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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 6, 2026 has been entered.
Claims 2 and 3 are canceled. Claims 8-14 are withdrawn from further consideration. Claim 15 is new. Claims 1, 4-7, and 15 are under consideration.
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, 4-7 and 15 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.
Regarding claim 1, the new limitations (at lines 15-20) are unclear because the limitations are essentially a repeat of the same limitations previously set forth in the claim.
In particular, claim 1 (at lines 6-14) recites:
“a circulation system that circulates the dehydrogenation product separated … by the gas-liquid separation unit to the dehydrogenation reaction unit;
…
wherein the control unit circulates the dehydrogenation product… in a case where production of the hydrogen-containing gas in the dehydrogenation reaction unit is stopped and the dehydrogenation reaction is stopped,
wherein the control unit circulates the dehydrogenation product in a standby state…”.
With respect to the new limitations, claim 1 (at lines 15-20) recites:
“wherein, in the standby state, the control unit… circulates a reaction-inactive fluid through the dehydrogenation reaction unit… while the dehydrogenation reaction is not performed, and
wherein the reaction-inactive fluid comprises the dehydrogenation product separated by the gas-liquid separation unit.” (with emphasis added).
The claim term “reaction-inactive fluid” is simply another way of describing the same material that constitutes the dehydrogenation product, since “the reaction-inactive fluid comprises the dehydrogenation product”. Therefore, the claim terms “reaction-inactive fluid” and “dehydrogenation product” are interchangeable between the limitations, and both sets of limitations essentially recite the same thing, which is that the structure of circulation system circulates the dehydrogenation product to the dehydrogenation reaction unit during the standby state, in which the dehydrogenation reaction is stopped and the production of hydrogen-containing gas is not performed.
The remaining claims are also rejected because they depend from a rejected base claim.
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, 4, 5, 7, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Atsumi et al. (JP 2004-359494 A).
Regarding claim 1, Atsumi et al. discloses a hydrogen supply system (see FIG. 1 and translation) comprising:
a dehydrogenation reaction unit (i.e., a reaction tank 10 containing a catalyst 11 for performing a dehydrogenation reaction or a hydrogenation reaction; see paragraphs [0030]-[0032]) that subjects a raw material including a hydride (e.g., cyclohexane as a raw material, see paragraphs [0030], [0043]; other hydrocarbon-based fuels such as methylcyclohexane, etc., can also be used, see paragraphs [0016], [0027]) to obtain a hydrogen-containing gas (i.e., a hydrogen-rich gas comprising hydrogen gas and benzene produced by the dehydrogenation reaction of cyclohexane; paragraph [0029]);
a gas-liquid separation unit (i.e., a heat exchange apparatus 20 including a supply/discharge chamber 22 and a supply/discharge pipe 21; wherein, when the reaction tank 10 performs the dehydrogenation reaction, the supply/discharge chamber 22 receives the hydrogen-rich gas from the reaction tank 10 via a discharge/exhaust pipe 24 and the supply/discharge pipe 21 receives cyclohexane via a supply pipe 33; see paragraphs [0038]-[0039], [0051]-[0052]) that separates a dehydrogenation product (benzene) produced by the dehydrogenation reaction and gaseous hydrogen from the hydrogen-containing gas (i.e., the hydrogen-rich gas in the supply/discharge chamber 22 is cooled by heat exchange with the cyclohexane in the supply/discharge pipe 21, such that gas-phase benzene condenses, and liquid-phase benzene is separated from the hydrogen gas);
a circulation system that circulates the dehydrogenation product (e.g., benzene) separated from the hydrogen-containing gas by the gas-liquid separation unit 20 to the dehydrogenation reaction unit 10 (i.e., when the reaction tank 10 performs a hydrogenation reaction, in which benzene is hydrogenated (regenerated) to cyclohexane, the benzene that was produced during the dehydrogenation reaction is supplied to the supply/discharge pipe 21 via a circulation system including supply pipes 37 and 33 and a pump P1; see paragraphs [0055]-[0057]); and
a control unit that controls the hydrogen supply system (i.e., a control unit 80 for controlling the operation of the apparatus, the control unit being electrically connected to pumps P1 and P2 and valves V1 to V4; see paragraph [0046]);
