DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/13/2026 has been entered.
Response to Amendments
In response to the amendment received on 07/13/2026:
• Claims 16-19, 21, 23-25, 27, 28, and 31-36 are currently pending. Claims 1-15, 20, 22, 26, 29, 30, and 37 are canceled. The objections to claims 25-27, 31, and 32 are withdrawn in light of the amendments to the claims. The rejection of claims 16-28 under 35 U.S.C. 112(a) is withdrawn in light of the amendments to the claims. The rejections of claims 16-28 and 31-37 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims; however, the 112(b) rejections regarding the claimed term “second sulfonic acid” are maintained as relevant to claims 16, 21, 25, 35, and 36 (see below).
Claim Objections
Claims 17, 31, 35, and 36 are objected to because of the following informalities:
• Claim 17, line 18 should be amended to read: “…carboxylic acids and/or the first…”
• Claim 31, line 3 should be amended to read: “CaCO3-comprising raw meal (i.e., a hyphen should be added) (alternatively, claim 31 can be deleted, as suggested in the “Examiner’s Suggestions” below).
• Claim 35, line 2 should be amended to read: “…carboxylic acids and/or the first…” (alternatively, claim 35 can be deleted, as suggested in the “Examiner’s Suggestions” below).
• Claim 36, line 2 should be amended to read: “…carboxylic acids and/or the first…” (alternatively, claim 36 can be deleted, as suggested in the “Examiner’s Suggestions” below).
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 16-19, 21, 23-25, 27, 28, and 31-36 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.
In claim 16, line 15, the phrase “withdrawing at least a portion of: the first and second carboxylic acids, and/or the first sulfonic acid” generates confusion. The use of a first carboxylic acid is optional earlier in the claim via the “and/or” language in claim 16, line 9, regarding the CO2-liquifying option. In other words, claim 16 allows for a portion of the CO2 to be liquified without the presence of any first carboxylic acid or first sulfonic acid. However, the claim later necessitates withdrawing the first and second carboxylic acids and/or the first sulfonic acid. Thus, confusion arises, because the liquifying option, if exercised, does not have a first and second carboxylic acid and/or first sulfonic acid to withdraw. To correct, the Examiner suggests deleting the CO2-liquifying option from the claims (including in claim 28) (see the suggestions in the “Examiner’s Suggestions” section below). For the purposes of examination, the Examiner is interpreting that in the case the liquifying option is used, only the reduction-formed carboxylic acid needs to be withdrawn to read on the claim. Claims 17-19, 21, 23-25, 27, and 28 are also rejected by virtue of their dependency on claim 16.
In claim 16, lines 16 and 18; claim 21, line 3; claim 25, line 2; claim 35, lines 2-3; and claim 36, line 3 the claimed “second sulfonic acid” is unclear. There is no previous mention of the use or formation of a second sulfonic acid in the reducing step. It is not apparent what the claimed “second sulfonic acid” is referring to. To correct, the Examiner suggests deleting all uses of the second sulfonic acid from the claims (see the suggestions in the “Examiner’s Suggestions” section below). For the purposes of examination, the Examiner is interpreting the presence of any sulfonic acid to suitably read on the claimed second sulfonic acid. It is noted that the Examiner further suggests deleting claims 31-36, for the reasons mentioned later below. Claims 17-19, 21, 23-25, 27, and 28 are also rejected by virtue of their dependency on claim 16.
Moreover, in claim 16, lines 15-16, the phrase “the first and second carboxylic acids, and/or the first sulfonic acid and a second sulfonic acid” is confusing. It is unclear whether the “second sulfonic acid” is necessitated to be withdrawn in all scenarios, or whether the second sulfonic acid is part of the “and/or” modifier. To correct, the Examiner suggests deleting the term “second sulfonic acid” from the claim (also see the “Examiner’s Suggestions” below). For the purposes of examination, the Examiner is interpreting the second sulfonic acid to be modified by the “and/or” term (i.e., it is not required to be withdrawn in all scenarios). Claims 17-19, 21, 23-25, 27, and 28 are also rejected by virtue of their dependency on claim 16.
