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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
Status of the Claims
The amendment filed on 05/11/2026 has been entered. Claims 1 has been amended. Thus claims 1-15 and 18-22 are currently pending; claims 21-22 have been withdrawn from further consideration; and claims 1-15 and 18-20 are under examination.
Withdrawn Rejection
Claims 1 has been amended to recite “by volume” for the percent content of CO2 in biogas and thus the 112(b) rejection of the record has been withdrawn.
Claim 1 has further been amended to recite the new limitation “wherein CO2 is not removed from the reformer feed stream prior to the carrying out of the steam methane reforming of said reformer feed stream in the reforming reactor of step c)”. US’537 the municipal sewage and farm animal waste may be first processed through a digester to yield biogas, which includes methane CH4, CO2 and CO ([0045]). CO2 and CO gases produced can then be utilized to produce a liquid fuel or can also be injected into a wellhead to enhance oil recovery ([0046]). Thus, CO2 would have to be separated from biogas prior to the reformer (fuel cell) to be utilized as aforementioned. Accordingly, the 103 rejection over Patent application publication number US2016/0060537A1 (US’537; cited in IDS 12/06/2021) in view International publication WO2019228797A1 (WO’797; effectively filed on May 15, 2019; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026) has been withdrawn.
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.
Claim 19 is newly 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 19 recites the limitation " a separation unit is used to remove part of the CO2 of the reformer feed stream subsequent to step a) and preceding step c) ". There is insufficient antecedent basis for this limitation in the claim because amended claim 1 now recites that “CO2 is not removed from the reformer feed stream prior to the carrying out of the steam methane reforming of said reformer feed stream in the reforming reactor of step c)” whereas claim 19 requires the removal of CO2 from the reformer feed stream.
For purpose of examination, the entirety of the claim will thus not be given patentable weight.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 8-15 and 18 are newly rejected under 35 U.S.C. 103 as being unpatentable over Patent number GB2375353A (GB’353) as evidenced by WorldEnergyOutlook ("An introduction to biogas and biomethane" Mar. 27, 2020, pages 1-6) in view International publication WO2019228797A1 (WO’797; effectively filed on May 31, 2018; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026).
Regarding claim 1, GB’474 teaches a method for the production of methanol, comprising the steps of: catalytically converting biogas to synthesis gas by steam reforming biogas containing methane and carbon dioxide, followed by converting synthesis gas to methanol (Figures and pages 1-3). Furthermore, the reference teaches that the biogas may be cleaned to remove contaminants (mainly sulfur containing compounds) prior to reforming and that the excess CO2 in biogas will not adversely effect the production of methanol (page 3, lines 1-14). Thus, there is no need to separate CO2 in biogas prior to the reforming step.
GB’353 is silent that the renewable gas has a content of CO2 of 25-52%, however, as evidenced by WorldEnergyOutlook, the methane content of biogas typically ranges from 45% to 75% by volume, with most of the remainder being CO2, thus about 25% to 55% by volume.
Regarding claims 13-15, GB’353 further teaches upgrading methanol to a motor engine fuel (page 4, lines 5-6) and to chemical grade methanol (“high grade methanol” page 4, line 5).
Regarding claim 1, GB’353 fails to teach c) carrying out steam methane reforming of said reformer feed stream in a reforming reactor comprising a pressure shell housing a structured catalyst arranged to catalyze steam reforming of said reformer feed stream, said structured catalyst comprising a macroscopic structure of an electrically conductive material, said macroscopic structure supporting a ceramic coating, where said ceramic coating supports a catalytically active material; said steam methane reforming comprising the following steps:
c1) supplying said reformer feed stream to the reforming reactor,
c2) allowing the reformer feed stream to undergo steam reforming reaction over the structured catalyst and outletting a synthesis gas from the reforming reactor, and
c3) supplying electrical power via electrical conductors connecting an electrical power supply placed outside said pressure shell to said structured catalyst, allowing an electrical current to run through the electrically conductive material of said macroscopic structure, thereby heating at least part of the structured catalyst to a temperature of at least 500° C,
wherein at least part of the off-gas is recycled to upstream said reforming reactor as feedstock; and wherein between 80% and 100% of the carbon of the biogas in said reformer feed stream is converted into methanol.
These deficiencies, however, are cured by WO’797 and US’394.