wherein the control unit 80 circulates the dehydrogenation product (e.g., benzene) with the circulation system 37,33,P1 in a case where production of the hydrogen-containing gas in the dehydrogenation reaction unit 10 is stopped and the dehydrogenation reaction is stopped (i.e., in the case where the production of hydrogen gas via the dehydrogenation reaction of cyclohexane is stopped, the control unit 80 switches the operation of the apparatus to circulate benzene through the supply pipes 37 and 33 and the supply/discharge pipe 21, so that benzene is introduced into the reaction tank 10, and the benzene is hydrogenated (regenerated) in the presence of the catalyst 11 to produce cyclohexane; see paragraphs [0055]-[0057]); and
wherein the control unit 80 circulates the dehydrogenation product in a standby state from the stop of the dehydrogenation reaction to the restart of the dehydrogenation reaction (i.e., as the dehydrogenation reaction continues in the reaction tank 10, the storage amount of cyclohexane in the cyclohexane storage part 41 decreases while the storage amount of benzene in the benzene storage part 42 increases; therefore, the control unit 80 controls the apparatus to alternate between a first operating state in which the reaction tank 10 performs the dehydrogenation reaction of cyclohexane to produce hydrogen gas and benzene, and a second operating state (standby state) in which the reaction tank 10 performs the hydrogenation reaction of benzene to produce cyclohexane, so that the supply of cyclohexane is replenished, and the dehydrogenation reaction of cyclohexane to produce hydrogen gas and benzene can be performed again; see paragraph [0054]).
With respect to the new limitations, Atsumi et al. discloses that, in the standby state (i.e., the state in which hydrogenation of the dehydrogenation product, e.g., benzene, is performed), the control unit 80 stops supply of the raw material to the dehydrogenation reaction unit 10 (i.e., the supply of raw material, e.g., cyclohexane, from the storage part 41 is stopped by switching the valves V2, V3 to prevent its flow through the supply pipes 35, 34, 33 to the reaction tank 10; see translation at paragraph [0055]), and the structure of the circulation system circulates a reaction-inactive fluid, which is the same material as the dehydrogenation product (e.g., benzene), through the reaction unit 10 instead of the raw material while the dehydrogenation reaction is not performed (see translation at paragraph [0056]).
The only “reaction” being specified in the claim is a “dehydrogenation reaction”. The dehydrogenation product (e.g., benzene) is a chemical compound that is unable to undergo further dehydrogenation reaction. Also, neither the claim nor Applicant’s specification indicate that the material of the dehydrogenation product must exhibit inactivity to all reactions. Therefore, the dehydrogenation product being worked upon in the apparatus of Atsumi et al. is deemed to meet the limitation of a “reaction-inactive fluid” because the fluid (e.g., benzene) is inactive to the dehydrogenation reaction.
Lastly, Atsumi et al. discloses that the apparatus further comprises a return pipe 32 for feeding gaseous hydrogen into the reaction unit 10, along with the dehydrogenation product (e.g., benzene) being circulated by the circulation system, to subject the dehydrogenation product to a hydrogenation reaction in the standby state. In other words, the dehydrogenation product only acts as a reactant when gaseous hydrogen is also introduced into the reaction unit 10. However, the instant claim is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Note the use of the transitional term “comprising” in the preamble. See MPEP § 2111.03, I. As such, the apparatus of Atsumi et al., despite having a return pipe 32 for hydrogen as an additional element to facilitate a hydrogenation reaction in the reaction unit 10 as an additional step, still meets the language of the claim.
Regarding claim 4, Atsumi et al. (see FIG. 1) discloses that the hydrogen supply system comprises a line (i.e., a return pipe 38) that extracts the separated dehydrogenation product (e.g., benzene) from the gas-liquid separation unit, wherein the circulation system (i.e., supply pipes 37, 33; pump P1) is connected to the line 38.
Regarding claim 5, Atsumi et al. discloses that the dehydrogenation product (e.g., benzene) is circulated to the dehydrogenation reaction unit 10 in the standby state, where the dehydrogenation product is hydrogenated in the presence of the catalyst 11. Since the hydrogenation reaction is an exothermic reaction (it releases heat; see paragraph [0031]), the circulation of the dehydrogenation product is able to suppress a lowering in a temperature of the dehydrogenation reaction catalyst 11 in the dehydrogenation reaction unit 10.
