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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-4, 8 and 9 are objected to because of the following informalities:
In claim 1, line 1, the word “Electrolysis” is capitalized but this isn’t consistent with the rest of the claims
In claim 2, line 8, the list “Roman indices I, II, III, IV, V” should be amended to recite “Roman indices I, II, III, IV, and V”
In claim 2, line 10, the list “w, x, y, z” should recite “w, x, y, and z”
In claim 2, line 10, the list “0 ≤ x < 2, 0 ≤ y < 2, 0 ≤ w < 2, 0 ≤ z <3” should recite “0 ≤ x < 2, 0 ≤ y < 2, 0 ≤ w < 2, and 0 ≤ z <3”
In claim 2, line 11, the list “w, x, y, z” should recite “w, x, y, and z”
In claim 3, line 3, the list “group consisting of trays, structured packings, unstructured packings” should recite “group consisting of trays, structured packings, and unstructured packings”
In claim 4, line 3, the list “comprise at least one material selected from rubber, plastic, glass, porcelain, metal” should recite “comprise at least one material selected from rubber, plastic, glass, porcelain, and metal”
In claim 8, line 13, the phrase “salt S … is routed through KM <103>, then via VAM <112>, then through KA <101> …” is grammatically incorrect – in particular “then via VAM <112>, then through KA <101>”. One suggested fix would be to amend the phrase to state “then via VAM <112> through KA <101>”
In claim 8, line 14, the claim recites “R is an alkyl radical” but should recite “R is an alkyl group” or something similar as a radical refers to alkyl having an unpaired electron which does not appear to be the intended meaning
In claim 9, line 2, the claim recites the list “group consisting of Li+, Na+, K+” but should recite “group consisting of Li+, Na+, and K+”
Appropriate correction is required.
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 7 and 8-16 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 7 recites the limitation "the thread test stated in the description" in lines 3-4. However, there is insufficient antecedent basis for this limitation in the claim. Additionally, claim terms are interpreted in light of the specification and the inclusion of the phrase “stated in the description” besides itself creating antecedent basis issues isn’t necessary and creates clarity issues but making unclear what exactly is being required from the specification. It is suggested applicant correct the antecedent basis issue for thread test and explain in the claim what exactly is required by the claimed thread test.
Claim 8 recites the limitation "The process …" in line 1. However, there is insufficient antecedent basis for this limitation in the claim.
Additionally, claim 8 recites the limitation "the alcohol ROH" in line 2. However, there is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "an alkali metal alkoxide XOR" in line 2. However, there is insufficient antecedent basis for this limitation in the claim. Specifically, it is noted that this limitation has been earlier recited in claim 8 (see claim 8 at lines 1-2). As such, it is unclear whether a new alkali metal alkoxide is being set forth or if the previously recited alkali metal alkoxide is meant to be referred to.
Claim 13 recites the limitation "XOR" and “alcohol ROH” in line 2. However, there is insufficient antecedent basis for this limitation in the claim as these limitations have both already been set forth.
Claim 14 recites the limitation “XOR” in line 2. However, there is insufficient antecedent basis for this limitation in the claim as this limitation has already been set forth.
Please note, all claims not explicitly addressed above are included only as a result of their dependency.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, 6, 8-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Pat. No. 11,629,415 to Horn et al., (hereinafter referred to as “HORN”).
The applied reference has a common assignee, applicant, and/or joint inventor(s) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, HORN teaches an electrolysis cell E <100> (see generally HORN at Abstract and Fig. 1 and Fig. 2) comprising at least one anode chamber KA <101>, at least one cathode chamber KK <102> and at least one interposed middle chamber KM <103> (see HORN at Fig. 1 and Fig. 2 depicting chambers as claimed),
wherein KA <101> comprises an anodic electrode EA <104> and an outlet AKA <106> (see HORN at Fig. 1 and Fig. 2),
wherein KK <102> comprises a cathodic electrode EK <105>, an inlet ZKK <107> and an outlet AKK <109> (see HORN at Fig. 1 and Fig. 2),
wherein KM <103> comprises an inlet ZKM <108>, is divided from KA <101> by a
diffusion barrier D <110> and is divided from KK <102> by an alkali metal cation-
conducting solid-state electrolyte FK <111> (see HORN at Fig. 1 and Fig. 2),
wherein KM <103> and KA <101> are connected to one another by a connection VAM <112> through which liquid can be routed from KM <103> into KA <101> (see HORN at Fig. 1 and Fig. 2),
wherein the middle chamber KM <103> comprises internals <120>,
wherein the internals <120> are configured to lead to turbulence and vortexing in an
electrolyte L3 <114> that flows through the middle chamber KM <103> (see HORN at Fig. 1 and Fig. 2 depicting CO2 gas bubbles 121 which could be termed “internals” as claimed as they are internal to the middle chamber and lead to turbulence and some vortexing to at least some degree).
