DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed on 10/22/2025 has been entered. Claims 1-2, 5-10, 14-25 are pending in the application. Applicant’s amendments to the claims have overcome each 112(b) rejections previously set forth in the office action mailed 07/22/2025.
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
Applicant argues on Pg. 7 par. 2 through Pg. 8 par. 1 King teaches an exothermic catalytic partial oxidation reaction which is thermodynamically and mechanistically distinct from the claimed steam methane reformation. Catalytic partial oxidation of methane requires molecular oxygen to produce carbon dioxide while steam methane reformation proceeds in the absence of molecular oxygen to produce CO2. Molecular oxygen is purposefully excluded from the steam methane reformation reaction system. King fails to teach or suggest a steam methane reformation reaction as recited in claims 1 and 19.
However, Reaction I as claimed is CH4 + H2O → CO + 3H2 wherein Reaction I occurs in the absence of molecular oxygen. King discloses a methane supply 62, i.e. CH4 , … can direct a flow of methane into reactor 70 possibly along with a supply of oxygen and/or steam or water, i.e. H2O ([0025]). The supply of oxygen disclosed by King is optional and therefore not required in the reaction. The reactants could optionally be exclusively methane and steam, which meets the limitation of claim 1. King further discloses the oxygen and/or hydrogen and/or methane can react with the catalyst in the reactor to ultimately form carbon dioxide and hydrogen and/or alternatively form carbon monoxide and/or water and/or hydrogen. Again, King discloses many optional reactants and products. The reaction disclosed could optionally be methane reacting with steam to form carbon monoxide and hydrogen with no other reactants or products, which meets the limitation of claim 1. Since “and/or” is used, the reaction of methane and water to form carbon dioxide and hydrogen, i.e. Reaction II, is also disclosed and these two reactions are not mutually exclusive.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 19 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by King (US 2018/0230010 A1).
Regarding claim 1, King discloses a method of producing heat i.e., energy, for industrial purposes such as power generation (abstract, meeting limitation "a method for generating"). Methane can exit from outlet 52 and can either be burned such as with one or more burners 54 and/or stored in storage 56… with the methane being stored, it can then be utilized in a separate process ([0024]-[0025] meeting limitation "and storing energy for use on demand"). King further discloses an improved method of cyclically performing exothermic reactions in an effort to greatly enhance the heating capability from methane in environments ([0007] meeting limitation "the method comprising (i) carrying out a series of reactions). A methane supply 62… can direct a flow of methane into reactor 70 possibly along with a supply of oxygen 72 and/or steam or water 74… the oxygen 72 and/or hydrogen and/or methane can react with the catalyst 76 in the reactor 70 to ultimately form… carbon monoxide and/or water and/or hydrogen ([0025] meeting limitation "consisting of Reactions I CH4 + H2O → CO +3H2 (I)"). King further discloses a water gas shift reaction so that the methane together with water and / or oxygen can shift to… and / or carbon dioxide and hydrogen and more heat ([0012] meeting limitation "Reaction II CO+H2O→CO2+H2 (II)"). A first reactor which receives the inputs of carbon dioxide and hydrogen and then through a fusion reaction…an exothermic reaction is conducted to produce methane gas CH4 (natural gas) and water ([0008] meeting limitation "Reaction III CO2 + 4H2 → CH4 + 2H2O (III) wherein any of Reaction I, II, or III can be a first reaction in the series"). King discloses Reaction III is the first reaction of the series ([0008]). Once the first process of producing methane gas and water is performed… effectively the process could be reversed so that the CH4 and possibly steam and/or oxygen could be directed into the same or another reactor… to at least one portion of carbon monoxide and water ([0012] meeting limitation "when Reaction III is the first reaction in the series, at least some of the CH4 produced in Reaction III is reacted in Reaction I"). A water gas shift reaction so that the methane together with water and/or oxygen can shift to… and/or carbon dioxide and hydrogen and more heat ([0012] meeting limitation "and at least some of the CO produced in Reaction I is reacted in Reaction II" since it is well known that the water gas shift reaction uses CO as one of the reactants). If the hydrogen and the carbon dioxide are not necessary for further industrial processes, the hydrogen and carbon dioxide can be run back through the first reactor to produce methane and water again thereby producing the first process i.e. the first exothermic reaction and more heat ([0012] meeting limitation "and(ii) repeating the first reaction in the series of reactions").
Regarding claim 19, King discloses all the limitations in the claims as set forth above and further discloses the exothermic reaction in the reactor 19 can then begin to generate heat ([0024]). Hot gasses are directed out outlet 36 where they can then proceed through a heat exchanger 38 ([0024]). Outlet 44 may provide a source of heat which may also be utilized for various purposes such as for power and/or heat purposes ([0024]) such as generating steam or other heating applications such as heating buildings, heating water such as to steam for power generators, and/or providing other mechanical and/or chemical processes including the generation of carious gasses ([0030] meeting limitation “further comprising using heat produced by Reaction III in another system, method, or device”).
