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 . Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, 12-16, drawn to a method, classified in C09C 1/48.
II. Claims 17-21, drawn to an apparatus, classified in B01J 19/26.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus can be used to make fumed silica.
During a telephone conversation with Mr. Ainscough on 10/27/25 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-10, 12-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-10, 12-16 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.
In claim 1 (and all the claims where the term is used), ‘decomposition pressure range’ is unclear, in that it is the temperature which dominates whether a molecule will decompose. Does this imply that there is a pressure so high (or so low) that methane will not decompose regardless of the temperature (for example 0.68 MPa- see claim 2)? Note that CH4[Wingdings font/0xE0] C + 2H2 will increase the pressure on the system, thus the reaction will be favored by lowering the pressure.
In claims 1, 7, 8, 12 and the like ‘rapid/rapidly’ is subjective and unclear.
C) Claim 4 is tautological, see the above issues. Perhaps ‘wherein the hydrocarbon is methane’ is meant.
D) Claim 7 is unclear how a ‘rapid expansion valve’ differs from a ‘valve’.
E) Claim 12 is unclear in that the feedstock has not yet decomposed to hydrogen. It appears the effluent is meant. There is no apparent nexus between the feedstock and product streams. The claim is completely unclear.
F) In claim 16, it is unclear exactly what ‘drill rig vent’ and ‘well head vent’ streams contain. If they contain methane, then they are redundant.
G) Claim 8 appears to be merely a restatement of things already required in claim 1. What additional features does it include?
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.
Obviousness rejections:
Claims 1-5, 7-10, 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kielb 20180215615.
Kielb teaches, especially in paras 8, 73 and figs. 1-2C, decomposing hydrocarbon.
While not teaching ‘rapid expansion’, it is is suggested by ‘adiabatic’ in para 86 and thus obvious to control the pressure to the desired level.
For claims 2-3, 3.1 Mpa is taught in para 97. ‘high pressure’ is taught in para 73, rendering the value of claim 3 obvious.
For claims 4 and 16, methane is taught- see para 41.
For claims 5 and 13, the temperature is 1094 K (821 C).
For claim 7, valves are obvious to control gas flow.
For claim 8, the feed is pressurized. See para 73.
For claims 9-10 see para 97.
For claim 14, the products are collected. See para 57 and 93.
For Claim 15, recycle unreacted feed is suggested and obvious for economic efficiency. See para 51 and 73.
Claims 1, 2, 4-6, 8-10, 13, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mullin et al. 3122418.
Mullin teaches, especially in col. 4, decomposing hydrocarbon into carbon and hydrogen. While not teaches ’rapidly expanding’ it is noted that the apparatus widens (fig. 1) and col. 4 teaches pressure control by use of chokes. Thus, the claimed feature is obvious. Valve 26 is taught in col. 2.
For claim 2, 300 psi is taught.
For claim 4, methane per se is not actually required.
For claims 5-6 and 13, col. 4 teaches 1382C.
Claim 8 appears inherent, as noted above.
For claim 9, the feed is initially pressurized and the pressure increases in the reactor, see col. 3.
For claim 10, col. 4 teaches gas preheating.
For claim, 16, propyne is taught.
For claim 14, col. 2 teaches carbon collection. Capturing hydrogen is obvious to acquire a valuable material.
For claim, 16, propyne is taught (drill rig and/or well head).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736