Regarding claim 7, the hydride and the dehydrogenation product materials are not considered elements of the apparatus, as they are merely materials to be worked upon by the apparatus during an intended operation. See MPEP §2115. In any event, Atsumi et al. discloses that methylcyclohexane is another suitable hydride (see paragraphs [0016]); wherein the dehydrogenation reaction of methylcyclohexane generates toluene as the dehydrogenation product.
Regarding claim 15, Atsumi et al. discloses that the dehydrogenation product (e.g., benzene) is circulated to the dehydrogenation reaction unit 10 in the standby state, where the dehydrogenation product is hydrogenated in the presence of the catalyst 11. Since the hydrogenation reaction is an exothermic reaction (it releases heat; see paragraph [0031]), the circulation of the dehydrogenation product is able to maintain a temperature of the dehydrogenation reaction catalyst 11 within a predetermined range in the standby state.
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Atsumi et al. (JP 2004-359494 A) in view of Nakagawa et al. (JP 2016-000677 A) and Hayashi et al. (JP 2003-277004 A).
Atsumi et al. discloses that the hydrogen supply system further comprises a heating unit (i.e., a combustion chamber 12 including a supply device 13 for supplying a component to be burned; see FIG. 1, paragraph [0031-[0033]) for heating and maintaining the dehydrogenation reaction catalyst 11 at the required reaction temperature.
Atsumi et al., however, fails to disclose that the heating unit “heats a heat medium”, such that the heat medium heats and maintains the dehydrogenation reaction catalyst 11 at the required reaction temperature.
Nakagawa et al. discloses a hydrogen supply system (see FIG. 1; translation) comprising: a dehydrogenation reaction unit (i.e., a dehydrogenation reactor 10 with a dehydrogenation catalyst; see paragraph [0031]) that subjects a raw material including a hydride (i.e., methylcyclohexane (MCH) from a tank T1) to a dehydrogenation reaction to obtain a hydrogen-containing gas (i.e., a dehydrogenation reaction product V3 comprising hydrogen and toluene). Specifically, Nakagawa et al. discloses that the hydrogen supply system comprises a heating unit (i.e., a heat medium boiler 21; see paragraph [0033]) that heats a heat medium (i.e., a heat medium circulating through lines L11, L12 and L13); wherein the heat medium heats and maintains the dehydrogenation reaction catalyst at the required reaction temperature.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a heating unit that heats a heat medium for the heating unit in the hydrogen supply system of Atsumi et al. because, when a heating mechanism using a heating medium is employed, the temperature of the dehydrogenation reaction catalyst can be controlled more stably in comparison to a heating mechanism that directly heats the dehydrogenation reaction catalyst with a burner, as taught by Nakagawa et al. (translation at paragraph [0035]).
Atsumi et al. also fails to disclose that the dehydrogenation product (benzene) is heated “in the standby state” to suppress lowering in the temperature of the dehydrogenation reaction catalyst 11.
Hayashi et al. discloses a hydrogen supply system (see FIG. 10; translation at paragraphs [0086]-[0094]) comprising:
a dehydrogenation reaction unit (i.e., a reaction/regeneration tank 47 containing a noble metal-based catalyst 20 for a dehydrogenation reaction or a hydrogenation reaction) that subjects a raw material including a hydride (i.e., decalin 12; or another suitable hydrocarbon-based fuel, such as cyclohexane, methylcyclohexane, etc., see paragraph [0010]) to a dehydrogenation reaction to obtain a hydrogen-containing gas (i.e., a hydrogen-rich gas comprising hydrogen gas and naphthalene, discharged through a pipe 14);
a gas-liquid separation unit (i.e., a storage/separation tank 11) that separates a dehydrogenation product (i.e., naphthalene 12’) produced by the dehydrogenation reaction and gaseous hydrogen (i.e., hydrogen gas collected in a gas space of the tank 11 and discharged through a pipe 23) from the hydrogen-containing gas; and
a circulation system that circulates the dehydrogenation product 12’ separated from the hydrogen-containing gas by the gas-liquid separation unit 11 to the dehydrogenation reaction unit 47 (i.e., naphthalene 12’ is circulated from the storage/separation tank 11 to the reaction/regeneration tank 47, via a circulation system including a line 26 equipped with a pump P6 and a valve V6, and, when the reaction/regeneration tank 47 performs the hydrogenation reaction, naphthalene 12’ is hydrogenated to produce decalin 12).
