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 .
Status of the Claims
The amendment filed on 12/04/2025 has been entered. Claims 1-2 have been amended. Thus claims 1-12 are currently pending and are under examination.
Withdrawn Rejection
Claim 1 has been amended and the references of the record, International publication WO2012/017893A1 (WO’893) in view of Patent numbers JP2011143370A (JP’370), JP2005298413A (JP’413), JP2010013422A (JP’422) or Patent application publication number US2010/0312021A1 (US’021), fail to teach or suggest the recited limitation “the method further comprising, between the gas acquisition step and the conversion step, a preliminary conversion step of converting the carbon oxide and hydrogen in the gas until a conversion rate reaches a predetermined equilibrium conversion rate or more,.. and the preliminary conversion step is performed in a second reactor which includes a reaction vessel not having a condensing surface”. Accordingly, the 103 rejection has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are newly rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite the limitation “the preliminary conversion step is performed in a second reactor which includes a reaction vessel not having a condensing surface”. Applicant cites paragraphs of the specification that support the limitation, specifically [0060] and [0062]. However, nowhere in these paragraphs or anywhere else in the specification describes, implicitly or explicitly, the second reactor including a reaction vessel not having a condensing surface. Para [0062] describes the details of the preliminary conversion step, in particular:
When a general solid catalyst reactor is used as the second reactor 6, it is not always necessary to condense water and methanol as products by cooling. In this case, it is also possible to recover reaction heat generated during the methanol conversion reaction from the carbon oxide and hydrogen at a higher temperature. When a mixed gas containing carbon monoxide and carbon dioxide is used as the preliminary conversion source gas, of the reactions of the formulae (10) and (11), the methanol conversion reaction from carbon monoxide represented by the formula (11) preferentially proceeds because of the equilibrium of the two reactions. Therefore, in the preliminary conversion step S4, more reaction heat can be recovered. An aspect in which a general solid catalyst reactor is employed as the second reactor 6 in the preliminary conversion step S4 is a preferable aspect from the viewpoint of effective use of thermal energy.
The above paragraph fails to describe anything about the second reactor not having specifically a condensing surface.
Thus, at the time the application was filed, a skilled artisan would not recognize from the disclosure that Applicant was in possession of the preliminary conversion step is performed in a second reactor which includes a reaction vessel not having a condensing surface.
MPEP § 2163.06 notes: " If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)"
MPEP § 2163.02 states that “Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it").”
MPEP § 2163.06 further notes " When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure."
This is a new matter rejection.
Claims 2-12 also introduce new matter for depending on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-12 are newly rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2012/017893A1 (WO’893) in view of Patent number JP2011143370A (JP’370) and Patent application publication number US2019/0016655A1 (US’655; cited in PTO-892 09/18/2025).
Claims 1-12 are newly rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2012/017893A1 (WO’893) in view of Patent number JP2005298413A (JP’413) and Patent application publication number US2019/0016655A1 (US’655; cited in PTO-892 09/18/2025).
Claims 1-12 are newly rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2012/017893A1 (WO’893) in view of Patent number JP2010013422A (JP’422) and Patent application publication number US2019/0016655A1 (US’655; cited in PTO-892 09/18/2025).
Claims 1-12 are newly rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2012/017893A1 (WO’893) in view of Patent application publication number US2010/0312021A1 (US’021; cited in PTO-892 09/18/2025) and Patent application publication number US2019/0016655A1 (US’655; cited in PTO-892 09/18/2025).
The references WO’893, JP’370, JP’413 and JP’422 have been cited in IDS 04/12/2023 and their machine translation is cited in PTO-892 09/18/2025.
Regarding claim 1, WO’293 teaches a process for preparing methanol, the process comprising a gasification step for obtaining a gas containing hydrogen and carbon dioxide and a conversion step by contacting hydrogen and carbon dioxide with a catalyst to obtain methanol and water (page 2 and Fig. 1). The reference teaches that the methanol production process is usually performed by supplying the gasification gas to a methanol synthesizer by raising the temperature to a normal methanol synthesis reaction pressure (for example, a pressure of 3 to 15 MPa) and a methanol synthesis temperature (for example, 180 to 500 ° C.) (page 5), thus at this temperature, the reaction is conducted at a gas phase. The waste used is not particularly limited as long as it is a waste from which a gas containing hydrogen and carbon dioxide can be obtained by a gasification step described later, that is, a waste containing organic matter, food waste such as wood; woody biomass such as waste wood, thinned wood, sawdust; biomass paper waste; fiber waste; plastic waste; sewage sludge; human waste; livestock waste; waste oil; rubber tire; black liquor (page 3).
