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 .
DETAILED ACTION
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/595,572, filed on 19 November 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 15 July 2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “means for controlling how much CO2 and/or H2S is to be dissolved in water” and the “means for controlling a downward velocity” as recited in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
As shown in Fig. 4, reference characters "204" and "205" have both been used to designate “outer pipe”.
As shown in Fig. 9, reference characters “504” and “505” have both been used to designate “outer pipe”.
The drawings are objected to because:
Regarding Fig. 2, titles on the X and Y-axes should be used to describe the information (i.e. distance or depth) that is associated with the respective axis, including the appropriate units of measure.
Regarding Fig. 4, the lead lines associated with reference characters “204” and “208” appear to refer to the annulus between the outer pipe 205 and the wall of injection well 210 instead of to the “outer water injection well” and the “mixer”, as described in the specification.
Regarding Fig. 11, the reference character associated with the triangle that appears to designate the water level is illegible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: A METHOD AND SYSTEM FOR ABATING CARBON DIOXIDE AND HYDROGEN SULFIDE
The disclosure is objected to because of the following informalities:
In line 8 of page 27, it appears that “hi” should be changed to “h1”.
In line 28 of page 30, the abbreviation “FES” should be defined at least once in the specification.
Appropriate correction is required.
Claim Objections
Claims 1 - 6 are objected to because of the following informalities:
In line 16 of claim 1, “CO2 and or H2S” should be changed to “CO2 and/or H2S”.
In lines 3 - 4 of claim 2, “a CO2 and H2S rich gas stream” should be changed to “the CO2 and H2S rich gas stream”.
Regarding claim 3, “the” should be inserted before “bubbles” in line 5 and “the” should be inserted before “bubbles” in line 8.
In line 2 of claim 4, “CO2 and or H2S” should be changed to “CO2 and/or H2S”.
In line 2 of claim 5, “CO2 and or H2S” should be changed to “CO2 and/or H2S”.
In line 17 of claim 6, “the” should be inserted before “bubbles”.
In line 20 of claim 6, “the” should be inserted before “bubbles”.
In line 24 of claim 6, “CO2 and/or H2S rich gas streams comprising bubbles” should be changed to “the CO2 and/or H2S rich gas streams comprising the bubbles”.
In line 29 of claim 6, “a CO2 and H2S rich gas stream” should be changed to “the CO2 and/or H2S rich gas stream”.
Appropriate correction is required.
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 - 6 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.
Claims 1 - 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: Claim 1 fails to positively recite any structural limitations. Claim 1 only recites intended use.
Regarding claim 1, it is unclear whether Applicant intends to recite both “CO2” and “H2S” or “CO2 and/or H2S” because lines 1, 4, 5, 7, 9, 10, 11, 16, and 17 recites “CO2 and/or H2S” while line 8 and lines 13 - 14 recites “CO2 and H2S”. Claim 2 contains a similar error.
Regarding claim 2, it is unclear whether “a merging point” as recited in line 3 refers to the merging point recited in claim 1, from which claim 2 depends, or if it represents an additional limitation.
Regarding claim 3, it is unclear whether “a velocity” as recited in line 2 refers to “a velocity” as recited in claim 1, from which claim 3 depends, or if it represents an additional limitation.
There is insufficient antecedent basis for the following limitations in the claims:
Claim 1, line 6: “the hydraulic pressure”
Claim 1, lines 6 - 7: “the partial pressure”
Claim 1, line 11: “the upward velocity”
Claim 1, line 15: “the resulting pH”
Claim 6, line 11: “the hydraulic pressure”
Claim 6, line 12: “the partial pressure”
Claim 6, line 28: “the resulting pH”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 - 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 3, all of the limitations are associated with the step of “transferring the water comprising CO2 and/or H2S downwardly at a velocity” and claim 3 fails to recite any additional structural limitations. Since method steps are not given patentable weight in an apparatus claim, claim 3 fails to further limit claim 1, from which claim 3 depends.
