DETAILED ACTION
Status of Claims:
Claims 1-26 are pending.
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 .
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 1-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 19/133,924 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1-26:
The claims of the copending application disclose the system for processing liquid to change an amount of carbon dioxide in the liquid, the system comprising: a container (receptacle) (see claim 1) including an inlet to receive liquid (through an inlet) (see claim 2) and an outlet to release the liquid (water is released therefore an outlet is inherent) (see claim 2), the container for holding the liquid; one or more sensors (collecting sensor date) coupled to the container to measure carbon content in the liquid that is held in the container (carbon concentration) (see claim 1); and a control system (monitoring system) including a processor for executing instructions to: receive outputs of the one or more sensors; and based on the outputs of the one or more sensors, control dosing of material into the container that reacts with carbon dioxide to change the amount of carbon dioxide in the liquid such that an amount of the material introduced into the container changes over time responsive to changes in the carbon content being measured in the liquid (adding supplement) (see claim 10) (see claim 14).
The claims of the copending application further disclose or render obvious all other claimed limitations, such as an air inlet (dispensing gaseous carbon dioxide, therefore an air inlet is inherent) (see claim 13), a second sensor for alkalinity (see claim 7), and a partially submerged/floating housing (external water system) (see claims 2-4).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8, 20-23, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/236,371 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1-8, 20-23, 25 and 26:
The claims of the copending application disclose the system for processing liquid to change an amount of carbon dioxide in the liquid, the system comprising: a container including an inlet to receive liquid and an outlet to release the liquid, the container for holding the liquid (see claim 11); one or more sensors (autonomous measuring system) (see claim 11) coupled to the container to measure carbon content in the liquid that is held in the container (); and a control system including a processor for executing instructions to (control system): receive outputs of the one or more sensors; and based on the outputs of the one or more sensors, control dosing of material into the container that reacts with carbon dioxide to change the amount of carbon dioxide in the liquid such that an amount of the material introduced into the container changes over time responsive to changes in the carbon content being measured in the liquid (see claim 11).
The remaining limitations of claims 2-8, 20-23 and 26 are disclosed or made obvious in view of the claims of the copending application, specifically a second sensor for alkalinity (see claim 1).
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 2-6, 8, 13, and 17 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 2-6, 8, 13 and 17:
The claims are directed to a “system” (product) however they contain process limitations (“control system ends introduction”, “control system controls dosing”, “control system ends introduction”, “control system further determines”, “determines the carbon content”, “control system controls opening”, “material reacts”, and “control system ends introduction”) (see claims 2-6, 8, 13, and 17 respectively). Claims process limitations within a product claim raise issues of indefiniteness because it is not clear if the process steps must be occurring for direct infringement to occur (see MPEP 2173.05(p)).
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) 1-13, 16-20, and 23-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi et al (WO 2023/034869).
Regarding Claim 1:
Takahashi teaches the system for processing liquid to change an amount of carbon dioxide in the liquid, the system comprising: a container (at least one container) including an inlet to receive liquid (influent is fed into the container therefore there is an inlet) (see pg. 1, Brief summary) and an outlet to release the liquid (see fig. 1, Annotated below), the container for holding the liquid; one or more sensors coupled to the container to measure carbon content in the liquid that is held in the container (sensor for dissolved CO2 concentration) (see pg.1, Brief summary); and a control system including a processor for executing instructions to (control system 6) (see pg. 61 lines 15-19): receive outputs of the one or more sensors; and based on the outputs of the one or more sensors, control dosing (additive feedstock application) of material into the container that reacts with carbon dioxide to change the amount of carbon dioxide in the liquid such that an amount of the material introduced into the container changes over time responsive to changes in the carbon content being measured in the liquid (see pg. 64-65, Embodiment 4, pg. 65-66, embodiment 5).
