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 .
Election/Restriction
Applicant’s 7/21/26 election without traverse of Group I (claims 1-8) is acknowledged. Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites “wherein the main absorbent is contained at 30 to 50 parts by weight with respect to 100 parts by weight of the composition” and depends from claim 6, which recites “wherein a mixture of the reaction accelerator and the main absorbent is contained at 30 to 50 parts by weight with respect to 100 parts by weight of the composition”. (emphases supplied)
MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.).
Since claim 8 may be infringed without necessarily also infringing claim 6 (i.e. by the presence of 30-50 wt% of the main absorbent, which leaves no concentration ‘room’ for the reaction accelerator of claim 6), claim 8 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
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, 3, and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacquin et al., US 2011/0176981 (published 7/21/11) (“Jacquin”). Regarding claims 1, 3, and 5, Jacquin discloses a CO2 absorbent composition, comprising a 3o or sterically hindered absorbent amine such as MDEA, and an activator such as MEA. See Jacquin at, e.g., par. 51-52 and 89-90. While Jacquin does not disclose a specific example simultaneously employing MDEA and MEA, Jacquin’s disclosure of MDEA being activated with “activators known to the person skilled in the art, such as [MEA] and 2-HydroxyEthylpiperazine” is considered sufficient to disclose an MDEA + MEA combination such that it would be ‘at once envisaged’ by those of ordinary skill in the art. MPEP 2131.02 III, citing, e.g., Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).
Regarding claims 6-8, Jacquin discloses that its composition comprises 10-90 wt% 3o or sterically hindered absorbent amine (e.g. MDEA as detailed above), with 20-60 wt% being preferred and 30-50 wt% being more preferred, and 1-50 wt% activator (e.g. MEA as detailed above), with <30 wt% being preferred and <15 wt% being more preferred. See Jacquin at, e.g., par. 30-33, 55-56, and 73. 40 wt% MDEA and 5 wt% MEA are specifically employed (albeit not simultaneously, though such a composition is nevertheless anticipated as detailed above). See id. at, e.g., Ex. 1 (par. 89-95 and associated table). Said disclosures are regarded as meeting claim 8 notwithstanding the 35 U.S.C. 112(d)/4th par. rejection thereof detailed above.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacquin as illustrated by Yoda et al., US 2022/0073772 (published 3/10/22) (“Yoda”).1 Regarding claim 4, Jacquin discloses a composition comprising MDEA + MEA as detailed above. While Jacquin is silent as to its MDEA’s pKa, Yoda notes 8.5 is MDEA’s pKa. See Yoda at, e.g., par. 76.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claim 2 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Jacquin. Regarding claim 2, Jacquin teaches that an “excellent activator” for its composition can be benzylamine (i.e. PhCH2NH2). See Jacquin at, e.g., par. 27-28, 30-33, 73, and 77-78. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ benzylamine as Jacquin’s activator either i) in concert with, and/or ii) instead of, its benzylamine, especially given Jacquin’s teaching that benzylamine is an “excellent activator” therefor. MPEP 2143 I.(G). Regarding i), it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06. Regarding ii), selecting between two or more materials or processes is an obvious choice if their equivalence for the given purpose was known in the art when the invention was made. See MPEP 2144.06 II. Further, "[a]n express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious." Id., citing In re Fout, 675 F.2d 297 (CCPA 1982).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/DANIEL BERNS/ September 15, 2026
Primary Examiner
Art Unit 1736
1 Note: as Yoda is cited merely to show an inherent property of Jacquin’s MDEA, rejection under 35 U.S.C. 102(a)(1) is proper even though an additional reference is cited. MPEP 2131.01 III.
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