DETAILED ACTIONNotice 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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In Claim 1, step (f) requires a gasifier from step (e), but step (e) does not mention a gasifier. In order to maintain clarity, the Examiner suggests introducing the gasifier in step (e) instead of step (f).
Appropriate correction is required.
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 6 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “under mild conditions” in claim 6 is a relative term which renders the claim indefinite. The term “mild conditions” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no reference value, or standard for comparison, for “mild conditions”.
The term “higher conversion rates” in claim 6 is a relative term which renders the claim indefinite. The term “higher conversion rates” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no reference value, or standard for comparison, for “higher conversion rates”.
Claim 7 recites the limitation “catalyst” in line 2. It is unclear whether “catalyst” refers to a new catalyst or the previously claimed catalyst of Claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1 recites carrying out a mass balance, which is an abstract idea (mathematical calculation). This judicial exception is not integrated into a practical application because performing the mass balance is the final step of the claimed process; therefore, there is no application of the abstract idea, much less a practical application. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of the process as claimed are well-understood, routine, and conventional within the prior art. For instance, catalytic gasification processes involving petroleum coke products are common in the art. See US20070083072, US6585883, and US20090165380 as cited in the instant specification (Paragraphs 0029-0031). See MPEP 2106.04, 2106.04(a)(2)
Claims 2-7 are rejected under 35 U.S.C. 101 due to their dependence on the rejected Claim 1.
Response to Arguments
Applicant’s arguments filed October 7, 2025 have been fully considered but they are not persuasive, except as indicated below.
On page 8 of Applicant’s arguments, Applicant argues that “In a fluidized bed reactor, temperature stabilization refers to maintaining a consistent and uniform temperature distribution throughout the reactor bed during operation. Persons skilled in the art understand that chemical reactions may be sensitive to temperature, and that maintaining a stable and uniform temperature ensures that the reaction proceeds at the desired rate and efficiency”. This argument is convincing, as Applicant has defined the term on the record, and the rejection has been withdrawn.
On page 8 of Applicant’s arguments, regarding the rejection of Claim 6 under 35 U.S.C. 112, Applicant argues that “persons of ordinary skill in the art of refining oil and gas would understand what is meant by “mild conditions” and "higher conversion rates" in the context of a catalytic gasification process for coke or coal”.
The Examiner maintains that these phrases are still relative terms that lack a reference value. Applicant alleges one of ordinary skill in the art would understand the meaning of these terms, but Applicant fails to provide any definition that would allow one of ordinary skill in the art to determine the metes and bounds of the claim. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record (applicant alleges one of ordinary skill in the art would know the definition of the terms). In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
On page 9 of Applicant’s arguments, regarding the rejections under 35 U.S.C. 101, Applicant argues that “The fact that conducting a mass balance is recited as "the final step of the claimed process" (or any step) does not change the basic fact that these claims, read as a whole, are not directed to an abstract idea. A catalytic coke gasification process is not an abstract idea”.
The Examiner maintains that claiming carrying out a mass balance in an invention is pointed to a mathematical calculation, which does not meet the requirements of 35 U.S.C. 101. The mathematical calculation is not integrated into a practical process step, and is thus an abstract idea. See MPEP 2106.04(a)(2).I.C. The Examiner advises amending the claim to require that the mathematical calculation be used in a practical step, or dropping step (j) from the claim altogether. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736