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 .
Status of the Claims
The amendment filed on 09/24/2025 has been entered. Claims 1 and 3-4 have been amended and claims 16-17 have been canceled. Thus claims 1-15 and 18-22 are currently pending; claims 21-22 have been withdrawn from further consideration; and claims 1-15 and 18-20 are under examination.
Withdrawn Rejection
Claim 1 has been amended by now reciting “wherein said biogas has a content of CO2 of 25-50%”, “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”. Thus, 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publication WO2019228797A1 (WO’797; effectively filed on May 15, 2019; cited in PTO-892 04/02/2025) has been withdrawn. Furthermore, while Patent number US4894394 (US’394; cited in PTO-892 04/02/2025) teaches passing (recycling) of off-gas from methanol production as fuel to heat the reforming zone of step (a), but fails to teach or suggest recycling at least part of the off-gas to upstream said reforming reactor as feedstock as instantly amended. Accordingly, the 103 rejection over the combination of US’537, WO’797 and US’394 has been withdrawn.
Upon further consideration, neither the claims of U.S. Patent Nos. 11649164 and 11905173 nor their specification describes that the hydrocarbon feed used in the steam reformer is biogas, and there is no motivation in using biogas as the feed. Furthermore, even though US’537 teaches the use of biogas as a hydrocarbon feed, the reference fails to teach the use of the instantly claimed reforming reactor. As such, one of ordinary skilled in the art would not be motivated to combine the claims of the applications numbers with the teachings US’537 and would not have a reasonable expectation of success in at the instantly claimed process.
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 1-15 and 18-20 are 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.
The newly added limitation “wherein said biogas has a content of CO2 of 25-50%” renders the claim vague and indefinite as it is unclear if the percent values are in wt.%, mol.% or vol.%. For purpose of examination, any art with a percent value of CO2 that reads on the claimed range will be applied.
Claims 2-15 and 18-20 are also rendered indefinite for depending on claim 1.
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 1-3, 8-15 and 18-19 are newly rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0060537A1 (US’537; cited in IDS 12/06/2021) as evidenced by Olczak (Olczak, M. "What is renewable gas?" Mar. 14, 2018, pages 1-5) 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).
Regarding claim 1, US’537 teaches a method for upgrading to methanol, comprising the steps of:
catalytically converting a hydrocarbon fuel comprising natural gas, coal gas or a renewable gas such as biogas ([0045], [0048]-[0049], [0051] and [0070]) into a reformate with a fuel processor, providing thermal energy to the fuel processor by an electric heating apparatus, providing power to the electric heating apparatus by an energy source, and processing the reformate and converting the reformate into a liquid fuel such as methanol with a catalytic reactor ([0036] and [0040]).
US’537 is silent that the renewable gas has a content of CO2 of 25-52%, however, as evidenced by Olczak, renewable gas comprises 30-60% of carbon dioxide.
Regarding claims 2 and 12, US’537 teaches that the reforming plant utilizes electricity that is generated by an energy source, such as by a renewable energy source, for providing thermal energy to a reformer of the reformer plant to supply the necessary heat to satisfy the endothermic needs and other thermal and electrical functions of the reforming process ([0005]).
Regarding claim 3, the instant specification describes:
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in which when bio-gas is mixed with natural gas leads to larger H/C ratio.
and any combination of bio-gas with other reformer feed gases. US’537 teaches that the reformer feed gas can be natural gas, coal gas or a renewable gas (also known as biogas) ([0036]), and thus combining the bio-gas and natural gas as reformer feed, the same effect as described in the specification and in the claim would be observed.
Regarding claims 13-15, US’537 further teaches upgrading methanol to fuel grade ([0040]).
Regarding claim 19, US’537 teaches separating of CO2 of the feed prior to reformer ([0046]).
Regarding claim 1, US’537 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 US’537 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 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 18, the reformer feed gas (CH4) in WO’797 is 2630 Nm3/h (Table 1).
Regarding claim 16, 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 US’537 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%,
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; and wherein between 80% and 100% of the carbon of the biogas in said reformer feed stream is converted into methanol
in view of the teachings of US’537, WO’797 and US’492.
Claims 4-5 are newly rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0060537A1 (US’537; cited in IDS 12/06/2021) as evidenced by Olczak (Olczak, M. "What is renewable gas?" Mar. 14, 2018, pages 1-5) 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) as applied to claims 1-3, 8-15 and 18-19 above, and further in view of international publication WO2019020513A1 (WO’513; cited in PTO-892 04/02/2025).
The teachings of US’537, 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 US’537 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 US’537, 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 application publication number US2016/0060537A1 (US’537; cited in IDS 12/06/2021) as evidenced by Olczak (Olczak, M. "What is renewable gas?" Mar. 14, 2018, pages 1-5) 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) as applied to claims 1-3, 8-15 and 18-19 above, and further in view of patent application publication number US2018/0305281A1 (US’281; cited in PTO-892 04/02/2025).
The teachings of US’537, 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 US’537 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 US’537, WO’797, US’492 and US’281.
Claim 7 is newly rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0060537A1 (US’537; cited in IDS 12/06/2021) as evidenced by Olczak (Olczak, M. "What is renewable gas?" Mar. 14, 2018, pages 1-5) 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) as applied to claims 1-3, 8-15 and 18-19 above, and further in view of patent application publication number US2016/0273756A1 (US’756; cited in PTO-892 04/02/2025).
The teachings of US’537, 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 US’537, WO’797, US’492 and US’756.
