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 .
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.
Election/Restrictions
Claims 60-69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/03/2025.
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.
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.
Claim(s) 48-59, 70 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hallett et al. (US20100199559A1), hereinafter ‘Hallett’, in view of Guerrero et al. (Optimal slow pyrolysis of apple pomace reaction conditions for the generation of a feedstock gas for hydrogen production, International Journal of Hydrogen Energy, 2016), hereinafter ‘Guerrero’, as cited in the third-party Information Disclosure Statement received 09/14/2022.
Regarding Claim 48, Hallett discloses a process for reducing an organic material to produce methane and/or hydrogen ([0012]-[0013]) comprising:
(a) contacting the organic material with an excess amount of hydrogen gas in an enclosed reduction chamber, wherein the reduction chamber is substantially free of oxygen, and heating the reduction chamber to cause a temperature increase in the organic material under positive pressure to form a first gaseous mixture comprising methane, hydrogen, acid, and partially reduced volatile organic molecules ([0014]: an organic material is contacted with an excess amount of hydrogen gas in an enclosed chamber substantially free of oxygen, considered a reduction chamber, and the chamber is heated to vaporize the organic material; [0119]: hydrogen gas stream 12 is introduced into the apparatus 64, and provides a positive flow of sweep gas through the rotating vessel 30. The stream 12 can help to convey the vaporized organic waste material through the vessel 30 and out of the apparatus 64 through the cyclone exit 40 to a mixer 44, for example a static mixer – this hydrogen is considered to be in excess, as it is disclosed that this stream is hydrogen gas recycled to be used again in the process ([0097]), and, as discussed above, hydrogen is provided to the reaction chamber in excess; [0072]: the gaseous mixture resulting from the aforementioned vaporization step results in a gas mixture comprising unreacted hydrogen, acid, and partially reduced volatile organic molecules (as shown in Scheme 1) – further, the produced gaseous mixture must also necessarily comprise methane, as the organic material of both the instant claims and Hallett are subjected to reduction under the same conditions (e.g., in an anaerobic environment, at the same temperature, under positive pressure, in the presence of excess hydrogen gas, and in the presence of the same reactants) – products formed by the same or substantially similar processes cannot have mutually exclusive compositions, MPEP 2112.01(I));
(b) heating the first gaseous mixture to a temperature of about 675° C. to about 875° C. in the presence of an excess amount of hydrogen gas to form a second gaseous mixture comprising
methane and/or hydrogen, and acid ([0068]: the gaseous mixture formed in the aforementioned vaporization step is heated to a temperature of about 600 °C to about 900 °C, and preferably to a temperature of about 800 to 875 °C ([0074]), in the presence of excess hydrogen and superheated steam to produce a gaseous mixture comprising methane, hydrogen, and an acid); and
(c) neutralizing the second gaseous mixture with a base ([0069]).
Further, while Hallett discloses the formation of methane gas from the vaporization of organic materials including waste materials to be used as a feedstock gas ([0004], [0007]), Hallett does not disclose heating the reduction chamber to cause a temperature increase in the organic material from ambient temperature up to 420 °C at a rate of up to about 8° C per minute.
Guerrero discloses studies regarding the effect of conditions of pyrolysis such as heating rate on the pyrolysis of apple pomace, an organic waste material, for the generation of a feedstock gas (title). A person of ordinary skill in the art would have recognized Guerrero as analogous to Hallett, as both references are drawn to the same field of endeavor as the claimed invention, the pyrolysis of organic waste materials to result in a feedstock gas - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Guerrero discloses the pyrolysis of apple pomace under pressure of nitrogen at temperatures between 300-450 °C, which correspond to the atmosphere and temperature of vaporization of Hallett, using heating rates between 5-20 °C/min (Determination of apple pomace pyrolysis parameters), and beginning at ambient temperatures (Figs. 2 and 3). Further, Guerrero discloses that the greatest amount of volatile material, i.e., feedstock gas, is produced at a heating rate of 5 °C/m, as with an increase in the heating rate of vaporization, the effective heat transfer within the sample is decreased, resulting in the sample not reaching the right decomposition temperature (Apple pomace pyrolysis parameters). Guerrero discloses that a maximum of 71.5% W of non-condensable volatile matter (NCVM) were obtained along with 25.4% W of condensable volatile matter (CVM), while only 3% W of residual matter (CR) was produced (Conclusions).
