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 .
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.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7, drawn to a method for producing a purified gas containing carbon dioxide gas.
Group II, claim(s) 8-10, drawn to a method for producing dry ice.
Group III, claim(s) 11-12, drawn to an apparatus for producing a purified gas containing carbon dioxide gas.
Group IV, claim(s) 12-15, drawn to Equipment for producing dry ice.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I - IV lack unity of invention because even though the inventions of these groups require the technical feature of VR-PSA, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JPH05228326 (hereinafter JP ‘326). JP ‘326 teaches a method for producing a purified gas containing carbon dioxide gas, comprising: a first concentration step in which an intermediate gas having a higher concentration of carbon dioxide gas than a target gas is produced by vacuum regeneration pressure swing adsorption using a first adsorption tower that adsorbs carbon dioxide gas from the target gas containing carbon dioxide gas; and a second concentration step in which the purified gas having an even higher concentration of carbon dioxide gas than the intermediate gas is produced by vacuum regeneration pressure swing adsorption using a second adsorption tower that adsorbs carbon dioxide gas from the intermediate gas or membrane separation ([0009], [0012]-[0017], [0022]-[0028], example 1, and figs. 4-11).
During a telephone conversation with David A. Cornett on 03/03/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-15 have withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JPH05228326 (hereinafter JP ‘326) in view of JP 2021-91582 (hereinafter JP ‘582).
As regarding claim 1, JP ‘326 discloses the claimed invention for a method for producing a purified gas containing carbon dioxide gas, comprising: a first concentration step in which an intermediate gas having a higher concentration of carbon dioxide gas than a target gas is produced by vacuum regeneration pressure swing adsorption (two-stage adsorption tower with constant vacuum pump) using a first adsorption tower (6) that adsorbs carbon dioxide gas from the target gas containing carbon dioxide gas; and a second concentration step in which the purified gas having an even higher concentration of carbon dioxide gas than the intermediate gas is produced by vacuum regeneration pressure swing adsorption using a second adsorption tower (16) that adsorbs carbon dioxide gas from the intermediate gas or membrane separation ([0009], [0012]-[0017], [0022]-[0028], example 1, and figs. 4-11).
JP ‘326 does not disclose wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower. JP ‘582 teaches wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower ([0014], [0069], examples). Both JP ‘326 and JP ‘582 are both directed to apparatus and method for recovering CO2. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower as taught by JP ‘582 in order to enhance CO2 recovery efficiency.
As regarding claim 2, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention for wherein the target gas has a carbon dioxide gas concentration of 3 vol% or more and 70 vol% or less (example 1, [0022], [0029]-[0031]).
As regarding claim 3, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention for wherein the intermediate gas has a carbon dioxide gas concentration of 50 vol% or more and 80 vol% or less (example 1, [0022], [0029]-[0031]).
As regarding claim 4, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention for wherein the purified gas has a carbon dioxide gas concentration of 95 vol% or more (example 1, [0022], [0029]-[0031]).
As regarding claim 6, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention for wherein two or more of the first adsorption towers and two or more of the second adsorption towers are used (figs. 1 and 12-13).
As regarding claim 2-4, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention except for wherein the target gas has a carbon dioxide gas concentration of 3 vol% or more and 70 vol% or less; wherein the intermediate gas has a carbon dioxide gas concentration of 50 vol% or more and 80 vol% or less; and wherein the purified gas has a carbon dioxide gas concentration of 95 vol% or more. Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the target gas has a carbon dioxide gas concentration of 3 vol% or more and 70 vol% or less; wherein the intermediate gas has a carbon dioxide gas concentration of 50 vol% or more and 80 vol% or less; and wherein the purified gas has a carbon dioxide gas concentration of 95 vol% or more in order to enhance apparatus performance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Where patentability is said to be based upon particular chosen carbon dioxide gas concentrations or upon another variable recited in the claim, the Applicant must show that the chosen carbon dioxide gas concentrations are critical and unexpected results.
As regarding claim 7, JP ‘326 as modified discloses all of limitations as set forth above. JP ‘326 as modified discloses the claimed invention except for wherein in the second concentration step, carbon dioxide gas is concentrated at a higher pressure than in the first concentration step.
