DETAILED ACTION
This office action is responsive to the amendment filed on 06/15/26. As directed by the amendment: claim 15 has been amended; claims 1-14 have been cancelled; and no claims have been added. Thus, claims 15-28 are presently pending in this application.
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 § 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.
Claims 15-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sarangi (US 2019/0132908) in view of Stanecki (US 2010/0089586).
With regard to claims 15 and 28, Sarangi teaches a device (FIG. 5) comprising at least one pipeline (12) for receiving a product (“Pipe, as understood by those of ordinary skill, may be a tube to convey or transfer any water, gas, oil, or any type of fluid known to those skilled in the art. The spoolable pipe 12 may be made of any type of materials including without limitation plastics, metals, a combination thereof, composites (e.g., fiber reinforced composites), or other materials known in the art.”, para. [0026]), said device (FIG. 5) having at least one current-conducting medium (110) (“The fluid 110 may be water, a heat transfer fluid, air, or any other liquid or gas with a high thermal conductivity. A heating element 112 may be disposed within the thermal enclosure 88 and configured to heat the fluid 110, thereby heating the portion of the spoolable pipe 12 within the thermal enclosure 88 via conductive heating. A variety of different heating techniques may be used for the heating element 112, such as a heating element that converts electricity into heat through resistive or Joule heating.”, para. [0042]), and said device having at least one power source or voltage source (“AC power supply”; “the controller 92 may be used to control a separate AC power supply. The controller 92 may be used to adjust the frequency and/or amperage of the alternating current.”, para. [0037]) set up to generate an electrical current in the current-conducting medium which heats the pipeline by Joule heating that arises on passage of the electrical current through the current-conducting medium (“A heating element 112 may be disposed within the thermal enclosure 88 and configured to heat the fluid 110, thereby heating the portion of the spoolable pipe 12 within the thermal enclosure 88 via conductive heating. A variety of different heating techniques may be used for the heating element 112, such as a heating element that converts electricity into heat through resistive or Joule heating.”, para. [0042]).
Sarangi does not explicitly teach “said current-conducting medium having a specific resistivity ρ of 0.1 Ωmm2/m≤ρ≤1000 Ωmm2/m”; however, Stanecki directed toward the same problem of heating an element teaches the aforementioned limitation: “In the liquid phase, the salt becomes an electrical conductor with resistivities below 1 Ω·cm. Thus, current begins to flow between the surface and hot spot 594, as shown by the arrows in FIG. 97.”, para. [0842].
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Sarangi reference, such that said current-conducting medium having a specific resistivity ρ of 0.1 Ωmm2/m≤ρ≤1000 Ωmm2/m, as suggested and taught by Stanecki, for the purpose of providing a heating medium which exhibits specific heating properties at given resistivity values providing an electrical conductor (Stanecki: para. [0842])
It is submitted that the cited prior art does not explicitly teach receiving a “feedstock”; however, it is submitted that as the claim is directed toward an apparatus, the limitation of “receiving a feedstock” relates to a workpiece, and as such, a material or article worked upon does not limit an apparatus claim (see MPEP 2115 – Material or Article Worked Upon by Apparatus).
With regard to the limitation of the device is et up to heat the feedstock to a temperature in the range from 200° C to 1700° C, it is submitted that such a functional limitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As that a device according to the combined teachings of the cited prior art would be capable of performing the required intended use and no structural differentiation has been identified, it is the examiner’s determination that this feature does not define the present invention over the cited prior art. See MPEP § 2114.
With regard to claim 28, as the claim is directed toward a method of heating at least one feedstock using a device according to claim 15 relating to a device and as claim 15 (from which claim 28 depends) recites the same limitations except in method form, to the extent that the prior art apparatus meets the structural limitations of the apparatus as claimed, it will obviously perform the method steps as claimed. Furthermore, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01(I)".
With regard to claim 16, it is submitted that the limitation of the device is set up to heat the product to a temperature in the range from 400° C. to 875° C would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the subject device to achieve the desired temperature as a matter of routine experimentation and/or since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 233) as Sarangi teaches: “a temperature sensor 94 may provide a signal to the controller 92 indicative of a temperature of the heated pipe 16. In certain embodiments, the temperature sensor 94 may be disposed within the thermal enclosure 88 to measure the temperature of air or other fluid within the thermal enclosure 88 or the temperature of the heated pipe 16. For example, the temperature sensor 94 may be an infrared temperature sensor capable of measuring the temperature of the heated pipe 16 without contact. In other embodiments, the temperature sensor 94 may be disposed outside of the thermal enclosure 88 to measure the temperature of the heated pipe 16 exiting from the opening 90. If the measured temperature of the heated pipe 16 or the air or other fluid in the thermal enclosure 88 is less than a desired temperature, then the controller 92 may increase the frequency and/or amperage of the alternating current to the induction coil 80. Similarly, if the measured temperature is greater than the desired temperature, then the controller 92 may decrease the frequency and/or amperage of the alternating current.”, para. [0038].
