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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03 February 2026 has been entered.
Response to Amendment
Applicant’s amendment filed 03 February 2026 has been considered. It is acknowledged that claims 1, 12, and 13 have been amended by Applicant. Accordingly, Claims 1 and 12-16 are under full consideration.
Response to Arguments
Applicant's arguments filed 03 February 2026 have been fully considered but they are not persuasive. The respective arguments are addressed below:
Applicant argues that the purge stream of Foody cannot be considered as being analogous to the claimed recycle stream because the function of the purge stream is not to recycle CO2 to the process line for producing the target substance. Examiner respectfully disagrees, and reminds Applicant that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As mentioned in the rejection of claim 1, Foody explicitly discloses a purge stream 91 that contains carbon dioxide, leaving a PSA unit and entering an upstream unit (see Fig. 1), which is definitionally a recycle stream. Further, Foody explicitly discloses biogenic carbon dioxide being collected from a recycle stream (see Col. 17 Lines 37-39), and biogenic carbon dioxide being used in a reverse water gas shift reaction (see Col. 21 Lines 58-61). Regarding Applicant’s argument that the CO2 is not “recycled in the process line”, this is not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Foody does not disclose the reverse water gas shift reaction in the presence of a catalyst, and points to the cited statement of “high and low temperature shift reactions are generally carried out in the presence of a catalyst” as being directed to water gas shift reactions discussed in previous paragraph, and not directed to the reverse water gas shift reaction. Examiner notes that Foody broadly makes the cited statement and does not exclusively direct it to the water gas shift reactions. Examiner agrees to grant this argument to Applicant, but this still does not overcome Foody. First, a person of ordinary skill in the art understands that use of catalysts for reverse water gas shift reactions is common practice because the uncatalyzed reaction is kinetically slow at practical temperatures, and catalysts allow operation at lower temperatures and/or shorter residence time. Second, Foody discloses elsewhere, implicitly, that catalysts are used in the water gas shift reaction. Foody states, “The above reverse water gas shift reaction… can be conducted as part of a reforming operation… the biogenic carbon dioxide and fossil derived hydrogen may be fed to a reformer. The steam reforming may be operated such that the foregoing reverse water gas shift occurs during the steam reforming” (see Col. 22 Lines 6-11), then goes on to state “…stream is treated to remove impurities such as sulfur compounds as they are poisonous to the reforming catalyst” (see Col. 46 Lines 21-22), implicating that catalysts are used during reforming, and reverse water gas shift occurs during reforming, thereby necessitating catalyst. Without granting this argument to Applicant, Examiner will pull in additional art showing that reverse water gas shift reactions most commonly occur over a catalyst.
Applicant argues that it is not obvious to combine Foody with Hansen because incorporating certain reactions of Foody into the systems of Hansen would frustrate the purpose of Hansen of producing a methane rich gas. Examiner respectfully disagrees, as Hansen directly used carbon monoxide in the process of producing methane. Therefore, incorporating the teachings of Foody that produce carbon monoxide would not disrupt Hansen’s process.
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.
Claims 1, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen (WO-2012003849-A1) in view of Foody et al. (US-9108894-B1), hereinafter “Foody” and Daza (CO2 conversion by reverse water gas shift catalysis: comparison of catalysts, mechanisms, and their consequences for CO2 conversion to liquid fuels).
Regarding Claim 1, Hansen discloses a hydrocarbon production system (see Page 1 lines 5-6) comprising: an electrolytic reaction unit (see Page 5 line 19) that converts water into hydrogen through an electrolytic reaction (see Page 5 lines 6-9) or converts water and carbon dioxide into hydrogen and carbon monoxide through an electrolytic reaction (see Page 5 lines 6-9); a catalytic reaction unit (see Page 5 lines 21-22; “methanation reactors” and lines 10-13; “catalytically converting… in one or more methanation steps”) configured to convert a product generated by the electrolytic reaction unit into hydrocarbon through a catalytic reaction (see Page 5 lines 6-13 and lines 21-22), wherein the catalytic reaction unit comprises a hydrocarbon synthesis reaction unit acting as a catalytic reaction unit (see Page 5 lines 21-22; “methanation reactors” and lines 10-13; “catalytically converting… in one or more methanation steps”).
