DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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 8, 9, 15, 17, 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 is unclear in that the CO2 reacts with the products of the hydrolysis. Is ‘added to the hydrolysis product’ meant?
Claim 17 is disjointed from claim 1 in that there is no apparent antecedent.
Claim 18 is unclear. If HX is removed, then the HX concentration has been reduced. It appears that the last 16 words should be deleted.
Claim 15 is a tautology. It appears that atmospheric pressure is meant.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4-10, 12-15, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. 20140093441.
Jones teaches, especially in fig. 1 and paras 35-38, hydrolyzing Ca/Mg Cl2 to make HCl and the corresponding metal hydroxide and adding CO2 to make the carbonate and water. This differs in not teaching ‘brine’ per se, however it is obvious to use it to provide the source of the metal chlorides.
For claim 2, how the brine was made is of no moment, noting that it is an embedded product-by-process limitation.
For claim 4, Mg and Ca are taught.
Claim 5, HCl is made.
For claims 6 and 7, hydroxides are formed.
For claims 8 and 9 as understood, CO2 is injected to form carbonates.
For claims 10 and 12, para 37 suggests 35% MgCl2-65% water mix as appropriate.
For claims 13 and 14, the temperature is 450-500 degrees is suggested. See para 40.
For claim 15, fig. 14 teaches atmospheric pressure (roughly 15 psi absolute). See table 21b.
For claim 18, see para 29, which implies the removal of HCl.
Claims 11, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied to claim 1 above, and further in view of Bhave et al. 20190275473.
Bhave teaches, especially in fig. 2, contacting LiCl brine with water and recovering Li. See also paras. 11, 40 and 48. Using it as the source in the process of Jones is obvious to recover a valuable material from a similar system.
For claim 11, the Li/Na is slightly less than 0.1, by inspection of fig. 5.
For claim 16, fig. 8B teaches 2.5 and 5 hours.
For claim 19, Li is recovered from a brine.
For claim 20, there are other ions in the brine and the initial contact of LiCl and water causes the claimed reaction, even though it is not discussed. Note the figures.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4-7, 13, 15, 19 and 20 are rejected under 35 U.S.C. 102a1 as being anticipated by Bhave.
Bhave, above, teaches in fig. 16 A and para 88 teach a brine containing Li and other cations. While not teaching explicitly other metal chlorides, since the ions are all together, the other metals make halides just as Li does. As noted above, contact with water makes the same reaction.
For claim 2, how the brine was made is of no moment, noting that it is an embedded product-by-process limitation.
For claim 4, Li is taught.
Claim 5-7, HCl and hydroxides are made since the reaction is the same.
For claim 13, 80 degrees is taught in para 112.
For claim 15 the pressure is what the pressure is. See the ‘112 rejection above.
For claim 19, Li is recovered from a brine.
Claim 3, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bhave as applied to claim 1 above, and further in view of Bortya 6143260.
Bhave does not teach brine concentration, however Bortya teaches 6% in col. 3. Doing so in the process of Bhave is obvious to efficiently recover it. Note that claim 3 includes an embedded product-by-process limitation which does not limit the claim.
For claim 12, using a dilute solution is obvious to achieve effective fluid flow and contact with the sorbent.
Claims 1, 2, 4-9 and 12-15 are rejected under 35 U.S.C. 102a1 as being anticipated by ‘Hydrolytic Softening of Ocean Water for CO2 Removal’ article.
The article predates the filing by less than 1 year. It appears to have a different authorship; pg. 20 indicates that Mark Musich contributed to the article. Clarification is requested.
The article teaches on pg. 4 hydrolysis of CaCl2 brine to make HCl and Ca(OH)2.
For claim 2, how the brine was made is of no moment, noting that it is an embedded product-by-process limitation.
For claim 4, Ca is taught.
Claim 5, HCl is made.
For claims 6 and 7, hydroxides are formed.
For claims 8 and 9, CO2 is injected to form carbonates.
For claim 12, the elemental analysis indicates it is mostly water.
For claims 13 and 14, 400 degrees is taught on pg. 4.
For claim 15, the pressure is what the pressure is.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11717802. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common-nearly identical- subject matter.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11554357. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common- nearly identical- subject matter.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11918970. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common-nearly identical- subject matter.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/944466 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common-nearly identical- subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/944485 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common- nearly identical- subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Tiihonen et al. 20150044124 is noted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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