Regarding claim 4, all of the limitations are associated with the step of “keeping the resulting pH value of said pressurized water stream” and claim 4 fails to recite any additional structural limitations. Since method steps are not given patentable weight in an apparatus claim, claim 4 fails to further limit claim 3, from which claim 4 depends.
Regarding claim 6, all of the limitations are associated with the step of “keeping the resulting pH value of said pressurized water stream” and claim 6 fails to recite any additional structural limitations. Since method steps are not given patentable weight in an apparatus claim, claim 5 fails to further limit claim 1, from which claim 5 depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 - 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,121,850. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Since claim 1 of the present application does not recite any structural elements, claim 1 of the ‘850 patent reads on the claim. Additionally, claim 1 of the ‘850 recites all the method steps that the system recited in claim 1 of the present application is configured to perform.
Regarding claim 6 of the present application, claim 1 of the ’850 recites an injection well. Although claim 1 of the ‘850 patent fails to explicitly recite a merging point, a means for controlling how much CO2 and/or H2S gas is to be dissolved in said water, and a means for controlling downward velocity of the water within the injection well, the aforementioned structural elements would obviously be required to perform the method as recited in claim 1 of the ‘850 patent.
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.
Claims 1 - 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koide et al. (US 2009/0202304).
Regarding claims 1 and 3 - 5, Koide discloses a system for abating carbon dioxide (CO2) and/or hydrogen sulfide (H2S) in a geological reservoir (Figs. 1 and 3; paragraphs 0085 - 0125). Since claims 1 and 3 - 5 do not positively recite any structural limitations, the system as disclosed by Koide reads on all of the claim limitations.
Regarding claims 2 and 6, Koide further discloses an injection well (21); a merging point (point at which pipes 32 and 33 converge) for merging water from a water source with a CO2 rich gas stream; means for controlling (flow control valve 25b) how much CO2 gas is to be dissolved in said water; and means for controlling a downward velocity (water injection pump 14) of said water within the injection well (Figs. 1 and 3; paragraphs 0085 - 0125). Examiner takes the position that the method steps that the system is intended to perform, as recited in claim 6, lack patentable weight in an apparatus claim.
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.
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.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al. in view of Dusseault et al. (US 2014/0186119).
Regarding claims 1, 4, and 5, assuming arguendo that the recited intended use is to be given patentable weight in the claim, Koide discloses a system for abating carbon dioxide (CO2) and/or hydrogen sulfide (H2S) in a geological reservoir (Figs. 1 and 3; paragraphs 0085 - 0125) comprising: a pump (9) for pumping water from a water source (water storage tank 11) to an injection well (21), dissolving CO2 (carbon dioxide 55) in the water by merging a CO2 rich gas stream with the water at a merging point (point where pipes 32 and 33 converge), ensuring that the CO2 is kept in solution in the water by transferring the water comprising CO2 downwardly at a velocity, which is higher than the upward velocity of the bubbles of CO2 in the water, from the merging point to a depth where the hydraulic pressure of the water has increased to a pressure required for all of said CO2 gas to be dissolved, and injecting the water comprising the dissolved CO2 into the geological reservoir (aquifer 50) (Figs. 1 and 3; paragraphs 0085 - 0125). Koide fails to disclose keeping the resulting pH value of the pressurized water stream containing said dissolved CO2 between about 2 and 4, based on how much CO2 is dissolved in said water . Dusseault teaches a pH of 3.5 for keeping carbonate materials dissolved in water, based on how much CO2 is dissolved in said water (paragraph 0124). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the method as disclosed above with the step of keeping the resulting pH value of said pressurized water stream containing said dissolved CO2 between about 2 and 4, based on how much CO 2 is dissolved in said water as taught by Dusseault to keep the dissolved carbonate materials dissolved in water.
Regarding claim 2, Koide further discloses an injection well (21); a merging point (point at which pipes 32 and 33 converge) for merging water from a water source with a CO2 rich gas stream; means for controlling (flow control valve 25b) how much CO2 gas is to be dissolved in said water; and means for controlling a downward velocity (water injection pump 14) of said water within the injection well (Figs. 1 and 3; paragraphs 0085 - 0125).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571-270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
11/12/2025