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, see Response After Final Action, filed November 18th, 2025, with respect to the rejection of claims 1-13 under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a new interpretation of U.S. Patent No. 9770687 to Ungerank et al.
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.
Claims 1-3, 6-7, 10-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 9770687 to Ungerank et al. (hereinafter referred to as Ungerank).
Regarding claim 1, Ungerank teaches a separation system (Fig. 1), comprising: a first separation part having a separation membrane (Fig. 1, first separation stage 1) and provided with a fluid supply port (Fig. 1, feed stream 5 travels to first separation stage 1), a permeate fluid exhaust port (Fig. 1, first permeate stream 6 leaves first separation stage 1), and a non-permeate fluid exhaust port (Fig. 1, first retentate stream 7 leaves first separation stage 1); a second separation part having a separation membrane (Fig. 1, permeate separation stage 3) and provided with a fluid supply port (Fig. 1, first permeate stream 6 enters permeate separation stage 3), a permeate fluid exhaust port (Fig. 1, third permeate stream 11 leaves permeate separation stage 3), and a non-permeate fluid exhaust port (Fig. 1, third retentate stream 10a/10b leaves permeate separation stage 3); an intermediate connecting part for connecting said permeate fluid exhaust port of said first separation part and said fluid supply port of said second separation part (Fig. 1 illustrates how the membrane modules are connected to one another); a supply pipe connected to said fluid supply port of said first separation part (Fig. 1, feed stream 5 travels to first separation stage 1), in which a mixed fluid containing a plurality of types of fluids (Col. 4, lines 9-10 “Raw gas/raw gas mixture/raw gas stream (17) refers to a gas mixture of two or more gases”) flows at a pressure higher than an atmospheric pressure (Fig. 1, crude gas stream 17 runs through compressor 4, which would raise the pressure above an atmospheric pressure; Col. 13, lines 4-8 “In one preferred embodiment of the present invention, a compressor (4) compresses the raw gas mixture … to the desired pressure in the range from 5 to 100 bar”); a pressure reducing part connected to said permeate fluid exhaust port of said second separation part for reducing a pressure inside said permeate fluid exhaust port to a pressure lower than the atmospheric pressure (Col. 12, lines 59-65 “The partial pressure difference is created by a compressor (4), arranged on the feed side of feed stream separation stage (1), and optionally by at least one, preferably on the permeate side of retentate separation stage (2) in the second permeate stream (9a +9b) and/or on the permeate side of the permeate separation stage (3) in the third permeate stream (11).” ; The presence of a vacuum pump would lower the pressure below atmospheric pressure within the permeate fluid exhaust port of the second separation part), and a flow measurement part and/or fluid analysis part (Fig. 1, measuring means 20a, 20b, 21a, 21b), said flow measurement part measuring a flow rate of a fluid exhausted from said permeate fluid exhaust port or said non-permeate fluid exhaust port of said second separation part (Fig. 1, measuring means 21b is located in the non-permeate stream of the second separation part), said fluid analysis part measuring a component composition of said fluid exhausted from said permeate fluid exhaust port or said non-permeate fluid exhaust port of said second separation part (Col. 6, lines 10-14 “In a first preferred embodiment of the present invention, the measuring means (20b) and (21b) determine parameters of product streams (8) and (11) such as, for example, the content of one or more components in the gas streams.”); a pressure adjustment part for adjusting a pressure inside said permeate fluid exhaust port of said second separation part (Fig. 1, control means 19 and measuring means 21b; Col. 6, lines 3-6 “A nonexhaustive list of possible control means includes: a pressure-lowering or pressure-raising valves, gas-depressurizing means, vacuum pumps, blowers, compressing means, especially compressors.” ; Col. 6, lines 35-41 “The measuring means (20b) and (21b) register such changes and initiate a counter-control measure via the control means (18) and (10), so the plant of the present invention can be controlled such that the properties, especially the compositions, of product gas streams (8) and (11) are back in a predetermined range/corridor.” ; Measuring means 21b, which is inside the permeate fluid exhaust port of the second separation stage, can adjust the pressure of the second permeate stream 11 through the indirect action of control means 19); and