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 .
Claim Objections
Claim 12 is objected to because of the following informalities:
In claim 12, lines 1-4 should read in part “wherein venting the initial volume of gasses at the regeneration manifold and while receiving the gasses further comprises venting the initial volume of gasses at the regeneration manifold and while receiving the gasses back to the capture module.”. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-13 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 of prior U.S. Patent No. 12,297,759. This is a statutory double patenting rejection.
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, 5, 8, 10-11, 14-15, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, and 12 of U.S. Patent No. 11,560,817. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the claims of the present application are included in the claims of the issued patent.
Claims 2-4 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,560,817 in view of Hamad et al. (US 2013/0298532).
In Reference to Claim 2
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
Wherein the trigger condition is based on an elapsed time the portion of the target species is adsorbed by the capture medium.
Hamad et al. (Hamad) discloses a capture module device for an engine. (See Hamad, Abstract). Hamad discloses utilizing elapsed time the portion of the target species is adsorbed by the capture medium as a trigger condition. (See Hamad, Paragraph [0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the elapsed time of adsorption and desorption as a trigger condition, as both references are directed towards capture module devices for an engine. One of ordinary skill in the art would have recognized that the triggering swing process of Hamad would have allowed for accurate control of the adsorption and desorption process minimizing emissions and enhancing the storage of the target species. (See Hamad, Paragraph [0006]). Additionally, the examiner notes that elapsed time is a simple substitution of one known trigger condition for another that would yield the predictable result of accurately actuating the switch trigger to effectively control the emissions system for reduction and storage.
In Reference to Claim 3
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
Wherein the trigger condition is based on an elapsed time the portion of the target species is desorbed by the capture medium.
Hamad et al. (Hamad) discloses a capture module device for an engine. (See Hamad, Abstract). Hamad discloses utilizing elapsed time the portion of the target species is desorbed by the capture medium as a trigger condition. (See Hamad, Paragraph [0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the elapsed time of adsorption and desorption as a trigger condition, as both references are directed towards capture module devices for an engine. One of ordinary skill in the art would have recognized that the triggering swing process of Hamad would have allowed for accurate control of the adsorption and desorption process minimizing emissions and enhancing the storage of the target species. (See Hamad, Paragraph [0006]). Additionally, the examiner notes that elapsed time is a simple substitution of one known trigger condition for another that would yield the predictable result of accurately actuating the switch trigger to effectively control the emissions system for reduction and storage.
In Reference to Claim 4
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
wherein the trigger condition is based on one or more metrics associated with vehicle operation of a vehicle from which the volume of exhaust gas is received.
Hamad et al. (Hamad) discloses a capture module device for an engine. (See Hamad, Abstract). Hamad discloses utilizing measured CO2 concentration of the exhaust of the vehicle as a trigger condition. (See Hamad, Paragraph [0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the measured CO2 as a trigger condition, as both references are directed towards capture module devices for an engine. One of ordinary skill in the art would have recognized that the triggering swing process of Hamad would have allowed for accurate control of the adsorption and desorption process minimizing emissions and enhancing the storage of the target species. (See Hamad, Paragraph [0006]). Additionally, the examiner notes that measured concentration is a simple substitution of one known trigger condition for another that would yield the predictable result of accurately actuating the switch trigger to effectively control the emissions system for reduction and storage.
In Reference to Claim 6
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
wherein the trigger condition is based on a target species fraction exceeding a threshold minimum value for more than a threshold period of time.
Hamad et al. (Hamad) discloses a capture module device for an engine. (See Hamad, Abstract). Hamad discloses utilizing measured CO2 concentration and elapsed time of the exhaust of the vehicle as a trigger condition. (See Hamad, Paragraph [0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the measured CO2 and an elapsed time as a trigger condition, as both references are directed towards capture module devices for an engine. One of ordinary skill in the art would have recognized that the triggering swing process of Hamad would have allowed for accurate control of the adsorption and desorption process minimizing emissions and enhancing the storage of the target species. (See Hamad, Paragraph [0006]). Additionally, the examiner notes that measured concentration and elapsed time is a simple substitution of one known trigger condition for another that would yield the predictable result of accurately actuating the switch trigger to effectively control the emissions system for reduction and storage.
In Reference to Claim 7
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
wherein the trigger condition is based on an undesired species fraction falling below a threshold maximum value for more than a threshold period of time
Hamad et al. (Hamad) discloses a capture module device for an engine. (See Hamad, Abstract). Hamad discloses utilizing measured CO2 concentration before and after and elapsed time of the exhaust of the vehicle as a trigger condition. (See Hamad, Paragraphs [0065] & [0119]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the measured CO2 and an elapsed time as a trigger condition, as both references are directed towards capture module devices for an engine. One of ordinary skill in the art would have recognized that the triggering swing process of Hamad would have allowed for accurate control of the adsorption and desorption process minimizing emissions and enhancing the storage of the target species. (See Hamad, Paragraph [0006]). Additionally, the examiner notes that measured concentration and elapsed time is a simple substitution of one known trigger condition for another that would yield the predictable result of accurately actuating the switch trigger to effectively control the emissions system for reduction and storage.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,560,817 in view of Hamad et al. (US 2013/0298532).
In Reference to Claim 13
Claim 1 of U.S. Patent No. 11,560,817 discloses all of the claimed limitations except:
Wherein the capture medium is water-resistant. Keefer et al. (Keefer) discloses a carbon dioxide capture medium device. (See Keefer, Abstract). Keefer discloses a water-resistant carbon dioxide capture medium. (See Keefer, Paragraph [0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a hydrophobic zeolite as the capture medium, as both references are directed towards capture medium devices. One of ordinary skill in the art would have recognized that hydrophobic zeolite would have been advantageous as the capture medium as engine exhaust is humid (i.e.-contains water vapor) and such a capture medium would prevent saturation of water instead of the intended medium of capture. (See Keefer, Paragraph [0028]).
