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 .
Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive.
Applicant argues in the Remarks at Page 13 that Hsu does not disclose using a combination of off-gas from a syngas and a hydrocarbon feed for generating power, the argument is unpersuasive since Cohn is cited for teaching using a feed gas stream for power generation and Shah is cited for teaching using off-gas from a syngas for power generation. Furthermore, combining equivalents known for the same purpose is obvious from their having been individually taught in the prior art. See MPEP 2144.06.I.
Applicant further argues in the Remarks at Page 14 that Hsu does not teach the amended limitations which generating sufficient internal electrical power to sustain operation of an e-SMR during periods in which renewable electricity becomes unavailable or interrupted. This argument is unpersuasive since as provided below, Cohn teaches a system that sustains operation when renewable electricity becomes unavailable or interrupted.
Applicant further argues in the Remarks at Page 15, that Shah does not teach using tail gas AND feed gas, the argument is unpersuasive since as noted above, combining equivalents known for the same purpose is obvious from their having been individually taught in the prior art. See MPEP 2144.06.I.
Applicant further argues in the Remarks at Page 15, that Shah does not relate to e-SMRs or power used in the same process. In response to applicant's argument that Shah is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the Office maintains that Shah is in the same field of endeavor namely reforming plants and is reasonably pertinent to energy utilization in reforming plants.
Applicant further argues in the Remarks at Page 16, that Cohn does not teach using tail gas AND feed gas, the argument is unpersuasive since as noted above, combining equivalents known for the same purpose is obvious from their having been individually taught in the prior art. See MPEP 2144.06.I.
Applicant further argues in the Remarks at Page 15, that Cohn does not relate to e-SMRs or power used in the same process. In response to applicant's argument that Cohn is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the Office maintains that Cohn is in the same field of endeavor namely operation of a reforming plants with renewable and non-renewable energy sources and is reasonably pertinent to energy utilization in reforming plants.
In response to applicant's arguments in the Remarks at the bottom of Page 16 to Page 18 against Cohn individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the Office maintains that a system comprising all of the claimed limitations are obvious in view of Hsu, Shah, and Cohn as combined.
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 limitation “means for switching” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function of the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1, 4-5 and 7-14, 16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al (US 2016/0060537) and in further view of Shah et al (US 2003/0083390) and in further view of Cohn et al (US 2010/0022669).
Hsu discloses an energy system comprising:
A fuel processor for receiving a hydrocarbon fuel and reforming agent such as air, oxygen, water, or CO2 for catalytically converting the hydrocarbon fuel into a reformate having at least H2, CO2, CO, and H2O and electric heating apparatus coupled to the fuel processor for providing thermal energy to the fuel processor (i.e., a first feed comprising hydrocarbon, one or more co-reactant feeds, an e-SMR reactor arranged to be heated by a first electricity flow and generating a first syngas stream);
An energy source coupled to the electric heating apparatus for providing power thereto (i.e., a power generator providing an electricity flow to the e-SMR reactor) where the energy source comprises renewable and non-renewable energy sources; and
A catalytic reactor for processing the reformate and for converting the reformate to liquid fuel (an upgrading section arranged to receive a syngas stream and generating at least a first product stream) (see [0047-0049] and [0081-0098]).
Hsu does not disclose where the upgrading section generates an off-gas and where the energy source for the fuel processor (i.e., the power generator) is arranged to receive the off-gas and the first feed.
Hsu further teaches where the energy source comprises renewable and/or non-renewable energy sources (see [0086]). However, Hsu does not teach means for switching the plant from a plant operation mode A to a plant operation mode B or vice versa, first and second proportions of second electricity flow and external electricity flow, relationship between first and second proportions of second electricity flow in modes A and B, relationship between first and second proportions of external electricity flow in modes A and B, and wherein in the second plant operation mode B, the second proportion of the second electricity flow in the first electricity flow is 75% or more as claimed.
Regarding the power generator arranged to receive a portion of the feed to generate the second electricity flow, Cohn discloses a system for renewable electricity conversion of liquid fuels from hydrocarbon feedstock comprising:
a first feed comprising a hydrocarbon feedstock comprising natural gas;
synthesis gas generation unit where electricity is employed to provide the power for conversion of the hydrocarbon feedstock (i.e., and e-SMR producing syngas);
the synthesis gas is upgraded to a liquid fuel and unconverted reagents from synthesis gas conversion are used to drive external electricity source (i.e., an upgrading section producing a product and an off-gas from the syngas);
where the system can run at lower production levels when the level of renewable energy is reduced and alternatively or in addition to, replacement electricity from a non-renewable gas-powered source used to achieve a desired level of plant operation;
where natural gas generated electricity is used to augment the renewable electricity (i.e., electrical power generation from the hydrocarbon feedstock arranged to be received by the power generator) and
where unconverted reagents from the conversion of the synthesis gas can be used to drive the external electricity source (i.e., off-gases from the upgrading section also arranged to be sent to the power generator) (see [0025-0030] and [0064-0065]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the energy system as disclosed by Hsu where the power generator is arranged to receive natural gas for generating electricity (i.e., the first feed comprising hydrocarbons) as disclosed by Cohn since natural gas can augment or replace the renewable energy source to achieve a desired level of plant operation.
