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 .
Status of Application
Claims 1-9 and 11-19 are pending and presented for examination. Claims 1-9 were amended, claim 10 cancelled, and claims 11-19 newly added via the instant amendment dated 27 July 2026 which is acknowledged and entered.
Response to Arguments
Applicant’s remarks dated 27 July 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claim 10 under 35 U.S.C. 101 is WITHDRAWN as the claim was cancelled.
The rejection of claims 1-9 under 35 U.S.C. 112(b) is WITHDRAWN as “mainly” was removed from claim 1.
The rejection of claims 1-9 under 35 U.S.C. 102(a)(1) over Farina 1 is WITHDRAWN over the instant amendment requiring a gas inlet and outlet and from which a gaseous reaction product comprising the low molecular weight hydrocarbons is continuously outputted via the motion of the beads in the reactor.
The traversal is that inter alia Farina 1 does not disclose the amended language as Farina 1 is a batch process (Remarks at 5) which is persuasive as Farina 1 does not disclose a continuous process but is instead batchwise. While Farina 1 does disclose such, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and Applicants have not shown an unexpected result (or other secondary considerations of non-obviousness) with respect to the continuous process.
The rejection of claims 1-5 and 7-9 under 35 U.S.C. 102(a)(1) over Farina 2 is WITHDRAWN over the instant amendment requiring a gas inlet and outlet and from which a gaseous reaction product comprising the low molecular weight hydrocarbons is continuously outputted via the motion of the beads in the reactor.
The traversal is that inter alia Farina 2 does not disclose the amended language as Farina 2 is a batch process (Remarks at 5) which is persuasive as Farina 2 does not disclose a continuous process but is instead batchwise. While Farina 2 does disclose such, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and Applicants have not shown an unexpected result with respect to the continuous process.
The rejection of claims 1, 3, 5 and 7-9 under 35 U.S.C. 103 over Gamba is WITHDRAWN over the instant amendment requiring a gas inlet and outlet and from which a gaseous reaction product comprising the low molecular weight hydrocarbons is continuously outputted via the motion of the beads in the reactor.
The traversal is that inter alia Gamba does not disclose the amended language as Farina 1 is a batch process (Remarks at 5) which is persuasive as Gamba does not disclose a continuous process but is instead batchwise. While Gamba does disclose such, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and Applicants have not shown an unexpected result with respect to the continuous process.
The rejection of claims 1-9 under 35 U.S.C. 102(a)(1) over Torre is WITHDRAWN over the instant amendment requiring a gas inlet and outlet and from which a gaseous reaction product comprising the low molecular weight hydrocarbons is continuously outputted via the motion of the beads in the reactor.
The traversal is that inter alia Torre does not disclose the amended language as Torre is a batch process (Remarks at 5) which is persuasive as Torre does not disclose a continuous process but is instead batchwise. While Torre does disclose such, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and Applicants have not shown an unexpected result with respect to the continuous process.
Applicant is advised that should claim 16 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14, 15 and 18 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 14 recites “at least 150 minutes” and claim 15 recites “at least 360 minutes”, however the Instant Specification sets forth that the gas flow is passed for exactly 150 minutes (Instant Specification at [0068]) and up to 360 minutes (Id. at [0069]). Claim 18 is not supported as “industrial exhaust gas” is not in the Instant Specification and cannot be construed exactly what that is. Accordingly, this is a new matter rejection.
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 1-9, 12, 14, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Farina.
Regarding claims 1 and 18, Farina discloses a continuous (Farina at 94)) mechanocemical process under carbon dioxide gas flow (Id.) to carry out the conversion of the carbon dioxide into a mixture comprising methane methane, ethane, and ethylene (Id.) and a solid product of Mg and Fe carbonate (Farina at 76) comprising the steps of:
Continuously supplying carbon dioxide into a reactor equipped with milling means (ball milling, 77) and in the presence of olivine (Id.) and water (2, 4 or 6 mL H2O, Id.) at a temperature of room temperature (Farina at 80) which produces hydrogen which via 86the carbon dioxide converts into hydrocarbons (Farina at 86) and the carbon dioxide converts the olivine and non-reacted water into the carbonates (Farina at 13); Farina also discloses that the reactor has an inlet (“Fig.4.2.1”, numeral 3) and an outlet (Id., numeral 4) to withdraw the gaseous reaction product of methane, ethane, and propane, Farine at 76). While Farina discloses this process as being batchwise and not continuous, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and given the lack of a definition of industrial exhaust gas, the outputted gas is considered to cover claim 18;
Separating and recovering from the gas mixture exiting the reactor the hydrocarbons and non-reacted hydrogen (13); and
At the end of the reaction separating and recovering from the reactor the solid mineral carbonation materials (103).
As to claim 2, the balls are stainless steel (36).
With respect to claims 3 and 4, 875 rpm is utilized (68).
Concerning claims 5 and 6, 8 g of olivine to 2 g of water is 0.056 mol/0.111 is 1:2.
With respect to claims 7-9, Farina does not expressly state the maximum conversion amounts in
step a but given application of the same method one of ordinary skill in the art would expect the same conversion amount maxima, selectivity, and global yield, for methane, ethane, and ethylene, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
As to claim 12 and 19, a valve controls the outlet to the gas chromotagraphy device (Farina at 68).
Turning to claim 14, 210 minutes is the milling time (68).
Claims 1-5, 7-9, 11, 14 and 18 are rejected under 35 U.S.C. 103 over Farina-2.
