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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 September 2025 has been entered.
Response to Amendment
The Amendment filed 23 December 2025 has been entered. Claim 1 is amended; claim 13 is cancelled. Accordingly, claims 1, 3-6, 8-11, and 14-20 remain pending in the application.
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 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, lines 11-12, recite "optionally, partially oxidizing the pyrolysis off-gas, thereby generating additional reducing gas and heat". However, claim 1, line 6 recites "optionally, oxidizing the pyrolysis off-gas, thereby generating heat". It is unclear if the pyrolysis off-gas of line 11 is the same as the pyrolysis off gas of line 6, as the pyrolysis off-gas appears to have already been oxidized.
Claims 3-6, 8-11, and 14-20 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
Claim Rejections - 35 USC § 103
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, 3-6, 8-11, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu ("Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass").
Regarding Claim 1, Cheiky discloses a hydrogen product produced by a process comprising the following (Col. 11, lines 7-9).
Cheiky discloses providing a biomass feedstock (Col. 5, lines 47-64).
Cheiky further discloses pyrolyzing the biomass feedstock (Col. 6, lines 53-56), thereby generating BMF char (BMF char is also referred to as BMF carbon (Col. 9, line 30) and non-volatile carbonaceous material (claims 13 and 15) and therefore meets the limitation of biogenic reagent, wherein the biogenic reagent comprises carbon) and useful volatile components (volatile components, as a result of pyrolysis, meet the limitation of pyrolysis off-gas; Col. 5, lines 8-11).
Oxidizing the pyrolysis off-gas, thereby generating heat, is optional and, therefore, is not presently addressed.
Cheiky further discloses reacting the biogenic reagent with at least one of methane, carbon dioxide, steam, or oxygen (methane, carbon dioxide, steam, or oxygen meets the limitation of a selected reactant in the presence of oxygen; Col. 3, lines 64-67), wherein the oxygen is comprised within pure oxygen (claim 18), thereby generating a synthesis gas (synthesis gas comprises hydrogen and carbon monoxide (Col. 4, lines 20-22) and therefore meets the limitation of reducing gas comprising hydrogen; Col. 5, lines 12-15).
Cheiky further discloses the reducing gas comprises hydrogen and carbon monoxide (Col. 4, lines 20-22), and separating hydrogen from the carbon monoxide (separating hydrogen from the carbon monoxide, which make up the reducing gas, meets the limitation of separating hydrogen from the reducing gas; Col. 11, lines 7-9).
Cheiky further discloses hydrogen may be separated from the carbon monoxide and used as feedstock (separating hydrogen for use as feedstock meets the limitation of recovering a hydrogen product comprising hydrogen; Col. 11, lines 7-9), and hydrogen is recognized as a renewable fuel (Col. 1, lines 6-10). Additionally, the hydrogen product of Cheiky is produced by a substantially similar process to that of the claim, such that the characteristics of the hydrogen product of Cheiky are substantially similar to that of the claim, and therefore, the hydrogen product of Cheiky meets the limitation of the renewable hydrogen product, wherein the hydrogen is characterized as at least about 50% renewable hydrogen.
It appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention. Therefore, as the method of Cheiky in view of Basu is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Recovering the biogenic reagent during the reacting or after the reacting, thereby generating a recovered biogenic reagent, wherein the recovered biogenic reagent is activated carbon is optional and, therefore, is not presently addressed.
Cheiky further discloses a wide range of H2/CO ratios can be obtained from using different combinations of reactants, chosen from methane, oxygen, water and carbon dioxide (Col. 11, lines 34-37).
Cheiky is silent to increasing hydrogen content of the reducing gas via the water-gas shift reaction.
Basu discloses increasing hydrogen content (pg. 418, paragraph 2) of a syngas (syngas contains hydrogen and carbon monoxide and therefore meets the limitation of reducing gas; pg. 419, paragraph 5) via the water-gas shift reaction (pg. 419, paragraph 5; Equation 12.3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Basu to increase hydrogen content of the reducing gas via the water-gas shift reaction, because the molar ratio of hydrogen and carbon monoxide is a critical parameter in the synthesis of the reactant gases into desired products such as gasoline, methanol, and methane, and in a commercial gasifier, the H2/CO ratio of the product gas is typically less than 1.0, so the shift reaction is necessary to increase this ratio by increasing the hydrogen content at the expense of CO, as recognized by Basu (pg. 418, paragraph 2).
Regarding Claim 3, the hydrogen product of Cheiky is produced by a substantially similar process to that of the claim, such that the characteristics of the hydrogen product of Cheiky are substantially similar to that of the claim, and therefore, the hydrogen product of Cheiky meets the limitation wherein the hydrogen is characterized as at least about 90% renewable hydrogen.
It appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention. Therefore, as the method of Cheiky in view of Basu is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Regarding Claim 4, the hydrogen product of Cheiky is produced by a substantially similar process to that of the claim, such that the characteristics of the hydrogen product of Cheiky are substantially similar to that of the claim, and therefore, the hydrogen product of Cheiky meets the limitation wherein the hydrogen is characterized as at least about 95% renewable hydrogen.
It appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention. Therefore, as the method of Cheiky in view of Basu is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Regarding Claim 5, the hydrogen product of Cheiky is produced by a substantially similar process to that of the claim, such that the characteristics of the hydrogen product of Cheiky are substantially similar to that of the claim, and therefore, the hydrogen product of Cheiky meets the limitation wherein the hydrogen is characterized as fully renewable hydrogen.
It appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention. Therefore, as the method of Cheiky in view of Basu is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Regarding Claim 6, Cheiky further discloses the selected reactant is steam (steam meets the limitation of water; Col. 5, lines 12-15).
Regarding Claim 8, Cheiky further discloses wherein the selected reactant comprises a combination of water and oxygen (Col. 11, lines 34-37).
Regarding Claim 9, Cheiky further discloses a reducing gas comprising 100% hydrogen (100% hydrogen meets the limitation of at least about 10 mol% hydrogen; Col. 11, lines 23-28).
Regarding Claim 10, Cheiky further discloses a reducing gas comprising 100% hydrogen (100% hydrogen meets the limitation of at least about 25 mol% hydrogen; Col. 11, lines 23-28).
Regarding Claim 11, Cheiky further discloses a reducing gas comprising 100% carbon monoxide (100% carbon monoxide meets the limitation of at least about 10 mol% carbon monoxide; Col. 11, lines 23-28).
Regarding Claim 17, Cheiky further discloses a hydrogen product comprising 100% hydrogen (100% hydrogen meets the limitation of at least about 50 mol% hydrogen; Col. 11, lines 23-28).
Regarding Claim 18, Cheiky further discloses a hydrogen product comprising 100% hydrogen (100% hydrogen meets the limitation of at least about 90 mol% hydrogen; Col. 11, lines 23-28).
Regarding Claim 19, the hydrogen product of Cheiky is produced by a substantially similar process to that of the claim, such that the characteristics of the hydrogen product of Cheiky are substantially similar to that of the claim, and therefore, the hydrogen product of Cheiky meets the limitation wherein the hydrogen is characterized as fully renewable hydrogen, and wherein residual carbon comprised within the hydrogen product is essentially fully renewable carbon as determined from a measurement of the 14C/12C isotopic ratio.
It appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention. Therefore, as the method of Cheiky in view of Basu is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Regarding Claim 20, Cheiky further discloses a hydrogen product comprising 100% hydrogen, which necessarily contains no nitrogen (100% hydrogen meets the limitation of a hydrogen product substantially free of nitrogen; Col. 11, lines 23-28).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu ("Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass") and Rosenbaum (US 2010/0307210).
Recovering the biogenic reagent during the reacting or after the reacting, thereby generating a recovered biogenic reagent, wherein the recovered biogenic reagent is activated carbon is optional, but an alternative rejection is presented in case these limitations are required.
Cheiky and Basu teach the elements as described above with regards to claim 1.
Cheiky further discloses wherein the biogenic reagent is activated BMF char, and activation is a well-known procedure for increasing char surface area and adsorptive capabilities to accelerate subsequent desired reactions (Col. 8, lines 53-65).
Cheiky is silent to recovering the biogenic reagent continuously or periodically during step (d), or ultimately after step (d), thereby generating a recovered biogenic reagent, wherein the recovered biogenic reagent is activated carbon.
Rosenbaum discloses a method of processing manure (manure meets the limitation of biomass; Abstract) comprising reacting activated carbon with oxygen and manure (reacting activated carbon with oxygen and manure meets the limitation of reacting the biogenic reagent with a selected reactant in claim 1(d); paragraph [0058]). Rosenbaum further discloses reusing activated carbon in a continuous process (Abstract) by separating sand/ash and allowing raw recycled and reactivated carbon to enter the mixing reservoir for subsequent use in a continuing process (paragraph [0072]). Separating sand/ash to provide activated carbon for subsequent use meets the limitation of recovering the biogenic reagent continuously, thereby generating a recovered biogenic reagent, wherein the recovered biogenic reagent is activated carbon.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Rosenbaum to recover the biogenic reagent continuously or periodically during step (d), or ultimately after step (d), thereby generating a recovered biogenic reagent, wherein the recovered biogenic reagent is activated carbon, because these improvements make an activated carbon process more commercially viable, as recognized by Rosenbaum (paragraph [0023]).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu ("Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass") and Gallaspy (US 2010/0270505).
Partially oxidizing the pyrolysis off-gas, thereby generating additional reducing gas and heat is optional, but an alternative rejection is presented in case these limitations are required.
Cheiky and Basu teach the elements as described above with regards to claim 1.
Cheiky is silent to partially oxidizing the pyrolysis off-gas, thereby generating additional reducing gas and the heat.