With regard to claim 17, Sarangi teaches the current-conducting medium (110) and the pipeline (12) are arranged relative to one another such that the current-conducting medium (110) at least partly surrounds the pipeline (12) and/or that the pipeline at least partly surrounds the current-conducting medium (110) (see FIG. 5).
With regard to claim 18, Sarangi teaches the current-conducting medium (110) is in a solid, liquid and/or gaseous state of matter selected from the group consisting of solid, liquid, gaseous and mixtures (“The fluid 110 may be water, a heat transfer fluid, air, or any other liquid or gas with a high thermal conductivity. A heating element 112 may be disposed within the thermal enclosure 88 and configured to heat the fluid 110, thereby heating the portion of the spoolable pipe 12 within the thermal enclosure 88 via conductive heating. A variety of different heating techniques may be used for the heating element 112, such as a heating element that converts electricity into heat through resistive or Joule heating.”, para. [0042]).
With regard to claim 19, Sarangi teaches the current-conducting medium (110) is a current-conducting granular material or a current-conducting fluid (“The fluid 110 may be water, a heat transfer fluid, air, or any other liquid or gas with a high thermal conductivity. A heating element 112 may be disposed within the thermal enclosure 88 and configured to heat the fluid 110, thereby heating the portion of the spoolable pipe 12 within the thermal enclosure 88 via conductive heating. A variety of different heating techniques may be used for the heating element 112, such as a heating element that converts electricity into heat through resistive or Joule heating.”, para. [0042]).
With regard to claim 20, Stanecki teaches the current-conducting medium includes at least one material selected from the group consisting of: carbon, carbides, silicides, electrically conductive oils, salt melts, inorganic salts and solid/liquid mixtures (“the salt melts and becomes a liquid or molten salt. In the liquid phase, the salt becomes an electrical conductor with resistivities below 1 Ω·cm.”, para. [0842]). Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Sarangi reference, such that the current-conducting medium includes at least one material selected from the group consisting of: carbon, carbides, silicides, electrically conductive oils, salt melts, inorganic salts and solid/liquid mixtures, as suggested and taught by Stanecki, for the purpose of providing a heating medium which exhibits specific heating properties at given resistivity values providing an electrical conductor (Stanecki: para. [0842]).
With regard to claim 21, Stanecki teaches the current-conducting medium has a specific resistivity ρ of 10 Ωmm2/m≤ρ≤1000 Ωmm2/m : “In the liquid phase, the salt becomes an electrical conductor with resistivities below 1 Ω·cm. Thus, current begins to flow between the surface and hot spot 594, as shown by the arrows in FIG. 97.”, para. [0842]. Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Sarangi reference, such that the current-conducting medium has a specific resistivity ρ of 10 Ωmm2/m≤ρ≤1000 Ωmm2/m, as suggested and taught by Stanecki, for the purpose of providing a heating medium which exhibits specific heating properties at given resistivity values providing an electrical conductor (Stanecki: para. [0842]).
With regard to claim 22, Sarangi teaches the power source and/or voltage source comprises a single-phase or multiphase AC power source and/or a single-phase or multiphase AC voltage source, or a DC power source and/or DC voltage source (“AC power supply”; “the controller 92 may be used to control a separate AC power supply. The controller 92 may be used to adjust the frequency and/or amperage of the alternating current.”, para. [0037]).
