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 .
Election/Restrictions
Applicant’s election without traverse of the invention of group II, claims 6-10, drawn to the apparatus in the reply filed on 08/10/2026 is acknowledged.
Claims 1-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/10/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 6 and 7 are objected to because of the following informalities:
Claim 6 line 3 recites “calcium dissolution means”, but should recite “a calcium dissolution means” to be grammatically correct;
Claim 6 line 5 recites “separation means”, but should recite “a separation means” to be grammatically correct;
Claim 6 line 8 recites “calcium carbonate collection means”, but should recite “a calcium carbonate collection means” to be grammatically correct;
Claim 7 line 3 recites “bipolar membrane electrodialysis”, but should recite “a bipolar membrane electrodialysis” to be grammatically correct.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is: “bipolar membrane electrodialysis treatment means” in claims 7 and 8. Specifically, “bipolar membrane electrodialysis” is a term of art requiring an electrolytic system comprising bipolar membranes, and this structure is sufficient to achieve the recited function of “aqueous hydrochloric acid is generated from an aqueous solution containing potassium chloride and/or sodium chloride”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f), it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 6-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 6, the claim limitations “calcium dissolution means for …”, “separation means for …”, and “calcium carbonate collection means for …” invoke 35 U.S.C. § 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions.
Specifically, the specification does not provide any structures associated with these terms, but rather only describes the functions performed.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 7-10, claims 7-10 depend from claim 6, and therefore inherit the indefinite language of claim 6.
Claims 7-10 are therefore indefinite.
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 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kashefi et al. (“Process optimization for integrated mineralization of carbon dioxide and metal recovery of red mud” Journal of Environmental Chemical Engineering 8 (2020) 103638).
Regarding claim 6, the limitations “calcium dissolution means for …”, “separation means for …”, and “calcium carbonate collection means for …” invoke 35 U.S.C. 112(f), but no corresponding structure in the specification could be identified. Therefore, in the interest of compact prosecution, these limitations are being interpreted according to their broadest reasonable interpretation (BRI).
Kashefi teaches a calcium carbonate generation system of generating calcium carbonate from a calcium-containing waste (abstract), the calcium carbonate generation system comprising:
a calcium dissolution means (“acid extraction of the mineral elements from RM [red mud]” § 2.2.1. para. 1 and “extraction” Fig. 1) for adding aqueous hydrochloric acid (“The first series of tests were conducted with HCl (1 M)” sec 2.2.1. para. 1 and Fig. 1) to a calcium-containing waste (“industrial waste which contains a great amount of Ca or Mg, such as red mud, cement kiln dust, nickel tailings, steelmaking slags” p. 2 para. 1) and dissolving calcium to generate an aqueous solution containing a calcium ion (“the concentration of leached Ca increased quickly” §. 3.1.1. para. 1, Fig. 4, and Table 4);
a separation means for adjusting a hydrogen ion concentration index of the aqueous solution containing a calcium ion and separating a component containing at least AI and Mg from the aqueous solution (“The pH swing technique was used to devoid the filtered leachate from impurities such as Fe, Al, Mg, and etc. ions through the precipitation of them.” § 2.2.2. and Fig. 1); and
a calcium carbonate collection means for generating calcium carbonate using an aqueous solution obtained by the separation means and an aqueous solution containing sodium carbonate (“Na2CO3, prepared from the reaction of CO2 and NaOH in a bubble column, was added to the final leachate … and white solid of Ca2CO3 were eventuated” § 2.2.4 para. 3 and Fig. 1).
Regarding claim 7, Kashefi further teaches the aqueous hydrochloric acid is generated from an aqueous solution containing sodium chloride through a bipolar membrane electrodialysis treatment means, and as to the sodium chloride, at least a part of an aqueous solution containing sodium chloride generated by the calcium carbonate collection means is used (“After separation of carbonate product, the final solution which was rich in Cl- and Na+ can be recovered for production of the required acid and base substances via bipolar electrodialysis”. § 3.4. para. 2).
