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 .
Response to Arguments
With respect to the rejection of Claims 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over Armor in view of Mamedov, as understood the traversal relies on arguments. Applicant argues “Armor does not disclose or fairly suggest the deliberate selection of an oxygen-to-hydrocarbon ratio below the ratio that would minimize unreacted hydrocarbons” [Remarks, Page 2, Paragraph 2]. This is unpersuasive. Armor discloses the process limitations required by Claim 1, the fact that their motivation is different (or even absent) from the motivation of the instant application is not relevant towards patentability. See MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”).
Applicant further argues “First, the Official Action misidentifies the claimed invention as temperature result rather than O2/hydrocarbonaceous material ratio process control” [Remarks, Page 2, Paragraph 3]. This is unpersuasive. One of ordinary skill in the art of partial oxidation would know that these reactions are exothermic and run with less oxygen present than full conversion would require (hence partial oxidation). Therefore, they would know that increasing the O2 ratio would increase the temperature and vice versa.
Applicant further argues “Second, neither the Official Action, nor Armor appear to identify the feed composition, the O2/hydrocarbonaceous material (i.e., feed) ratio, residual hydrocarbonaceous material or ratio, the maximum conversion, methane slip, or actual H2:CO ratio” [Remarks, Page 2, Paragraph 3]. This is unpersuasive. As cited in the previous Office Action there is no requirement that the prior art teach all of the same features if the features would have been inherently in the prior art (MPEP 2112). All of the above features arose from a uncatalyzed partial oxidation reaction at about 2,400 °F as disclosed by the specification and Armor discloses a uncatalyzed partial oxidation reaction at about 2,400 °F. It would not be reasonable to assume that performing the same method steps would have led to different results. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d at 392. See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Applicant further argues “Armor does not teach or suggest deliberately selecting an O2/hydrocarbon ratio below the ratio that minimizes unreacted hydrocarbons” [Remarks, Page 2, Paragraph 4]. This is unpersuasive. As noted in the 1/28/2026 interview, the Office does not give patentable weight to the motivation behind process steps performed (see MPEP 2112 & 2144.01); “the reason recited [in the claim] for performing a certain step does not create a patentable distinction.” See Ex parte Jansen, Appeal #2009-1067 (BPAI May 15, 2009) at p. 9.
Therefore, it is not particularly relevant towards the patentability of Claim 1 whether Armor teaches the O2/hydrocarbon ratio deliberately, explicitly, or implicitly, other than the statute under which rejection is proper. Applicant is silent towards the actual grounds of rejection, which asserts that the O2/hydrocarbon ratio in Armor would have implicitly been lower than the ratio that minimizes unreacted hydrocarbons. The rejections are MAINTAINED.
With respect to the rejection of Claims 7 and 8 under 35 U.S.C. 103 as being unpatentable over Armor in view of Mamedov, in further view of Chakravarti et al., as understood the traversal relies on arguments. Applicant argues “neither of these documents [Mamedov] cure the deficiency in Armor” [Remarks, Page 3, Paragraph 3]. This is unpersuasive as Armor has not been found deficient (see above). The rejections are MAINTAINED.
With respect to the rejection of Claims 9-12 under 35 U.S.C. 103 as being unpatentable over Armor in view of Mamedov., in further view of Pena et al., as understood the traversal relies on arguments. Applicant argues “neither of these documents [Mamedov and Pena] cure the deficiency in Armor” [Remarks, Page 3, Paragraph 3]. This is unpersuasive as Armor has not been found deficient (see above). The rejections are MAINTAINED.
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.
Claim(s) 1 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over NPL “The multiple roles for catalysis in the production of H2” Armor in view of US 20170320730 A1 Mamedov. Claim 1 requires “A method of producing syngas, comprising: feeding a hydrocarbonaceous feedstock material and oxygen to a reactor that does not include any form of external energy addition”. Armor discloses “The thermal oxidation is run at 30-100 atm with pure O2 using a special burner inside a refractory lined vessel at 1300 °C.” [Page 168, Section 3.4]. Armor et al. does not disclose any external energy addition, any energy needed to pre-heat the reactants could be supplied by combusting a portion of the hydrocarbon feed and/or recovering waste heat from the product stream. Examiner takes official notice that combusting fuel for heat and/or recovering waste heat (e.g. for purposes of E efficiency and/or cost efficiency) would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention.