a control part (Col. 10, lines 35-39 “Depending on the measuring and/or control means used and also the number thereof, it can be advantageous for at least one data-processing means (not shown in the Figures), preferably at least one computer, to be connected inbetween the measuring and control means.”) for controlling said pressure adjustment part so that a flow rate obtained by said flow measurement part and/or concentration of a predetermined component obtained by said fluid analysis part fall within a predetermined range (Col. 10, lines 39-42 “This provides easy central control over the apparatus/method of the present invention and a way of logging and coordinating the various measured values/regulating steps.” ; Col. 7, lines 37-42 “Therefore, the measuring means (20a) and (21a) can also be used to control the properties, especially the composition and yield, of the two product streams (8) and (11). This is again accomplished using the control means (18) and (19).”); wherein said intermediate connecting part is not provided with any device for pressure rising nor any device for pressure reduction (Fig. 1, the connecting part represented by the arrow of the first permeate stream 6 does not have a pressure regulating device), and a pressure inside said intermediate connecting part is lower than a pressure inside said supply pipe (Col. 15, lines 63-64 “In one preferred embodiment, the pressure drop across feed stream separation stage (1) is limited to 1 and 30 bar”; the pressure drop indicates that the pressure inside of the “supply pipe” would be higher than the “intermediate connecting part” of Ungerank) and not lower than the atmospheric pressure (Claim 17, lines 29-31 “a pressure of the permeate of said feed stream separation stage is in an equal or elevated state relative to an ambient pressure”).
As can be seen in the analysis above, Ungerank does not explicitly mention the claimed supply ports, exhaust ports, intermediate connecting part, or supply pipe. Although Ungerank is silent on these features, these components are still present. Figure 1 of Ungerank clearly depicts how the gas mixture will travel throughout the separation system; the feed gas (5) will travel from a compressor to the first membrane (the line between the compressor 4 and first separation stage 1 is considered to be the claimed “supply pipe”). After passing through the membrane, the gas is split into two streams (7 and 6), which then travel to their respective separation stage. Again, figure 1 of Ungerank clearly depicts how the first permeate stream (6) travels to the next separation stage (3) (the line between separation stage 1 and separation stage 3 is considered to be the claimed “intermediate connecting part”). In order for these gases to pass between separation stages and subsequently travel to a secondary separation stage independent of one another, there would have to be distinct exhaust ports for the permeate or retentate. Similarly, in order for these gases to successfully travel through a pipe (or something of a similar design) into the membrane separation stages, there would have to be a supply port to allow for the passage of the gas.
In an alternative, assuming that Ungerank does not sufficiently teach the supply ports, exhaust ports, intermediate connecting part, and supply pipe, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate these components in order for the separation system to function properly. Without these elements present, the gas would not be able to flow between separation stages and gas separation would not occur. 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.
Regarding claim 2, Ungerank teaches the separation system as applied to claim 1 above. Ungerank further teaches that the pressure drop across feed stream separation stage (1) is limited to 1 and 30 bar (Col. 13, lines 4-8). Ungerank does not disclose the pressure difference of the subsequent separation stage (3) and therefore does not teach wherein a pressure difference between said fluid supply port and said permeate fluid exhaust port in said second separation part is not higher than 0.8 times said pressure difference in said first separation part. However, as is described above, the separation system as taught by Ungerank is identical or substantially identical in structure to the claimed invention, meaning it is therefore capable of performing in the same way as the claimed invention. The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See MPEP §2114 and 2173.05 (g).
Regarding claim 3, Ungerank teaches the separation system as applied to claim 1 above, wherein said mixed fluid is a mixed gas containing a plurality of types of gases (Col. 4, lines 9-10 “Raw gas/raw gas mixture/raw gas stream (17) refers to a gas mixture of two or more gases”).