Regarding claim 11, WO’293 is silent that the gas to be subjected to the conversion step has a value of an index SN calculated by Formula (I) of 1 or more and 10 or less:
SN=(yH2 −yCO2)/(yCO+yCO2) (I)
wherein yH2, yCO2, and yCO are respectively volume fractions of hydrogen, carbon dioxide, and carbon monoxide in the gas to be subjected to the conversion step. However, since the reference teaches every limitation of obtaining the gas to be subjected to the conversion step as instantly claimed; i.e. by a gas acquisition step of obtaining a gas containing a carbon oxide and hydrogen from a waste material, there is a prima facie case of anticipation for the gas of WO’293 to have a value of an index SN calculated by Formula (I) of 1 or more and 10 or less. See § MPEP 2112.01.
WO’293 fails to teach or suggest that the conversion step is performed in a first reactor which includes a reaction vessel having a condensing surface to condense a high-boiling-point component containing methanol and water, and in the conversion step, a reaction is allowed to proceed by condensing a high-boiling-point component containing methanol obtained as a result of the conversion and water and then discharging a condensed product to an outside of a reaction system and the limitation of claim 4.
The deficiencies are however cured by JP’370, JP’413, JP’422 or US’021.
JP’370 teaches a process for producing methanol from a feed gas comprising H2 and CO2 using biomass or the like as a raw material by providing a catalytic reactor in which a reaction product obtained by a synthesis reaction of a raw material gas is continuously condensed inside the reactor and discharged to the outside without affecting the reaction temperature inside the reactor, and the synthesis reaction is accelerated, thereby obtaining a higher yield, and a method for producing a reaction product using the reactor ([0010]). As described in [0044], in the manufacturing apparatus, the raw material gas is introduced perpendicularly to the axial direction of the reactor, a portion of the reaction product produced by the synthesis reaction in the catalyst packed layer is condensed on the outer periphery of the triple tube (equivalent to condensing surface in the reactor), the condensed reaction product is extracted to the outside of the reactor, and the synthesis reaction in the downstream catalyst packed layer is promoted by increasing the partial pressure of the raw material gas. This manufacturing apparatus comprises the present apparatus 1, a flow path that introduces extracted gas containing methanol extracted from the supply port 5 into a gas-liquid separator 8 to separate it into liquid methanol and the supply gas, a flow path that introduces the exhaust gas discharged from the gas exhaust port 7 into a condenser 9 and a gas-liquid separator 10 to condense and separate the methanol contained in the exhaust gas, and a flow path that mixes the exhaust gas from which methanol has been separated with the supply gas ([0044]). The reference is silent about water being condensed out of the reactor with methanol. However, since the product comprises water in addition to methanol as shown in [0004], water is necessarily condensed out of the reactor in JP’370.
JP’370 further teaches that the CO conversion rate is 64.6% ([0060]).
JP’413 teaches a process for producing methanol using gas comprising hydrogen and carbon oxides obtained by reforming natural gas or gasifying coal or biomass as a raw material ([0024]). The process is characterized by the presence of a cooling surface in the catalyst layer whose temperature is below the dew point of the methanol vapor pressure there, where the produced methanol is liquefied on this cooling surface, and this liquid-phase methanol is extracted from the reaction system, thereby generating and maintaining a concentration gradient field, thereby maintaining the raw material concentration at a high level and preventing a decrease in the reaction rate. The reference teaches that a temperature field is established within
the reaction system (condensing surface) where the produced methanol condenses, and the produced methanol is liquefied and dropped out of the system, thereby generating and maintaining a methanol concentration gradient field at the reaction site, thereby continuously eliminating factors that reduce the raw material concentration in the reaction system ([0015]). In view of the teachings of WO’293, the gas comprising hydrogen and carbon dioxide also forms water in addition to methanol. Thus, water is also necessarily formed in JP’413 and condensed out of the reactor with methanol.
JP’413 further teaches that the CO conversion reaches 75% in the reaction ([0021]).