Accordingly, given that Guerrero discloses that lower heating rates, such as a heating rate of 5 °C/min resulted in the greatest amount of volatile material formation, and given that the object of the vaporization step of Hallett is to produce volatile material, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize low heating rates of about 5 °C/min beginning at ambient temperature up to a temperature between 300 and 450 °C, as taught by Guerrero, in order to maximize effective heat transfer within the organic material being vaporized, thereby allowing slow and gradual heating of said organic material, which in turn would allow for the organic material to reach decomposition temperatures required for vaporization and thus maximize the formation of feedstock gas. In modifying the process of Hallett in this way, the organic material would be contacted by hydrogen sweep gas ([0119]) beginning at ambient temperature, such that the organic material is contacted with excess hydrogen gas at ambient temperature as claimed. Further, in such a modified process, the reaction chamber, and thereby the organic material therein, would be heated to a temperature between 300 and 450 °C, which overlaps with and makes obvious the instant claimed range - as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range.
Regarding Claim 49, Hallett discloses step (a) is conducted as a batch process ([0122]: vaporization may be carried out by the use of a batchwise vaporizer, an SBV).
Regarding Claim 50, Hallett discloses the process is performed at a pressure greater than about 1 atm, and less than about 5 atm ([0030]: the entire process, including steps a), b), and c) as cited above, is performed at pressures greater than 0 atmospheres and less than 2 atmospheres, which overlaps with the claimed range - as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range).
Regarding Claim 51, the instant claim is drawn to limitations that are presented as "optional", such that they are not required by the claim in the presence of other alternatives. Given that Hallett does not disclose the presence or possibility of a rapid pressure rise1 or any pressures above 2 atm, the instant claim limitation “decreasing the heating of the reduction chamber” is not required by the claim, as rapid pressure rises and pressures approaching 5 atm would not occur in the process of Hallett. As such, the instant claim is rejected in the same way as Claim 48.
Regarding Claim 52, Hallett discloses the organic material comprises water, and in step (a) the process further comprises heating the reduction chamber to cause the temperature increase in the organic material to about 100° C. to about 105° C., and holding the temperature of the organic material at about 100° C. to about 105° C. to evaporate water from the organic material and form steam, and removing the steam from the reduction chamber prior to further increasing the temperature of the organic material ([0073]: in cases where the organic material contains water, the heating of said material will generate steam; [0089]: when the organic material contains water, the process further comprises treating the material to remove water prior to vaporization; further, as described in [0122], organic materials, including those which contain water (such as those members disclosed in [0032], including biomass) are heated to the disclosed process temperature range – by this heating, any organic material with moisture therein would necessarily be “held” at a temperature of 100 °C, as this is the boiling point of water, and at this temperature the material would not increase until all of the water contained therein is vaporized as steam – this concept is fundamental to thermodynamics, as a material cannot be heated past its boiling point until all of its liquid components have converted to a gas. Further, given that [0089] discloses removing water prior to vaporization, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to remove the steam generated in the reaction chamber by heating the organic material such that all water evaporates therefrom, in accordance with the disclosure of Hallett, such that all water is removed from the organic material prior to vaporization).
Further regarding Claim 52, the instant claim limitations that are presented as "optional" (“the process optionally further comprises cooling the steam removed from the reduction chamber to reform water, neutralizing the water to neutralize any acids present, and treating the water to remove any organic molecules and/or metals present”) are not considered as required by the claim, and do not serve to further limit the claim. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed – see MPEP 2111.04(I).
Regarding Claim 53, Hallett discloses step (b) of the process is conducted in the presence of a catalyst (step (b) corresponds to the process steps in Hallett disclosed at [0076] – further, Hallett discloses this step, comprising conversion of organic materials to methane, to occur in the presence of a catalyst ([0077]).
Regarding Claim 54, Hallett discloses that step (c) comprises neutralizing the second gaseous mixture with a base at a temperature of from about 70° C. to about 100° C ([0022]), which would form a neutralized second gaseous mixture.
Regarding Claims 55-56, Hallett discloses cooling the neutralized second gaseous mixture to a temperature of from 5 °C to 35 °C ([0026]).
Further regarding Claim 56, the instant claim is drawn to further limiting limitations of Claim 1 that are presented in the alternative or as "optional", such that they are not required by the claim in the presence of other alternatives. Therefore, given that Hallett discloses said alternatives, the corresponding alternative “the neutralized second gaseous mixture is contacted with a solution comprising potassium permanganate to remove phosphorus containing molecules from the neutralized second gaseous mixture” is not required by the claim.
