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 .
Election/Restrictions
Claims 4, 6-10, 13, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 21 July 2025.
Claims 1-3, 5, 11, 14-17, and 19-20 are pending.
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 11-12, 14-17, and 19-20 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 11: It is unclear how the limitations of claim 11 can be interpreted consistent with the limitations of claim 1. Claim 11 starts (line 2) by referring to a permeate stream obtained from a membrane separation device in the third step of claim 1. The claim sequentially transforms portions of the permeate stream into a second off-gas stream (claim 11, step 1), and then a combined membrane feed stream (claim 11, step 2) to be fed into “the membrane separation device” of claim 1, step 3 to produce “the permeate stream” of claim 1, step 3 and claim 11, step 1. The claim therefore appears to require that a permeate stream be used to produce itself through the same apparatus (“the membrane separation device”) from which it originated in claim 1. This is illogical on its face, since the feed and the product/permeate of a separation device cannot be the same stream and since the origination of the permeate stream is already accounted for in claim 1, which requires that the permeate stream is produced from a separation of an off-gas stream obtained from a pressure swing adsorption device. Furthermore, claim 11 recites, “introducing the off-gas stream into the second pressure swing adsorption device” (step 4), but the off-gas stream was already introduced to the membrane separation device to produce the permeate stream (claim 1, step 3). In addition, the claim requires the feeding to a second pressure swing adsorption device of (i) a permeate stream (step 1) and (ii) an off-gas stream (step 4), so it is unclear if Applicant means to recite two different separations conducted on different feed streams, or if the permeate stream and the off-gas stream were intended to be a combined feed stream in claim 11, step 1.
Claims 12 and 14-15 are rejected because of their dependence from claim 11, noting that claim 13 is withdrawn from examination.
Claim 12: It is unclear if “the product gas” of claim 12 is “a product gas” in claim 11, line3, or “a product gas” and/or “a high purity product gas stream” of claim 1 (lines 1-2, 6), noting that lines 1-2 of claim 1 appear to indicate that the “high purity product gas stream” of line 6 can simply be called a “product gas.”
Claim 16: It is unclear how the limitations of claim 16 can be interpreted consistent with the limitations of claim 1. Claim 16 starts (line 2) by referring to a permeate stream obtained from a membrane separation device in the third step of claim 1. The claim sequentially transforms portions of the permeate stream into a second off-gas stream (claim 16, step 1), and then a combined membrane feed stream (claim 16, step 2) to be fed into “the membrane separation device” of claim 1, step 3 to produce “the permeate stream” of claim 1, step 3 and claim 16, step 1. The claim therefore appears to require that a permeate stream be used to produce itself through the same apparatus (“the membrane separation device”) from which it originated in claim 1. This is illogical on its face, since the feed and the product/permeate of a separation device cannot be the same stream and since the origination of the permeate stream is already accounted for in claim 1, which requires that the permeate stream is produced from a separation of an off-gas stream obtained from a pressure swing adsorption device. Furthermore, claim 16 recites, “introducing the off-gas stream into the second pressure swing adsorption device” (step 4), but the off-gas stream was already introduced to the membrane separation device to produce the permeate stream (claim 1, step 3). In addition, the claim requires the feeding to a second pressure swing adsorption device of (i) a permeate stream (step 1) and (ii) an off-gas stream (step 4), so it is unclear if Applicant means to recite two different separations conducted on different feed streams, or if the permeate stream and the off-gas stream were intended to be a combined feed stream in claim 16, step 1. Next, claim 16 recites “dividing the combined feed stream into a first portion and a second portion” (step 5), but the combined feed stream was already introduced into the pressure swing adsorption device (claim 1, step 2) as part of the sequence of steps to produce the permeate stream, so it is unclear if the combined feed streams are the same streams. Lastly, the claim requires the feeding of a first portion and a third off-gas stream into the pressure swing adsorption device (step 7), but the pressure swing adsorption device is already recited to be fed by a combined stream including a feed stream and a second stream (claim 1, steps 1, 2), so it is unclear if these are the same or different streams between the claims.
