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
Applicant’s election without traverse of Group I, claims 1-5, in the reply filed on 27 October 2025 is acknowledged.
Claims 6-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 27 October 2025.
Information Disclosure Statement
The Information Disclosure Statement filed on 13 December 2022 has been received and considered by the Examiner.
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 1-5 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.
Claim 1, step (c) recites the limitation “separating any fully consumed scavenger from the partially and/or fully consumed scavenger, including separating any trithiazine that has precipitated out.” Because the presence of the “and/or” allows the claim limitations to be met with only fully consumed scavenger in the “partially and/or fully consumed scavenger”, in this case the step (c) requires fully consumed scavenger to be separated from fully consumed scavenger. It is unclear what would be required to meet this claim limitation. While [0021] of the specification further envisions the separation in step (c) optionally including separating out by-products created during the reaction with hydrogen sulfide, such a limitation does not appear in the claim.
For the purposes of further examination, having separated fully consumed scavenger with no remaining partially consumed scavenger after steps (a) and (b) will be considered as also meeting the limitations of step (c).
Claims 2-5 depend upon claim 1 and are likewise rejected. It is additionally noted that claim 5 explicitly references the indefinite step of claim 1 and should also be amended to be consistent with any changes to claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schulz et al. (US 2009/0100753 A1), as evidenced by Bertrand (US 2014/0171721 A1)
Regarding claim 1, Schulz teaches a method for removing hydrogen sulfide from natural gas comprising the following steps:
reacting a sour natural gas with a partially consumed scavenger to produce a partially sweetened natural gas and a fully consumed scavenging reagent (step a in [0014]); separating the partially sweetened natural gas from the consumed scavenger (step b in [0014]); reacting the partially sweetened natural gas with a fresh scavenger to produce a sweetened natural gas (step c in [0014]) and a second partially consumed scavenger (20a; Fig. 2 and [0026]); and, separating the sweetened natural gas from the second partially consumed scavenger (sweet gas 20b is separated from the partially consumed scavenger 20a; Fig. 2 and [0026]). Schulz also specifically teaches applying this process with triazine based scavengers ([0029]), which when fully consumed will have undergone three sulfur substitutions to form trithiazine, as evidenced by Bertrand ([0039]; it is noted that trithiane is synonymous with trithiazine).
Regarding the limitation of step c) separating any fully consumed scavenger from the partially and/or fully consumed scavenger, including separating any trithiazine that has precipitated out, Schulz teaches that all of the scavenger is fully consumed and separated (depleted SR entering tank 16 is fully depleted; [0026]), thereby meeting this limitation (See Claim Rejections – 35 USC § 112).
Regarding claim 2, Schulz discloses the method of claim 1, and also discloses the second partially consumed scavenger produced in step d) being used as at least part of the partially consumed triazine-based scavenger for step a) (partially-consumed SR 20a is introduced into column 10 at a flow rate that ensures the complete utilization of SR to produce semi-sweet gas 12b; [0026] and Fig. 2).
Regarding claim 3, Schulz discloses the method of claim 1 and further discloses that the amount of the fresh triazine-based scavenger provided in step d) is controlled based on a hydrogen sulfide concentration of the partially sweetened natural gas (the system includes pump 11 a to deliver clean SR to column 20 and the control system 18 is modified to balance the effective flow rates through both pumps 11 , 11a in response to the measured H2S concentration from separator 12; [0024]) to prevent the fresh triazine-based scavenger from being fully consumed when the sweetened natural gas is produced (while depleting only 5% of the desulfurization capacity of the specific volume of clean SR; [0026]).
Regarding claim 4, Schulz discloses the method of claim 1 and further discloses a second fresh triazine-based scavenger being reacted with the sour natural gas along with the partially consumed triazine-based scavenger (Fig. 2A shows the partially consumed scavenger mixed 20a mixed with fresh scavenger 14 and the mixture being used together to treat the sour natural gas 10a; Fig. 2A, [0027] and [0021]).
Regarding claim 5, Schulz discloses the method of claim 1 where there is no remaining partially consumed scavenger (depleted SR entering tank 16 is fully depleted; [0026]) , thereby meeting the limitations of claim 5.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 11 of U.S. Patent No. 7,935,323 B2 in view of Bertrand (US 2014/0171721 A1).
Claims 6 and 11 of the ‘323 patent recites limitations that include all the steps of claims 1 and 2 but does not require the scavenger to be a triazine. In particular, claim 11, being dependent on claim 6, has the following steps:
reacting a sour natural gas with a partially consumed scavenger to produce a partially sweetened natural gas and a fully consumed scavenging reagent (reacting said partially-consumed scavenging reagent with said sour natural gas to produce a partially-sweetened natural gas and a consumed scavenging reagent; claim 6); separating the partially sweetened natural gas from the consumed scavenger (separating said consumed scavenging reagent from said partially-sweetened natural gas; claim 6); reacting the partially sweetened natural gas with a fresh scavenger to produce a sweetened natural gas and a second partially consumed scavenger (reacting said clean scavenging reagent with said partially-sweetened natural gas to produce a sweetened natural gas, wherein said clean scavenging reagent from is used as said partially-consumed scavenging reagent; claim 6); and, separating the sweetened natural gas from the second partially consumed scavenger ( separating said sweetened natural gas from said partially-consumed scavenging reagent with said second reactor; claim 11).
Regarding step (c), claim 11 of the ‘323 patent recites a step where consumed scavenging reagent is separated from said partially-sweetened natural gas, which is interpreted as meeting the limitations of this step as there is no indication that any partially-consumed scavenging reagent remains.
The claims of the ‘323 patent do not identify a scavenging reagent.
However, Betrand teaches that triazine scavengers are appropriate for scavenging hydrogen sulfide from gas streams ([0004]) and that they can be either partially or fully consumed ([0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the class of scavengers taught by Bertrand in the method of claim 11 of the ‘323 patent. One of ordinary skill in the art would have been motivated to do so because while claim 11 is silent on the specific scavenger to be used, Bertrand teaches that triazines may be appropriate because they react with hydrogen sulfide to give both partially and fully consumed scavenger, as required by the method of claim 11.
Claim 11 of the ‘323 patent also recites a step of delivering the partially-consumed scavenging reagent from the second reactor to said first reactor, thereby providing the limitations of instant claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738