Claim 1 further requires “non-catalytic partial oxidation of the hydrocarbonaceous feedstock material in the reactor to produce a product stream comprising H2, CO, and hydrocarbons that leaves the reactor”. Regarding the absence of a catalyst Armor discloses “The other major route to H2 is non-catalytic partial oxidation of fossil fuels, often referred to as POX (or gasification).” [Page 168, Section 3.4]. Regarding the product stream Armor discloses “The general reaction is described by Eq. (12): CxHy + x/2O2 -> xCO + y/2H2 (12)” [Page 169, Section 3.4]. Therefore it is understood that the product stream contains at least H2 and CO, however Armor does not explicitly disclose unreacted hydrocarbons. However, as evidenced by the instant invention specification (see Figure 3 and 5) a few percent of the methane remains unconverted in a non-catalytic autothermal reactor at the temperature utilized by Armor. Thus, such presence of unreacted hydrocarbons is reasonably considered to be implicit and/or inherent to Armor’s POX/gasification reaction. MPEP 2112 & 2144.01. Indeed, it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps- it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Claim 1 further requires “wherein the non-catalytic partial oxidation is carried out at a ratio of oxygen to hydrocarbonaceous material which is lower than the ratio of oxygen to hydrocarbonaceous material at which non-catalytic partial oxidation of the feedstock material, would minimize the amount of unreacted hydrocarbons in the product stream produced by partially oxidizing the feedstock material, resulting in a reduced temperature which is higher than 2200°F, but lower than 2700°F, thereby providing H2 and CO in the product stream wherein the H2:CO ratio is higher than the value the ratio would exhibit upon partial oxidation at said reaction conditions including at a temperature higher than said reaction temperature”. Armor does not disclose the temperature at which maximum conversion occurs however they do disclose a temperature of 1,300 °C (2,372 °F). It is understood from the instant application specification that a temperature of 2,400 °F achieves these conditions (see Specification Page 10, Lines 24-27). Therefore it is understood that the method of Armor performed at 2,372 °F would have necessarily achieved a H2:CO ratio higher than the value the ratio would exhibit upon partial oxidation at said reaction conditions including at a temperature higher than said reaction temperature regardless of whether they were aware of this benefit or not. MPEP 2112.01, citing In re Best. In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps- it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs. See also In re Woodruff.
Claim 1 further requires “recovering from the reactor a product stream comprising hydrogen and CO formed in the reactor and unreacted hydrocarbons, wherein said unreacted hydrocarbon in said product stream, or products obtained by reaction of said unreacted hydrocarbon recovered from the product stream is recycled to the reactor in which the partial oxidation is performed.”. Armor does not disclose recovering unreacted hydrocarbons from the reactor.
Mamedov is similarly directed to the partial oxidation of methane and discloses “Unreacted methane and/or carbon dioxide can also be recovered from the separation unit and optionally recycled” [0042]. It would have been obvious to one of ordinary skill in the art to have used the separation unit of Mamedov to recover the CH4 that left the reactor unreacted in the method of Armor, so as to achieve a desirable cost saving from requiring less fresh CH4.
Claim 3 requires “the hydrocarbonaceous feedstock material comprises natural gas.” Armor does not explicitly disclose natural gas, however they disclose “One key advantage of this approach is that it accepts all kinds of hydrocarbon feeds.” [Page 169, Section 3.4]. It would have been obvious for one of ordinary skill in the art to have selected natural gas as the hydrocarbon feed for at least the reason that it is disclosed as effective. MPEP 2144.07.
Claim 4 requires “the hydrocarbonaceous feedstock material comprises biomass.”. Armor does not explicitly disclose biomass, however they disclose “One key advantage of this approach is that it accepts all kinds of hydrocarbon feeds.” [Page 169, Section 3.4]. It would have been obvious for one of ordinary skill in the art to have selected biomass as the hydrocarbon feed for at least the reason that it is disclosed as effective. MPEP 2144.07.
Claim 5 requires “the hydrocarbonaceous feedstock material is derived from fossil fuel.”. Armor does not explicitly disclose fossil fuels, however they disclose “One key advantage of this approach is that it accepts all kinds of hydrocarbon feeds.” [Page 169, Section 3.4]. It would have been obvious for one of ordinary skill in the art to have selected fossil fuels as the hydrocarbon feed for at least the reason that it is disclosed as effective. MPEP 2144.07.
