DETAILED ACTION
Claims 1-14 are pending and under consideration in this 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 Interpretation
Claim 1 recites that steps (c) and (d), which are the hydrothermal treatment steps, can be omitted if the starting product contains at least 20% magnesium silicate hydrate, for example serpentinite. According to the specification, this is because the hydrothermal treatment converts magnesium silicate into magnesium silicate hydrate, and thus hydrothermal treatment on a starting material that is already in the form of magnesium silicate hydrate would not benefit the process (see e.g. specification at paragraph bridging pages 4-5).
Claims 2-3 and 6-7 recite additional limitations that relate to the hydrothermal treatment. Examiner notes that these claims do not recite that the starting material has less than 20% magnesium silicate hydrate, nor that the hydrothermal treatment step must be performed regardless. As such, the broadest reasonable interpretation of claims 2-3 and 6-7 is that the additional limitations must be met if hydrothermal treatment is performed, but that because hydrothermal treatment is not necessary when starting with greater than 20% magnesium silicate hydrate, the additional limitations of claims 2-3 and 6-7 are likewise not required when starting with high magnesium silicate hydrate.
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 1-14 are 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.
Regarding claim 1, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Similarly, the term “especially” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claims 3, 9, and 11, the phrase “in particular” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Any claims not specifically cited above are indefinite because they depend from indefinite claim 1.
Claim Rejections - 35 USC § 103
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 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 1-3, 6-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US20210069641 (“Kennedy”).
Regarding claim 1, Kennedy teaches a method for sequestering carbon dioxide (see e.g. paragraph [0001]). The method starts with a solid feedstock that can be serpentinite or olivine (see e.g. paragraph [0045]). Kennedy teaches that the starting material is ground, which is considered a homogenization (see e.g. paragraph [0045]). The material is then thermally treated to perform dihydroxylation, or dewatering (see e.g. paragraph [0046]). The temperature of the thermal treatment is 570-700 °C, which is within the claimed range (Id.). Kennedy teaches that the dewatered starting material is then contacted with carbon dioxide, and that the carbon dioxide reacts with the dewatered magnesium silicate hydrate to bind the CO2 as magnesium carbonate (see e.g. paragraph [0050]). Examiner notes that because Kennedy teaches starting with serpentinite, steps (c) and (d) are not required.
Kennedy teaches that the particle size of the magnesium silicate material is reduced by grinding (see e.g. paragraph [0045]). Kennedy further teaches that the particle size reduction increases surface area for reaction with carbon dioxide (see e.g. paragraph [0028]). Although Kennedy does not provide a specific surface area that the ground product reaches, prior to the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to grind the material to a high fineness to increase the surface area above 0.1 m2/g because Kennedy teaches that a higher surface area results in more efficient reaction with carbon dioxide.
Regarding claims 2-3 and 6-7, see the claim interpretation section above. Each of these claims relates to details concerning the hydrothermal treatment steps. Because these steps are not included in the claimed process when the starting material is over 20% magnesium silicate hydrate, Kennedy teaches each of these claims as well.
Regarding claim 8, Kennedy teaches that the contacting with CO2 is performed by blowing a CO2 containing gas into contact with an aqueous suspension of the starting material (see e.g. paragraphs [0046] and [0050]).
Regarding claim 9, Kennedy teaches that the CO2 gas stream can be from a range of sources, including relatively pure CO2 (see e.g. paragraph [0038]) at atmospheric pressure (see e.g. paragraph [0050]), which will result in a partial pressure greater than 200 ppm.
Regarding claim 10, Kennedy teaches that the starting material undergoes thermal treatment, which will remove any unbound water (see e.g. paragraph [0046]).
Regarding claim 11, Kennedy teaches that the material undergoes grinding to reduce the particle size (see e.g. paragraph [0045]).
Regarding claim 14, Kennedy teaches that the starting material can be olivine, serpentinite, dunite or mixtures thereof (see e.g. paragraph [0045]). Each of these materials has very low aluminum and calcium contents. As such, the ratio of Mg to Ca and the ratio of Si to Al will be within the claimed ranges.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kennedy as applied to claim 1 above, and further in view of US 20100144521 (“Constantz”).
Regarding claim 12, Kennedy teaches the method of claim 1 as described above. Kennedy further teaches that the resulting magnesium carbonate is isolated as a valuable material, but does not specifically teach a further use of the isolated magnesium carbonate (see e.g. paragraph [0069]). Constantz teaches an aggregate that includes a CO2 sequestering substance, such as the magnesium carbonate produced by the method of Kennedy (see e.g. paragraph [0069]). Constantz specifically suggests that the carbonate of the aggregate can be formed from CO2, in the same manner as taught by Kennedy (see e.g. paragraph [0078]). Constantz teaches that using the carbonate compounds formed from CO2 as an aggregate advantageously provides a method for long term sequestration of carbon dioxide (see e.g. paragraph [0085]). Accordingly, prior to the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to use the magnesium carbonate isolated by the method of Kennedy in an aggregate as taught by Constantz in order to provide a valuable material that also provides for long term sequestration and storage of carbon dioxide.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kennedy as applied to claim 1 above, and further in view of Sonat, et al. "Performance and microstructural development of MgO–SiO2 binders under different curing conditions." Construction and Building Materials 154 (2017): 945-955 (“Sonat”).
Regarding claim 13, Kennedy teaches that magnesium silicate is activated and then contacted with carbon dioxide in order to sequester the carbon dioxide (see e.g. paragraphs [0011]-[0012]). Kennedy does not teach that the activated magnesium silicate material is used as a cement binder prior to contact with carbon dioxide. However, Sonat teaches a method for forming a concrete binder using a magnesium silicate hydrate material similar to that formed by the method of Kennedy (see e.g. Abstract). Sonat teaches that the water to binder ratio used is 0.5, or 1:2 and thus within the claimed range (see e.g. page 946, second column, second full paragraph, starting “Samples were prepared…”). Accordingly, prior to the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to incorporate the carbon dioxide sequestering activated magnesium silicate material of Kennedy into a binder as taught by Sonat in order to form a binder that has carbon dioxide sequestration properties.
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 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/722,826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the reference application recites providing a starting material having at least 20% by mass magnesium silicate hydrate and a fineness corresponding to a surface area of 0.1 m2/g or finer; homogenizing the starting material; dewatering the material by heat treatment between 180-1000 °C, and then contacting the product with carbon dioxide.
Regarding claim 8, claim 12 of the reference application recites that the contacting with carbon dioxide is carried out in an aqueous suspension by blowing in carbon dioxide containing gas.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/725,196 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 21 of the reference application depends from claim 16 and therefore incorporates all limitations of claim 16. Claim 16 of the reference application recites providing a starting material including ultramafic rocks, olivine, serpentinite, or similar materials; crushing and homogenizing the starting material; and heat treatment at a temperature between 180-1000 °C. Claim 21 of the reference application further recites the step of contacting the material with carbon dioxide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 4-5 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.
Claim 4 recites that additional agents are added in one of steps (a)-(d). Kennedy does not teach the addition of any other agents prior to the heat treatment activation of step (e). Further, as Kennedy teaches that the method operates to effectively sequester carbon dioxide without any additional agents, it would not have been obvious to one of ordinary skill in the art to modify Kennedy to include addition of other materials prior to activation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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