Specifically, Hayashi et al. discloses that the hydrogen supply system comprises a heating unit (i.e., a heater 21), wherein the dehydrogenation product is heated in a standby state (i.e., an operating state in which the reaction/regeneration tank 47 performs the hydrogenation reaction) to suppress lowering in the temperature of the dehydrogenation reaction catalyst 20 (i.e., the heater 21 is used during the decalin dehydrogenation reaction and also the naphthalene hydrogenation reaction to maintain the catalyst 20 at the required temperature for the dehydrogenation reaction or the hydrogenation reaction; since the naphthalene in the reaction/regeneration tank 47 is in thermal communication with the heater 21, the naphthalene in the reaction/regeneration tank 47 is also heated by the heater 21).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further configure the heat medium to heat the dehydrogenation product in the standby state in the modified system of Atsumi et al. because the dehydrogenation product and the dehydrogenation reaction catalyst could also be heated by the heat medium to at a temperature that was required for conducting the hydrogenation reaction, which thereby suppresses a lowering in the temperature of the dehydrogenation reaction catalyst, as taught by Hayashi et al.
Response to Arguments
Applicant's arguments filed on March 6, 2026 have been fully considered.
In summary, Applicant (at page 9, second paragraph, to page 10, first paragraph) argues that Atsumi et al. fails to disclose the claimed “standby state” because a chemical reaction, namely, a hydrogenation reaction which regenerates the dehydrogenation product, e.g., benzene, to its corresponding hydride, e.g., cyclohexane, is performed in the reaction unit 10 during the standby state. In particular, Applicant (at page 9, last paragraph) argues,
“In Atsumi, in the hydrogenation process, benzene reacts with hydrogen and changes into cyclohexane. Therefore, benzene is a “Reactant” and is in a chemically “Active” state. In contrast, the amended claims define it as a “reaction-inactive fluid.””.
The Office respectfully disagrees.
The claim defines a “standby state” as occurring “from the stop of the dehydrogenation reaction to the restart of the dehydrogenation reactor” (claim 1, at lines 13-14). In the apparatus of Atsumi et al., the operating state in which the hydrogenation reaction is being performed in the reaction unit 10 meets the limitation of a “standby state” because it is an operating state in which the dehydrogenation reaction is stopped in the reaction unit 10.
Also, the term “reaction-inactive fluid” (at line 16) is simply another way of describing the same material that constitutes the dehydrogenation product, since “the reaction-inactive fluid comprises the dehydrogenation product” (at line 19). The structure of the circulation system in the apparatus of Atsumi et al. (i.e., the arrangement of pipes and control valves, FIG. 1) specifically circulates the dehydrogenation product, e.g., benzene, back to the reaction unit 10 in the standby state, and therefore, the structure meets the claim. It is also noted that the dehydrogenation product is merely a material being worked upon by the apparatus, and expressions relating to the contents of the apparatus during an intended operation are of no significance in determining patentability of the apparatus claim. See MPEP § 2115.
Also, the only “reaction” set forth in the claim is a “dehydrogenation reaction”. The dehydrogenation product (e.g., benzene) is a compound that is inherently unable to undergo further dehydrogenation reaction. Neither the claim nor Applicant’s specification indicate that the dehydrogenation product must exhibit inactivity to all reactions. Therefore, the dehydrogenation product being circulated by the circulation system in the apparatus of Atsumi et al. is deemed to meet the limitation of a “reaction-inactive fluid” because the fluid would exhibit inactivity to the dehydrogenation reaction.
Lastly, Atsumi et al. discloses that the apparatus further comprises a return pipe 32 for feeding gaseous hydrogen into the reaction unit 10, along with the dehydrogenation product (e.g., benzene) being circulated by the circulation system, to subject the dehydrogenation product to a hydrogenation reaction in the standby state. In other words, the dehydrogenation product only acts as a reactant when gaseous hydrogen is also introduced into the reaction unit 10. However, the instant claim is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Note the use of the transitional term “comprising” in the preamble. See MPEP § 2111.03, I. As such, the apparatus of Atsumi et al., despite it having a return pipe 32 for hydrogen as an additional element to facilitate a hydrogenation reaction in the reaction unit 10 as an additional step, still meets the language of the claim.
In summary, Applicant (at page 10, second and third paragraphs) argues that Atsumi et al. fails to disclose a standby state which “… aims to maintain the temperature (or suppress the drop) in order to quickly restart the next dehydrogenation reaction (endothermic reaction, requiring 200 °C or higher).”