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) 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamad et al. (US 2013/0298532).
In Reference to Claim 14
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner below)
Hamad et al. (Hamad) discloses:
A system, comprising:
an intake manifold (A) defining an intake interior configured to receive exhaust gas (See Hamad, Paragraph [0068]);
a capture module (50A,50B) comprising a housing (i.e.-shell) and a capture medium (i.e.-sorbent) contained within the housing (See Hamad, Paragraph [0069]);
a storage module (70) configured to store a target species (See Hamad, Paragraph [0070]); and
a regeneration module comprising:
a regeneration manifold (B,52) having an inlet connected to the capture module (50A,50B) and an outlet connected to the storage module (70) (See Hamad, Paragraph [0070]); and
a valve (79) arranged along the regeneration manifold (B,52) between the inlet and the outlet (See Hamad, Paragraph [0070]);
wherein the system is switchable between a vent mode and a storage mode based at least in part a trigger condition being met, wherein in the vent mode, the valve (70) is controlled so that gasses evacuated from the capture module do not reach the storage module during a first time interval of a regeneration cycle, and wherein, in the storage mode, the valve is controlled so that the gasses evacuated from the capture module reach the storage module during a second time interval of the regeneration cycle. (See note below)
The Examiner notes that Hamad discloses all of the structural limitations of claim 14, as best understood by the Examiner. As all of the structural limitations are disclosed, “wherein the system is switchable between a vent mode and a storage mode based at least in part a trigger condition being met, wherein in the vent mode, the valve (70) is controlled so that gasses evacuated from the capture module do not reach the storage module during a first time interval of a regeneration cycle, and wherein, in the storage mode, the valve is controlled so that the gasses evacuated from the capture module reach the storage module during a second time interval of the regeneration cycle”, is capable of being executed. The recitation of the intended use of a claimed invention must result in a structural difference between the claimed invention as the prior art to patentably distinguish the claimed invention from the prior art. As Hamad is capable of performing the intended use of the claimed invention, and the recitation of the intended use does not result in a structural difference, Hamad discloses all of the limitations of claim 14.
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In Reference to Claim 15
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner above)
Hamad discloses:
wherein, when the capture medium exceeds a threshold temperature, a pump (72) arranged along the regeneration manifold (B,52) is configured to apply a negative pressure at the inlet to urge the gasses from the housing and into the regeneration manifold (B,52). (See Hamad, Paragraph [0070]).
The Examiner notes Hamad discloses all of the structural limitations of claim 15, as best understood by the Examiner. As all of the structural limitations are disclosed, “wherein, when the capture medium exceeds a threshold temperature, a pump (72) arranged along the regeneration manifold (B,52) is configured to apply a negative pressure at the inlet to urge the gasses from the housing and into the regeneration manifold (B,52)” (emphasis added), is capable of being executed. The recitation of the intended use of a claimed invention must result in a structural difference between the claimed invention as the prior art to patentably distinguish the claimed invention from the prior art. As Hamad is capable of performing the intended use of the claimed invention, and the recitation of the intended use does not result in a structural difference, Hamad discloses all of the limitations of claim 15.
In Reference to Claim 16
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner above)
Hamad discloses:
wherein in the vent mode, the gasses evacuated from the capture module (50A,50B) are condensed to harvest waste heat (62,64,66) and then released from the system. (See Hamad, Paragraph [0070]).
In Reference to Claim 17
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner below)
Hamad discloses:
A method, comprising:
adsorbing, by a capture medium, a portion of a target species from a volume of exhaust gas being passed through a capture module (50A,50B) that contains the capture medium (See Hamad, Paragraph [0069]);
desorbing the portion of the target species from the capture medium (See Hamad, Paragraph [0069]); and
flowing a regeneration gas through the capture medium so as to purge the desorbing portion of the target species from the capture module (50A,50B) (See Hamad, Paragraph [0069]).
The Examiner notes that hot exhaust gas is supplied through the shell to purge/desorb the target species.
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In Reference to Claim 18
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner above)
Hamad discloses:
wherein the regeneration gas is flowed in a loop through the capture module (50A,50B) and a regeneration module (i.e.- piping and valves controlling exhaust and target species flow of the system) fluidly coupled with the capture module (50A,50B). (See Hamad, Paragraph [0069]).
The Examiner notes that hot exhaust gas is supplied through the shell to purge/desorb the target species.
In Reference to Claim 19
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner above)
Hamad discloses:
further comprising: evacuating, at the regeneration module, gasses from the capture module to a storage module in response to a trigger condition, the gasses evacuated to the storage module comprising the portion of the target species. (See Hamad, Paragraphs [0058] & [0069]-[0070]).
The Examiner notes that in response to a trigger condition, the regeneration module is adjusted to desorb and store CO2.
In Reference to Claim 20
(See Hamad, Figures 1-7 & 9-14, and Figure 8 as annotated by Examiner above)
Hamad discloses:
wherein the regeneration gas is comprised of the target species. (See Hamad, Paragraph [0069]). The Examiner notes that the exhaust gas used to heat via the shell has not yet had CO2 stripped and therefore is at least comprised of CO2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Masahiro, Nalette, Saito, Sugiyama, and Fujihara show carbon capture devices within the general state of the art of invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW THOMAS LARGI whose telephone number is (571)270-3512. The examiner can normally be reached 8:00 - 4:00 M-F.
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, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T LARGI/Primary Examiner, Art Unit 3746