Regarding the means for switching and the modes of operation, the claim limitations to operation modes are limitations of intended use and are not limiting on the structure. However, Cohn teaches a system where the system can run at lower production levels when the level of renewable energy is reduced and alternatively or in addition to, replacement electricity from a non-renewable gas-powered source used to achieve a desired level of plant operation (see [0030]). Cohn therefore teaches a structure that switches to an operation mode where all of the energy (where Cohn says alternatively) or some of the energy (where Cohn says in addition to) is switched to non-renewable source to maintain operation. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the system comprising renewable and non-renewable energy sources for the power generator as taught by Hsu, where the system further comprises a means for switching to an operation mode where 100% of the electricity is generated from the non-renewable source (i.e., the feedstock) so that the system can maintain a desired level of operation since renewable energy is variable.
Regarding the power generator arranged to receive the off-gas to generate the second electricity flow, Shah discloses a system comprising:
A feedstock for gasification process comprising a hydrocarbon material (i.e., a first feed comprising hydrocarbons);
A reactive oxygen-containing gas such as air and a temperature control moderator such as steam (i.e., one or more co-reactant feeds);
A gasification reactor (i.e., a steam methane reforming reactor receiving the first feed comprising hydrocarbon and said one or more co-reactant feeds and generating a first syngas stream);
A Fischer-Tropsch reactor arranged to receive a syngas stream and generating a hydrocarbon product and a tail-gas stream (i.e., an upgrading section arranged to receive a syngas stream and generating a first product stream and an off-gas);
a power production unit for the generation of electrical power arranged to receive the tail-gas and powered by a fraction of the tail-gas and/or gasifier syngas product. See [0012] to [0028].
Shah discloses that the system deals with the handling of the tail-gas product to generate electricity efficiently and economically (see [0026). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the energy system as disclosed by Hsu where off-gas from the upgrading section is arranged to be received by a power production unit as disclosed by Shah for the generation of electrical power for the fuel processor that is both efficient and economical.
Regarding claim 4, the claim is directed to an intended use of the power generator and is not limiting on the structure. In so far, as the claim is a recitation of functional language, as noted above Cohn teaches a structure that switches to an operation mode where all of the energy (where Cohn says alternatively) or some of the energy (where Cohn says in addition to) is switched to non-renewable source to maintain operation.
Regarding claim 5, the claim is directed to an intended use of the power generator and is not limiting on the structure. In so far, as the claim is a recitation of functional language, Hsu discloses a structure where second electricity flow can be larger than the first electricity flow since it is a power generator.
Regarding claim 7, Hsu discloses a plant where the steam methane reformer is followed by a water shift processer to have a different percentage of CO vs CO2 (see [0052]). Shah also discloses a plant comprising a water gas shift section since water and CO2 inhibit the Fischer-Tropsch reaction (see [0024]).
Regarding claim 8, Hsu further discloses a unit for separation of CO2 before the upgrading(see Figure 1 and [0087-0088]).
Regarding claim 9, Hsu further discloses a system including pre-heating units (See [0062]). Shah also discloses a method where tail-gases are subjected to acid gas removal (i.e., gas adjustment) (see [0028]).
Regarding claim 10, Shah further discloses a system where prior to sending to the power block for additional power generation, the tail gas is processed in a second acid gas unit to remove CO2 (i.e., a gas adjustment unit) (see [0028]).
Regarding claim 11, Hsu further discloses a system where the reactants to be reformed are premixed (see [0064]).
Regarding claim 12, Hsu discloses a system comprising steam as the reforming agent (see [0083]).
Regarding claim 13, Cohn discloses a system where the variable amounts of replacement electricity from the non-renewable electricity source is used to augment the variable level of renewable electricity (see [0030]). Cohn therefore discloses an electricity supply unit controlling the electricity supply.
Regarding claims 14, Cohn discloses a section for producing liquid fuel from the synthesis gas produces methanol or synthetic diesel (Fischer-Tropsch) (i.e. the upgrading section Cohn discloses methanol synthesis section or a Fischer-Tropsch section (See [0026]).
Shah discloses the upgrading section comprising a Fischer-Tropsch section.