WO’797 teaches a process for carrying out steam reforming of a feed gas comprising hydrocarbons in a reactor system comprising a pressure shell housing a structured catalyst arranged to catalyze steam reforming of a feed gas comprising hydrocarbons, said structured catalyst comprising a macroscopic structure of an electrically conductive material, said macroscopic structure supporting a ceramic coating, where said ceramic coating supports a catalytically active material and wherein said reactor system is provided with heat insulation between said structured catalyst and said pressure shell; said process comprising the following steps:
pressurizing a feed gas comprising hydrocarbons to a pressure of at least 5 bar,
supplying said pressurized feed gas to said pressure shell through an inlet positioned so that said feed gas enters said structured catalyst in a first end of said structured catalyst;
allowing the feed gas to undergo steam reforming reaction over the structured catalyst and outletting a product gas from said pressure shell, wherein said product gas exits said structured catalyst from a second end of said structured catalyst;
supplying electrical power via electrical conductors connecting an electrical power supply placed outside said pressure shell to said structured catalyst, allowing an electrical current to run through said macroscopic structure, thereby heating at least part of the structured catalyst to a temperature of at least 500° C., wherein said at least two conductors are connected to the structured catalyst at a position on the structured catalyst closer to said first end of said structured catalyst than to said second end of said structured catalyst, and wherein the structured catalyst is constructed to direct an electrical current to run from one conductor to the second end of the structured catalyst and return to a second of said at least two conductors.
WO’797 teaches that the synthesis gas plant provides the following advantages
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Furthermore, WO’797 teaches the advantage of the invention is that the overall emission of carbon dioxide and other emissions detrimental to the climate may be reduced considerably, in particular if the power used in the reactor system is from renewable energy resources.
Hence, a skilled artisan would have been motivated to replace the reforming plant of GB’353 with that of WO’797 with a reasonable expectation of success in providing a compact synthesis gas plant and reducing overall emission of carbon dioxide. Furthermore, in view of the combination of the references that teaches upgrading of biogas, with 30-60% of carbon dioxide, to methanol as instantly claimed, that would efficiently use carbon in the feed and considerably reduce the overall emission of carbon dioxide, there is a prima facie case of obviousness in converting between 80% and 100% of the carbon of the biogas in the reformer feed stream to methanol.
Regarding claim 2, the limitation “generated by means of renewable energy” is a product by process claim languages as a result of the electrical power. The product by process limitation is not limited to the manipulations of the recited steps, but only to the structure implied by the steps, in this case, only to the electrical power. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process step does not appear to impart distinctive structural characteristic to the electrical power, the process step is not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
Regarding claims 8-9, WO’797 teaches wherein the pressure of the gas inside said reforming reactor is at least 5 bar (pg. 32, line 19) and wherein the temperature of the gas exiting said reforming reactor is between 800 and 1150° C (page 29, ll. 5-7).
Regarding claim 10, WO’797 teaches on pg. 34 as follows:
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Regarding claim 11, WO’797 teaches the same reforming reactor as instantly claimed and thus the plot area of the reforming reactor is necessarily as instantly claimed, i.e. between 0.4 m2 and 4 m2.
Regarding claim 12, WO’797 teaches that an advantage of their invention is that the overall emission of carbon dioxide and other emissions detrimental to the climate may be reduced considerably, in particular if the power used in the reactor system is from renewable energy resources (page 3, lines 5-7). As such, a skilled artisan would have been motivated to use renewable energy as the power supply for the reforming reactor. Furthermore, since the reference indicates that the use of renewable energy reduces the overall emission of carbon dioxide, a skilled artisan would have been motivated in using the renewable energy as a power supply in the reforming reactor and further use the teachings of GB’353 in producing methanol. It is understood that renewable energy such as solar and wind is not readily available as it is weather dependent, and thus the production of methanol would be regulated depending on the availability of the renewable energy.
Regarding claim 18, the reformer feed gas (CH4) in WO’797 is 2630 Nm3/h (Table 1).
