DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Election/Restrictions
New claim 15 is directed to a mutually exclusive species from the invention originally claimed for the following reasons: The originally claimed and presented invention does not divide the first portion and the second portion from one stream that is withdrawn from the column rather the originally claimed and presented invention withdraws the first portion from one location on the column and the second portion from another location. Restriction for examination purposes as indicated is proper because the species are mutually exclusive and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification; the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); the prior art applicable to one invention would not likely be applicable to another invention; the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 15 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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.
Claim(s) 1-11, 13-14 is/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 pre-AIA the applicant regards as the invention.
In regard to claim 1, the recitation, “wherein a first part of the fluid withdrawn from the rectification column which is used for cooling the overhead gas” is indefinite for improperly reintroducing cooling and it is unclear why the recitation does not reference the previously recited cooling as --which is used for the cooling of the overhead gas--.
This issue is repeated throughout the claims 1-8, 13-14 and should be appropriately remedied throughout.
The recitation, “is, after use thereof for cooling,” indefinite for improperly reintroducing use and cooling and it is not clear why the recitation does not reference the use and the cooling: is, after the use thereof for the cooling--. This issue is repeated at least twice in claim 1, all instances should be corrected.
In regard to claim 2, the recitation, “is provided” is not grammatically consistent with the plurality referenced and it is unclear why the recitation is not --are provided--.
In regard to claim 9, the recitation, “wherein a first part of the fluid withdrawn from the rectification column which is used for cooling the overhead gas” is indefinite for improperly reintroducing cooling and it is unclear why the recitation does not reference the previously recited cooling as --which is used for the cooling of the overhead gas--.
The recitation, “is, after use thereof for cooling,” indefinite for improperly reintroducing use and cooling and it is not clear why the recitation does not reference the use and the cooling: is, after the use thereof for the cooling--.
The recitation, “after compression” is indefinite since it is not clear which compression is being referenced and it is unclear why compression is being reintroduced anew.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The recitation, “a compressor unit” is interpreted as a compressor.
The recitation, “means for condensing” is interpreted as a heat exchanger.
The recitation, “means for returning” is interpreted as a fluid line.
The recitation, “means for compressing a first part” is interpreted as a compressor.
The recitation, “means for reintroducing” is interpreted as a fluid line.
The recitation, “means for withdrawing” is interpreted as a fluid line.
All of the claims have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, and it is considered that none of the other claim recitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, since all of the other 112-f language is either modified by sufficient structure to perform the function or is indefinite for lacking sufficient description in the disclosure as noted in the indefiniteness rejection.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 1-11, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kandala (US 5868006) in view of Golubev (US 2018/0023890) and Baracco (US 2021/0080172). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
In regard to claims 1, 2, Kandala teaches a method (see whole disclosure) for cryogenic separation of air (column 1, line 59, feed air), using an air separation unit (Figure 1, column 2, line 20-25) comprising a rectification column (20), the method comprising:
compressing feed air (feed air, column 1, line 59), cooling compressed feed air (column 1, line 59), and rectifying compressed and cooled feed air in the rectification column (20) to obtain an overhead gas (32),
wherein a part of the overhead gas (32) of the rectification column (20) is condensed (in 36) using fluid (42, 40) withdrawn from the rectification column (20) to produce condensed overhead gas (34 after 36), wherein the condensed overhead gas (34 after 36) is, at least in part, introduced into an upper region (see fig. 1) of the rectification column (20)(column 3, line 56),
wherein a first part (42) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas (32) of the rectification column (20) is, after the use thereof for the cooling, compressed (in 56) and reintroduced into the rectification column (20), and
wherein a second part (40) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas (34) of the rectification column (20) is, after the use thereof for the cooling, expanded (via 52) and withdrawn from the air separation unit (see WN2),
wherein the compressing of the first part (42) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas (34) of the rectification column (20) is performed in a compressor (56),
and the expanding of the second part (40) of the fluid withdrawn from the rectification column (20) which used for the cooling of the overhead gas (34) of the rectification column (20) is performed by an expansion turbine (52).
Kandala does not explicitly teach that the compressor (56) is coupled to an electric motor via a first gearbox and the expansion turbine (52) which is coupled to an electric generator via a second gearbox, separate from the first gearbox, and that the first gearbox and the second gearbox are provided with identical reduction or multiplication ratios in the first gearbox and the second gearbox having identical sprocket diameters or identical teeth (as required by claim 2).