Regarding claim 8, Kashefi further teaches an aqueous solution containing sodium hydroxide is generated by the bipolar membrane electrodialysis treatment means (“production of the required … base substances via bipolar electrodialysis”. § 3.4 para. 2 and Fig. 1), carbon dioxide is brought into contact with the aqueous solution containing sodium hydroxide to generate an aqueous solution sodium carbonate (“Na2CO3 was used in the carbonation experiment supplied via the injection of CO2 to the NaOH solution in a bubble column” § 2.2.3. para. 1 and Fig. 1), and the aqueous solution containing sodium carbonate is used for the calcium carbonate collection means (“Hence, Na2CO3, prepared from the reaction of CO2 and NaOH in a bubble column, was added to the final leachate … and white solid of Ca2CO3 were eventuated” § 2.2.4 para. 3 and Fig. 1).
Regarding claim 9, as currently drafted, the limitation “the carbon dioxide is the carbon dioxide exhausted from a cement manufacturing facility” further limits the material intended to be worked upon by the system, rather than a component of the system itself. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked upon is an apparatus capable of working on the recited material (MPEP § 2115).
In the instant case, Kashefi teaches the system is intended to work on carbon dioxide emitted from an alumina production plant (“RM residue which is obtainable from Jajarm alumina production plant … carbonation process in the locale that CO2 and RM being concurrently attainable, as they are produced from the stacks and discharges of Jajarm factory,” § 1 last para.). I.e., the system of Kashefi operates using impure CO2 feeds generated by manufacturing facilities. It is therefore considered that the system of Kashefi is capable of using “carbon dioxide exhausted from a cement manufacturing facility” as the source of carbon dioxide.
Kashefi therefore anticipates the limitation “the carbon dioxide is the carbon dioxide exhausted from a cement manufacturing facility”.
Regarding claim 10, Kashefi anticipates the limitations of claim 6, as described above.
The limitation “the calcium-containing waste contains desalination dust obtained from a desalination bypass portion of a cement manufacturing facility”, as currently drafted, further limits the material intended to be worked upon by the system, rather than a component of the system itself. For apparatus claims, the broadest reasonable interpretation of a limitation drawn to a material worked upon is an apparatus capable of working on the recited material (MPEP § 2115).
In the instant case, Kashefi teaches the system is designed to work on calcium-containing waste comprising Si, Al, and Mg (Tables 3 and 4) i.e., calcium-containing waste having the same contaminants the instant application indicates are found desalination dust obtained from a desalination bypass portion of a cement manufacturing facility.
It is therefore considered that the system of Kashefi is capable of working on calcium-containing waste “obtained from a desalination bypass portion of a cement manufacturing facility”.
Kashefi therefore anticipates the limitation “the calcium-containing waste contains desalination dust obtained from a desalination bypass portion of a cement manufacturing facility”.
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 6 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 or 11 of co-pending Application No. 19/109984 (the reference application), as published in US Pat. Pub. 2026/0078011. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 6, claim 7 of the reference application recites a calcium carbonate generation system of generating calcium carbonate from a calcium-containing waste, the calcium carbonate generation system comprising (lines 1-3):
calcium dissolution means for adding aqueous hydrochloric acid to a calcium-containing waste and dissolving calcium to generate an aqueous solution containing a calcium ion (lines 4-7);
separation means for adjusting a hydrogen ion concentration index of the aqueous solution containing a calcium ion and separating a component containing at least one selected from the group consisting of Si, AI, Mg, and heavy metal from the aqueous solution (lines 8-12); and
calcium carbonate collection means for generating calcium carbonate using an aqueous solution obtained by the separation means and an aqueous solution containing potassium carbonate and/or sodium carbonate (lines 13-16).
The limitations of claim 6 are thus anticipated by claim 7 of the reference application. A provisional rejection on the grounds of non-statutory double patenting is therefore warranted.
Regarding claim 10, claim 7 of the reference application anticipates the limitations of claim 6, as described above.
Claim 11 of the reference application further recites the calcium-containing waste contains desalination dust obtained from a desalination bypass portion of a cement manufacturing facility (lines 3-5).
The limitations of claim 10 are thus anticipated by claim 11 of the reference application. A provisional rejection on the grounds of non-statutory double patenting is therefore warranted.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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