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 2, 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2018/0230010, cited in IDS 07/20/2022).
Regarding claim 2, King discloses all the limitations in the claims as set forth above but is silent to “wherein Reaction I is the first reaction in the series of reactions, and wherein step ii comprises reacting at least some of the CH4 produced in Reaction III in Reaction I; or wherein Reaction II is the first reaction in the series of reactions, and wherein step ii comprises reacting at least some of the CO produced in Reaction I in Reaction II; or wherein Reaction III is the first reaction in the series of reactions, and wherein step ii comprises reacting at least some of the CO2 produced in Reaction II in Reaction III.”
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize Reaction I, II or III as the first reaction in the series of reactions, and wherein step ii comprises reacting at least some of the CH4 produced in Reaction III in reaction I, or wherein step ii comprises reacting at least some of the CO produced in Reaction I in Reaction II, or wherein step ii comprises reacting at least some of the CO2 produced in Reaction II in Reaction III since rearranging steps of an invention involves only routine skill in the art. The motivation for doing so would be to provide a versatile method of generating energy in a cyclical manner, thereby making the process more profitable. See also MPEP 2144.04.C regarding changes in sequence of adding ingredients.
Regarding claim 5, King discloses at least one or both of these processes may be employed in a cyclical manner for use in generating steam or other heating applications ([0030]).
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to repeat the second reaction after repeating the first reaction, since a mere duplication of essential steps in a method involves only routine skill in the art. The motivation for doing so would be to generate sufficient CO2 needed for the subsequent reaction, thereby enhancing the overall energy output of the series of reactions.
Regarding claim 6, King discloses at least one or both of these processes may be employed in a cyclical manner for use in generating steam or other heating applications ([0030]).
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to repeat the second reaction after repeating the first reaction, since a mere duplication of essential steps in a method involves only routine skill in the art. The motivation for doing so would be to generate sufficient CH4 needed for the subsequent reaction, thereby enhancing the overall energy output of the series of reactions.
Regarding claim 7, King discloses at least one or both of these processes may be employed in a cyclical manner for use in generating steam or other heating applications ([0030]).
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to comprise after repeating the third reaction, repeating the series of reactions one or more times, since a mere duplication of essential steps in a method involves only routine skill in the art. The motivation for doing so would be to completely consume all the reactants and optimize the overall energy output of the series of reactions.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2018/0230010, cited in IDS 07/20/2022) in view of Malina (US 5964908, cited in IDS 07/20/2022).
King discloses all the limitations in the claims as set forth above but is silent to “wherein the method is carried out as a closed loop system” (claim 8) and “wherein the series of reactions is carried out at least three times as a closed loop system” (claim 9).
Malina discloses a closed loop energy conversion system for converting a non-fossil fuel energy source to a fossil fuel (abstract). The system operated in a closed loop manner… using the rudimentary laboratory scale equipment, the system was operated for ten complete closed loop cycles before the flame in the methane combustion unit was extinguished (Col. 7 lines 50-54). Malina further discloses the provision of such a closed loop process which generally does not require addition of substantial amounts of reactants or removal of substantial amounts of reaction products; the provision of such a process which produces a fossil fuel for use as an energy source at the location where the fuel is to be used without generating pollutants at the location (Col 2 lines 5-11).
Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of King to use a closed loop process, wherein the series of reactions is carried out at least three times as a closed loop system as taught by Malina in order to not require addition of substantial amounts of reactants or removal of substantial amounts of reaction products and without generating pollutants.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over King (US 2018/0230010, cited in IDS 07/20/2022) in view of Baier et al (“A cost estimation for CO2 reduction and reuse by methanation from cement industry sources in Switzerland”, cited in IDS 07/20/2022).
King discloses all the limitations in the claims as set forth above and further discloses methane can exit from outlet 52 and can either be burned such as with one or more burners 54 and/or stored in storage 56 ([0024] meeting limitation “further comprising storing …at least a portion of the CO, H2, CO2, H2O, or CH4 after it is produced by Reaction I, II, or III and before it is reacted in the next reaction”).
King is silent to “for at least 48 hours”.
Baier discloses the Swiss power-to-gas model, the hydrogen produced is put to further use and reacted with carbon dioxide to form methane, which is simpler to handle and transport (Pg. 3 right column paragraph 2). Power-to-gas technology offers the possibility of using technical or electrochemical conversion processes by use of electricity from renewable sources to produce hydrogen, thereby turning the electric energy into a chemical energy carrier such as H2 or subsequently to methane that can be long-term stored for any period of time until it is needed again for use (Pg. 3 left column paragraph 2). Baier further discloses making use of the climate-damaging gas CO2 for producing a renewable energy vector i.e., methane by applying the well-known Sabatier reaction for a power-to-gas application and substitute fossil imports (Pg. 2 left column paragraph 3).