Claims 17 and 19-20 are rejected because of their dependence from claim 16, noting that claim 18 is withdrawn from examination.
Claim 19: The claim recites, “introducing the permeate stream along with an oxygen-containing stream into a catalytic oxidation unit, thereby producing an oxidized stream.” It is unclear how the permeate stream can be introduced into a catalytic oxidation unit to produce an oxidized stream since the permeate stream was previously introduced into a second pressure swing adsorption device to produce a product gas stream and a second off-gas stream (claim 16). The claim further recites that the oxidized stream is introduced into the second pressure swing adsorption device, but claim 16 requires that the permeate stream is introduced into the second pressure swing adsorption device (step 1), so it is unclear how these steps are to be integrated.
Claim 20: The last two steps of the claim appear to duplicate the last two steps of claim 16, from which it depends, so it is unclear if the lack of acknowledgement of antecedent terms (e.g., “a third pressure swing adsorption device”) indicates that the terms in these limitations are not the same as in claim 16.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 11-12, 14-17, and 19-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5: The claim recites, “introducing the feed stream along with an oxygen-containing stream into a catalytic oxidation unit, thereby producing an oxidized stream, and combining the oxidized stream with the second stream thereby forming the combined feed stream.” The claim depends from claim 1, which recites, “combining a feed stream with a second stream thereby forming a combined feed stream, introducing the combined feed stream into a pressure swing adsorption device.” Therefore, claim 5 is inconsistent with claim 1, as “an oxidized stream” produced from a “feed stream” (claim 5) is a different stream than the “feed stream” (claim 1), so the method for producing the combined feed stream of claim 5 does not include all the limitations of the method for producing the combined feed stream of claim 1.
Claim 11: The claim recites that the permeate stream is produced by a separation of a combined membrane feed stream that includes a second off-gas stream from a second pressure swing adsorption device in a membrane separation device (steps 2 and 3), which is not consistent with claim 1, which states that the permeate stream is produced from the separation of an off-gas stream from a (first) pressure swing adsorption device via the membrane separation device. It follows that the separations performed by the membrane separation device are different separations between the two claims. Furthermore, claim recites, “introducing the off-gas stream into the second pressure swing adsorption device” (step 4), but the off-gas stream was already introduced to the membrane separation device to produce the permeate stream (claim 1, step 3).
Claims 12 and 14-15 are rejected because of their dependence from claim 11, noting that claim 13 is withdrawn from examination.
Claim 16: The claim recites that the permeate stream is produced by a separation of a combined membrane feed stream that includes a second off-gas stream from a second pressure swing adsorption device in a membrane separation device (steps 2 and 3), which is not consistent with claim 1, which states that the permeate stream is produced from the separation of an off-gas stream from a (first) pressure swing adsorption device via the membrane separation device. It follows that the separations performed by the membrane separation device are different separations between the two claims. Furthermore, claim recites, “introducing the off-gas stream into the second pressure swing adsorption device” (step 4), but the off-gas stream was already introduced to the membrane separation device to produce the permeate stream (claim 1, step 3). Next, claim 16 recites “dividing the combined feed stream into a first portion and a second portion” (step 5), but the combined feed stream was already introduced into the pressure swing adsorption device (claim 1, step 2) as part of the sequence of steps to produce the permeate stream. Lastly, the claim requires the feeding of a first portion and a third off-gas stream into the pressure swing adsorption device (step 7), but the pressure swing adsorption device is already recited to be fed by a combined stream including a feed stream and a second stream (claim 1, steps 1, 2). The claim therefore does not appear to include all the limitations of claim 1.
Claims 17 and 19-20 are rejected because of their dependence from claim 16, noting that claim 18 is withdrawn from examination.
Claim 19: The claim recites, “introducing the permeate stream along with an oxygen-containing stream into a catalytic oxidation unit, thereby producing an oxidized stream.” These limitations appear to be inconsistent with claim 16, which recites that the permeate stream was also introduced into a second pressure swing adsorption device to produce a product gas stream and a second off-gas stream (claim 16). The claim further recites that the oxidized stream is introduced into the second pressure swing adsorption device, but claim 16 requires that the permeate stream is introduced into the second pressure swing adsorption device (step 1), so the claim does not appear to include all the limitations of claim 16.