Gallaspy discloses pyrolyzing a biomass feedstock, thereby generating a first gas stream (first gas stream, as a result of pyrolysis, meets the limitation of a pyrolysis off-gas; paragraph [0025]). Gallaspy further discloses the pyrolysis off-gas is partially oxidized, thereby generating a second gas stream comprising syngas (second gas stream comprising syngas, which contains hydrogen and carbon monoxide (paragraph [0002]), meets the limitation of reducing gas; paragraph [0050]) and introducing the second gas stream into a heat-recovery unit for recovery of a portion of heat contained in the second gas stream (heat in the second gas stream a result of oxidizing the first gas stream meets the limitation of generating additional reducing gas and heat; paragraph [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Gallaspy wherein the pyrolysis off-gas is partially oxidized, thereby generating additional reducing gas and the heat in order to generate steam, which may be used to drive machinery, generate power, or provide heat for process services, as recognized by Gallaspy (paragraph [0073]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu "Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass" and Muradov (US 7,691,182).
Regarding Claim 14, Cheiky and Basu teach the elements as described above with regards to claim 1.
Cheiky discloses separating hydrogen from a reducing gas (Col. 11, lines 7-9).
Cheiky is silent to separating using pressure-swing adsorption.
Muradov discloses separating hydrogen from a synthesis gas (synthesis gas, which is a mixture of hydrogen and carbon monoxide, meets the limitation of reducing gas), wherein the separating is achieved using pressure-swing adsorption (claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Muradov wherein the separating is achieved using pressure-swing adsorption in order to produce high purity hydrogen with minimal environmental impact (Col. 3, lines 35-37) as hydrogen is universally considered a fuel of the future due to environmental advantages over conventional fuels (Col. 1, lines 15-17), as recognized by Muradov.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu "Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass" and Pinnau (US 2022/0219125).
Regarding Claim 15, Cheiky and Basu teach the elements as described above with regards to claim 1.
Cheiky discloses separating hydrogen from a reducing gas (Col. 11, lines 7-9).
Cheiky is silent to separating using molecular-sieve membrane separation.
Pinnau discloses separating at least one chemical species from a fluid composition, which may include one or more of carbon monoxide and hydrogen (paragraph [0049]; for example, hydrogen purification or hydrogen recovery from refinery fuel gas and exhaust gas (paragraph [0048]), wherein the separating is achieved using pressure-swing adsorption (paragraph [0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Pinnau wherein the separating is achieved using molecular-sieve membrane separation, because separation processes account for a significant portion of the total industrial energy consumption as such processes still largely rely on energy-intensive thermally-driven unit operations, yet membrane technology offers extremely attractive opportunities to reduce those energy demands by as much as 90%, as recognized by Pinnau (paragraph [0001]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Cheiky (US 8,173,044) in view of Basu "Chapter 12 - Production of Synthetic Fuels and Chemicals from Biomass" and Polster (US 2018/0282159).
Regarding Claim 16, Cheiky and Basu teach the elements as described above with regards to claim 1.
Cheiky discloses separating hydrogen from a reducing gas (Col. 11, lines 7-9).
Cheiky is silent to separating using cryogenic distillation.
Polster discloses separating hydrogen from synthesis gas (synthesis gas comprises hydrogen and carbon monoxide (claim 16) and therefore meets the limitation of reducing gas), wherein the separating is achieved using cryogenic distillation (claim 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheiky to incorporate the teachings of Polster wherein the separating is achieved using cryogenic distillation, because there is a need to produce synthesis gases with very different H2/CO ratios, preferably within the same production plant, in order to satisfy the needs of various downstream processes, as recognized by Polster (paragraph [0005]).
Response to Arguments
Applicant's arguments filed 23 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Cheiky in view of Basu is deficient as claim 1 has been amended to remove “essentially” so that the claim now recites “A renewable hydrogen product produced by a process consisting of…”.
However, it appears the biomass of the present invention is not particularly limited [0010], such that the pulverized biomass of Cheiky meets the limitation of a biomass feedstock, and Cheiky describes the temperature ramps and pressure shocks as selective pyrolysis to obtain the BMF char (Col. 6, lines 53-56), which meets the limitation of the pyrolysis of biomass feedstock to obtain a biogenic reagent of the present invention.
As the method of Cheiky in view of Basu, including pyrolyzing a biomass feedstock, generating a biogenic regent comprising carbon, reacting the biogenic reagent with a reactant in the presence of oxygen, generating a reducing gas comprising hydrogen, increasing the hydrogen content in the reducing gas by a water-gas shift reaction, and separating the hydrogen from the reducing gas, thereby recovering the renewable hydrogen product, is substantially similar to that of the claimed invention, it appears that the hydrogen product of Cheiky in view of Basu is substantially similar to the claimed renewable hydrogen product. In the event any slight differences can be shown between the two renewable hydrogen products, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art hydrogen product of Cheiky in view of Basu. See Ex parte Gray, 10 USPQ2d 1922.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735