Regarding claim 1, US’492 teaches a process for the production of methanol by first steam reforming a hydrocarbon in steam reformer 7 to synthesis gas followed by methanol production from synthesis gas in reactor 19. The reference further teaches separating methanol from gaseous mixture in separator 23 and recycling part a portion of the gaseous mixture after scrubbing to the feed of reformer via line 29 (see the figure). The composition of the gaseous mixture in vol% comprises CO, 9.35; CO2, 8.36; H2, 73.98; CH4, 8.09: H2O, 0.10 and CH3OH, 0.08 (col. 5, ln. 55-58). The reference teaches that the operation efficiency of the process is maintained by recycling the methanol-free recycle stream to the reaction zone for methanol synthesis notwithstanding the lower pressure in the step of methanol synthesis. As such, a skilled artisan would have been motivated in using the methods of US’492 in recycling the unreacted methanol synthesis gas formed in the combination of GB’353 and WO’797 with a reasonable expectation of success in maintaining the efficiency of the methanol manufacturing process and in arriving at the instantly claimed method.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for upgrading biogas to methanol, comprising the steps of:
a) providing a reformer feed stream comprising said biogas, wherein said biogas has a content of CO2 of 25-50% by volume,
c) carrying out steam methane reforming of said reformer feed stream in a reforming reactor comprising a pressure shell housing a structured catalyst arranged to catalyze steam reforming of said reformer feed stream, said structured catalyst comprising a macroscopic structure of an electrically conductive material, said macroscopic structure supporting a ceramic coating, where said ceramic coating supports a catalytically active material; said steam methane reforming comprising the following steps:
c1) supplying said reformer feed stream to the reforming reactor,
c2) allowing the reformer feed stream to undergo steam reforming reaction over the structured catalyst and outletting a synthesis gas from the reforming reactor, and
c3) supplying electrical power via electrical conductors connecting an electrical power supply placed outside said pressure shell to said structured catalyst, allowing an electrical current to run through the electrically conductive material of said macroscopic structure, thereby heating at least part of the structured catalyst to a temperature of at least 500° C., and
d) providing at least part of the synthesis gas of step c2) to a methanol synthesis unit to provide a product comprising methanol and an off-gas;
wherein at least part of the off-gas is recycled to upstream said reforming reactor as feedstock; wherein between 80% and 100% of the carbon of the biogas in said reformer feed stream is converted into methanol; and wherein CO2 is not removed from the reformer feed stream prior to the carrying out of the steam methane reforming of said reformer feed stream in the reforming reactor of step c)
in view of the teachings of GB’353, WO’797 and US’492.
Claims 3 is newly rejected under 35 U.S.C. 103 as being unpatentable over Patent number GB2375353A (GB’353) as evidenced by WorldEnergyOutlook ("An introduction to biogas and biomethane" Mar. 27, 2020, pages 1-6) in view International publication WO2019228797A1 (WO’797; effectively filed on May 31, 2018; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026) as applied to claims 1-2, 8-15 and 18 above, and further in view of Etsap (“Production of Bio-methanol” Jan. 2013, pages 1-28).
The teachings of GB’353, WO’797 and US’492 have been set forth above.
Regarding claim 3, the combination of the above references fails to teach or suggest the limitation of the claim. The deficiency is however cured by ETSAP.
The instant specification describes:
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in which when bio-gas is mixed with natural gas leads to larger H/C ratio.
Etsap teaches the production of methanol from feedstocks such as biogas (page 1). Furthermore, the reference discusses the importance of cofeeding biogas into a natural based methanol plant to make methanol production gradually more sustainable (page 3). Thus, combining the biogas and natural gas as reformer feed, the same effect as described in the specification and in the claim would be observed.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for upgrading biogas to methanol as in claim 1 and wherein the reformer feed stream has a first H/C ratio and where a second hydrocarbon feed gas with second H/C ratio is mixed with the reformer feed stream upstream the reforming reactor, wherein the second H/C ratio is larger than the first H/C ratio in view of the teachings of GB’353, WO’797, US’492 and Etsap.
Claims 4-5 are newly rejected under 35 U.S.C. 103 as being unpatentable over Patent number GB2375353A (GB’353) as evidenced by WorldEnergyOutlook ("An introduction to biogas and biomethane" Mar. 27, 2020, pages 1-6) in view International publication WO2019228797A1 (WO’797; effectively filed on May 31, 2018; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026) as applied to claims 1-2, 8-15 and 18 above, and further in view of international publication WO2019020513A1 (WO’513; cited in PTO-892 04/02/2025).
The teachings of GB’353, WO’797 and US’492 have been set forth above.
Regarding claims 4-5, the combination of the above references fails to teach or suggest the limitations of the claims.