Regarding claim 16, Cohn discloses a second for methanol synthesis (see [0026]). Cohn also discloses a system where unreacted reagents from the upgrading of the synthesis gas to liquid fuel is used to drive the external electricity source (see [0065]).
Regarding claim 19, Cohn discloses the liquid fuel produced by Fischer-Tropsch (see [0026]). Cohn also discloses a system where unreacted reagents from the upgrading of the synthesis gas to liquid fuel is used to drive the external electricity source (see [0065]). Shah also discloses the upgrading section comprising a Fischer-Tropsch section.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu, Cohn, and Shah and in further view of Poh et al (US 2021/017346 which is available as prior art as having been filed on December 6, 2019).
As applied to claim 1, Hsu, Cohn, and Shah disclose a plant comprising a first feed comprising hydrocarbons, a co-reactant feed; and e-SMR reactor arranged to be heated by a first electricity flow and the e-SMR arranged to receive the hydrocarbon feed and the co-reactant to generate syngas, an upgrading section arranged to receive syngas and generate a first product and an off-gas stream from the syngas stream; a power generator arranged to receive at least a portion of the off-gas stream and a portion of the first feed to generate an electricity flow that provides at least a part of the first electricity flow to the e-SMR, a means for switching a plant from operation with external electricity flow powered by renewable energy to a second electricity flow generated from the power generator.
Regarding claim 15, Hsu, Cohn, and Shah do not disclose the upgrading section is a hydrogen purification section and the first product is hydrogen-rich stream and the off-gas stream is an off-gas stream from the hydrogen purification.
Poh discloses a syngas plant for hydrogen and CO co-production comprising a unit for cryogenically separating CO2 free synthesis gas to produce a CO rich product stream, a hydrogen-rich gas and a residual gas stream which may be sent to a fuel gas system (see [0042]). Poh therefore discloses an upgrading section comprising a hydrogen purification section where the product stream is a hydrogen-rich stream, and an off-gas (i.e., the residual gas) is used for fuel. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to upgrading section is configured for hydrogen purification as disclosed in Poh to produce hydrogen as a valuable product which can be obtained from hydrocarbon feedstocks.
Regarding claim 17, Hsu, Cohn, and Shah do not disclose the upgrading section is a hydrogen purification section and the first product is hydrogen-rich stream and the off-gas stream is an off-gas stream from the hydrogen purification.
Poh discloses a syngas plant for hydrogen and CO co-production comprising a unit for cryogenically separating CO2 free synthesis gas in a cold-box to produce a CO rich product stream, a hydrogen-rich gas and a residual gas stream which may be sent to a fuel gas system (see [0042]). Poh therefore discloses an upgrading section comprising a hydrogen purification section where the product stream is a hydrogen-rich stream, and an off-gas (i.e., the residual gas) is used for fuel. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to upgrading section is configured for hydrogen purification as disclosed in Poh to produce CO and hydrogen as a valuable product which can be obtained from hydrocarbon feedstocks.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu, Cohn, and Shah, as applied to claim 1, and in further view of Stevenson et al (CA-2126676 submitted in the IDS filed 1/20/2023).
As applied to claim 1, Hsu, Cohn, and Shah disclose a plant comprising a first feed comprising hydrocarbons, a co-reactant feed; and e-SMR reactor arranged to be heated by a first electricity flow and the e-SMR arranged to receive the hydrocarbon feed and the co-reactant to generate syngas, an upgrading section arranged to receive syngas and generate a first product and an off-gas stream from the syngas stream; a power generator arranged to receive at least a portion of the off-gas stream and a portion of the first feed to generate an electricity flow that provides at least a part of the first electricity flow to the e-SMR, and a means for switching a plant from operation with external electricity flow powered by renewable energy to a second electricity flow generated from the power generator.
Regarding claim 18, Hsu, Cohn, and Shah do not disclose the upgrading section is an ammonia loop where the product stream is a substantially pure ammonia stream, and the off-gas stream is an off-gas stream from the ammonia loop.
Stevenson discloses plants for using intermittent energy sources in the production of chemicals (see [0001]). Stevenson discloses an ammonia synthesis plant comprising a primary reformer fed methane (hydrocarbon) and steam (co-reactant) heated by electricity generating a syngas stream; an upgrading section ammonia synthesis loop, and an off-gas stream from said ammonia loop received by a power generator arranged to receive the off-gas stream and generate electricity (see Example 3-4, Figure 7). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare a system as disclosed by Hsu, Cohn, and Shah where the upgrading section is configured for ammonia synthesis as disclosed in Stevenson to produce ammonia as a valuable product which can be obtained from hydrocarbon feedstocks.
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 MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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