In claim 16, lines 17-22 the phrase “reacting at least a fraction of…the first and second carboxylic acids…as a part of the converting the CaCO3-comprising raw meal” is confusing. The converting step has already happened; a reaction cannot be performed on a step that has already occurred. It is believed Applicants intended for the reacting step to be with respect to continued operations of the clinker line (i.e., once the clinker line method is repeated). For the purposes of examination, the Examiner is interpreting as such. To correct, the Examiner suggests amending the claim as follows: “…wherein in continued operations of the cement clinker line, a acid is reacted with CaCO3 comprised in…” (also see the suggestions in the “Examiner’s Suggestions” section below). Claims 17-19, 21, 23-25, 27, and 28 are also rejected by virtue of their dependency on claim 16.
In claim 16, lines 18-19, the phrases “the raw meal” lack sufficient antecedent basis. It is unclear whether the claimed raw meal is referring to the CaCO3-comprising raw meal or the calcined raw meal. To correct, the Examiner suggests amending the claim as follows: “…with CaCO3 comprised in the CaCO3-comprising raw meal, to thereby convert at least a portion of the CaCO3-comprising raw meal into intermediate raw meal comprising at least…” (also see the suggestions in the “Examiner’s Suggestions” section below). For the purposes of examination, the Examiner is interpreting as such. Claims 17-19, 21, 23-25, 27, and 28 are also rejected by virtue of their dependency on claim 16.
In claim 21 and claim 36, the phrase “in the dissolving step” is confusing. The dissolving step has already happened; the acids cannot be recycled back to a step that has already occurred. It is believed Applicants intended for the dissolving step to be with respect to continued operations of the clinker line (i.e., once the clinker line method is repeated). For the purposes of examination, the Examiner is interpreting as such. To correct, the Examiner suggests amending the claim as follows: “…in the dissolving step as a solvent in continued operations of the cement clinker line.” (also see the suggestions in the “Examiner’s Suggestions” section below).
In claim 27, the term “hot air” is a relative term which renders the claim indefinite. The term “hot air” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. At what temperature is air considered “hot?” 100 °C? 1000 °C? For the purposes of examination, the Examiner is interpreting any air provided to the burner of a kiln to be “hot air.” To correct, the Examiner suggests deleting claim 27 (also see the Examiner’s suggestions below to delete claim 27).
In claim 31, line 7, the phrases “the raw meal” lack sufficient antecedent basis. It is unclear whether the claimed raw meal is referring to the CaCO3-comprising raw meal or the calcined raw meal. To correct, the Examiner suggests deleting the claim (see the suggestions in the “Examiner’s Suggestions” section below). For the purposes of examination, the Examiner is interpreting the raw meal to refer to the CaCO3-comprising raw meal. Claims 32-36 are also rejected by virtue of their dependency on claim 31.
In claim 31, line 16, the phrase “the second carboxylic acid” lacks sufficient antecedent basis. This is because the “and/or” language earlier in the claim allows for only sulfonic acids to be used; thus, in the case that only sulfonic acids are used, the term “the second carboxylic acid” becomes confusing and lacks antecedent basis, given there is no previous second carboxylic acid. In general, by placing the converting step first along with the “and/or” language for the carboxylic and sulfonic acids, significant antecedent basis issues arise. For instance, even if “the” second carboxylic acid in claim 31 is changed to “a” carboxylic acid, it now becomes unclear whether this “second” carboxylic acid is the same or different as the “second” carboxylic acid used earlier in the converting step. This ricochets into further antecedent basis issues with respect to claims 35 and 36 (i.e., which “second” carboxylic acid are claims 35 and 36 referring to?). Given the confusion regarding such antecedent basis issues, the Examiner suggests canceling claim 31, and accordingly, claims 32-36. Alternatively, the Examiner suggests removing the “and/or” language from the claims in order to improve clarity. Claims 32-36 are also rejected by virtue of their dependency on claim 31. For the purposes of examination, the Examiner is interpreting the second carboxylic acid to refer to the reduction-formed carboxylic acid.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-18, 23-25, and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Gibbs et al. (Gibbs, Michael J, et al. “CO2 Emissions From Cement Production.” Intergovernmental Panel on Climate Change, 8 Dec. 2003, www.ipcc-nggip.iges.or.jp/public/gp/bgp/3_1_Cement_Production.pdf) (hereinafter referred to as “Gibbs”), in view of Sivasankar et al. (US-20140021059-A1) (hereinafter referred to as “Sivasankar”).