The Office respectfully disagrees.
This feature pertains to dependent claims 5 and 15.
Atsumi et al. discloses that the dehydrogenation product (e.g., benzene) is circulated to the dehydrogenation reaction unit 10 in the standby state, where the dehydrogenation product is hydrogenated in the presence of the catalyst 11 to regenerate the corresponding hydride. The hydrogenation reaction is an exothermic reaction (it releases heat; see paragraph [0031]), and therefore, the circulation of the dehydrogenation product is capable of suppressing a lowering in the temperature of the dehydrogenation reaction catalyst 11 and maintaining a temperature of the dehydrogenation reaction catalyst 11 within a predetermined range during the standby state. The specific temperature, however, is merely directed to an intended manner of operating the apparatus. The temperature of catalyst 11 in the reaction unit 10 can also be set to a desired temperature by operating the heater 12.
In summary, Applicant (at page 10, second to last paragraph, to page 11, first paragraph) argues that the dehydrogenation product is “transferred” rather than “circulated” to the reaction unit 10 in the apparatus of Atsumi et al. In particular, Applicant (at page 11, first paragraph) argues, “In contrast, the claimed invention is a “Circulation” where the same fluid continues to rotate within the system to main temperature.”
The Office respectfully disagrees.
In the apparatus of Atsumi et al., the circulation system is deemed to “circulate” the separated dehydrogenation product, e.g., benzene, because the dehydrogenation product that originated from the reaction unit 10 is returned to the reaction unit 10. It is noted that the features upon which Applicant relies (i.e., a “continuous” circulation of the dehydrogenation product through the circulation system, the dehydrogenation reaction unit, and the gas-liquid separation unit during the standby state) are not recited in the rejected claim(s). 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).
Allowable Subject Matter
The following proposed amendment to independent claim 1, drafted by the examiner and considered to overcome the rejections under 35 U.S.C. 112 and distinguish patentably over the art of record in this application, is presented to applicant for consideration:
1. (Currently Amended) A hydrogen supply system, comprising:
a dehydrogenation reaction unit that subjects a raw material including a hydride to a dehydrogenation reaction to obtain a hydrogen-containing gas;
a gas-liquid separation unit that separates a dehydrogenation product produced by the dehydrogenation reaction and gaseous hydrogen from the hydrogen-containing gas;
a circulation system that circulates the dehydrogenation product separated from the hydrogen-containing gas by the gas-liquid separation unit to the dehydrogenation reaction unit; and
a control unit that controls the hydrogen supply system,
wherein the control unit is configured to control the hydrogen supply system to operate in a standby state in which the dehydrogenation reaction is stopped and the production of the hydrogen-containing gas is not performed in the dehydrogenation reaction unit by:
stopping a supply of the raw material to the dehydrogenation reaction unit; and
continuously circulating the dehydrogenation product through the circulation system, the dehydrogenation reaction unit, and the gas-liquid separation unit;
wherein the standby state is performed from the stop of the dehydrogenation reaction in the dehydrogenation reaction unit to a restart of the dehydrogenation reaction in the dehydrogenation reaction unit.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to Atsumi et al. (JP 2004-359494 A) fails to disclose or teach that the hydrogen supply system (see FIG. 1) is configured to continuously circulate the dehydrogenation product through the circulation system, the reaction unit 10, and the gas-liquid separation unit 22 during the standby state. In contrast, Atsumi et al. discloses that the control unit 80 is configured to control the hydrogen supply system to circulate the dehydrogenation product (i.e., from storage part 42, via the supply lines 36, 37, 33) and gaseous hydrogen (i.e., via a return pipe 32) to the reaction unit 10 during the standby state, so that the dehydrogenation product (e.g., benzene) that was separated by the gas-liquid separation unit 22 can be subjected to a hydrogenation reaction to regenerate the corresponding hydride (e.g., cyclohexane), with the hydride being again used as the raw material for producing the hydrogen-containing gas in the reaction unit 10 upon a restart of the dehydrogenation reaction in the reaction unit 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER A LEUNG whose telephone number is (571)272-1449. The examiner can normally be reached Monday - Friday 9:30 AM - 4:30 PM EST.
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/JENNIFER A LEUNG/Primary Examiner, Art Unit 1774
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