However, Kandala does teach operating the compressor (56) and the turbine (52) at the same speed. In addition, it is well known to replace a braking connection (para. 39-40) between a compressor (36) and a turbine (33) with an electrical connection as taught by Golubev (para. 43, Fig. 5) thereby providing the ability to gainfully use excess power from the turbine for other electrical demands and to flexibly control how much of the energy produced by the turbine is used by the compressor, permitting flexible startup and shutdown operations and generally providing greater controllability. Lastly, Baracco teaches that it is routine for cryogenic systems to employ a first gearbox (15) between compressors (13) and electric motors (19, para. 28, 180) and a second gearbox (other 15; para. 186, 26), the second gearbox (other 15) separate from the first gearbox (15), the second gearbox (other 15) being at least between turbines (11; para. 37) and generators (17). Further, gearboxes are well known for providing torque and speed adjustment and Baracco shows that it is routine to provide transmissions to accommodate the speeds of the turbines and generators and between the speeds of the compressors and electric motors so as to provide a better match between the mechanical machines and electrical machines (para. 35). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Kandala to power the compressor (56) of Kandala with an electric motor that is fed electric power from a generator driven by the turbine (52), as suggested by Golubev, for the purpose of obtaining greater utility from the power of the turbine within the air separation unit with greater flexibility and improve the ability to distribute power from the turbine to other areas in the system, and provide greater flexibility in powering the compressor and to provide greater flexibility in locating the compressor and turbine relative to each other; and to further provide a first gearbox between the compressor and the motor and a separate second gearbox between the turbine and the generator, as taught by Baracco for the purpose of permitting the electrical motor and the compressor to operate at different speeds and to also permit the generator and the turbine to operate at different speeds so as to operate at more efficient speeds for electrical delivery to the motor and electrical generation at the generator.
Lastly, note that as Kandala already teaches operating the compressor and the turbine at the same speeds, with the same rotation direction, therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to form the first gearbox (as modified) and the second gearbox (as modified) with at least identical numbers of teeth and to be operated in identical directions of rotation to permit ease of implementation in modifying the system of Kandala (i.e. to ease retrofitting systems of Kandala) so as to permit Kandala to obtain the same compressor ratios and expansion ratios as obtained in Kandala originally.
In regard to claim 3, Kandala, as modified, teaches that the compressor and the turbine rotate together and therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made for the first gearbox (as modified) and the second gearbox (as modified) to be operated in identical directions of rotation to permit ease of implementation in modifying the system of Kandala (i.e. to ease retrofitting systems of Kandala).
In regard to claim 4, Kandala, as modified, teaches that the first part (42) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas (34) of the rectification column (20) is a cryogenic liquid (column 4, line 5-14) withdrawn from the rectification column (20) at a first position (see figure), and wherein the second part (40) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas of the rectification column (20) is a cryogenic liquid withdrawn from the rectification column (20) at a second position (see bottom of 20).
In regard to claim 5, Kandala, as modified, teaches that the first position (for 42) is above the second position (for 40).
In regard to claims 13, 14, Kandala, as modified, teaches that the second position (for 40) corresponds to a position at a bottom of the rectification column (20).
In regard to claim 6, Kandala, as modified, teaches that the first part (42) of the fluid (42, 40) withdrawn from the rectification column (20) which is used for the cooling of the overhead gas of the rectification column (20) has a higher nitrogen content than the second part (column 4, line 45-50) of the fluid withdrawn from the rectification column (20).
In regard to claim 7, it is rehearsed that Kandala, as modified, teaches the limitations since Golubev teaches that electrical energy generated in the generator (40) is at least in part used to operate the motor (para. 43 driving the compressor).
In regard to claim 8, Kandala, as modified, teaches that the compressor (56) and the expansion turbine (52) are operated at identical speed settings (as already discussed above).