However, WO’513 teaches the use of an electrolysis unit is used to generate a hydrogen rich stream from a water feedstock and where said hydrogen rich stream is added to the synthesis gas to balance the module of said synthesis gas to be in the range of 1.9-2.2, and wherein said electrolysis unit is a solid oxide electrolysis cell unit and said water feedstock is in the form of steam produced from other processes of the method. WO’513 teaches that the module is preferable when using the synthesis gas for the preparation of methanol. Accordingly, a skilled artisan would have been motivated to use the methods of WO’513 in the combination of GB’353 and WO’797 with a reasonable expectation of success in providing a module of synthesis gas that is suitable for the production of methanol.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for upgrading biogas to methanol as in claim 1 and wherein an electrolysis unit is used to generate a hydrogen rich stream from a water feedstock and where said hydrogen rich stream is added to the synthesis gas to balance the module of said synthesis gas to be in the range of 1.5 to 2.5 in view of the teachings of GB’353, WO’797, US’492 and WO’513.
Claims 6 and 20 are newly rejected under 35 U.S.C. 103 as being unpatentable over Patent number GB2375353A (GB’353) as evidenced by WorldEnergyOutlook ("An introduction to biogas and biomethane" Mar. 27, 2020, pages 1-6) in view International publication WO2019228797A1 (WO’797; effectively filed on May 31, 2018; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026) as applied to claims 1-2, 8-15 and 18 above, and further in view of patent application publication number US2018/0305281A1 (US’281; cited in PTO-892 04/02/2025).
The teachings of GB’353, WO’797 and US’492 have been set forth above.
Regarding claims 6 and 20, the combination of the above references fails to teach or suggest the limitations of the claim. However, the deficiencies are cured by US’281.
Regarding claim 6, US’281 teaches the use of a membrane or PSA unit is included in the methanol synthesis unit to extract at least part of the hydrogen from said off-gas and return said at least part of the hydrogen from said off-gas to the synthesis gas to balance the module of said synthesis gas to slightly higher than 2, typically 2.05 ([0005]). US’281 teaches that the module is preferable when using the synthesis gas for the preparation of methanol. Accordingly, a skilled artisan would have been motivated to use the methods of US’281 in the combination of GB’353 and WO’797 with a reasonable expectation of success in providing a module of synthesis gas that is suitable for the production of methanol.
Regarding claim 20, US’281 teaches wherein part of the off-gas produced in step the methanol synthesis is recycled to upgrade reformer feed (see Figs. 1-2).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for upgrading biogas to methanol as in claim 1 and wherein a membrane or PSA unit is included in the methanol synthesis unit to extract at least part of the hydrogen from said off-gas and return said at least part of the hydrogen from said off-gas to the synthesis gas to balance the module of said synthesis gas to be in the range of 1.5 to 2.5, and wherein part of the off-gas produced in step d) is recycled to a biogas production facility for producing the biogas to be upgraded in view of the teachings of GB’353, WO’797, US’492 and US’281.
Claim 7 is newly rejected under 35 U.S.C. 103 as being unpatentable over Patent number GB2375353A (GB’353) as evidenced by WorldEnergyOutlook ("An introduction to biogas and biomethane" Mar. 27, 2020, pages 1-6) in view International publication WO2019228797A1 (WO’797; effectively filed on May 31, 2018; cited in PTO-892 04/02/2025) and Patent number US4,219,492 (US’492; cited in PTO-892 04/13/2026) as applied to claims 1-2, 8-15 and 18 above, and further in view of patent application publication number US2016/0273756A1 (US’756; cited in PTO-892 04/02/2025).
The teachings of GB’353, WO’797 and US’492 have been set forth above.
Regarding claim 7, the combination of the above references fails to teach or suggest the limitations of the claim.
However, US’756 teaches integration of a combination of steam superheating and steam generation in waste heat recovery of said synthesis gas from said reforming reactor, and wherein the superheated steam is used as steam feedstock in step c) of the method for upgrading biogas to methanol ([0077]).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for upgrading biogas to methanol as in claim 1 and wherein a membrane or PSA unit is included in the methanol synthesis unit to extract at least part of the hydrogen from said off-gas and return said at least part of the hydrogen from said off-gas to the synthesis gas to balance the module of said synthesis gas to be in the range of 1.5 to 2.5, and wherein a combination of steam superheating and steam generation is integrated in waste heat recovery of said synthesis gas from said reforming reactor, and wherein the superheated steam is used as steam feedstock in step c) of the method for upgrading biogas to methanol in view of the teachings of GB’353, WO’797, US’492 and US’756.
Conclusion
Claims 1-15 and 18-20 are rejected and no claims are allowed.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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