Response to Arguments
Applicant discusses that electrically heated SMR of the present invention eliminates the need to combust biogas that is usually conducted in the conventional biogas to methanol process and avoids direct CO2 emission but allows substantially complete conversion of the total carbon content of the biogas.
Applicant thus argues that US’537 differs from the present invention as it fails in:
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Applicant further argues that the heating system of US’537 is obtained by radiation and/or conduction from the thermally conducting plates, which are electrically heated, whereas the present invention, the catalytically active material is impregnated into a ceramic coating on electrically conducting material, which improved heat transfer capacity and thus reforming capacity compared to that of US’537.
Applicant also argues
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Applicant argues that WO’797 fails to disclose or suggest a methanol production process or the use of biogas as hydrocarbon feed.
The examiner disagrees.
Applicant is arguing against US’537 and WO’797 individually where the obviousness rejection is based on the combination of references. MPEP § 2145 states “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.”
As indicated in the above rejection, US’537 teaches renewable gas such as biogas as the feed for the steam reformer, and as evidenced by Olczac, biogas contains 30-60% of carbon dioxide, thus reading on the claimed amount. As taught by US’537, the process provides an energy system in which the reformate comprises a fuel processor, providing thermal energy to the fuel processor by an electric heating apparatus, providing power to the electric heating apparatus by an energy source, and processing the reformate and converting the reformate into a liquid fuel such as methanol with a catalytic reactor. US’537 teaches that the energy system provides a zero emission energy system that is operated to maximize the use of carbon for the production of bio-fuel products such as methanol ([0041] and [0058]). As such, it is understood that the electrically heated steam reforming system of US’537 allows the maximal use of carbon in the feed such as biogas and the conversion of the carbon to products such as methanol.
US’537 fails to teach the reforming reactor as instantly claimed, however, WO’797 cures the deficiency by teaching that the reforming reactor for carrying out steam reforming of a feed gas comprising hydrocarbons, including: a structured catalyst arranged for catalyzing steam reforming of a feed gas including hydrocarbons, the structured catalyst including a macroscopic structure of electrically conductive material, the macroscopic structure supporting a ceramic coating, wherein the ceramic coating supports a catalytically active material; a pressure shell housing the structured catalyst; heat insulation layer between the structured catalyst and the pressure shell; at least two conductors electrically connected to the macroscopic structure and to an electrical power supply placed outside the pressure shell, wherein the electrical power supply is dimensioned to heat at least part of the structured catalyst to a temperature of at least 500° C. by passing an electrical current through the macroscopic structure.
WO’797 indicates 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).
Moreover, WO’797 teaches other advantages of using the steam reforming reactor (pg. 4, ln. 26 to pg. 5, ln. 5):
The close proximity between the catalytically active material and the macroscopic structures enables efficient heating of the catalytically active material by solid material heat conduction from the resistance heated macroscopic structure. An important feature of the resistance heating process is thus that the energy is supplied inside the object itself, instead of being supplied from an external heat source via heat conduction, convection and radiation. Moreover, the hottest part of the reactor system will be within the pressure shell of the reactor system. Preferably, the electrical power supply and the structured catalyst are dimensioned so that at least part of the structured catalyst reaches a temperature of 850° C., preferably 900° C., more preferably 1000° C. or even more preferably 1100° C.
Thus, in view of the above advantages, using the reforming reactor of WO’797 in place of US’537, a skilled artisan would have a reasonable expectation of success in considerably reducing the emission of carbon dioxide present in biogas feed of US’537 without having to first conduct the combustion in reducing carbon dioxide. Additionally, such a combination, a skilled artisan would also have a reasonable expectation that the proximity between the catalytically active material and the macroscopic structures of the reforming reactor of WO’797 would enable efficient heating of the catalytically active material without the need of external heat supply.
It has also been indicated in the above rejection that 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 US’537 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.
Finally, 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 would 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.
Double Patenting
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 1-15 and 18-20 are newly rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12291453B2 (US’453).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a method for upgrading a hydrocarbon feed gas to methanol, comprising the steps of:
a1) providing a hydrocarbon feed gas,
b1) optionally, providing CO2 to the process,
b2) optionally, purifying the hydrocarbon feed gas in a gas purification unit,
b3) optionally, prereforming the hydrocarbon feed gas together with a steam feedstock in a prereforming unit,
c) carrying out steam methane reforming in a reforming reactor comprising a pressure shell housing a structured catalyst arranged to catalyze steam reforming of said hydrocarbon feed gas, 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 hydrocarbon feed gas to the reforming reactor,
c2) allowing the hydrocarbon feed gas to undergo steam methane 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 said macroscopic structure material, thereby heating at least part of the structured catalyst to a temperature of at least 500° C.,
d) providing at least part of the synthesis gas from step c2) to a methanol synthesis unit to provide a product comprising methanol and an off-gas.
Claims of ‘453 fails to recite that the hydrocarbon feed gas is a biogas with a content of CO2 of 25-50%. However, the specification of ‘453 defines the hydrocarbon feed gas a biogas containing CO2 at an amount of 25-50% (col. 1, ln. 41-50). MPEP § 804 states that “The specification can be used as a dictionary to learn the meaning of a term in the claim” and “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim”. Accordingly, the hydrocarbon feed gas of ‘453 is equivalent to the biogas as instantly claimed.
Claim 1 of ‘453 fails to recite the process 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. However, claims 15-16 cure the deficiency by reciting the aforementioned processes not presented in claim 1. As such, combining the processes of claims 15-16 into the process of claim1 of ‘453, a skilled artisan has a reasonable expectation in arriving at the instantly claimed invention.
Conclusion
Claims 1-15 and 18-20 are rejected and no claims are allowed.
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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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692