Regarding claims 16, 31, and 35, Gibbs teaches a method configured for operating a cement clinker line (see Gibbs at pg. 1, para. 1 and pg. 2, para. 1-3, teaching a method for the formation of clinker, in which limestone (CaCO3) is converted to lime (CaO) with CO2 production as a by-product), the method comprising at least:
• converting a CaCO3 comprising raw meal into calcined raw meal and at least CO2 and/or sintering calcined raw meal in a kiln, thereby obtaining at least cement clinker and CO2 (see Gibbs at pg. 1, para. 1 and pg. 2, para. 1-3, teaching a calcination step in which calcium carbonate is heated in a rotary kiln to form calcium oxide/clinker and CO2 as a by-product; note that the “and/or” language of the claim does not necessitate the converting step).
While Gibbs teaches the method outlined above, Gibbs fails to explicitly teach the method as further comprising the steps of:
separating the CO2 from the calcined raw meal and/or the clinker; and further comprising the steps of: dissolving at least a portion of the CO2 in a first carboxylic acid and/or a first sulfonic acid to form a dissolved CO2 and/or liquifying at least a portion of the CO2 to form a liquified CO2; and reducing the dissolved and/or liquified CO2 electrolytically at a cathode of an electrolytic cell to a second carboxylic acid with the use of an electrolyte at the cathode; and withdrawing at least a portion of: the first and second carboxylic acids, and/or the first sulfonic acid and a second sulfonic acid from the electrolytic cell.
However, Sivasankar teaches a process in which CO2 is electrochemically reduced to formic acid (see Sivasankar at para. 0017-0018), resulting in reduced CO2 emissions (see Sivasankar at para. 0004-0005). Sivasankar further teaches the carbon dioxide gas to be continuously bubbled through the cathodic electrolyte solution (see Sivasankar at para. 0021), thus necessarily suggesting at least some of the CO2 to be dissolved in the solution. Moreover, Sivasankar teaches the concentration of formic acid within the cathode to be at or below 500 ppm, and further teaches an example in which the formic acid concentration continuously remains at between 8 and 15 ppm (see Sivasankar at para. 0032). Consequently, since Sivasankar teaches formic acid may be left within the cathode during the electrochemistry process, it necessarily follows the formic acid functions as an electrolyte in the cathode. In other words, one of ordinary skill could readily imagine the CO2 dissolving in the cathode electrolyte solution – a solution which contains small amounts of formic acid generated in a previous reduction step – and further can readily imagine the formic acid functioning as an electrolyte in such a solution. Additionally, Sivasankar teaches the formic acid as being extracted (i.e., withdrawn) via a product extractor (see Sivasankar at para. 0031). Thus, the process taught by Sivasankar reads on the claims, where the formic acid functions as both the first and second carboxylic acid. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Furthermore, Sivasankar teaches the carbon dioxide used in their process may be sourced from cement factories (see Sivasankar at para. 0030).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to separate the CO2 from the method of Gibbs, and electrochemically reduce the CO2 into a formic acid product via the method taught by Sivasankar. One of ordinary skill in the art would have been motivated to do so in order to reduce carbon emissions (see Sivasankar at para. 0004-0005).
Following the above modification, the method of modified Gibbs includes a step of dissolving CO2 in an electrolyte solution containing small amounts of formic acid leftover from a previous reduction step, whereby the CO2 is subsequently reduced into formic acid, followed by extraction of the formic acid. The small trace of formic acid leftover necessarily functions as an electrolyte in the solution.
It is noted that with respect to the limitation “reacting at least a fraction of the at least the portion…as a part of the converting the CaCO3-comprising raw meal into the calcined raw meal and the at least CO2,” such a limitation is construed as being optional. This is because of the “and/or” limitation earlier in the claim (“converting a CaCO3-comprising raw meal…and/or sintering calcined raw meal”) allows for a sintering step alternative to the converting step. In other words, the converting step is not necessitated by the claim, and thus, the reacting step is also not necessitated. Consequently, the method of modified Gibbs reads on the claim. To overcome this, the Examiner suggests necessitating the “converting” step in the claims (see Examiner’s Suggestions below).
With respect to claims 31 and 35, modified Gibbs reads on the claim, as shown above. It is noted that while the Examiner previously noted claim 31 as allowable (see Final Rejection dated 01/12/2026), the use of “and/or” language as mentioned in the paragraph above results in the converting step as not being necessitated, resulting in modified Gibbs to read on claim 31.