Claim 6 requires “the partial oxidation is carried out with a gaseous stream comprising at least 50 vol.% oxygen.”. Armor discloses pure oxygen “The thermal oxidation is run at 30-100 atm with pure O2 using a special burner inside a refractory lined vessel at 1300 °C.” [Page 168, Section 3.4], which is understood to be 100 vol.% O2.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over NPL “The multiple roles for catalysis in the production of H2” Armor in view of US 20170320730 A1 Mamedov, in further view of US 20160176793 Chakravarti et al. Regarding Claim 7, Armor in view of Mamedov discloses all of the limitation of Claim 1. Claim 7 further requires “the partial oxidation is carried out by feeding oxygen into the reactor at a velocity of 500 to 4500 feet per second.” Armor is silent to the velocity of the oxygen.
Chakravarti is similarly directed to a method of generating syngas by partially oxidizing hydrocarbons and discloses “Generally the velocity of the hot oxygen stream will be within the range of from 500 to 4500 feet per second” [0050]. It would have been obvious for a person of ordinary skill in the art to modify the method of Armor, which is silent on the velocity of the hot oxygen stream, with a more explicit disclosure such as that found in Chakravarti et al. teaching an appropriate range of velocity of the hot oxygen stream. The motivation to do so would be to avoid excessive experimentation.
Regarding Claim 8, Armor in view of Mamedov discloses all of the limitation of Claim 1. Claim 8 further requires “the partial oxidation is carried out by feeding oxygen into the reactor at a temperature of at least 2000 °F.” Armor is silent to the temperature of the oxygen feed. Chakravarti discloses “The hot oxygen stream obtained in this way is passed from the hot oxygen generator into reaction chamber… having a temperature of at least 2000 ᵒF” [0050]. It would have been obvious for a person of ordinary skill in the art to modify the method of Armor, which is silent on the temperature of the oxygen when added to the reactor, with a more explicit disclosure such as that found in Chakravarti et al. to teach an appropriate temperature of the hot oxygen stream. The motivation to do so would be to avoid excessive experimentation.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over NPL “The multiple roles for catalysis in the production of H2” Armor in view of US 20170320730 A1 Mamedov., in further view of NPL “New catalytic routes for syngas and hydrogen production” Pena et al. Claims 9-11 all similarly require the product syngas to have a particular H2:CO ratio with Claim 9 requiring “the H2:CO ratio in the product stream is at least 1.75”, Claim 10 requiring “the H2:CO ratio in the product stream is 1.95 to 2.05”, and Claim 11 requiring “the H2:CO ratio in the product stream is 0.55 to 0.65”. Armor does not disclose the H2:CO ratio. Pena et al. is similarly related to methods of generating syngas from the non-catalytic partial oxidation of hydrocarbons. Pena et al. discloses “Autothermal reforming (ATR) is a combination of non-catalytic partial oxidation and steam reforming developed by Haldor Topsoe in the late 1950s with the aim of performing reforming in a single reactor … Although the ATR was originally used to maximize H2 production in ammonia plants, it can be applied in the production of CO-rich gases. In all cases, the H2/CO ratio at the outlet of the reactor can be precisely adjusted by varying the H2O/CH4 and/or O2/CH4 molar ratios in the feed.” [Page 17, Section 2.3]. It therefore would have been obvious to one of ordinary skill in the art to have adjusted at least the O2/CH4 molar ratios in the feed in order to achieve a desired H2:CO ratio. For example if one of ordinary skill in the art wished to produce ethanol from syngas via the FT process they would adjust the air:fuel ratio to generate a syngas having a H2:CO of about 2.0 (meeting Claims 9-10) and if they wished to produce synthetic gasoline they would adjust the air:fuel ratio to generate a syngas having a H2:CO of about 0.60 (meeting Claim 11).
It would have been obvious for one of ordinary skill in the art to have combined the method of Armor with the method of Pena et al. because they similarly relate to methods of generating syngas from the non-catalytic partial oxidation of hydrocarbons. The motivation to have used the teaching of Pena et al. that control over the feed ratios gives precise control over the H2:CO ratio of the product is that control over this ratio is beneficial to processes which function best at particular H2:CO ratios.
Claim 12 requires “A method according to claim 1 further comprising adding steam to the reactor.” Pena et al. discloses “The preheated feed streams (CH4 + H2O, and H2O + O2) are mixed in a burner placed at the top where the POM reactions take place.” [Page 17, § 2.3].
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA MAXWELL SPEER whose telephone number is (703)756-5471. The examiner can normally be reached M-F 9am-5pm EST. 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, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/ Primary Examiner, Art Unit 1736