Regarding Claim 57, Hallett discloses separating the excess hydrogen from the methane after neutralizing the second gaseous mixture ([0028]).
Further regarding Claim 57, the instant claim limitations that are presented as "optional" (“…the process optionally further comprising recycling the excess hydrogen to step (a) and/or step (b)”) are not considered as required by the claim, and do not serve to further limit the claim. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed – see MPEP 2111.04(I).
Regarding Claims 58-59, Hallett discloses that the organic material comprises a biomass such as wood waste, wood chips, pulp waste, and/or agricultural biomass ([0032]).
Regarding Claim 70, Hallett discloses the organic waste material may be bitumen ([0032]).
Response to Arguments
Applicant’s arguments, filed 11/20/2025, are acknowledged.
With respect to arguments in regard to prior art rejections under section 103, Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under section 103.
Further, the arguments of Applicant, as they may apply to the grounds of rejection above, are not considered persuasive.
Applicant argues that (a) Hallett and Guerrero do not teach the claimed temperature range for hydrogen reduction; (b), Hallett and Guerrero do not teach contacting the organic material with an excess amount of hydrogen gas in an enclosed chamber at ambient temperature; and (c), there is no motivation to combine Hallett and Guerrero.
Regarding (a), this argument is rendered moot in light of the new grounds of rejection above. Namely, Guerrero discloses the use of temperatures between 300 and 450 °C for heating an organic material for reduction, which, when combined with Hallett, makes obvious the instant claimed range. The unexpected results presented by Applicant are not considered persuasive of non-obviousness because it does not establish criticality of the claimed range relative to the closest prior art. The cited examples do not compare the claimed process to the closest prior art process, i.e., Hallett in view of Guerrero, under otherwise comparable conditions, and therefore cannot be dispositive of non-obviousness or persuasively show that the alleged results, e.g., reduced tar formation, is attributable to the claimed temperature range.
Further, Applicant has not shown that the unexpected results occur across the entire claimed temperature range. Claim 48 broadly encompasses heating from ambient to any endpoint below 420 °C at any rate up to 8 °C/min for a broad class of organic materials. The evidence provided by Applicant does not show that these unexpected results occur over the entire scope of these conditions, such that it is clear that the results are commensurate in scope with the claimed invention. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Regarding (b), the argument is not considered persuasive, as Applicant is arguing against the references individually. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection has been clarified above to make clear that, while Hallett alone does not disclose contacting the organic material with hydrogen at ambient temperature, when modified by Guerrero to utilize a low rate of heating for vaporization, the organic material would begin at ambient temperature and would be contacted with hydrogen in said state.
Regarding (c), Applicant argues that “a skilled worker would not look to the pyrolysis reaction conditions of Guerrero as referenced in the Office Action to modify the hydrogen reduction process conditions of Hallett, as the heating rate of Guerrero referenced in the Office Action relates to pyrolysis of apple pomace (see Guerrero Title) under an inert N₂ atmosphere (see Guerrero at page 23233, right column, "Quantification of the pyrolysis products"), which is a fundamentally different reaction than the hydrogen reduction reaction of Hallett which is carried out in the presence of excess H₂. It is respectfully submitted that a skilled worker would appreciate that hydrogenation and pyrolysis have fundamentally different chemistry and operate by different mechanisms. As such, a skilled worker would have no expectation of success with implementing pyrolysis reaction conditions in a hydrogen reduction reaction.”
This is not persuasive because, while Guerrero does not disclose hydrogenation, Guerrero is reasonably pertinent to Hallett for its teachings regarding pyrolysis alone. Hallett discloses a two-step process: an organic material is vaporized, or pyrolyzed, and following vaporization the resulting vapor is then treated with hydrogen to chemically reduce the vapor. While Guerrero is not pertinent to the reduction portion of this process, it is reasonably pertinent to the pyrolysis portion of this process, in light of the fact that it subjects an organic waste material to vaporization in the same way as Hallett. There is reasonable motivation for one of skill in the art, considering pyrolysis of an organic waste material as disclosed in Hallett, to look elsewhere in the art for guidance in the exact procedure for such pyrolysis, such as the disclosure of Guerrero. Guerrero discloses results from slow heating rates that indicate a high efficiency vaporization of organic matter to feedstock gas, which would provide reasonable motivation to one of skill in the art to utilize the same in the pyrolysis of the organic matter in Hallett.
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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/L.E.L./ Examiner, Art Unit 1738
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
1 Per [0107] of the instant published application, a rapid rise of pressure can be a pressure rise of about 1 atm/30 seconds.