Regarding claims 17 and 25, modified Gibbs teaches the formation of formic acid, i.e., methanoic acid, as a reduction product (corresponds to the claimed “second carboxylic acid”) (see Sivasankar at para. 0017-0018).
Regarding claim 18, modified Gibbs teaches Indium may suitably be used as a cathode (see Sivasankar at para. 0019).
Regarding claims 23-24 and 32-33, given the converting step is optional, the method of modified Gibbs necessarily reads on the claims.
Regarding claim 34, it necessarily follows that since the formic acid of modified Gibbs is the same acid as that claimed, and further since the pH of the acid is < 7, the higher CO2-adsorption capacity provides an increase of the CO2 concentration per volume of the electrolyte and hence enables to increase the current density through the cathode’s surface (see Applicant’s specification at para. 0018). In other words, formic acid as an electrolyte necessarily increases the current density by virtue of the acidic nature of the compound. Thus, since the formic acid of modified Gibbs is the same as that claimed, it necessarily follows that the claimed increase in current density property is met. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Gibbs in view of Sivasankar, as applied to claim 16 above, and further in view of Goetheer et al. (US-20210031137-A1) (hereinafter referred to as “Goetheer”).
Regarding claim 19, while modified Gibbs teaches the method according to claim 16 outlined above, modified Gibbs fails to explicitly teach the electrolyte as being heated at least θ °C above ambient temperature, wherein θ E {2, 5, 10, 15, 20, 25, 30, 40, 50, 60, 70}.
However, Goetheer teaches a method of electrochemically reducing CO2 into a reaction product, such as formic acid (see Goetheer at para. 0030-0034 and 0071). Goetheer further teaches the catholyte may include an organic acid (see Goetheer at para. 0062). Moreover, Goetheer teaches the catholyte may be operated at a temperature of between -10 and 95 °C, and that temperatures below 0 °C increase the operating costs while temperatures above 70 °C adversely affect solubility of the carbon dioxide and semi-permeable separator integrity/selectivity in the electrochemical cell (see Goetheer at para. 0065).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the temperature of the catholyte in the method of modified Gibbs to range from 0 to 70 °C. One of ordinary skill in the art would have been motivated to do so in order to reduce operating costs, and to prevent the solubility of carbon dioxide and the semi-permeable separator integrity/selectivity from being adversely affected (see Goetheer at para. 0065).
This range of 0 to 70 °C overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Gibbs in view of Sivasankar, as applied to claim 16 above, and further in view of Doyle (Doyle, Amanda. “Producing Cement Using Electrolysis.” The Chemical Engineer, 29 Oct. 2019, www.thechemicalengineer.com/news/producing-cement-using-electrolysis/) (hereinafter referred to as “Doyle”) and Carrasco-Maldonado et al. (Carrasco-Maldonado, Francisco, et al. “Oxy-fuel combustion technology for cement production – State of the Art Research and Technology Development.” International Journal of Greenhouse Gas Control, vol. 45, Feb. 2016, pp. 189–199, https://doi.org/10.1016/j.ijggc.2015.12.014) (hereinafter referred to as “Carrasco-Maldonado”).
Regarding claim 27, while modified Gibbs teaches the method according to claim 16 outlined above, modified Gibbs fails to explicitly teach the method as further comprising withdrawing O2 from an anode of the electrolytic cell and providing the O2 to a burner of the kiln and/or using the O2 as to at least partial replace hot air provided to the kiln and/or hot air provided to a calciner.
However, it is well-known that oxygen may be used in a kiln for a combustion process as so-called “oxyfuel”, leading to a more efficient and cheaper method of carbon capture and storage (see Carrasco-Maldonado at pg. 190, left column, last paragraph; and pg. 190, right column, para. 1-2). Furthermore, it is known that oxygen generated from the electrochemical reduction of CO2 may be used as oxy-fuel in a kiln (see Doyle at pg. 2, para. 2), and one of ordinary skill would readily recognize the sustainable benefits of recycling the generated oxygen back into the method.