Regarding claim 2, HORN teaches the electrolysis cell E <100> according to claim 1, wherein the alkali metal ion-conducting solid-state electrolyte FK <111> has a structure of the formula as claimed (see HORN at claim 8).
Regarding claim 5, HORN teaches the electrolysis cell E <100> according to claim 1, wherein the connection VAM <112> is formed within the electrolysis cell E <100> (see HORN at Fig. 2).
Regarding claim 6, HORN teaches the electrolysis cell E <100> according to claim 1, wherein the internals <120> account for a proportion of 1% to 99% of the volume encompassed by the middle chamber KM as given by the claimed equation (see HORN at col 4 lines 59-66 teaching the middle chamber being filled with gas to a considerable degree which would fall within the 1% to 99% by volume as claimed).
Regarding claim 8, HORN teaches the process for producing a solution L₁ <115> of an alkali metal alkoxide XOR in the alcohol ROH in an electrolysis cell E <100> according to claim 1 (see teachings of HORN as applied to claim 1 above),
wherein the process comprises the following steps (a), (b) and (c) that proceed
simultaneously (see HORN at claim 1, col. 20 line 14):
(a) a solution L₂ <113> comprising the alcohol ROH is routed through KK <102> (see HORN at claim 1, col. 20 lines 3-4),
(b) a neutral or alkaline, aqueous solution L₃ <114> of a salt S comprising X as
cation is routed through KM <103>, then via VAM <112>, then through KA <101> (see HORN at claim 1, col. 20 lines 5-10),
(c) voltage is applied between EA <104> and EK <105> (see HORN at claim 1, col. 20 lines 11-12),
which affords the solution L₁ <115> at the outlet AKK <109>, with a higher concentration of XOR in L₁ <115> than in L₂ <113> (see HORN at claim 1, col. 20 lines 34-36),
and which affords an aqueous solution L4 <116> of S at the outlet AKA <106>, with a lower concentration of S in L4 <116> than in L3 <114> (see HORN at claim 1, col. 20 lines 37-42),
wherein X is an alkali metal cation and R is an alkyl radical having 1 to 4 carbon atoms (see HORN at claim 1, col. 20 line 46).
Regarding claim 9, HORN teaches the process wherein X is selected
from the group consisting of Li⁺, Na⁺, and K⁺ (see HORN at claim 1 teaching X being Na+).
Regarding claim 10, HORN teaches the process, wherein S is a halide, sulfate, sulfite, nitrate, hydrogencarbonate or carbonate of X (see HORN at claim 1 teaching S being NaCl and hydrogen carbonate and/or carbonate).
Regarding claim 11, HORN teaches the process wherein R is selected from the group consisting of methyl and ethyl (see HORN at claim 2).
Regarding claim 12, HORN teaches the process wherein L₂ <113> comprises the alcohol ROH and an alkali metal alkoxide XOR (see HORN at claim 9).
Regarding claim 13, HORN teaches the process wherein the mass ratio of XOR to alcohol ROH in L₂ <113> is in the range from 1:100 to 1:5 (see HORN at claim 10).
Regarding claim 14, HORN teaches the process wherein the concentration of XOR in L₁ <115> is 1.01 to 2.2 times higher than in L₂ <113> (see HORN at claim 11).
Regarding claim 15, HORN teaches the process which is performed at a temperature of 20 to 70°C and a pressure of 0.5 to 1.5 bar (see HORN at claim 14).
Allowable Subject Matter
Claims 3 and 4 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.
Double Patenting
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 8-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,291,787 (hereinafter referred to as “the 787 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claimed limitations is set forth in the claims of the 787 patent.
Furthermore, with respect to the limitations of the internals of claim 1, the 787 patent claims a step of routing gas through the middle chamber which would be internal and have the effect as claimed and so is being treated as reading on that limitation (see the 787 patent at claim 1, col. 18 lines 32-35).
Claims 8-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,629,415 (earlier set forth as HORN). Although the claims at issue are not identical, they are not patentably distinct from each other because based on the correlation as set forth in the prior art grounds of rejection.
Furthermore, with respect to the limitations related to the internals of claim 1, the HORN patent claims as much in claim 1 of HORN at lines 43-45 setting forth the production of CO2 gas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2021/0079538 to Schmid et al., teaching a mebrane-coupled cathode for the reduction of carbon dioxide in acid-based electrolyte without mobile cations
US Pub. No. 2009/0314652 to Buschmann et al., teaching the production of peroxycarboxylic acids
US Pub. No. 2008/0173540 to Joshi et al., teaching an electrolytic cell for producing alkali alcoholates
US Pub. No. 2008/0142373 to Joshi et al., teaching an electrolytic method to make alkali alcoholates using ion conducting alkali electrolyte/separator
US Pat. No. 5,997,715 to Roberts et al., teaching a method of electrochemically producing epoxides
US Pat. No. 5,425,856 to Buckholtz et al., teaching a method of making alkali metal alcoholates
US Pat. No. 5,389,211 to Sharifian et al., teaching a method for producing high purity hydroxides and alkoxides
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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