With regard to claim 23, Sarangi teaches the device has a plurality of pipelines (12), said device having n pipelines where n is a natural number not less than two, and said pipelines having symmetric or asymmetric pipes and/or a combination thereof ((“the size (e.g., radius of curvature) of the rollers 150 may selected based on the outside diameter of the spoolable pipe 12. For example, rollers 150 corresponding to 8-inch pipe may be used when re-rounding 8-inch spoolable pipe 12. Alternatively, a small pair of rollers 150 may be used for pipe diameters ranging from approximately 2 inches to 4 inches, and a large pair of rollers 150 may be used for pipe diameters ranging from approximately 6 inches to 8 inches. In addition, the spacing between the rollers 150 may be adjusted to accommodate different pipe sizes, and the adjustment may be made manually or automatically (e.g., hydraulically). Another embodiment using more than one pair of rollers 150 is described below with respect to FIG. 9.”, para. [0046]). Notwithstanding the foregoing, it is alternatively noted that the aforementioned limitation is an obvious duplication of parts (see MPEP 2144. VI.B Duplication of Parts) as the written description of the instant patent application does not provide a description regarding a new and unexpected result being produced by the claimed duplicate pipelines.
With regard to claim 24, Sarangi teaches the pipelines (12) are of different configuration with regard to diameter, and/or length, and/or geometry (“the size (e.g., radius of curvature) of the rollers 150 may selected based on the outside diameter of the spoolable pipe 12. For example, rollers 150 corresponding to 8-inch pipe may be used when re-rounding 8-inch spoolable pipe 12. Alternatively, a small pair of rollers 150 may be used for pipe diameters ranging from approximately 2 inches to 4 inches, and a large pair of rollers 150 may be used for pipe diameters ranging from approximately 6 inches to 8 inches. In addition, the spacing between the rollers 150 may be adjusted to accommodate different pipe sizes, and the adjustment may be made manually or automatically (e.g., hydraulically). Another embodiment using more than one pair of rollers 150 is described below with respect to FIG. 9.”, para. [0046]).
With regard to claim 25, with regard to the limitation of two or more or all of the pipelines are in series and/or parallel configuration, it is submitted that it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the pipe 12 of Sarangi to have a series and/or parallel configuration as such an adaptation is an obvious change in shape as the subject structure would not be modified and no unexpected results were identified in the instant patent application with such a claimed shape (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) (see MPEP 2144.04 - Legal Precedent as Source of Supporting Rationale - IV.B. – Change in Shape).
With regard to claim 26, with regard to the limitation of the feedstock is a hydrocarbon to be subjected to thermal cleavage and/or a mixture, it is submitted that the cited prior art does not explicitly teach receiving a “feedstock”; however, it is submitted that as the claim is directed toward an apparatus, the limitation of “receiving a feedstock” relates to a workpiece, and as such, a material or article worked upon does not limit an apparatus claim (see MPEP 2115 – Material or Article Worked Upon by Apparatus).
With regard to claim 27, Sarangi teaches A system comprising at least one device according to claim 15, wherein the system is selected from the group consisting of: a system for performance of at least one endothermic reaction, a plant for heating, a system for preheating, a steamcracker, a steam reformer, an apparatus for alkane dehydrogenation, a reformer, an apparatus for dry reforming, an apparatus for styrene production, an apparatus for ethylbenzene dehydrogenation, an apparatus for cracking of ureas, isocyanates, melamine, a cracker, a catalytic cracker, an apparatus for dehydrogenation (a system for heating: “system and method for heating and re-rounding spoolable pipe”, Title).
Response to Arguments
Applicant’s arguments filed 06/15/26 are addressed hereafter. With regard to Applicant’s arguments at pg. 5-6 of the office action response regarding “the upper limit for the specific resistivity recited in claim 15 of the present application is 1000 Ω * mm^2/m, which, when converted to consistent units, corresponds to 0.1 Ω * cm. This value is significantly lower than the ‘below 1 Ω * cm’ value disclosed in Stanecki….”. It is submitted that MPEP 2144.05 explicitly teaches that: “ In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)” Furthermore, it must be stressed that the Applicant has not identified any criticality regarding the claimed range, nor have any comments been presented that the prior art citations teach away from the claimed limitations. Furthermore, with regard to the arguments presented over claim 16, the Applicant asserts that Sarangi’s systems is to heat the pipe itself and no a product, fluid or feedstock. However, it is respectfully submitted that as a heating of the pipe would in effect heat a product therein, the functional limitation of the instant claim would necessarily be performed by the cited structure. Furthermore, it must be stressed that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As that a device according to the combined teachings of the cited prior art would be capable of performing the required intended use and no structural differentiation has been identified, it is the examiner’s determination that this feature does not define the present invention over the cited prior art. See MPEP § 2114. Furthermore, the Applicant’s arguments regarding a temperature sensor and/or the location of a temperature sensor is misplaced as neither claim 15 or 16 recite a temperature sensor. The Applicant is respectfully remidned that the aforementioned features upon which applicant relies 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).