In regard to claim(s) 9-11, Kandala teaches an air separation unit (Figure) having a compressor unit (14), a main heat exchanger (18), and a rectification column (20),
means for condensing (36; interpreted as a heat exchanger) a part of an overhead gas (32) removed from the rectification column (20) using fluid (42, 40) withdrawn from the rectification column (20),
means for returning (line after 36 to 20) at least a part of the condensed overhead gas to an upper region (see figure 1) of the rectification column (20),
means for compressing (compressor 56) a first part (42) of the fluid withdrawn from the rectification column (20) after use thereof for the cooling of the overhead gas of the rectification column (20), and means for reintroducing (line from 56 to column 20) into the rectification column (20) the first part (42) of the fluid withdrawn from the rectification column (20) after compression, and
means for expanding (52) a second part (40) of the fluid withdrawn from the rectification column (20) after the use thereof for the cooling of the overhead gas (34) of the rectification column (20), and means for withdrawing (line to WN2) from the air separation unit the second part (40) of the fluid after expansion,
wherein the means for compressing (56) the first part (42) of the fluid withdrawn from the rectification column (20) comprises a compressor (56),
the means for expanding the second part (40) of the fluid withdrawn from the rectification column (20) comprises an expansion turbine (52).
Kandala does not explicitly teach that the compressor (56) is coupled to an electric motor via a first gearbox and the expansion turbine (52) which is coupled to an electric generator via a second gearbox, separate from the first gearbox, and that the first gearbox and the second gearbox are provided with identical reduction or multiplication ratios in the first gearbox and the second gearbox having identical sprocket diameters or identical teeth (as required by claim 10).
However, Kandala does teach operating the compressor (56) and the turbine (52) at the same speed. In addition, it is well known to replace a braking connection (para. 39-40) between a compressor (36) and a turbine (33) with an electrical connection as taught by Golubev (para. 43, Fig. 5) thereby providing the ability to gainfully use excess power from the turbine for other electrical demands and to flexibly control how much of the energy produced by the turbine is used by the compressor, permitting flexible startup and shutdown operations and generally providing greater controllability. Lastly, Baracco teaches that it is routine for cryogenic systems to employ a first gearbox (15) between compressors (13) and electric motors (19, para. 28, 180) and a second gearbox (other 15; para. 186, 26), the second gearbox (other 15) separate from the first gearbox (15), the second gearbox (other 15) being at least between turbines (11; para. 37) and generators (17). Further, gearboxes are well known for providing torque and speed adjustment and Baracco shows that it is routine to provide transmissions to accommodate the speeds of the turbines and generators and between the speeds of the compressors and electric motors so as to provide a better match between the mechanical machines and electrical machines (para. 35). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Kandala to power the compressor (56) of Kandala with an electric motor that is fed electric power from a generator driven by the turbine (52), as suggested by Golubev, for the purpose of obtaining greater utility from the power of the turbine within the air separation unit with greater flexibility and improve the ability to distribute power from the turbine to other areas in the system, and provide greater flexibility in powering the compressor and to provide greater flexibility in locating the compressor and turbine relative to each other; and to further provide a first gearbox between the compressor and the motor and a separate second gearbox between the turbine and the generator, as taught by Baracco for the purpose of permitting the electrical motor and the compressor to operate at different speeds and to also permit the generator and the turbine to operate at different speeds so as to operate at more efficient speeds for electrical delivery to the motor and electrical generation at the generator.
Lastly, note that as Kandala already teaches operating the compressor and the turbine at the same speeds, with the same rotation direction, therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to form the first gearbox (as modified) and the second gearbox (as modified) with at least identical numbers of teeth and to be operated in identical directions of rotation to permit ease of implementation in modifying the system of Kandala (i.e. to ease retrofitting systems of Kandala) so as to permit Kandala to obtain the same compressor ratios and expansion ratios as obtained in Kandala originally.
Claim(s) 1-11, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kandala (US 5868006) in view of Golubev (US 2018/0023890), Baracco (US 2021/0080172), and Crockett (US 5279527). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
Kandala, as modified above, meets all of the claim limitations. However, it is further noted that Crockett additionally teaches that it is well known to employ interchangeable gears for reducing production cost and provide standardization (column 2, line 40-45). Therefore it would have been additionally obvious to those of ordinary skill in the art at the time the invention was made to form the first gearbox (as modified) and the second gearbox (as modified) with at least identical numbers of teeth and to be operated in identical directions of rotation to permit ease of implementation in modifying the system of Kandala (i.e. to ease retrofitting systems of Kandala) so as to permit Kandala to obtain the same compressor ratios and expansion ratios as obtained in Kandala originally and further for the purpose of increasing standardization and reduce the cost of producing the gears by providing the same gears to the first gearbox and the second gearbox.
Response to Arguments
Applicant's arguments filed 8/25/2025 have been fully considered but they are not persuasive in view of the grounds of rejection above.
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 JOHN F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
JFPIII
December 1, 2025
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