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Regarding Claims 2-6:
Takahashi teaches the system of claim 1. The remaining limitations of claims 2-6 are directed to the method of operation, however the claims are directed to a system. Method limitations within the system claim only add patentable weight to the extent that the prior art must be capable of the claimed function. In the instant case, as Takahashi teaches a control system in which material additions can be controlled (feedstock application rate) (se Takahashi pg. 66 lines 1-5) and carbon dioxide is monitored (see pg. 2 lines 1-14) the system is capable of “the control system ends introduction of the material into the container based on the material reacting with the carbon dioxide in the liquid and the amount of carbon dioxide in the liquid being below a threshold amount”, “the carbon content in the liquid is a first content, and the control system controls dosing of the material into the container to change the amount of carbon dioxide in the liquid to a second content lower than the first content, and wherein the control system monitors outputs of the one or more sensors during active introduction of the material into the container to determine when the second content is reached”, “the control system ends introduction of the material into the container based on a target amount of carbon dioxide being removed from the liquid”, “wherein the control system further determines an amount of carbon dioxide captured and stored based on a comparison of the first content and the second content”, “the control system controls opening of the outlet of the container to release the liquid based on the amount of carbon dioxide in the liquid falling below a threshold amount”.
Regarding Claim 7:
Takahashi teaches system of claim 1, further comprising: an additive system (feedstock slurry tank) coupled to the container including a repository of the material to be added into the container (see Fig. 1 above).
Regarding Claim 8:
Takahashi teaches the system of claim 1, wherein the control system determines the carbon content in the liquid once the container is in a closed state, wherein the closed state prevents liquid and airflow into or out of the container. Takahashi teaches that the container has sealable junctions, therefore it can be in a closed state (see pg. 2 lines 15-17). Determines the carbon content is a method limitation, however the claims are directed to a system. Method limitations only add patentable weigh to the extent that the prior art must be capable of the same function. As the system of Takahashi can be in a closed state and carbon content can be determined (see pg. 2, lines 1-14) this limitation is met.
Regarding Claim 9:
Takahashi teaches the system of claim 1, wherein: the container includes an air inlet (inlet suitable for at least one acidifying agent alternatively Takahashi teaches CO2 is provided form a gaseous CO2 source, therefor an inlet air is inherent ) (see pg. 2 lines 15-19, pf. 3 lines 19-24) to enable carbon dioxide to be input into the container to incorporate the carbon dioxide into the liquid within the container.
Regarding Claim 10:
Takahashi teaches the system of claim 1, wherein: the container includes an air inlet (there is aeration, therefore there is an air inlet) to enable direct air capture into the container to incorporate gas into the liquid within the container (see pg. 3, lines 16-17).
Regarding Claim 11:
Takahashi teaches the system of claim 10, wherein the one or more sensors comprise a first sensor for measuring the carbon content in the liquid (dissolved CO2 concentration), and the system further comprises: a second sensor for measuring an alkalinity (alkalinity) of the liquid in the container; and based on the alkalinity of the liquid in the container, the control system controls the air inlet to enable the direct air capture into the container to incorporate additional carbon dioxide into the liquid within the container (see pg. 1, lines 25-27). There are means for controlling aeration including the partial pressure of CO2 (see pg. 3 lines 15-18), therefore Takahashi is capable of the claimed method limitations. The claim is directed to a system, therefore method limitations only add patentable weigh to the extent that the prior art must be capable of the same function.
Regarding Claim 12:
Takahashi teaches the system of claim 10, wherein the one or more sensors comprise a first sensor for measuring the carbon content in the liquid (dissolved CO2 concentration) (see pg. 1 line 27), and the system further comprises: a second sensor for measuring an oxygen level of the liquid in the container (dissolved oxygen concentration) (see pg. 2 line 29); and based on the oxygen level of the liquid in the container, the control system controls the air inlet to enable the direct air capture into the container to incorporate additional oxygen into the liquid within the container. The claim is directed to a system, therefore method limitations only add patentable weigh to the extent that the prior art must be capable of the same function. As Takahashi teaches sensors for measuring the same values and a control system it would be capable of the same method steps.
Regarding Claim 13:
Takahashi teaches the system of claim 1, wherein: the material reacts with the carbon dioxide to dissolve and form bicarbonate products, and the control system controls dosing of the material such that some of the material is recoverable and the amount of carbon dioxide in the liquid is reduced to a target amount (see pg. 2 lines 10-14).
Regarding Claim 16:
Takahashi teaches the system for processing liquid to change an amount of carbon dioxide in the liquid, the system comprising: a container including a first inlet to receive liquid into the container (see fig. 1 annotated above) and a second inlet to incorporate gas into the liquid within the container (means for controlling aeration…increasing partial pressure of CO2, an inlet is inherent) (see pg. 3 lines 14-18); one or more sensors coupled to the container to measure carbon content in the liquid that is held in the container (see pg. 1 lines 25-59); and a control system including a processor for executing instructions to: receive outputs of the one or more sensors; and based on the outputs of the one or more sensors, control dosing of material into the container that reacts with carbon dioxide to change the amount of carbon dioxide in the liquid such that an amount of the material introduced into the container changes over time responsive to changes in the carbon content being measured in the liquid (see pg. 2 lines 8-14).