Sivasankar teaches their electrochemical reduction process as generating oxygen as a by-product (see Sivasankar at para. 0034).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an oxyfuel process in the kiln of modified Gibbs, and to further feed the oxygen generated as a by-product of the reduction process into the kiln. One of ordinary skill in the art would have been motivated to do so in order to apply a more efficient and cheaper method of carbon capture and storage, and to further obtain sustainable benefits related to recycling the generated oxygen (see Carrasco-Maldonado at pg. 190, left column, last paragraph; and pg. 190, right column, para. 1-2; also see Doyle at pg. 2, para. 2).
Claims 16-19, 21, 23-25, 28, and 31-36 are rejected under 35 U.S.C. 103 as being unpatentable over Gibbs in view of Goetheer and Kaczur (US-20160017503-A1) (hereinafter referred to as “Kaczur”).
Regarding claims 16, 31, and 35, Gibbs teaches a method configured for operating a cement clinker line (see Gibbs at pg. 1, para. 1 and pg. 2, para. 1-3, teaching a method for the formation of clinker, in which limestone (CaCO3) is converted to lime (CaO) with CO2 production as a by-product), the method comprising at least:
• converting a CaCO3 comprising raw meal into calcined raw meal and at least CO2 and/or sintering calcined raw meal in a kiln, thereby obtaining at least cement clinker and CO2; (see Gibbs at pg. 1, para. 1 and pg. 2, para. 1-3, teaching a calcination step in which calcium carbonate is heated in a rotary kiln to form calcium oxide/clinker and CO2 as a by-product; note that the “and/or” language of the claim does not necessitate the converting step).
While Gibbs teaches the method outlined above, Gibbs fails to explicitly teach the method as further comprising the steps of:
separating the CO2 from the calcined raw meal and/or the clinker; and further comprising the steps of: dissolving at least a portion of the CO2 to form a dissolved CO2; and/or liquifying at least a portion of the CO2 to form a liquified CO2; and reducing the dissolved and/or liquified CO2 electrolytically at a cathode of an electrolytic cell to a second carboxylic acid with the use of an electrolyte at the cathode; and withdrawing at least a portion of: the first and second carboxylic acids, and/or the first sulfonic acid and a second sulfonic acid from the electrolytic cell; and
wherein the CO2 is dissolved in a first carboxylic acid and/or a first sulfonic acid.
Regarding (1.), Goetheer teaches a method for electrochemically reducing carbon
dioxide, comprising:
a) contacting a carbon dioxide-containing gas stream with a capture solvent, thereby absorbing carbon dioxide from the carbon dioxide-containing gas stream to form a carbon dioxide-rich capture solvent;
b) introducing at least part of the carbon dioxide-rich capture solvent into a cathode compartment of an electrochemical cell;
c) applying an electrical potential between an anode and a cathode in the electrochemical cell sufficient for the cathode to reduce carbon dioxide into a reduced carbon dioxide product or product mixture in the carbon dioxide-rich capture solvent, thereby providing a carbon dioxide-poor capture solvent; and
d) collecting the reduced carbon dioxide product or product mixture (see Goetheer at para. 0030-0034).
Goetheer further teaches the reduced carbon dioxide product may include carboxylic acids, such as formic acid (see Goetheer at para. 0071). Consequently, it necessarily follows that Goetheer teaches a method in which the carbon dioxide brought into contact with the capture solvent “dissolves” in the solvent and is subsequently electrochemically reduced into a carboxylic acid product, such as formic acid. Moreover, Goetheer teaches their method as helping to reduce carbon emissions and as being less expensive and more energy and resource efficient (see Goetheer at para. 0022-0025). Additionally, Goetheer teaches their cathode to contain a catholyte, i.e., an electrolyte (see Goetheer at para. 0052). Further, Goetheer teaches that the reduced carbon dioxide product is separated using a separator, leaving a carbon dioxide-poor capture solvent (see Goetheer at para. 0086); thus, the carboxylic acid reduction product is “withdrawn.”
Additionally, Goetheer teaches the carbon dioxide source may be industrial waste gasses from cement factories containing high amounts of carbon dioxide (see Goetheer at para. 0044).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to separate the CO2 from the method of Gibbs, and electrochemically reduce the CO2 into a carboxylic acid product via the method taught by Goetheer. One of ordinary skill in the art would have been motivated to do so in order to reduce carbon emissions and to employ a less expensive and more energy and resource efficient method of doing so (see Goetheer at para. 0022-0025).