Regarding claim 6, Ungerank teaches the separation system as applied to claim 1 above, wherein said separation membrane of said first separation part and/or said separation membrane of said second separation part each contain an inorganic material (Col. 16, lines 4-14 explain potential membrane materials; Col. 16, line 13 “or zeolites”, zeolite is an inorganic material).
Regarding claim 7, Ungerank teaches the separation system as applied to claim 1 above, wherein said separation membrane of said first separation part and/or said separation membrane of said second separation part are each a zeolite membrane (Col. 16, lines 4-14 explain potential membrane materials; Col. 16, line 13 “or zeolites”).
Regarding claim 10, Ungerank teaches the separation system as applied to claim 1 above. Ungerank does not explicitly teach that the pressure adjustment part is provided between said permeate fluid exhaust port of said second separation part and said pressure reducing part in a permeate fluid collection pipe connected to said permeate fluid exhaust port of said second separation part.
However, Ungerank does teach a measuring means (Fig. 1, measuring means 21b) on the permeate side of separation stage (3) and that the compositions of these streams as determined by the measuring means (21b) is used to control the pressure of the separation stages (2) and (3) (Col. 3, lines 44-47). The “pressure reducing part” is taught by Ungerank as the vacuum pump, which is placed on the permeate side of the separation stage (3) (Col. 12, lines 59-67). Although Ungerank does not disclose the exact arrangement of the claimed invention with regards to the pressure adjustment and pressure reducing parts, the separation system is still capable of altering its function depending upon the measurements taken by the measuring means (21b), resulting in the same operation of the device as claimed. The limitations set forth in claim 10 of the instant application are therefore not patentably distinct over the prior art.
Regarding claim 11, Ungerank teaches the separation system as applied to claim 1 above, further comprising: a return pipe for leading part of a fluid exhausted from said non-permeate fluid exhaust port of said first separation part and/or at least part of a fluid exhausted from said non-permeate fluid exhaust port of said second separation part to said fluid supply port of said first separation part (Fig. 1, third retentate stream 10a/10b is recycled back to crude stream 17, which then is compressed to feed stream 5 before entering the fluid supply port of first separation stage 1).
Regarding claim 13, Ungerank teaches the separation system as applied to claim 1 above, further comprising: an exhaust fluid pressure rising part for raising a pressure of a fluid exhausted from said non-permeate fluid exhaust port of said second separation part (Fig. 1, third retentate stream 10a/10b is controlled by control means 19; Col. 5, lines 43-46 “said third retentate stream (10a+10b) comprises at least one retentate control means (19) with which the retentate pressure of said permeate separation stage (3) can be raised or lowered”), wherein the fluid whose pressure is raised by said exhaust fluid pressure rising part is mixed with a fluid exhausted from said non-permeate fluid exhaust port of said first separation part (Fig. 1, the third retentate stream 10a/10b mixes with the second permeate stream 9a/9b of the retentate separation stage 2, which is the separation step for the first retentate stream 7. Therefore the fluid whose pressure is raised (10a/10b) is indirectly mixing with the first retentate stream 7.).
Claims 4 and 5 rejected under 35 U.S.C. 103 as being unpatentable over Ungerank as applied to claims 1-3 and 7 above, and further in view of US Application No. 2018/0280866 to Hasegawa et al. (hereinafter referred to as Hasegawa).
Regarding claim 4, Ungerank teaches the separation system as applied to claim 3 above. Ungerank does not teach a condensation prevention part provided at a predetermined position on a path from said supply pipe to said separation membrane of said second separation part, for heating or keeping warm a gas flowing in said path, to thereby prevent condensation of said gas.
However, Hasegawa teaches a gas separation device that utilizes membrane separation (Fig. 3) with a water removal step prior to the membrane separation (Fig. 1, water removal 12; ¶0043 “dew condensation of water hardly occurs by sufficiently removing water in the water removal step 12”) to prevent condensation.
