18DETAILED 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 11/14/2023.
Claims 21-40 are pending. Applicant has cancelled claims 1-20. Applicant has elected Group II, Claims 33-36 without traverse during telephone interview.
Claim Objections
4. Claim 1-20 are objected to because of the following informalities:
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 1-20 have been renumbered to claims 21-40.
It is suggested to amend “the hydroxide-rich” to “the at least one hydroxide-rich” to ensure proper antecedent basis and to ensure consistency in the claim 13, line 5 (new claim 33).
Appropriate corrections are required.
Election/Restriction
5. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21-32, drawn to a method for capturing and sequestering carbon dioxide (CO2), classified in C01B32/60.
II. Claims 33-36, drawn to a method for capturing and sequestering carbon dioxide (CO2), classified in B01D61/445.
III. Claims 37-40, drawn to a method for capturing and sequestering carbon dioxide, classified in b01d53/965.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, Invention II requires additional component such as receiving an input liquid comprising salt, water and at least one of mineral salt and a metal, precipitating the at least one of the mineral and metal from the at least one hydroxide-rich stream; and precipitating air-captured CO2 from the liquid carbonate solution which are not required by invention I whereas invention I only requires input liquid comprising water and a salt, performing an electrochemical process on the input liquid to produce at least one of hydroxide-rich stream and capturing CO2 from air using the hydroxide-rich stream and a passive air capture system, thereby producing a liquid carbonate solution containing air-captured CO2.
Inventions I and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, Invention III require performing an electrochemical process comprising electrolysis with an electrolysis unit to produce at least one hydroxide-rich stream and precipitating air-captured CO2 from the liquid carbonate solution which is not required in invention I whereas invention I only requires receiving an input liquid comprising water and a salt, performing electrochemical process on the input liquid to produce at least one hydroxide-rich stream, and capturing CO2 from air using the hydroxide-rich stream and a passive air capture system, thereby producing a liquid carbonate solution containing air-captured CO2.
Inventions II and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, Invention II requires receiving an input liquid comprising at least one of mineral and a metal, performing an electrochemical process on the input liquid to produce at least one hydroxide-rich stream, precipitating the at least one of the mineral and metal from the at least one hydroxide-rich stream which are not required in Invention III. While Invention III requires only input liquid comprising water and a salt, performing an electrochemical process comprising electrolysis with an electrolysis unit to produce at least one hydroxide-rich stream which is not required by invention II.
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.
6. A telephone call was made to Mr. Matthew Warner on 03/20/2026 to request an oral election to the above restriction requirement and applicant has elected Group II, Claims 33-36 without traverse. Group I and III claims will be withdrawn.
7. 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 § 103
8. 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.
9. Claims 33-34 are rejected under 35 U.S.C. 103 as obvious over Lu et al (US PGPUB No.: 20210001270 A1, IDS cited reference by applicant) in view of Harrison US PGPUB No.: 20140301922 A1, IDS cited reference by applicant).
Regarding Claims 33-34, Lu discloses methods that are useful in capture and sequestering of one or more moieties (i.e., carbon dioxide, abstract, paragraph 0016) from a gas stream (i.e., direct air capture, see abstract, paragraph 0016) comprising receiving an input liquid comprising water and salt (paragraphs 0016, 0045). Lu discloses electrolysis unit can include reacting the one or more metal salts with water (reads on input liquid comprising salt, water) under electrolysis conditions to regenerate the alkali solution and form one or more further chemicals. Lu further discloses electrolysis unit may include membrane cell to maintain separation of formed hydrogen and halogen species. Lu further discloses for example, the electrolysis unit 50 where NaCl and water can be added in the presence of positive and negative electrodes to form hydrogen gas, sodium hydroxide(i.e., reads on hydroxide-rich, paragraph 0045) and then recycled back into scrubbing unit 15 for CO2 capture from input gas (reads on claimed limitation of performing electrochemical process on input liquid to produce at least one hydroxide rich stream and capturing CO2 from air using the hydroxide-rich stream and passive air capture system producing a carbonate solution, paragraphs 0016, 0040, 0045-0047, figure 1). Lu discloses reacting the carbonate solution with halogenated compound to form one or more metal salts and output a stream comprising carbon dioxide and electrolysis is configured to react the one or more metal salts with water to regenerate alkali solution (i.e., NaOH) and form one or more further chemicals wherein alkali solution comprises one or more metal salts, metal being chosen from alkali metals, alkaline earth metals (paragraph 0016). Further Lu discloses subjecting portion of carbonate solution to crystallization process to separate one or more solids from carbonate solution and output alkali solution suitable for recycle back to scrubbing unit (reads on claimed limitation of precipitation, paragraphs 0016-0020 0040-0048, figure 1).
Lu does not explicitly disclose or suggest input liquid comprising at least one of a mineral and a metal.
However, Harrison teaches a method for capturing and sequestering carbon dioxide (CO2) comprising receiving input liquid 30 comprising a salt, silica (i.e., mineral,) and lithium (i.e., metal) and performing electrochemical process 32 on the input liquid to produce at least one hydroxide rich stream 36 (i.e., LiOH, reads on claim 34) and capturing CO2 from air (paragraph 0083) using the hydroxide-rich stream and a passive air capture system 38, thereby producing a liquid carbonate solution containing air-captured CO2, and precipitating solid carbonate and/or slurry carbonate (paragraphs 0011, 0013,0027, 0030, 0042, 0055-0059, 0083, fig.3)
Therefore, it would have been obvious to one of the ordinary skill in the art before effective filing date of applicant invention to modify the method of Lu with Harrison to include input liquid comprising silica as mineral which provides simplified removal of interfering ions from brines for the production of lithium carbonate (paragraph 0009).
10. Claim 35 is rejected under 35 U.S.C. 103 as obvious over Lu et al (US PGPUB No.: 20210001270 A1, IDS cited reference by applicant) in view of Harrison US PGPUB No.: 20140301922 A1, IDS cited reference by applicant) and in further view of Wright et al (US PGPUB No.: 20060051274 A1, IDS cited reference by applicant) .
Regarding Claim 35, Lu and Harrison disclose a method for capturing and sequestering carbon dioxide as disclosed above in claim 33 which includes the electrochemical process but does not explicitly disclose or suggest electrochemical process comprises bipolar electrodialysis.
However, Wright discloses electrochemical processes are all based the separation of salt into its acid and base, where the acid and base stay in solution by means of electrodialysis with bipolar membranes (paragraphs 0011, 0066).
Therefore, it would have been obvious to one of the ordinary skill in the art before effective filing date of applicant invention to modify the method of Lu and Harrison with Wright to include bipolar electrodialysis membrane during the electrochemical process step to improve and streamline process designs for capture of carbon dioxide from air as taught by Wright (paragraph 0012).
Allowable Subject Matter
11. Claim 36 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/SMITA S PATEL/Examiner, Art Unit 1732 04/28/2026
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