has thicknesses in the range of 180-200 µm.
Known work in one field of endeavor may prompt variations of it for use in either the
same field or a different field based on the function or property of the known material if the
variations are predictable to one of ordinary skill in the art (MPEP § 2141 and § 2141.03).
The motivation to combine prior art references can arise from the expectation that the
prior art elements will perform their expected functions to achieve their expected results when
combined for their commonly known purpose (MPEP § 2141 and § 2144.07).
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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/EDNA WONG/Primary Examiner, Art Unit 1795 October 27, 2025