As set forth in MPEP 2144.05, in the case where the claimed range “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). In the instant case, the range taught by Baier (any period of time) overlaps with the claimed range (at least 48 hours). Therefore, the range in Baier renders obvious the claimed range.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of King to include storing for at least 48 hours at least a portion of the CO, H2, CO2, H2O, or CH4 after it is produced by Reaction I, II, or III and before it is reacted in the next reaction in order to incorporate the product into a power-to-gas application, thereby eliminating the usage of fossil fuels as taught by Baier.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2018/0230010, cited in IDS 07/20/2022) in view of Beyer et al (US 20040204503 A1, cited in IDS 07/20/2022).
Regarding claim 14 and 15, King discloses all the limitations in the claims as set forth above but is silent to “further comprising transporting at least a portion of the CO, H2, CO2, H2O, or CH4 after it is produced by Reaction I, II, or III and before it is reacted in the next reaction, wherein the transporting is over a distance of less than 5 miles, less than 1 mile, less than 500 feet, less than 100 feet” and “further comprising transporting at least a portion of the CO, H2, CO2, H2O, or CH4 after it is produced by Reaction I, II, or III and before it is reacted in the next reaction, wherein the transporting is over a distance of more than 5 miles, more than 10 miles, more than 100 miles, or more than 500 miles”.
Beyer discloses storing and transporting hydrogen by employing carbon dioxide as a storage medium ([0002]). Energy from a renewable energy source is used to convert water to hydrogen and oxygen ([0044]). As such, a renewable energy source functions as a source of hydrogen by dissociating water ([0044]). A conduit is in communication with a reactor for transporting carbon dioxide to the reactor from the carbon dioxide source ([0044]). The reactor causes hydrogen to react with the carbon dioxide to form a product, which in the present embodiment is methane ([0044]). A conduit transports the product to a consumption location ([0045]). Methane, in the form of natural gas, has long been economically transported in pipelines thousands of miles long ([0045]). Beyer further discloses when an energy demand requires the product for consumption a product conduit may be employed to conduct the product to consumption location ([0049]).
As set forth in MPEP 2144.05, in the case where the claimed range “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). In the instant case, the range taught by Beyer (thousands of miles) overlaps with the claimed ranges (less than 5 miles and more than 5 miles). Therefore, the range in Beyer renders obvious the claimed ranges.
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of King to transport the product over a distance of less than 5 miles or more than 5 miles as taught by Beyer in order to effectively harness renewable energy by storing and delivering the product to the desired location on demand.
Regarding claim 16-18, King in view of Beyer discloses all the limitations in the claims as set forth above. King is silent to “wherein at least a portion of the CO or the H2 is transported after it is produced by Reaction I and before it is reacted in Reaction II”, “wherein at least a portion of the CO2 is transported after it is produced by Reaction II and before it is reacted in Reaction III”, and “wherein at least a portion of the CH4 is transported after it is produced by Reaction III and before it is reacted in Reaction I”.
Beyer discloses a schematic of an apparatus according to the principles of the present invention is shown, revealing an embodiment for hydrogen transportation ([0046]). A carbon dioxide conduit is in communication with the consumption location for transporting carbon dioxide to the reactor location ([0046]). Energy from a renewable energy source is used to convert water to hydrogen and oxygen ([0044]). As such, a renewable energy source functions as a source of hydrogen by dissociating water ([0044]). A conduit is in communication with a reactor for transporting carbon dioxide to the reactor from the carbon dioxide source ([0044]). The reactor causes hydrogen to react with the carbon dioxide to form a product, which in the present embodiment is methane ([0044]). A conduit transports the product to a consumption location ([0045])
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of King to transport the formed products as taught by Beyer in order to effectively harness renewable energy by storing and delivering the product to the desired location on demand.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over King (US 2018/0230010, cited in IDS 07/20/2022) in view of Pan et al (CN 110513745 A, machine translation used for citations).
King discloses all the limitations in the claims as set forth above but is silent to “further comprising providing heat to initiate or maintain one or more of the reactions, wherein the heat is derived from a renewable energy source”.
Pan discloses biomass has the characteristics of wide distribution, cleanliness and good renewability ([0004]). Pan further discloses a biomass cogeneration integrated heat pump heating system comprises a biomass cogeneration system and a heat pump system; wherein the biomass cogeneration system converts biomass energy into thermal energy, and then converts the thermal energy into electrical energy , and provides it to the power grid, and transmits at least part of the residual heat energy in the process… to the heat network through a heat network heat exchanger ([0009]).
While Pan does not explicitly disclose “to initiate or maintain one or more of the reactions”, Pan does disclose converting biomass energy into thermal energy and transmitting part of the heat energy to a heat exchanger ([0009]). It would be obvious to one of ordinary skill in the art to utilize the heat energy in a heat exchanger to provide heat to initiate or maintain on or more reaction.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to provide heat to initiate or maintain one or more of the reactions, wherein the heat is derived from a renewable energy source in the method of King since biomass has wide distribution, cleanliness and good renewability as taught by Pan.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738