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 .
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.
Status of Application
Claims 1-10 are pending and presented for examination.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
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 1-10 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.
As to claim 1 (and those dependent thereon), it is indefinite if “mainly” is meant to limit “methane, ethylene, and ethane” and “Mg and Fe”. For the purposes of compact prosecution the claim is being treated as “low molecular weight hydrocarbons comprising methane, ethylene, and ethane, and said products from mineral carbonation comprising carbonates of Mg and Fe . . .”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 10 is rejected under 35 U.S.C. 101/112(a) as it recites a “use” without setting use any any steps involved in the process (see MPEP 2173.05(q)) and it does not succinctly claim a “process, machine, manufacture, or composition of matter”.
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “INVESTIGATION OF MECHANICALLY INDUCED CO2 STORAGE AND CONVERSION DRIVEN BY OLIVINE WEATHERING PROCESS” to Farina. Farina is a co-inventor on the instant application but the instant application also names additional inventors, Farina was publicly available in February of 2021 which is before the earliest effective filing date of 17 March 2022 as a certified English translation of the foreign priority application of IT102021000007091 which was filed on 24 March 2021 so this is not the earliest effective filing date.
Regarding claim 1, 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);
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 10, the process is utilized to convert carbon dioxide into methane, ethylene, ethane, and Mg/Fe carbonates (13).
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “CO2 Hydrogenation Induced by Mechanochemical Activation of Olivine With Water Under CO2 Atmosphere” to Farina et al. (hereinafter, “Farina-2 at __”).
Regarding claims 1-5, 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.);
Separating and removing the unreacted hydrogen and light hydrocarbons (6 R col); and
Separating and removing the carbonated olivine (Id.).
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))".
As to claim 10, the process is utilized to convert carbon dioxide into methane, ethylene, ethane, and Mg/Fe carbonates (“Abstract”).
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, 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.
Claims 1, 3, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over “CO2 storage and conversion to CH4 by wet mechanochemical activation of olivine at room temperature” to Gamba et al. (hereinafter, “Gamba at __”; it is noted that Gamba is not a named co-inventor on the instant application, and the inventorship/authorship differ elsewhere too).
Regarding claims 1 and 3, 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.);
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))".
As to claim 10, the process is utilized to convert carbon dioxide into methane, ethylene, ethane, and Mg/Fe carbonates (“Abstract”).
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over “Room temperature hydrocarbon generation in olivine powders: Effect of mechanical processing under CO2 atmosphere” to Torre et al. (hereinafter, “Torre at __”; Torre is not named on the instant application but does name co-inventors but the authorship on Torre also differs).
Regarding claims 1-4, 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);
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 10, the process is utilized to convert carbon dioxide into methane, ethylene, ethane, and Mg/Fe carbonates (“Abstract”).
Conclusion
Claims 1-10 are rejected.
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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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759