Hansen does not explicitly teach a water-gas shift reaction unit or a carbon dioxide separation unit. However, Foody discloses a reverse water-gas shift reaction unit (The above reverse water gas shift reaction to produce carbon monoxide can be conducted as part of a reforming operation; see Col. 22 Lines 6-8) acting as a first catalytic reaction unit (Foody states, “The above reverse water gas shift reaction… can be conducted as part of a reforming operation… the biogenic carbon dioxide and fossil derived hydrogen may be fed to a reformer. The steam reforming may be operated such that the foregoing reverse water gas shift occurs during the steam reforming” (see Col. 22 Lines 6-11), then goes on to state “…stream is treated to remove impurities such as sulfur compounds as they are poisonous to the reforming catalyst” (see Col. 46 Lines 21-22), implicating that catalysts are used during reforming, and reverse water gas shift occurs during reforming, thereby necessitating catalyst), and a hydrocarbon synthesis reaction unit acting as a second catalytic reaction unit (The carbon monoxide from the above reverse water gas shift reaction can also be reacted with fossil derived hydrogen to produce methanol; see Col. 23 Lines 24-30), wherein the first catalytic reaction unit and the second catalytic reaction unit are provided in the mentioned order (The carbon monoxide from the above reverse water gas shift reaction can also be reacted with fossil derived hydrogen to produce methanol; see Col. 23 Lines 24-30); and a carbon dioxide separation unit configured to separate carbon dioxide (Separation of carbon dioxide from other constituents in liquid form may involve liquifying a gas comprising carbon dioxide by compression, cooling and expansion steps. When in liquid form, the carbon dioxide can be separated by distillation. Refrigerated systems may also be used for carbon dioxide separation; see Col. 17 lines 4-9) from an outlet component of the hydrocarbon synthesis reaction unit (see Col. 18 lines 20-30), wherein the separated carbon dioxide is discharged from a branch path acting as a recycle line (purge stream 91 containing fossil carbon dioxide… purge stream 91… is introduced; see Col. 36 lines 51-59 and Fig. 1 part 91) toward an upstream side of the reverse water-gas shift reaction unit (“biogenic carbon dioxide may be… collected from a recycle stream”; see Col. 17 Lines 37-39; and “The biogenic carbon dioxide and hydrogen sourced from fossil fuel may be used… by the following reverse water gas shift reaction”; see Col. 21 Lines 58-61).
Hansen and Foody are both considered to be analogous to the claimed invention because they are in the same field of hydrocarbon production. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hansen by incorporating the teachings of Foody and providing a reverse water gas shift reactor and a carbon dioxide separation unit. Doing so, respectively, allows for the production of carbon monoxide (see Foody Col. 22 lines 6-7) and the sequestration of carbon dioxide instead of venting it to the atmosphere (see Col. 3 lines 42-48).
Regarding the limitation claiming, “to provide the separated carbon dioxide for producing carbon monoxide”, this is a functional limitation that does not further limit the structure of the apparatus, but merely sets forth an operational mode of the apparatus according to the structural limitations previously claimed. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
Lastly, as stated above, Foody implicitly discloses the water gas shift reaction occurring over a catalyst. It is also a basic understanding of a person of ordinary skill in the art that a reverse water gas shift reaction most commonly occurs in the presence of a catalyst, as taught by Daza (Cu is widely used as a catalyst for the forward and reverse water gas shift reactions; see Pg. 49684, Para. 5). Using a catalyst has an effect on the reaction rates (see Daza, Pg. 49684-49685, 5. Mechanistic considerations).
The limitations of claim 12 do not exceed those of claim 1 with the exception of a hydrogen separation unit taking the place of the carbon dioxide separation unit presented in claim 1. Please see the claim 1 rejection for the associated rationale. Foody further discloses a hydrogen separation unit that separates hydrogen (The pressure swing adsorption unit 90 separates the hydrogen that originates from fossil fuel; see Col. 36 Lines 46-48) from the outlet component of the catalytic reaction unit (Col. 36 Lines 39-48), wherein the separated hydrogen is discharged from a branch path acting as a recycle line toward an upstream side of the reverse water-gas shift reaction unit (“The biogenic carbon dioxide and hydrogen sourced from fossil fuel may be used… by the following reverse water gas shift reaction”; see Col. 21 Lines 58-61”). This modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention because providing a hydrogen separation unit produces a stream enriched in hydrogen (see Foody, Col. 36 lines 50-51).
