DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/682,813 application filed 9 February 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending and have been fully considered.
Claim Interpretation
Applicant is reminded that “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701. In the instant case, the body of instant claim 1 sets forth all of the limitations of the claimed invention, and the preamble “for capturing carbon dioxide (CO2)” merely states the purpose or intended use of compound recited in the body of the claim. Therefore, the preamble is not considered a limitation and is of no significance to claim construction.
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 1-20 is 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.
With respect to claims 1, 9, and 15, said claims recite “…R and R’ are independently selected from the group consisting of…an optionally substituted alkyl group, an optionally substituted cycloalkyl group,…” First, the “optionally substituted” adjective appears to describe either the alkyl or cycloalkyl. Since the substitution is optional, the Office has interpreted the limitation as meaning that R and R’ may also be alkyl or cycloalkyl without substitution. Later the body of claims 1, 9, and 15 recites “…with the proviso that at least one of R and R' has an ion or is ionizable…” Alkyl and cycloalkyl groups are generally considered to be non-ionizable because carbon and hydrogen have very similar electronegativities. Consequently, the C-H bonds are strictly nonpolar and the group(s) do(es) not readily donate or accept protons. Therefore, it is unclear if R and R’ may be selected from “the group consisting of…an optionally substituted alkyl group, an optionally substituted cycloalkyl group…” For purposes of continued examination, the Office has assumed that R and R' may consist of alkyl groups in keeping with a broadest reasonable interpretation of the claims.
Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “0.1% to 90%”, and the claim also recites “0.5% to 60%,…optionally at least 25% by weight the absorbent compound, such as about 30% to about 60% by weight, about 35% to about 55% by weight, or about 40% to about 50% by weight,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites “wherein releasing the captured CO2 is performed by reversing the reaction of the absorbent and CO2.” However, claim 10 from which 11 depends, recites “releasing the captured CO2 from the absorbent via a stripping process.” A stripping process is physical separation process while a reaction requires a chemical change. Therefore, claim 11 expands rather than further limits claim 10. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(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) 1, 3, 6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Potocnik et al (US 2017/0037341).
Potocnik et al discloses “[a]ccording to one aspect the cleaning composition may comprise: …optional[ly] at least one corrosion inhibitor, preferably methyldihydrogen phosphate…and water” [paragraphs 0036 & 0041-0042]. The methyl dihydrogen phosphate corresponds to the formula I of instant claim 1, wherein “R and R' are independently selected from the group consisting of hydrogen…” and X is a phosphono group. Water corresponds to the “carrier, vehicle, [or] diluent” of instant claim 6. Compare to paragraph 0103 of the published application: “…vehicles/carriers/diluents of the present disclosure include, but are not limited to, water,…”
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kofron et al in Archives of Biochemistry and Biophysics (1990, vol 280, no 1, pp 40-44).
Kofron et al discloses “[o]xalyl phosphate was synthesized by gradual addition of 1.0 ml of oxalyl chloride to 10 ml of a vigorously stirring solution of 2 M K2HPO4 in an ice bath…” [see 1st paragraph under heading “Results and Discussion” on page 41; see, also, “Conclusions” on page 44]. Oxalyl phosphate corresponds to 2-oxo-2-(phosphonooxy)acetic acid and has a Chemical Abstract Service Registry No. 110403-67-3. The structure of oxalyl phosphate is
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Thus, R is an oxo group and R’ is a carboxyl group, which meets the requirement(s) of instant claim 4.
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 and 3 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kirisawa et al (US 2021/0189131).
Kirisawa et al discloses “[e]xamples of the catalysts include…monoisopropyl phosphate, and acetic acid…” [paragraph 0059]. The monoispropyl phosphate corresponds to the formula I of instant claim 1, wherein “R and R' are independently selected from the group consisting of…an…alkyl group…,” specifically methyl groups for each, and X is a phosphono group. The acetic acid corresponds to the “carrier, vehicle, [or] diluent” of instant claim 6. Compare to paragraph 0103 of the published application: “…vehicles/carriers/diluents of the present disclosure include, but are not limited to, water, saline, buffered solutions, hydroalcoholic mixtures, and alcohols. The alcohol can be selected from ethanol, methanol, isopropyl alcohol, and combinations thereof. In some cases, the fluid composition includes a co-solvent system with both a protic and aprotic solvent (e.g., an organic solvent) to improve the pumpability of the CO2 capture composition. Protic solvents can be selected from water…and acetic acid (CH3CO2H), or the like.”
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.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirisawa et al (US 2021/0189131).
With respect to claim 6, applicant is reminded that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072. Consequently, while Kirisawa et al teaches monoisopropyl phosphate and acetic acid as separate catalysts, since they are both useful for the same purpose, it would have been obvious to combine them to form a third purpose for the same purpose.
With respect to claim 7, applicant is reminded that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. In the instant case, each of monoisopropyl phosphate and acetic acid may affect the rate of reaction and product yield and, therefore, their concentration or amount may be a result-effective variable. Therefore, discovering the optimum or workable ranges for the concentrations of each is not inventive.
Allowable Subject Matter
Claims 9-10 and 12-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claims 2, the prior art does not disclose the recited combinations for R and R’. With respect to claims 9 and 15, the prior art does not disclose the recited method or device, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN A MCCAIG whose telephone number is (571)270-5548. The examiner can normally be reached Monday to Friday 8 to 4:30 Mountain Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
20 July 2026
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