DETAILED ACTION
Claims 1-16 are pending and under consideration in this 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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) apportioning the renewable natural gas such that the first portion that is converted to syngas has a higher renewable content than the second portion that is burned.
As the specification makes clear, the apportioning step is merely a notional step, without any actual separation of renewable and non-renewable natural gas. The step covers performance of the limitation in the mind but for the recitation of generic reforming equipment. That is, other than the standard conversion of methane into syngas and downstream fuel production, the apportioning encompasses the user simply stating that the first portion of natural gas has a higher renewable content than the second portion, which can be entirely performed in the mind of the user. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle’’). The courts identified limitations that do not integrate a judicial exception into a practical application, including generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Here, the judicial exception is not integrated into a practical application. In particular, the claim recites two additional elements – converting natural gas into syngas and using the syngas to produce fuel. Both steps are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic components. Accordingly, this additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of converting natural gas into syngas and using the syngas to produce fuel are routine, well-understood, and conventional. See MPEP 2106.05(g).
As shown by US 20190144765 (“Marker”) these post-solution activities are well known, routine, and conventional. For example, Marker explains that standard commercial practice includes converting methane into syngas followed by a downstream Fischer-Tropsch conversion step to produce fuel (see e.g. Marker at paragraph [0003]). Marker describes several well-understood, routine, and conventional methods by which natural gas is converted to syngas for later use in the well-known, routine, and conventional Fischer-Tropsch synthesis to produce fuel (see e.g. Marker at paragraphs [0004]-[0006]). As such, the additional elements are considered insignificant post-solution activities that cannot provide an inventive concept. The claim is therefore not patent eligible.
The remaining claims likewise fail to recite any additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 2-7 merely recite the specific type of fuel to be produced in the downstream process. Producing these fuels from syngas are also well-understood, routine, and conventional activities (see e.g. Marker at paragraph [0071] and US 20130225885 (“Foody”) at paragraphs [0021] and [0080]).
Claims 8-11 merely recite methods for performing the notional idea of “apportioning” and are only mathematical calculations that could be performed in the mind of the user.
Claim 12 merely recites that the natural gas is obtained from a natural gas distribution system, which is likewise well-understood, routine, and conventional (see e.g. Marker at paragraph [0010]).
Claims 13-14 recite the use of a standard pressure swing adsorption system, which is an additional well-understood, routine, and conventional activity (see e.g. Marker at paragraph [0121]).
Claims 15 and 16 amount to mere instructions on how much of the renewable content should be apportioned to each portion, and are therefore also reciting abstract ideas.
Response to Arguments
Applicant’s arguments, see pages 5-8 of Applicant’s response, filed 2/20/26, with respect to the rejection(s) of claim(s) 1-16 under 102 and 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection has been made.
Conclusion
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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