It would have been obvious to one of ordinary skill in the art to do so as matter of routine optimization. It is well established that adsorption capacity in pressure swing adsorption (PSA) system increases with increasing pressure, consistent with known adsorption isotherm behavior. Operating a downstream adsorption stage at a higher pressure would predictably increase adsorbent loading, enhance separation efficiency, and improve CO2 concentration.
The selection and adjustment of operating pressure in PSA processes is a recognized result-effective variable affecting recovery, purity, and throughout. Discovering an optimum or workable pressure relationship through routine experimentation does not render the claimed invention nonobvious. See In realer, 220 F.2d 454 (CCPA 1955). In view of the known dependence of adsorption performance on pressure and the conventional practice of pressure staging or interstage compression in multi-stage gas separation system, modifying the system to operate the second concentration step at a higher pressure than the first would have been an obvious design choice yielding predictable results.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Vecchiarelli et al (US 20210370224; hereinafter Vecchiarelli) in view of Sircar et al (US 4770676; hereinafter Sircar) and JP 2021091582 (hereinafter JP ‘582).
As regarding claim 1, Vecchiarelli discloses the claimed invention for a method for producing a purified gas containing carbon dioxide gas (title, abstract), comprising: a first concentration step in which an intermediate gas having a higher concentration of carbon dioxide gas than a target gas is produced by pressure swing adsorption using a first adsorption tower (A1/A2) that adsorbs carbon dioxide gas from the target gas containing carbon dioxide gas; and a second concentration step in which the purified gas having an even higher concentration of carbon dioxide gas than the intermediate gas is produced by vacuum regeneration pressure swing adsorption using a second adsorption tower (B1/B2) that adsorbs carbon dioxide gas from the intermediate gas or membrane separation ([0011], fig. 1).
Vecchiarelli does not disclose vacuum regeneration pressure swing adsorption (of the first adsorption tower). Sircar teaches vacuum regeneration pressure swing adsorption (of the first adsorption tower) (col 6 ln 36-39). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide vacuum regeneration pressure swing adsorption (of the first adsorption tower) as taught by Sircar in order to enhance the process of producing a purified gas containing CO2.
Vecchiarelli as modified does not disclose wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower. JP ‘582 teaches wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower ([0014], [0069], examples). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first concentration step and the second concentration step do not have a purge step to discharge impurities in the first adsorption tower and the second adsorption tower as taught by JP ‘582 in order to enhance CO2 recovery efficiency.
Response to Arguments
Applicant's arguments filed 05/22/26 have been fully considered but they are not persuasive.
Applicant’s remark argues that there is teaching away in combining JP ‘326 and JP ‘582.
Examiner respectfully disagrees.
Although JP ‘326 employs purge operations in its disclosed embodiments, JP ‘582 expressly identifies the energy consumption associated with returning recovered CO₂ to an adsorption vessel as purge and teaches a CO₂-PVSA process that operates without such purge. Thus, rather than discouraging elimination of purge, JP ‘582 provides an express technical motivation to omit it.
A person of ordinary skill in the art seeking to reduce the energy consumption of the CO₂ concentration process of JP ‘326 would have reasonably considered JP ‘582's known purge-free PVSA cycle, including adsorption, pressure equalization, depressurization, CO₂ recovery, and recycle. Applying this known alternative to the adsorption stages of JP ‘326 would not require wholesale reconstruction of JP ‘326.
Nor has Applicant established that purge is indispensable to JP ‘326's two-stage concentration architecture or that its omission would render the process inoperable or incapable of producing a CO₂-enriched gas. At most, eliminating purge may involve a purity/recovery tradeoff, which does not constitute a teaching away. JP ‘582 expressly identifies reduced energy consumption and improved recovery efficiency ([0023], [0069]) as benefits of the purge-free operation and thereby provides both a reason to make the modification and a reasonable expectation of success.
Accordingly, Applicant has not shown that JP ‘326 and JP ‘582 are incompatible or that JP ‘582 teaches away from their combination. Rather, JP ‘582 provides an affirmative motivation to omit the purge operation, directly addressing the additional limitation of claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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 DUNG H BUI whose telephone number is (571)270-7077. The examiner can normally be reached Monday-Friday 8:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached at (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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