Regarding claims 1-5, 11, 14 and 18, Farina-2 discloses a continuous mechanochemical (Farina-2 at 4 R col) conversion of carbon dioxide in the presence of olivine to methane, ethylene, ethane, and Mg/Fe carbonate (2 L col & 4 L col) comprising:
Under a continuous flow of carbon dioxide under stainless steel ball milling (2 R col & 4 R col) adding 2 g of olivine to 0.3 mL of water (1:1 molar ratio, 4 L col) which is subjected to motion (875 rpm) to cause formation of the light hydrocarbons from the carbon dioxide and conversion of the olivine and nonreacted water to give the mineral carbonates (Id.). Farina-2 discloses that that the reactor comprises two valves connected to a carbon dioxide reservoir and gas chromatography respectively (3 L col) and that methane, ethane, propane, and light hydrocarbons are outputted (Id.). While Farina-2 discloses this process as being batchwise and not continuous, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05) and milled for 240 minutes (“Table 3”);
Separating and removing the unreacted hydrogen and light hydrocarbons (6 R col); and
Separating and removing the carbonated olivine (Id.) and the presence of light hydrocarbons in the exhaust gas is considered to meet the “industrial exhaust gas” of claim 18.
With respect to claims 7-9, Farina-2 does not expressly state the maximum conversion amounts
in step a but given application of the same method one of ordinary skill in the art would expect the same conversion amount maxima, selectivity, and global yield, for methane, ethane, and ethylene, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Claims 1, 3, 5, 7-9, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Gamba.
Regarding claims 1, 3, 12 and 18, Gamba discloses a wet mechanochemical process (while the claim requires this to be continuous, there is nothing in the reference that distinctly points out that it is continuous, though making a batchwise process continuous has been held to be prima facie obvious, see MPEP 2144.05) to carry out the conversion of carbon dioxide into methane, and Mg/Fe carbonate (864 R col, while the claim also requires ethane and ethylene to be produced and the reference does not expressly state such, the same method is utilized so it would be expected by one of ordinary skill in the art that there would be minor amounts of these other hydrocarbons produced, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V supra) comprising the steps of:
Continuously passing a gas flow of carbon dioxide in a reactor equipped with milling means and in the presence of olivine powder and water at room temperature (“Table 3” & 858 R col) and the reactor is subjected to rotational forces at 500 rpm (Id.) such that the milling means triggers mechanochemical reaction that on one side produces hydrogen (863 R col) from the conversion of the carbon dioxide into the methane, while on the other side transforming the olivine into the carbonates (Id.). Gamba discloses two valves one connected to a carbon dioxide inlet and must have an outlet (Gamba at 858 R col). While Gamba does not disclose that this is continuous, it has been held that making a batchwise process continuous is prima facie obvious (see MPEP 2144.05), and while Gamba does not expressly state that light hydrocarbons (considered to be “industrial exhaust gas”) are produced the same method of treating carbon dioxide with metals in the presence of milling media occurs so the production of the same light hydrocarbons would be expected, absent evidence to the contrary, though the Office cannot test to for this;
Separating and recovering from the gas mixture exiting the reactor the hydrocarbons and hydrogen (865 L col); and
Separating and recovering the Mg/Fe carbonates from the process (“Abstract”).
Turning to claim 5, olivin2 is added at 2 g and water at 0.3 g so 0.0142/0.01875=1:1.33.
With respect to claims 7-9, Gamba does not expressly state the maximum conversion amounts
in step a but given application of the same method one of ordinary skill in the art would expect the same conversion amount maxima, selectivity, and global yield, for methane, ethane, and ethylene, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Claims 1-9, 12, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Torre.
Regarding claims 1-4, 12 and 18, Torre discloses a mechanochemical process under carbon dioxide gas flow to convert the carbon dioxide gas and olivine into methane, ethylene, and ethane and Mg/Fe carbonates 918 R col & 920 R col) comprising:
Passing carbon dioxide gas through a reactor equipped with milling means (stainless steel ball mill, 916 L col) in the presence of olivine powder and water (2, 4 or 6 ml, 916 R col) at RT and moving the reactor in such a way (875 RPM, Id.) to cause on one side produces the light hydrocarbons from the hydrogen and the carbonates from the carbon dioxide to produce the carbonates (920 R col). Torre discloses that the reactor has two valves one for inputting carbon dioxide and the other for sampling (Torre at 916 R col) and that light hydrocarbons are produced (Torre at “Fig. 3a”, meeting “industrial exhaust gas”) while Torre does not state the process is continuous making a batchwise process continuous has been held to be prima facie obvious (see MPEP 2144.05);
Separating and recovering the unreacted hydrogen and light hydrocarbons (as they are tested as they exit the reactor, 917 R col); and
Separating and removing the carbonated olivine species (id.).
While the nature of the process being continuous is not expressly stated, making a batchwise process continuous has been held to be prima facie obvious (see MPEP 2144.05).
Concerning claims 5 and 6, 8 g of olivine to 2 g of water is 0.056 mol/0.111 is 1:2.
With respect to claims 7-9, Torre does not expressly state the maximum conversion amounts in
step a but given application of the same method one of ordinary skill in the art would expect the same conversion amount maxima, selectivity, and global yield, for methane, ethane, and ethylene, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
As to claim 14, gas sampling is done for 210 minutes (Torre at 920 R col).
Allowable Subject Matter
Claims 11 and 13 are 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.
As to claim 11, none of the cited prior art, either alone or in combination, discloses or reasonably suggests regulating the gass flow via a flowmeter as they all utilize valves which are not flowmeters.
As to claim 13, none of the cited prior art, taken either alone or in combination, discloses or reasonably suggests usage of carbon dioxide gas injected at a rate of 10-20 m/s as none of the references disclose or suggest the flow rate at all.
Conclusion
Claims 1-9, 12 and 14-19 are rejected. Claims 11 and 13 are objected to.
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 RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759