Regarding (2.), Kaczur teaches a method of electrochemically reducing carbon dioxide into a reaction product, such as formic acid (see Kaczur at para. 0035 and 0107). Kaczur further teaches the catholyte (i.e., the electrolyte for the cathode) may include non-aqueous electrolytes, such as methanesulfonic acid (see Kaczur at para. 0251).
Goetheer teaches the cathode may contain a catholyte, and that the catholyte may be an organic acid (see Goetheer at para. 0052 and 0062).
In this case, methanesulfonic acid is a known material suitable for use as a catholyte in an electrochemical CO2 reduction process (as exemplified by Kaczur at para. 0251), and thus its use as an organic acid catholyte in the method taught by modified Gibbs would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use methanesulfonic acid as the catholyte in the method of modified Gibbs, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
It is noted that with respect to the limitation “reacting at least a fraction of the at least the portion…as a part of the converting the CaCO3-comprising raw meal into the calcined raw meal and the at least CO2,” such a limitation is construed as being optional. This is because of the “and/or” limitation earlier in the claim (“converting a CaCO3-comprising raw meal…and/or sintering calcined raw meal”) allows for a sintering step alternative to the converting step. In other words, the converting step is not necessitated by the claim, and thus, the reacting step is also not necessitated. Consequently, the method of modified Gibbs reads on the claim. To overcome this, the Examiner suggests necessitating the “converting” step in the claims (see Examiner’s Suggestions below).
With respect to claims 31 and 35, modified Gibbs reads on the claim, as shown above. It is noted that while the Examiner previously noted claim 31 as allowable (see Final Rejection dated 01/12/2026), the use of “and/or” language as mentioned above results in the converting step as not being necessitated, resulting in modified Gibbs to read on claim 31.
Regarding claims 17 and 25, modified Gibbs teaches the formation of formic acid, i.e., methanoic acid, as a reduction product (corresponds to the claimed “second carboxylic acid”) (see Goetheer at para. 0071).
Regarding claim 18, modified Gibbs teaches Indium may suitably be used as a cathode (see Goetheer at para. 0055).
Regarding claim 19, modified Gibbs teaches the catholyte may be operated at a temperature ranging from 5 to 60 °C (see Goetheer at para. 0065), which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 21, modified Gibbs teaches the carbon dioxide-poor capture solvent, i.e., methanesulfonic acid, may be recirculated back to the absorber unit and contacted with a carbon dioxide gas stream (see Goetheer at para. 0074 and Fig. 1).
Regarding claims 23-24 and 32-33, given the converting step is optional, the method of modified Gibbs necessarily reads on the claims.
Regarding claim 28, since the organic acid catholyte may be used alone (see Goetheer at para. 0062, teaching an organic acid may be used as a catholyte in the case that a catholyte other than the capture solvent is selected; thus, Goetheer necessarily suggests the catholyte may include the organic acid alone, rather than both the organic acid and the capture solvent), it necessarily follows that the alkali metal salt concentration is 0, as methanesulfonic acid contains no alkali metal ions. Further, the acid of modified Goetheer, methanesulfonic acid, is the same as that claimed. Additionally, Applicant’s specification teaches that the carbonate formation process may be at least almost fully avoided “if H3O+ is the proton source for CO2-reduction [and] no or almost no OH- is generated.” Consequently, since modified Goetheer teaches the same method with the same electrolyte as that claimed, as well as a catholyte that may include the organic acid alone, modified Goetheer necessarily teaches a reduction process which avoids a process of carbonate formation. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01).
Regarding claim 34, it necessarily follows that since the methanesulfonic acid of modified Gibbs is the same acid as that claimed, and further since the pH of the acid is < 7, the higher CO2-adsorption capacity provides an increase of the CO2 concentration per volume of the electrolyte and hence enables to increase the current density through the cathode’s surface (see Applicant’s specification at para. 0018). In other words, methanesulfonic acid as an electrolyte necessarily increases the current density by virtue of the acidic nature of the compound. Thus, since the methanesulfonic acid of modified Gibbs is the same as that claimed, it necessarily follows that the claimed increase in current density property is met. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01).
Regarding claim 36, modified Gibbs reads on the claim, see the claim 16 and claim 21 rejections above.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Gibbs in view of Goetheer and Kaczur, as applied to claim 16 above, and further in view of Doyle and Carrasco-Maldonado.
