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 § 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.
Claim(s) 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akanuma et al (“Characterization of carbon deposited from carbon dioxide on oxygen-deficient magnetites”, J. Mater. Chem. (1993) 3 (9): 943-946).
Regarding claim 12, the claim is a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Akanuma teaches a method comprising:
carbon deposited on magnetite by reducing magnetite with H2; evacuating and filling with CO2 to perform a CO2 decomposition process (i.e., Reacting carbon dioxide with an oxygen-deficient magnetite reducing agent to generate a magnetite that has a surface to which carbon adheres);
Dissolving a portion of magnetite powder which had reacted with CO2 in HCl solution to collect black particles (i.e., a carbon separation step of reacting the carbon deposited magnetite with hydrochloric acid to generate carbon);
Here, the prior art Akanuma discloses a carbon deposited on an oxygen-deficient magnetite which has been separated from the carbon deposited magnetite with hydrochloric acid. The instant claim implies the identical structure since the carbon is obtained by the same method using the same reagents. It would have been obvious to one of ordinary skill in the art at the time of the invention that the hydrogen production step and the reducing agent step would not impart structural differences to the end product carbon since they are not performed to the carbon. In the event any slight differences can be shown between the two carbon products, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Akanuma. See Ex parte Gray, 10 USPQ2d 1922.
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.
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.
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.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (“Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite II. The effects of properties of magnetite on activity of decomposition CO2 and mechanism of the reaction”, Mater. Chem. and Phys. 62 (2000) 52-61).
Regarding claim 13, Zhang teaches a process for decomposition of carbon dioxide into carbon with oxygen-deficient magnetite where the Fe3O4 is reduced so that δ is about 1 has the highest activity in decomposing CO2 (see Page 53, Results and discussion). Zhang does not specifically teach that the oxygen reduced magnetite has a δ of 1 or more and less than 4. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method as taught by Zhang where the oxygen-deficient magnetite is in any workable or optimum range overlapping with δ of about 1 including the claimed range because it has high activity for decomposing CO2 as suggested by Zhang.
Regarding claim 14, Zhang teaches a process for decomposition of carbon dioxide into carbon with oxygen-deficient magnetite where the Fe3O4 is reduced so that δ is about 1 has the highest activity in decomposing CO2 (see Page 53, Results and discussion).
Zhang does not specifically teach that the oxygen reduced magnetite has a δ of 1 or more and less than 4. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method as taught by Zhang where the oxygen-deficient magnetite is in any workable or optimum range overlapping with δ of about 1 including the claimed range because it has high activity for decomposing CO2 as suggested by Zhang.
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.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of copending Application No. 18/272,848 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 22 of the 18/272,848 claims a carbon material produced from reacting carbon dioxide with a reducing agent to generate carbon (i.e., reacting a reducing agent with carbon dioxide to decompose the carbon dioxide), wherein as a reducing agent, an oxygen-deficient iron oxide represented be Fe3O4-δ (where δ is 1 or more and less than 4), which is obtained by reducing magnetite while maintaining a crystal structure or an oxygen-completely deficient iron (δ=4) which is obtained by completely reducing magnetite. The carbon products are identical since they are both produced from reacting carbon dioxide with the same reducing agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of copending Application No. 18/272,848 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 25 of 18/272,848 claims a reducing agent that includes an oxygen-deficient iron oxide represented be Fe3O4-δ (where δ is 1 or more and less than 4), which is obtained by reducing magnetite while maintaining a crystal structure or an oxygen-completely deficient iron (δ=4) which is obtained by completely reducing magnetite and which is therefore the same reducing agent as claim 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/272,848 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of the 18/272,848 claims a method comprising causing a carbon dioxide to react with a reducing agent to generate carbon (i.e., reacting a reducing agent with carbon dioxide to decompose the carbon dioxide), wherein as a reducing agent, an oxygen-deficient iron oxide represented be Fe3O4-δ (where δ is 1 or more and less than 4), which is obtained by reducing magnetite while maintaining a crystal structure or an oxygen-completely deficient iron (δ=4) which is obtained by completely reducing magnetite.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-11 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Akanuma teaches a method comprising:
carbon deposited on magnetite by reducing magnetite with H2; evacuating and filling with CO2 to perform a CO2 decomposition process (i.e., Reacting carbon dioxide with an oxygen-deficient magnetite reducing agent to generate a magnetite that has a surface to which carbon adheres);
Dissolving a portion of magnetite powder which had reacted with CO2 in HCl solution to collect black particles (i.e., a carbon separation step of reacting the carbon deposited magnetite with hydrochloric acid to generate carbon);
Akanuma does not teach a hydrogen production step of reacting the iron chloride obtained in the carbon separation step with water to generate magnetite, hydrogen and hydrogen chloride gas; and a reducing agent regeneration step of reacting the magnetite and the hydrogen obtained in the hydrogen production step with each other to generate the reducing agent used in the carbon dioxide decomposition step. Akanuma does not teach that the oxygen deficient magnetite has a δ of 1 or more and less than 4.
As applied above, Zhang suggests a process for depositing carbon on a reduced magnetite where the oxygen deficient magnetite has a δ of 1 or more and less than 4. However, Zhang also does not teach a hydrogen production step of reacting the iron chloride obtained in the carbon separation step with water to generate magnetite, hydrogen and hydrogen chloride gas; and a reducing agent regeneration step of reacting the magnetite and the hydrogen obtained in the hydrogen production step with each other to generate the reducing agent used in the carbon dioxide decomposition step.
Agawa (JP2009249247) teaches a method for carbon recovery comprising producing particulate magnetite and carbon by reacting oxygen-deficient magnetite and carbon dioxide; separating the magnetite from the carbon, and reacting the particulate magnetite with hydrogen gas to regenerate the oxygen-deficient magnetite (see BEST MODE). Agawa does not teach separating the carbon from the magnetite by hydrochloric acid, a hydrogen production step of reacting iron chloride obtained in the carbon separation step with water to generate magnetite, hydrogen and hydrogen chloride gas; and a reducing agent regeneration step of reacting the magnetite and the hydrogen obtained in the hydrogen production step with each other to generate the reducing agent used in the carbon dioxide decomposition step. Akanuma does not teach that the oxygen deficient magnetite has a δ of 1 or more and less than 4.
Claims 2-11 are dependent claims further limiting the method of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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