Claim 20: The claim recites “introducing the combined feed stream along with a second oxygen-containing stream into a second catalytic oxidation unit” (step 1), which appears to be inconsistent with “combining a feed stream with a second stream thereby forming a combined feed stream, introducing the combined feed stream into a pressure swing adsorption device” of claim 1 (the feed stream is combined with a different stream and sent to a different unit).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sircar et al. (US 5,753,010).
Regarding claim 1, Sircar discloses a method (Abstract) for recovering of high purity hydrogen (col. 6, lines 20-21) from a feed gas mixture (col. 5, line 46) (i.e., a method of purifying a gas composed of a product gas and one or more impurity gases) comprising:
combining a reformate 3 (Fig. 1; col. 7, line 9) with compressed recycle stream 9 to form a combined stream 11 (col. 7, lines 24-27) (i.e., combining a feed stream with a second stream thereby forming a combined feed stream);
feeding the combined stream to a pressure swing adsorption system 103 (col. 7, lines 27-29) to produce a high purity hydrogen product 13 (col. 7, lines 39-40) and individual depressurization gas stream 15 (i.e., col. 8, lines 30-31) (i.e., introducing the combined feed stream into a pressure swing adsorption device, thereby producing a high purity product gas stream and an off-gas stream); and
introducing depressurization gas stream 15 to an adsorbent membrane 111 (col. 8, lines 61-65) to produce a nonpermeate 27 which is enriched in hydrogen and a permeate 25 (col. 9, lines 49-56) (i.e., introducing the off-gas stream into a membrane separation device, thereby producing a gas stream lean in product gas and a permeate stream), noting that the nonpermeate 27 must be relatively lean in hydrogen relative to the high purity hydrogen product 13 as a matter of mass balance, so that nonpermeate 27 is interpreted to be enriched in hydrogen relative to the permeate 25.
Claim Objections
Claims 2-3, 5, 11, 14-17, and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 2-3, 5, 11, 14-17, and 19-20.
The concept of a method of purifying a gas composed of a product gas and one or more impurity gases, comprising:
combining a feed stream with a second stream thereby forming a combined feed stream,
introducing the combined feed stream into a pressure swing adsorption device, thereby producing a high purity product gas stream and an off-gas stream, and
introducing the off-gas stream into a membrane separation device, thereby producing a gas stream lean in product gas and a permeate stream (claim 1);
wherein the second stream is the permeate stream (claim 2);
wherein the product gas is helium (claim 3); or
wherein the method of claim 1 includes the steps recited in claims 11 and 16
is considered to define patentable subject matter over the prior art.
The closest prior art appears to be Sircar et al. (US 5,753,010), which discloses a method (Abstract) for recovering of high purity hydrogen (col. 6, lines 20-21) from a feed gas mixture (col. 5, line 46) comprising:
combining a reformate 3 (Fig. 1; col. 7, line 9) with compressed recycle stream 9 to form a combined stream 11 (col. 7, lines 24-27);
feeding the combined stream to a pressure swing adsorption system 103 (col. 7, lines 27-29) to produce a high purity hydrogen product 13 (col. 7, lines 39-40) and individual depressurization gas stream 15 (i.e., col. 8, lines 30-31); and
introducing depressurization gas stream 15 to an adsorbent membrane 111 (col. 8, lines 61-65) to produce a nonpermeate 27 which is enriched in hydrogen and a permeate 25 (col. 9, lines 49-56).
Regarding claim 2, Sircar teaches that the second stream is a retentate, not a permeate (Fig. 1).
Regarding claim 3, Sircar teaches a product gas that is hydrogen (col. 6, lines 20-21), not helium.
Regarding claims 11 and 16, Sircar does not suggest the steps as claimed, which would not have been obvious modifications of the teachings of Sircar.
Claims 11-12, 14-17, and 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL E GITMAN whose telephone number is (571)272-7934. The examiner can normally be reached M-Th 7:15-5:45pm.
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/GABRIEL E GITMAN/Primary Examiner, Art Unit 1772