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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 8-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 1 recites “wherein reaction occurs under non-oxidizing conditions”, this limitation is not described in the original disclosure. Rather instant specification (see filed specification para. [0093]) only describes non-oxidative dehydrogenation process is undesired: “Non-oxidative dehydrogenation (pyrolysis) of natural gas-like molecules has been practiced on solid catalysts. Unfortunately, the solid catalysts are rapidly deactivated (coked and removal of the carbon is difficult and costly”. Such description only teaches non-oxidative dehydrogenation of natural gas-like molecules having undesired effects of coking and removal of such coked carbon being difficult and costly. Then the specification describes embodiment directed to contacting alkanes (hydrocarbons with catalytic species within a specific molten salt environment at an appropriate reaction temperature for dehydrogenating alkane to form solid carbon and molecular hydrogen without coking or otherwise deactivating the catalyst. But such description does not support using “non-oxidizing conditions” to decompose hydrocarbon in the presence of molten salt and a solid reactive component as that of instantly claimed. All claim 1’s depending claims are rejected for similar reasons.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-5 and 8-12 are rejected under 35 U.S.C. 103 as obvious over O’Connor (WO2018/141911) in view of in view of Steinberg et al. (US5767165).
O’Connor discloses a reaction process to produce solid carbon and hydrogen wherein the process comprises contacting a hydrocarbon with a molten salt mixture at a temperature above 250°C and preferably less than 1000°C wherein the hydrocarbon is cracked to produce hydrogen, a gas phase, and solid carbon within the mixture and wherein a metal such as nickel or iron is combined with the molten salt to form the mixture (para [0028], [0029], claim 6-7) with the hydrogen removed from the mixture (para. [0016]). The ordinary skilled artisan would recognize that iron melts at a temperature above 1000°C and remains a separate solid phase in the molten salt, therefore, iron is disposed within the molten salt forming a multiphase composition comprising a mixture of the solid reactive component (solid iron) in the molten salt. O’Connor also teaches adding a solid carbon source or precursor as a seed to enhance the separation of the carbon phase from the molten salt phase (para. [0027], claim 6-8), such solid carbon being disposed within the molten salt forming a multiphase composition comprising a mixture of the solid reactive component (solid carbon) in the molten salt as well. Apparently during such process, the gaseous products would contact the molten salt. O’Connor further discloses that after carbon removal from the molten mixture, the molten salt may be recycled (para. [0009]) which suggests the use of a vessel/reactor for the hydrocarbon decomposition process in molten salt mixture.
As for the claimed reacting occurs under non-oxidizing conditions, O’Connor teaches a feed stream of hydrocarbon only being alkane (para. [0024]), it is noted that alkane consisting of hydrogen and carbon, which does not contain oxygen or any oxidizing material. Furthermore, O’Connor does not require the feed stream comprising oxygen or reaction involves any oxidizing conditions. Therefore, O’Conner disclosed reaction for hydrocarbon decomposition being performed under non-oxidizing conditions.
Regarding claim 1, O’Connor does not explicitly disclose a reactor.
Steinberg discloses a two-step process for producing methanol wherein the first step comprises passing a hydrocarbon through a molten salt or metal within a reactor wherein the solid carbon and hydrogen are separated from the molten salt/metal with the solid carbon rising to the surface of the molten salt due to the differences in density (Col. 2, ln 27-34, Col 3, ln 63 to Col. 4, ln 8 and Col. 4, ln 62 to Col. 5, ln 34, Figures).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to utilize the reactor of Steinberg in the process of O’Connor for decomposing methane to hydrogen and solid carbon which rises to the surface of the molten salt. Furthermore, applying a known technique of using a reactor to a known method of decomposing methane to hydrogen and solid carbon in a molten salt for improvement would yield predictable results (see MPEP § 2143 KSR).
Regarding claim 2, such limitation has been met as discussed above.
Regarding claim 3-4, the significance of O’Connor and Steinberg as applied to claim 1 is explained above.
O’Connor discloses that the solid carbon and molten salt are removed from the reaction utilizing a side stream wherein the side-stream is cooled to separate the carbon before reintroducing the side-stream to the reactor (para. [0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention that O’Connor removes the solid carbon from the reactor while still in contact with the molten salt and to utilize the heat of the side-stream to heat the reactants to minimize the use of outside energy thereby improving process economics.
Regarding claim 5, O’Connor also discloses cooling the solid carbon/molten salt mixture so that the carbon phase can be removed (para. [0022]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention that if the solid carbon was in a separate phase as the molten salt, that the solid carbon possessed a different density with the solid carbon being on top as carbon has a lower density than the zinc chloride disclosed by O’Connor (para. [0029]) (carbon density about 1.8 g/cc and zinc chloride density about 2.9 g/cc).
Regarding claim 8, O’Connor discloses the use of zinc chloride (ZnCl) (para. [0029]).
Regarding claim 9-11, O’Connor further discloses the use of a solid dehydrogenation catalyst, with the catalyst preferably selected from Ni, Fe, Zn or Cu and present as a metal-chloride or metallic format (para. [0028], [0029]).
Regarding claim 12, O’Connor discloses the use of nickel or iron metals dispersed in the molten salt (para. [0028], [0029]).
Response to Arguments
Applicant's arguments filed on 08/26/2025 have been fully considered but they moot in view of current rejections.
In response to applicant’s arguments about O’Conner only disclosing metal ions but no solid elemental metal (para.[0028], [0029]), O’Conner expressly teaches metals in the molten salt being presented as ion, such as zinc chloride molten salt with nickel or Fe metals as dehydrogenation metals wherein iron (Fe) is included as active metal enabling a magnetic separation of the active metal catalyst from the carbon produced. It is noted that only solid iron can be separated from carbon via magnetic separation not iron ion in the solution. Even if as applicant argued that some of such elemental metal or metallic metal being solvated in the molten salt with 400-800 °C, it is noted that elemental iron having a melting temperature of 1538 °C, since any reaction (including the metallic iron being solvated in a molten salt) cannot achieve 100% conversion, hence, there are remaining metallic iron being presented thereof, which is validated by O’Conner disclosed separating such metallic iron from produced carbon via magnetic separation (para. [0029]). O’Connor also teaches adding a solid carbon source or precursor as a seed(catalyze the conversion reaction) to enhance the separation of the carbon phase from the molten salt phase (para. [0027], claim 6-8). In summary, O’Connor expressly teaches existence of metallic iron and/or solid carbon as solid reactive component and such arguments are not found persuasive.
In response to applicant’s arguments about modification of O’Connor using a single reactor vessel as described in Steinberg going directly against O’Connor’s teachings of removing the molten salt from the reactor and cooling it prior to separating carbon, O’Connor teaches a decomposing/reacting step of contacting hydrocarbon with a molten salt in the presence of solid carbon or metallic metal, then cooling and separating solid or liquid carbon phase from the molten salt (para. [0009]), wherein O’Connor disclosed decomposing step requires a reactor and Steinberg disclosed reactor can be used for such decomposing in the molten salt with benefits as set forth in the rejections. Steinberg disclosed such reactor does not limit the molten salt later on being cooled and separated as O’Connor required at all. Therefore, such arguments are not found convincing.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732