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 Objections
Claims 3, 11 and 12 are objected to because of the following informalities: ”composition claim 1” should be changed to “composition of claim 1”. Appropriate correction is required.
Claims 12 and 13 are objected to because of the following informalities: “at least 4 or more” is redundant and should be changed to either “at least 4” or “4 or more”. Appropriate correction is required.
Regarding claim 13, on the final line of the claim, “solvent at” should be changed to “solvent comprising at”. Appropriate correction is required.
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 1-8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata USPA 2014/0234192 A1.
With regard to claims 1-7 and 11, Hirata et al. discloses an aqueous composition for removing acid gas components (carbon dioxide and/or hydrogen sulfide, see the abstract) from a process gas comprising a first cyclic amine (2-methylpiperazine, see the abstract and paragraph [0022]) having a substituted atom alpha to an amine atom, and a second cyclic amine (piperazine, see the abstract and paragraph [0017]) having two unsubstituted carbon atoms alpha to an amine atom, wherein the composition comprises 1 to 15 wt% of the first cyclic amine (2-methylpiperazine) and 1 to 15 wt% of the second cyclic amine (piperazine) (see paragraphs [0015] and [0049]), such that the composition comprises a weight ratio of the first cyclic amine to the second cyclic amine of 15:1 to 1:15 at the abstract and paragraphs [0015], [0017], [0022], [0049] and [0097]. Using the molecular weights of 2-methylpiperazine and piperazine of 100.165 and 86.136, respectively, and the weight ratio range of 15:1 to 1:15 gives a molar ratio range of 12.9:1 to 1 :17.4. The prior art range is seen as overlapping the instantly claimed ranges. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05. The Examiner notes that the Hirata reference discloses the composition comprising an additional straight chain secondary monoamine (see e.g. the abstract and paragraph [0015]. However, the reference still reads on the claim limitations since the claim language is open ended and allows for the inclusion of additional components.
With regard to claim 8, Hirata discloses the composition comprising a total amie content of 70 wt% or less at paragraph [0049]. The prior art range is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
With regard to claim 10, Hirata discloses the composition comprising the second cyclic amine (piperazine) in an amount of 1 wt% to 15 wt% at paragraphs [0017] and [0049]. The prior art range is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
Claims 9 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al. (US 2014/0234192 A1), or alternatively, over Hirata (US 2014/0234192 A1) in view of Grandjean (US 2015/0321138 A1).
Hirata is relied upon as above.
With regard to claim 9, Hirata discloses the composition comprising up to 15 wt% of the first cyclic amine (2-methylpiperazine) at paragraphs [0015] and [0022]. The upper end of the prior art range of 15 wt% is seen as reading on the lower end of the instantly recited range of about 20 wt%. In particular, the phrase "about" includes some leeway and is seen as extending the range down to encompass 15 wt%. Alternatively, Grandjean teaches an absorbent composition comprising up to 30 wt% of an activator to improve carbon dioxide absorption performance, wherein the activator is piperazine or 2- methylpiperazine at paragraphs [0027], [0033], [0035], [0058], [0064] and [0066]. It would have been obvious to one of ordinary skill in the art to incorporate the piperazine and 2- methylpiperazine being provided at 30 wt% in the composition of Grandjean into the absorption composition of Hirata to maximize the activation performance. For instance, when piperazine is provided at 5 wt% or 10 wt%, then 2-methylpiperazine would be provided at 25 wt% or 20 wt%, respectively, for a total of 30 wt%. The prior art range is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
With regard to claims 17-19, Hirata discloses a method of treating a process gas comprising providing the process gas (cooled exhaust gas 14) and an aqueous absorption medium to an absorption tower (carbon dioxide absorber 18), contacting the process gas with the aqueous absorption medium to produce a loaded aqueous absorption medium (rich solution 19), the aqueous absorption medium comprising 1 wt% to 15 wt% of a first cyclic amine (2-methylpiperazine, see the abstract and paragraphs [0015] and [0022]) having a substituted atom alpha to an amine atom, and 1 wt% to 15 wt% of a second cyclic amine (piperazine, see the abstract and paragraphs [0015] and [0017]) having two unsubstituted carbon atoms alpha to an amine atom, providing the loaded aqueous absorption medium to a regenerator tower (absorbent regenerator 20), desorbing the loaded aqueous absorption medium to form a regenerated aqueous absorption medium, and recycling (via line 17)the regenerated aqueous absorption medium to the absorption tower at Fig. 1, the abstract and paragraphs [0015], [0017], [0022], [0049], [0074]-[0081] and [0097]. The prior art range for the concentration of the second cyclic amine is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
Hirata discloses the composition comprising up to 15 wt% of the first cyclic amine (2- methylpiperazine) at paragraphs [0015] and [0022]. The upper end of the prior art range of 15 wt% is seen as reading on the lower end of the instantly recited range of about 20 wt%. In particular, the phrase "about" includes some leeway and is seen as extending the range down to encompass 15 wt%. Alternatively, Grandjean teaches an absorbent composition comprising up to 30 wt% of an activator to improve carbon dioxide absorption performance, wherein the activator is piperazine or 2- methylpiperazine at paragraphs [0027], [0033], [0035], [0058], [0064] and [0066]. It would have been obvious to one of ordinary skill in the art to incorporate the piperazine and 2- methylpipcrazine being provided at 30 wt% in the composition of Grandjean et al. into the absorption composition of Hirata et al. to maximize the activation performance. For instance, when piperazine is provided at 5 wt% or 10 wt%, then 2-methylpiperazine would be provided at 25 wt% or 20 wt%, respectively, for a total of 30 wt%. The compositions taught by Hirata as modified by Grandjean likewise overlap the recited molar ranges. The prior art ranges are seen as overlapping the instantly claimed ranges. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hirata (US 2014/0234192 A1) in view of Mathias (US 2016/0214057 A1).