Regarding Claim 17:
Takahashi teaches the system of claim 16. Method limitations within the system claim only add patentable weight to the extent that the prior art must be capable of the claimed function. In the instant case, as Takahashi teaches a control system in which material additions can be controlled (feedstock application rate) (se Takahashi pg. 66 lines 1-5) and carbon dioxide is monitored (see pg. 2 lines 1-14) the system is capable of “the control system ends introduction of the material into the container based on the material reacting with the carbon dioxide in the liquid and the amount of carbon dioxide in the liquid being below a threshold amount”.
Regarding Claim 18:
Takahashi teaches the system of claim 16, wherein the one or more sensors comprise a first sensor for measuring the carbon content in the liquid, and the system further comprises: a second sensor for measuring an alkalinity of the liquid in the container (see pg. 1 lines 25-27); and based on the alkalinity of the liquid in the container, the control system controls the second inlet to enable direct air capture into the container to incorporate additional carbon dioxide into the liquid within the container. The claim is directed to a system, therefore method limitations only add patentable weigh to the extent that the prior art must be capable of the same function. As Takahashi teaches sensors for measuring the same values and a control system it would be capable of the same method steps.
Regarding Claim 19:
Takahashi teaches the system of claim 16, wherein the one or more sensors comprise a first sensor for measuring the carbon content in the liquid (see pg. 1 lines 25-27), and the system further comprises: a second sensor for measuring an oxygen level (dissolved oxygen concentration) (see pg. 2 line 29) of the liquid in the container; and based on the oxygen level of the liquid in the container, the control system controls the air inlet to enable the direct air capture into the container to incorporate additional oxygen into the liquid within the container. The claim is directed to a system, therefore method limitations only add patentable weigh to the extent that the prior art must be capable of the same function. As Takahashi teaches sensors for measuring the same values and a control system it would be capable of the same method steps.
Regarding Claim 20:
Takahashi teaches the method for processing liquid to change an amount of carbon dioxide in the liquid, the method comprising: receiving liquid from a source into a container (see Fig. 1 above); measuring carbon content in the liquid that is held in the container by one or more sensors coupled to the container (see pg. 1, lines 25-29); and based on outputs of the one or more sensors, controlling dosing of material (feedstock application rate) (see pg. 66 lines 2-5) into the container that reacts with carbon dioxide to change the amount of carbon dioxide in the liquid such that an amount of the material introduced into the container changes over time responsive to changes in the carbon content being measured in the liquid (see pg. 2 lines 10-14).
Regarding Claim 23:
Takahashi teaches the method of claim 20: wherein receiving liquid from the source into the container comprises partially filling the container with the liquid to create a filled region containing the liquid and an unfilled region containing air (there is a measured partial pressure of CO2, therefore there is an unfilled region) (see pg. 1 lines 25-29), and wherein measuring carbon content in the liquid comprises: measuring, by the one or more sensors positioned in the unfilled region, a carbon content of the air (partial pressure of CO2); measuring, by the one or more sensors positioned in the filled region, properties of the liquid including temperature, salinity, and alkalinity (alkalinity); and calculating the concentration of carbon in the liquid based on the outputs of the one or more sensors (change in CO2 is calculated, therefore carbon content is calculated) (see pg. 2 lines 8-10).
Regarding Claim 24:
Takahashi teaches the method of claim 20, wherein: receiving liquid from the source into a container comprises receiving the liquid via a first inlet into the container (see fig. 1, annotated above, and measuring the carbon content in the liquid that is held in the container comprises measuring the carbon content by a first sensor (see pg. 1, lines 25-29), and the method further comprises: measuring alkalinity of the liquid in the container by a second sensor (see pg. 1, lines 25-29); and based on the alkalinity of the liquid in the container (changing parameters of the contacting step based on measured parameters) (see pg. 2 lines 10-12), controlling a second inlet (inlet for increasing partial pressure of CO2 for aeration) (see pg. 3 lines 14-18) of the container to enable direct air capture into the container to incorporate additional carbon dioxide into the liquid within the container (controlling aeration) (see pg. 3 lines 14-18).