Regarding claim 27, while modified Gibbs teaches the method according to claim 16 outlined above, modified Gibbs fails to explicitly teach the method as further comprising withdrawing O2 from an anode of the electrolytic cell and providing the O2 to a burner of the kiln and/or using the O2 as to at least partial replace hot air provided to the kiln and/or hot air provided to a calciner.
However, it is well-known that oxygen may be used in a kiln for a combustion process as so-called “oxyfuel”, leading to a more efficient and cheaper method of carbon capture and storage (see Carrasco-Maldonado at pg. 190, left column, last paragraph; and pg. 190, right column, para. 1-2). Furthermore, it is known that oxygen generated from the electrochemical reduction of CO2 may be used as oxy-fuel in a kiln (see Doyle at pg. 2, para. 2), and one of ordinary skill would readily recognize the sustainable benefits of recycling the generated oxygen back into the method.
Geotheer teaches their electrochemical reduction process as generating oxygen at the anode (see Goetheer at para. 0092).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an oxyfuel process in the kiln of modified Gibbs, and to further feed the oxygen generated at the anode into the kiln in such a process. One of ordinary skill in the art would have been motivated to do so in order to apply a more efficient and cheaper method of carbon capture and storage, and to further obtain sustainable benefits related to recycling the generated oxygen (see Carrasco-Maldonado at pg. 190, left column, last paragraph; and pg. 190, right column, para. 1-2; also see Doyle at pg. 2, para. 2).
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
Applicants argue the amended claims are allowable, given an allowable limitation was moved into the independent claim (see Applicant’s Remarks at pg. 7-10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The previously allowed limitation (the “converting” step) is an optional component of the claimed method, via the use of “and/or” language in claim 16 (“converting a CaCO3-comprising raw meal…and/or sintering calcined raw meal”). Accordingly, the prior art still reads on the claims. Further, 112(b) issues still exist. To correct, the Examiner suggests adopting the suggestions for the claims shown below.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes amendments to the claims that would appear to overcome the issues above, including the 112(b) rejections above and the prior art grounds of rejection. It is noted that currently, the claimed “converting” step is optional, given the use of the phrase “and/or sintering calcined raw meal in a kiln” (i.e., the term “and/or” results in the converting step to be optional). In order to overcome the prior art grounds of rejection, the converting step should be necessitated. Accordingly, the Examiner suggests deleting the “and/or” limitations, as shown below. Further, given the phrase “and/or sintering calcined raw meal in a kiln” is suggested to be deleted, the Examiner further suggests deleting claim 27, as such a claim relies on the presence of the kiln.
It is noted that if the below suggestions are all adopted, and no additional issues are present following any amendments, the 112(b) rejections and current prior art grounds of rejections would appear to be overcome:
Proposed Amendments:
16. (Currently amended) A method configured for operating a cement clinker line, the method comprising at least:
- converting a CaCO3-comprising raw meal into calcined raw meal and at least CO2
- separating the CO2 from the calcined raw meal
- dissolving at least a portion of the CO2 in a first carboxylic acid and/or a first sulfonic acid to form a dissolved CO2
- reducing the dissolved 2 electrolytically at a cathode of an electrolytic cell to a second carboxylic acid with the use of an electrolyte at the cathode;
- withdrawing at least a portion of: the first and second carboxylic acids, and/or the first sulfonic acid
-wherein in continued operations of the cement clinker line, acid is reacted with CaCO3 comprised in the CaCO3-comprising raw meal, to thereby convert at least a portion of the CaCO3-comprising raw meal into intermediate raw meal comprising at least calcium carboxylate and/or calcium sulfonate, respectively, as a part of the converting the CaCO3-comprising raw meal into the calcined raw meal and the at least CO2.
….
21. (Currently amended) The method of claim 16, further comprising using a first fraction of the at least the portion of the first and second carboxylic acids and/or the first acid in the dissolving step as a solvent in continued operations of the cement clinker line.
….
25. (Currently amended) The method of claim 16, wherein the first or second carboxylic acid and/or the first
….
27. (Canceled)
28. (Currently amended) The method of claim 16, wherein the alkali ion concentration of an acid in which the CO2 is dissolved
….
31. (Canceled)
32. (Canceled)
33. (Canceled)
34. (Canceled)
35. (Canceled)
36. (Canceled)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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