Regarding Claim 13, the structural limitations do not exceed those of claim 1. Please refer to the claim 1 rejection for the associated rationale. Regarding the limitation claiming, “a ratio of hydrogen and carbon monoxide introduced into the hydrocarbon synthesis reaction unit is adjusted by adjusting a ratio of water and carbon dioxide introduced into the electrolytic reaction unit, or adjusting reaction conditions of the reverse water-gas shift reaction unit”, this is a functional limitation that does not further define the actual structure of the system, but merely sets forth a manner of operating the system. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen (WO-2012003849-A1) in view of Foody et al. (US-9108894-B1), hereinafter “Foody”, Daza (CO2 conversion by reverse water gas shift catalysis: comparison of catalysts, mechanisms, and their consequences for CO2 conversion to liquid fuels), and Minami et al. (WO-2018181924-A1), hereinafter “Minami”, using associated US national phase patent US-11677080-B2 for references.
Regarding Claim 14, Hansen and Foody together disclose the hydrocarbon production system according to claim 1. Hansen further discloses the electrolytic reaction unit including an electrolysis cell (solid oxide electrolyser cell unit; see Pg. 5 Lines 7-8).
Hansen does not explicitly teach the claimed layers and flow paths. However, the claimed electrolytic reaction unit structure is a known structure in the art, as taught by Minami. Minami discloses an electrolytic reaction unit that includes an electrolysis cell (solid oxide fuel cell; see Col. 5 Lines 66-67) formed on one surface of a support (the electrochemical element E includes a metal substrate 1 (metal support); see Col. 6 Lines 15-16), in which an electrode layer (first electrode layer 2 formed on/over the metal substrate 1; see Col. 6 Lines 16-18) and a counter electrode layer (second electrode layer 6; see Col. 6 Lines 21-23) are formed with an electrolyte layer interposed therebetween (electrode layer 6 is formed above the electrolyte layer 4; see Col. 6 Lines 25-26 and Fig. 1, Parts 2, 4, and 6), wherein a gas flow path is provided along the other surface of the support (the grooves 72 on one side are first gas passages 72a; see Col. 21 Lines 21-22 and Fig. 4 Part 72), wherein a plurality of through holes are provided to penetrate the support from the one surface to the other surface of the support (The metal substrate 1 is provided with a plurality of through holes 1a that penetrate the surface on the front side and the surface on the back side; see Col. 6 Lines 62-64), wherein the gas flow path forms an electrode layer-side gas supply path configured to supply gas to the electrode layer (the grooves 72 on one side are first gas passages 72a and supply gas to the front side of one electrochemical element, that is to say the second electrode layer; see Col. 21 Lines 21-23).
Regarding the limitation of the supplied gas being water and carbon dioxide, and the limitation claiming that the gas passage “acts as a discharge path configured to discharge hydrogen generated in the electrode layer, and wherein the gas discharged through the discharge path is received to the reverse water-gas shift reaction unit”, these are functional limitations that do not further define the actual structure of the system, but merely set forth a manner of operating the system. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
KSR Rationale D (see MPEP 2141) states that it is obvious to apply a “known technique to a known device (method, or product) ready for improvement to yield predictable results”. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant invention to apply the solid oxide fuel cell structure/technique disclosed by Minami to the solid oxide fuel cell taught by Hansen in order to yield the predictable result of a high-performance electrode layer (see Minami, Abstract), with the added benefit of being low-cost (see Minami, Abstract).
Regarding Claim 15, Hansen and Foody together disclose the hydrocarbon production system according to claim 12. The remaining limitations of claim 15 do not exceed those of claim 14. Please refer to the rejection of claim 14 for the associated rationale.
Regarding Claim 16, Hansen and Foody together disclose the hydrocarbon production system according to claim 13. The remaining limitations of claim 16 do not exceed those of claim 14. Please refer to the rejection of claim 14 for the associated rationale.
Conclusion
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/A.L.K./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
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