JP’422 teaches a method for producing methanol from a gas containing hydrogen and carbon monoxide obtained by gasifying biomass ([0006]). The reference teaches in [0012] that it is important to increase the efficiency of recovering methanol obtained by the exothermic reaction of the raw material gas, as well as the efficiency of cooling the generated heat of reaction. The process is to ensure the following functions by arranging a plurality of cooling layers concentrically within the catalyst packed bed and flowing the raw material gas perpendicular to the axial direction of the reactor.
(a) By contacting the raw material gas with the catalyst uniformly and with a predetermined residence time, the superficial velocity required for the catalytic reaction is substantially ensured in a small space. The contact with the cooling tube (equivalent to the condensing surface) can be made uniformly and with a predetermined residence time, thereby improving the contact efficiency and condensation effect between the gas containing methanol as a reaction product (hereinafter referred to as "reaction gas") and the cooling tube.
(b) The temperature of the raw material gas, which rises due to the exothermic reaction, is maintained within the optimum reaction temperature range by heat exchange with the
cooling layer, thereby ensuring high reaction efficiency.
(c) The methanol produced by the reaction is efficiently cooled and condensed using multiple cooling layers, ensuring high recovery efficiency as a condensate.
(d) By recovering methanol sequentially through multiple cooling layers from the upstream of the catalyst packed bed, a high conversion rate exceeding the equilibrium conversion rate can be ensured.
With this configuration, JP’422 teaches that it is possible to provide a methanol synthesis reactor that can ensure a high conversion rate that exceeds the equilibrium conversion rate in a single pass in a process for producing methanol from a feed gas, and can obtain a high methanol yield without circulating the feed gas (page 11).
The reference is silent about water being condensed out of the reactor with methanol. However, since the product comprises water in addition to methanol as shown in [0002], water is necessarily condensed out of the reactor in JP’422.
JP’422 further teaches that the CO conversion rate is 64.6% ([0060]).
US’021 teaches an improved design of a catalytic reactor for the production of methanol at equilibrium conditions whereby methanol as it is formed is separated from the gaseous phase into the liquid phase within the reactor, without reducing the catalytic activity of the methanol catalysts. This is achieved by adjusting the boiling point of a liquid cooling agent being in indirect contact with the catalyst particles and by providing a specific ratio of catalyst bed volume to cooling surface area, thereby condensation of methanol as it is formed in the gaseous phase takes place at the cooling surface arranged evenly distributed within the reactor and within a very limited region of the catalyst bed. The reference further teaches that methanol as it is formed within the catalyst bed is condensed on surface of heat exchanger 11 (condensing surface) and is withdrawn in the liquid phase though outlet 10 (Fig. 1). The reference is silent about water being condensed out of the reactor with methanol. However, since the product comprises water in addition to methanol as shown in [0003], water is necessarily condensed out of the reactor in US’021.
A skilled artisan would thus have been motivated to use the methods of JP’370, JP’413, JP’422 or US’021 in the methanol production process of WO’893 with a reasonable expectation of success in obtaining the advantages stated above of condensing methanol and water in the reactors (conversion step) and discharging methanol and water outside the reactor.
Furthermore, WO’293 fails to teach the method further comprising, between the gas acquisition step and the conversion step, a preliminary conversion step of converting the carbon oxide and hydrogen in the gas until a conversion rate reaches a predetermined equilibrium conversion rate or more, wherein the preliminary conversion step is performed in a second reactor which includes a reaction vessel not having a condensing surface. The reference also fails to teach the limitations of claims 2-3, 5-10 and 12.
The deficiencies are cured by US’655.
US’655 teaches a method for the production of methanol utilizing reactive synthesis gases generated by processes including a step of partial oxidation of a hydrocarbon, biomass or carbonaceous feedstock ([0024]). The process comprises as described in [0020]:
(i) passing a first synthesis gas mixture comprising a make-up gas through a first synthesis reactor (equivalent to the claimed second reactor) containing a cooled methanol synthesis catalyst to form a first product gas stream (preliminary conversion step),
(ii) recovering methanol from the first product gas stream thereby forming a first methanol-depleted gas mixture,
(iii) combining the first methanol-depleted gas mixture with a loop recycle gas stream to form a second synthesis gas mixture,
(iv) passing the second synthesis gas mixture through a second synthesis reactor containing a cooled methanol synthesis catalyst to form a second product gas stream (conversion step),
(v) recovering methanol from the second product gas stream thereby forming a second methanol-depleted gas mixture, and
(vi) using at least part of the second methanol-depleted gas mixture as the loop recycle gas stream.