Applicant's arguments filed 03/06/26 that were addressed previously are reproduced hereafter as they are considered relevant to the instant office action. The Applicant’s arguments at pgs. 6-8 of the Office Action Response present various arguments regarding the impropriety of Stanecki in the asserted prior art rejection(s) as being non-analogous art. The Examiner respectfully disagrees and presents the following detailed comments addressing Applicant’s contentions.
At pg. 6 of the Office Action Response, the Applicant contends: “Stanecki’s focus is on in situ subsurface hydrocarbon processing, specifically with molten salt as a conductor for downhole heating, and does not disclose or suggest the claimed combination of a surface pipeline device configured for controlled Joule heating of a feedstock with a current-carrying medium having a resistivity precisely selected for technical optimization of heating efficiency and safety in an above-ground pipeline context.”
In response to the aforementioned contention, it is respectfully submitted that the secondary citation (Stanecki) is only cited for its teachings regarding a current-conducting medium having a specific resistivity value (i.e., as detailed in the non-final office action and as reproduced above: “Sarangi does not explicitly teach “said current-conducting medium having a specific resistivity ρ of 0.1 Ωmm2/m≤ρ≤1000 Ωmm2/m”; however, Stanecki directed toward the same problem of heating an element teaches the aforementioned limitation: “In the liquid phase, the salt becomes an electrical conductor with resistivities below 1 Ω·cm. Thus, current begins to flow between the surface and hot spot 594, as shown by the arrows in FIG. 97.”, para. [0842].) Furthermore, the Applicant states in the aforementioned contention that Stanecki does not relate to “an above-ground pipeline context.” In response, it is respectfully submitted that the independent claim does not recite such a limitation; and accordingly, 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).
At pgs. 6-7 of the Office Action Response, the Applicant further contends: “In contrast, Stanecki is directed to subsurface hydrocarbon production processes, specifically the in situ treatment of subterranean hydrocarbon formations using temperature-limited heating elements for the purpose of mobilizing or upgrading hydrocarbons.” (emphasis added). In response to the aforementioned contention, it is respectfully submitted that Stanecki is only cited for its teachings regarding a current-conducting medium having a specific resistivity value (as detailed above). Notwithstanding the foregoing, it must be stressed that the Applicant’s arguments regarding the functional aspects of Stanecki are not persuasive as the subject claim is directed toward a device, and function follows structure. Accordingly, if the structural limitations are met by the prior art, it may be reasonably concluded that it would not matter if the prior art fails to mention and/or is directed toward a specific function if the structure would inherently provide for said function. In the instant case, Stanecki is cited to illustrate that a current-conducting medium having a specific resistivity value utilized with a pipeline heating structure is known in the art.
At pg. 7 of the Office Action response, the Applicant contends: “Stanecki, on the other hand, does not address this problem. Its discussion of resistivity relates to the transition of a salt-based insulation from an insulator to a conductor as temperature increases, a property exploited for temperature sensing or heater diagnostics in downhole environments. The reference to low resistivity (below 1 ohm cm) is made in the context of molten salt behavior for temperature probe operation, not as a design criteria for pipeline heating. Stanecki does not teach, suggest, or contemplate the use of a current-conducting fluid in a pipeline….” As an initial matter, it must be stressed that the written description of the instant patent application provides an explicit definition for the term “current-conducting medium” (emphasis added): “a “current-conducting medium” in the context of the present invention may be understood to mean any medium having current-conducting and/or magnetic properties.”, para. ]0021] of instant patent application (emphasis added). As indicated in multiple instances within the instant Response to Arguments section of this Office Action, the secondary citation is only cited for its teachings regarding a current-conducting medium having a specific resistivity value (i.e., as detailed in the non-final office action and as reproduced above: “Sarangi does not explicitly teach “said current-conducting medium having a specific resistivity ρ of 0.1 Ωmm2/m≤ρ≤1000 Ωmm2/m”; however, Stanecki directed toward the same problem of heating an element teaches the aforementioned limitation: “In the liquid phase, the salt becomes an electrical conductor with resistivities below 1 Ω·cm. Thus, current begins to flow between the surface and hot spot 594, as shown by the arrows in FIG. 97.”, para. [0842].) (emphasis added)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH W ISKRA whose telephone number is (313) 446-4866. The examiner can normally be reached on M-F: 09:00-17:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSEPH W ISKRA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
Prosecution Insights