Regarding Claim 25:
Takahashi teaches the method of claim 20, wherein the container includes an inlet to receive the liquid and an outlet to release the liquid (see fig. 1, above), and the method further comprises: based on the outputs of the one or more sensors, controlling opening and closing of the inlet and the outlet to control a flow rate of the liquid into and out of the container (changes to flow rate) (see pg. 24 lines 1-2, pg. 34 lines 11-14, pg. 48 lines 20-23).
Regarding Claim 26:
Takahashi teaches the method of claim 20, wherein the container includes an inlet to receive the liquid and an outlet to release the liquid, and the method further comprises: based on the outputs of the one or more sensors, controlling opening and closing of the inlet and the outlet to control a duration of the liquid in the container (changing flow rate changes the duration of liquid in the container) (see pg. 48 lines 20-23).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 14, 15, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (WO 2023/034869) as applied to claims 1 and 21 above, and further in view of Regan et al (US 2021/0129078).
Regarding Claims 14 and 15:
Takahashi teaches the system of claim 1, further comprising: a housing coupled to or including the container, the one or more sensors, and the control system (housing as a shipping container) (see pg. 9, lines 17-18, fig. 20),
Takahashi does not teach the housing is at least partially submerged in a source of the liquid or the housing is a floating vessel.
Regan teaches a carbon capture system, comprising a housing (marine vessel 602) (see para. 0084) including a container, one or more sensors and a control system (see para. 0083). Regan further teaches the housing is at least partially submerged in a source of the liquid or the housing is a floating vessel (marine vessels float and are partially submerged in the ocean).
Takahashi and Regan are analogous inventions in the art of carbon capture. It would have been obvious to one skilled in the art to place the system of Takahashi in a marine vessel housing, as disclosed by Regan because it is the simple substitution of one housing for another, obviously resulting in the ability for ocean based carbon capture, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 22:
Takahashi teaches the method of claim 21.
Takahashi does not teach controlling dosing of material into the container comprises: the control system including the processor for executing instructions to perform a feedback loop including (i) releasing a first amount of the material from the feeder into the container, (ii) receiving subsequent outputs of the one or more sensors, (iii) determining an updated carbon content in the liquid, (iv) based on the updated carbon content in the liquid being above a threshold amount, releasing a second amount of the material from the feeder into the container.
Regan teaches a method for processing liquid to change the amount of carbon dioxide comprising controlling dosing of material into a container comprising: a control system including a processor for executing instructions to perform a feedback loop (feedback to control system) (see para. 0118) including (i) releasing a first amount (calculated portion) of the material from the feeder into the container (material dispensing system) (see para. 105), (ii) receiving subsequent outputs of the one or more sensors, (iii) determining an updated carbon content in the liquid, (iv) based on the updated carbon content in the liquid being above a threshold amount, releasing a second amount of the material from the feeder into the container (date used as feedback to material dispensing system) (see para., 0118).
Takahashi and Regan are analogous invention in the art of carbon capture. It would have been obvious to one skilled in the art to add the feedback loop of Regan to the method of Takahashi because it can prevent undersaturation or oversaturation (see Regan para. 0118).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (WO 2023/034869).
Regarding Claim 21:
Takahashi teaches the method of claim 20, wherein controlling dosing of material into the container comprises: a control system including a processor for executing instructions to control operation of a valve (control system is connected to automated values therefore there is a processor for executing instructions of some kind) (See pg. 62 lines 11-15).
Takahashi does not teach that the valve is of a feeder to release the material from the feeder into the container. Takahashi further teaches a feeder to release material (see fig. 1, feed stock slurry container), a controlled application rate of feedstock (see pg. 66 lines 1-5) and the sensors can be used to control automated valves (see pg. 62 lines 16-17).
It would have been obvious to one skilled in the art before the effective filing date of the invention to add a valve to control the flow of material, as disclosed by Takahashi, to the feeder of Takahashi because it is the simple addition of a known control means to a known device, obviously resulting in a controllable flow from the feeder, with an expectation of success. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Subhas et al (US 2016/0177344) which teaches a carbon capture method and apparatus wherein the addition of a mineral sequestration agent (material) is controlled with a feedback loop based on CO2 concentration (see para. 0078 and 0079).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ramdhanie Bobby can be reached at 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 7/9/2026
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