DETAILED ACTION
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 1-3 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 claims 1-3, the limitation “about 0%” is unclear and indefinite. It is unclear whether or not “about 0%” includes 0%. In other words, it is unclear whether or not potassium cation is required to be present.
Regarding claims 1-3, in step “c)”, it is unclear whether “heating adsorbent bed” is referring to the previously recited “adsorbent bed”. The Examiner suggests amending the limitation to recite “heating the adsorbent bed”.
Claim Rejections - 35 USC § 102/103
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.
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 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Deckman USPA 2008/0282892 A1.
Regarding claims 1-3, Deckman discloses
Regarding claims 1-3, Deckman discloses a temperature swing adsorption process (Abstract) for separating CO.sub.2 from a feed gas mixture (paragraph 58), wherein the process comprises: a) subjecting the feed gas mixture comprising CO.sub.2 to an adsorption step by introducing the feed gas mixture into a feed input end of an adsorbent bed (paragraph 61), wherein the adsorbent bed comprises: a feed input end and a product output end (see figures); and an adsorbent material selective for adsorbing CO.sub.2 (paragraph 70), wherein the adsorbent material comprises one or more of the following: (i) a zeolite with a framework structure of FAU or MFI (paragraph 76), having: a. a first Si/Al ratio of about 1 to about 20; and b. a potassium cation concentration of about 0% to about 40% (paragraph 70: the ranges overlap); wherein the adsorbent bed is operated at a first pressure and at a first temperature wherein at least a portion of the CO.sub.2 in the feed gas mixture is adsorbed by the adsorbent bed and wherein a gaseous product depleted in CO.sub.2 exits the product output end of the adsorbent bed; b) stopping the introduction of the feed gas mixture to the adsorbent bed before breakthrough of CO.sub.2 from the product output end of the adsorbent bed; and c) heating adsorbent bed to a second temperature higher than the first temperature (Abstract; paragraph 61), resulting in desorption of at least a portion of CO.sub.2 from the adsorbent bed and recovering at least a portion of CO.sub.2 from the adsorbent bed (paragraphs 181 and 182).
In the alternative, if Deckman is not deemed to anticipate the Si/Al range of about 1 to about 20, absent a proper showing of criticality or unexpected results, the Si/Al ratio is considered to be a general condition that would have been routinely optimized by one having ordinary skill in the art in order to provide optimal CO₂ removal. MPEP 2144.05. Since the ranges disclosed by Deckman overlap with the claimed range, it would have been obvious to one having ordinary skill in the art to find the ideal values within the disclosed range of Deckman.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,744,449 and claim 13 of U.S. Patent No 11,642,619. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 10,744,449 and claim 13 of U.S. Patent No 11,642,619 include all the limitations of the present claims 1-3. These two patents include more elements and are thus more specific. Thus the invention of these patents are in effect “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
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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