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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/08/2025 has been considered by the Examiner.
Status of Claims
Claims 1-20, filed on 01/08/2025, are under consideration. Claims 1 and 14 are independent.
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 1-20 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.
Claim 1 recites the limitation "the treated contaminated gas" in line 11, and the limitation “the treatment step” in last line. There is insufficient antecedent basis for this limitation in the claim. The “treating step” of line 4 should produce “the treated contaminated gas” on line 7 (e.g. remediates contaminants in the contaminated gas to provide a treated contaminated gas”.
Also, claim 1 recite “the mixed flowing the stream” (line 8) which lacks antecedent basis and seems to contain an extra “the”.
Claims 2-13 are also rejected under 35 USC §112 by virtue of their dependance from claim 1.
Claim 4 also recited “the treatment step” but should recite “the treating step’ for proper antecedent basis from claim 1.
Claim 14 recites “the treated contaminated gas” (line 15) which lacks antecedent basis; this should be corrected to include this stream as being provided by remediation of contaminants from the contaminated gas stream, as discussed for claim 1.
Claims 15-20 are also rejected under 35 USC §112 by virtue of their dependance from claim 1.
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.
The claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,187,972. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite treatment process, and treatment system, for removing and/or remediating contaminants in a contaminated gas, comprising steps of: flowing a stream of the contaminated gas through a pipeline; treating the flowing stream of the contaminated gas by injecting droplets of an aqueous liquid treatment composition of one or more hydroxide compounds into the flowing the stream of the contaminated gas in the pipeline such that the liquid treatment composition mixes into the contaminated gas in the flowing stream and remediates contaminants in the contaminated gas; injecting water into the mixed flowing the stream of the contaminated gas and the liquid treatment composition in the pipeline downstream of where the liquid treatment composition is injected into the pipeline; and separating the flowing stream of the treated contaminated gas from any remaining amount of the liquid treatment composition, the water and any precipitates and solids released from the contaminated gas in the treatment step in a separator. It is noted that the US Patent limits the hydroxide compound concentration to 35-55 wt % total while the instant application broadly recite this hydroxide without limiting concentration.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: a search of pertinent prior art did not locate a teaching or suggestion for the claimed treatment process and treatment system.
US 4,748,011 discloses treatment process and system for removing contaminates from gas by spraying droplets of a solution comprising sweeting agent such as hydroxide (Col 6 lines 58-68). However, this reference does not suggest injecting water into the mixed flowing the stream of the contaminated gas and the liquid treatment composition in the pipeline downstream of where the liquid treatment composition is injected into the pipeline, and separating the flowing stream of the treated contaminated gas from any remaining amount of the liquid treatment composition, the water and any precipitates and solids released from the contaminated gas in a separator.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI Z FADHEL whose telephone number is (571)270-0267. The examiner can normally be reached M-F 9am-6pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALI Z FADHEL/Primary Examiner, Art Unit 1772
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