As shown in Fig. 1, the reference teaches that the preliminary conversion step is conducted in reactor 20 (equivalent to the claimed second reactor) and that the product gas stream comprising methanol vapor is recovered from the outlet of the reactor via line 24 to the interchanger 16 where it is partially cooled, the partially cooled gas is fed via line 26 to one or more further stages of heat exchange 28 to condense methanol therefrom ([0051]). From this disclosure, since the methanol vapor is recovered and condenses outside the reactor, reactor 20 does not comprise a condensing surface.
Regarding claim 2, US’655 is silent about the predetermined equilibrium conversion rate being 80% of an equilibrium conversion rate of the carbon oxide in the gas based on carbon. However, since the reference teaches that the synthesis gas is obtained from biomass (waste material) and goes through the pre-conversion step as instantly claimed, there is a prima facie case of anticipation for the predetermined equilibrium conversion rate in US’655 to be 80% of an equilibrium conversion rate of the carbon oxide in the gas based on carbon. See MPEP § 21112.01.
Regarding claim 3, US’655 teaches in [0046] that the product gas stream from the first synthesis reactor may be cooled in one or more stages of heat exchange (between pre-conversion step and the conversion step), e.g. with water or air cooling, to condense methanol therefrom, which may suitably be recovered using gas-liquid separators. The cooling may be performed to fully or partially condense the methanol from the first gas stream and the recovered liquid methanol streams may be processed separately but are preferably combined and passed for further processing (outside the reaction system).
Regards claims 5-10 and 12, US’655 teaches:
[0047]: A purge gas stream is preferably recovered from the loop (the synthesis loop that encompasses the loop before the preliminary conversion step or between the preliminary and conversion steps) to avoid the build-up of inert gases, such as nitrogen, methane and argon in the loop. The purge gas typically comprises hydrogen and carbon oxides and may be used for hydrogen recovery, for example by pressure-swing absorption or by using suitable membranes, or may be subjected to one or more further processing stages including autothermal reforming, water-gas shift and methanol synthesis. The purge may be recovered from the first methanol-depleted gas or the second methanol depleted gas depending on whether the stoichiometry of the make-up gas is hydrogen-rich or carbon-rich. Preferably the purge is recovered from the second methanol depleted gas mixture and the remaining methanol depleted gas mixture used as the recycle loop gas mixture.
[0026]: The first synthesis gas (gas for preliminary conversion step) is desirably diluted with a hydrogen-containing gas stream selected from a purge gas stream from other methanol processes or a hydrogen gas stream obtained for example by pressure-swing absorption or by membrane separation from a suitable hydrogen-containing gas mixture.
US’655 further teaches that the method improves the efficiency of methanol synthesis. As such, a skilled artisan would have been motivated to use a preliminary conversion step prior to the conversion step as taught by US’655 in the process of WO’893 in combination with JP’370, JP’413, JP’422 or US’021 with a reasonable expectation in increasing the methanol production efficiency.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing methanol, the method comprising: a gas acquisition step of obtaining a gas containing a carbon oxide and hydrogen from a waste material; and a conversion step of bringing at least a portion of the gas into contact with a catalyst to convert the portion of the gas into methanol in a gas phase, the method further comprising, between the gas acquisition step and the conversion step, a preliminary conversion step of converting the carbon oxide and hydrogen in the gas until a conversion rate reaches a predetermined equilibrium conversion rate or more, wherein[[,]] the conversion step is performed in a first reactor which includes a reaction vessel having a condensing surface to condense a high-boiling-point component containing methanol and water, in the conversion step, a reaction is allowed to proceed by condensing a high-boiling- point component containing methanol obtained as a result of the conversion and water at the condensing surface and then discharging a condensed product to an outside of a reaction system, and the preliminary conversion step is performed in a second reactor which includes a reaction vessel not having a condensing surface in view of the teachings of WO’893; JP’370, JP’413, JP’422 or US’021; and US’655.
Response to Arguments
Applicant argues that none of the cited references, either alone or in combination, discloses or suggests a method for producing methanol that includes both features (A) and (B), in which feature (A) uses a reactor having a condensation surface and (B) uses a reactor without a condensation surface.
The examiner disagrees as both features are taught by the cited references and have been addressed in the rejection (see underlined).
Conclusion
Claims 1-12 are rejected and no claims are allowed.
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.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692