Hirata is relied upon as above.
Regarding claim 12, Hirata does not disclose the composition further comprising a water miscible solvent comprising at least 4 -0- or -OH groups. Mathias discloses an absorbent composition comprising a water miscible solvent comprising at least 4 -0- or -OH groups (tricthylene glycol) at paragraph [0041]. It would have been obvious to one of ordinary skill in the art to incorporate the water miscible solvent of Mathias into the system of Hirata to provide a solvent that reduces volatility relative to water and facilitates the formation of chemical complexes during carbon dioxide absorption, as suggested by Mathias at paragraph [0041].
Claims 13-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (US 2014/0234192 A1) in view of Mathias (US 2016/0214057 A1), or alternatively, over Hirata (US 2014/0234192 A1) in view of Grandjean (US 2015/0321138 A1) and Mathias (US 2016/0214057 A1).
Hirata and Hirata in view of Grandjean are relied upon as above.
With regard to claims 13-16, Hirata discloses an aqueous composition for removing acid gas components (carbon dioxide and/or hydrogen sulfide, sec the abstract) from a process gas comprising a first cyclic amine (2-methylpiperazine, see the abstract and paragraphs [0015] and [0022]) comprising 1 wt% to 15 wt% of the composition and having a substituted atom alpha to an amine atom, and a second cyclic amine (piperazine, see the abstract and paragraphs [0015] and [0017]) comprising 1 wt% to 15 wt% of the composition and having two unsubstituted carbon atoms alpha to an amine atom at the abstract and paragraphs [0015], [0017], [0022], [0049] and [0097]. The prior art range for the concentration of the second cyclic amine is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05. Hirata discloses the composition comprising up to 15 wt% of the first cyclic amine (2- methylpiperazine) at paragraphs [0015] and [0022]. The upper end of the prior art range of 15 wt% is seen as reading on the lower end of the instantly recited range of about 20 wt%. In particular, the phrase "about" includes some leeway and is seen as extending the range down to encompass 15 wt%.
Alternatively, Grandjean teaches an absorbent composition comprising up to 30 wt% of an activator to improve carbon dioxide absorption performance, wherein the activator is piperazine or 2- methylpiperazine at paragraphs [0027], [0033], [0035], [0058], [0064] and [0066]. It would have been obvious to one of ordinary skill in the art to incorporate the piperazine and 2- methylpiperazine being provided at 30 wt% in the composition of Grandjean into the absorption composition of Hirata to maximize the activation performance. For instance, when piperazine is provided at 5 wt% or 10 wt%, then 2-methylpiperazine would be provided at 25 wt% or 20 wt%, respectively, for a total of 30 wt%. The prior art range is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
Hirata does not disclose the composition comprising the first cyclic amine (2- methylpiperazine) in the recited amount, or the composition further comprising a water miscible solvent comprising at least 4 -0- or -OH groups. Mathias discloses an absorbent composition comprising a water miscible solvent comprising at least 4 -0- or -OH groups (triethylene glycol) at paragraph [0041]. It would have been obvious to one of ordinary skill in the art to incorporate the water miscible solvent of Mathias into the system of Hirata to provide a solvent that reduces volatility relative to water and facilitates the formation of chemical complexes during carbon dioxide absorption, as suggested by Mathias at paragraph [0041].
With regard to claim 20, Mathias further discloses the water miscible solvent replacing 25 to 75 percent of the water at paragraph [0045]. Hirata teaches the composition comprising 30 percent water at paragraph [0049]. Therefore, Hirata as modified by Mathias teaches the composition comprising 7.5 to 23 percent of the absorption medium. The prior art range is seen as overlapping the instantly claimed range. Therefore a prima facie case of obviousness exists absence a showing of unexpected or unobvious results. See MPEP 2144.05.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,325,005 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the present claims are found in claims 1-20 of USPN 12,325,005 B1. The difference between the application claims 1-20 and USPN 12,325,005 B1, claims 1-20 lies in the fact that USPN 12,325,005 B1 claims 1-20 included more elements and is thus more specific. Thus the invention of claims 1-20 of USPN 12,325,005 B1 is in effect a “species” of the "generic” invention of application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Conclusion
This is a substitute of applicant's earlier processed Application No. 18/883,206. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 CHRISTOPHER P JONES whose telephone number is (571)270-7383. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571)270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER P JONES/Primary Examiner, Art Unit 1776
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