Ungerank and Hasegawa are considered analogous to the claimed invention because they are in the same field of membrane separation for a mixture of gases. Hasegawa further teaches that the inclusion of the water removal step and subsequent decrease in condensation prevents the risk of blockage in the membrane (¶0058 “when the temperature of the natural gas brought into contact with the inorganic membrane 20 is reduced below the dew point temperature of the heavy hydrocarbon, there is a risk in that blockage occurs in the inorganic membrane 20 owing to condensation and solidification of the heavy hydrocarbon, and CO2 gas separation performance is reduced.”). It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the separation system as taught by Ungerank to incorporate the water removal step as taught by Hasegawa to prevent blockage from occurring in the membranes.
Regarding claim 5, Ungerank teaches the separation system as applied to claim 1 above. Ungerank does not teach a preprocessing part provided at a predetermined position between a supply source of said mixed fluid and said first separation part, for removing at least a part of a predetermined component contained in said mixed fluid.
However, as explained regarding claim 4 above, Hasegawa teaches a gas separation device that utilizes membrane separation (Fig. 3) with a water removal step prior to the membrane separation (Fig. 1, water removal 12; ¶0043 “dew condensation of water hardly occurs by sufficiently removing water in the water removal step 12”) to prevent condensation. Hasegawa further teaches that the inclusion of the water removal step and subsequent decrease in condensation prevents the risk of blockage in the membrane (¶0058 “when the temperature of the natural gas brought into contact with the inorganic membrane 20 is reduced below the dew point temperature of the heavy hydrocarbon, there is a risk in that blockage occurs in the inorganic membrane 20 owing to condensation and solidification of the heavy hydrocarbon, and CO2 gas separation performance is reduced.”). It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the separation system as taught by Ungerank to incorporate the water removal step as taught by Hasegawa to prevent blockage from occurring in the membranes.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ungerank as applied to claim 7 above, and further in view of Hasegawa and Himeno, S. et al. Synthesis and Permeation Properties of a DDR-Type Zeolite Membrane for Separation of CO2/CH4 Gaseous Mixtures, Industrial & Engineering Chemistry Research, Vol. 46 (Sept. 13, 2007), pp. 6989-6997 (hereinafter referred to as Himeno).
Regarding claim 8, Ungerank teaches the separation system as applied to claim 7 above. Ungerank does not teach wherein said mixed fluid contains a fluid having a molecular size smaller than a pore diameter of zeolite forming said zeolite membrane and a fluid having a molecular size larger than said pore diameter.
However, Hasegawa teaches a gas separation device that utilizes membrane separation (Fig. 3), wherein the natural gas being separated can contain a plurality of gases, such as CO2 and hydrocarbons having six or more carbon atoms (Table 1). Himeno teaches that DDR-type zeolites (specifically DD3R) matches the diameter of CO2 and light hydrocarbons (methane, butane, propane). Hydrocarbons having six or more carbon atoms would not be considered light hydrocarbons and would subsequently be larger than the pores of DDR-type zeolites.
Ungerank, Hasegawa, and Himeno are considered analogous to the claimed invention because they are in the same field of zeolite membranes for gas separation. It therefore would have been obvious before the effective filing date of the claimed invention that a mixed fluid containing compounds such as CO2 and hydrocarbons having six or more carbon atoms as taught by Hasegawa would contain a fluid having a molecular size smaller than the pore diameter of the zeolite membrane (CO2) and a fluid having a molecular size larger than the pore diameter of the zeolite membrane (hydrocarbons having six or more carbon atoms). This is further supported by the teachings of Himeno, demonstrating that DDR-type zeolite membranes are well known in the art for the separation of gaseous mixtures that have varying molecular sizes.
Regarding claim 9, Ungerank teaches the separation system as applied to claim 7 above, wherein the membrane being used is a zeolite membrane (Col. 16, lines 4-14 explain potential membrane materials; Col. 16, line 13 “or zeolites”). Ungerank does not explicitly teach that the zeolite forming said zeolite membrane is an eight-membered ring zeolite.
However, as explained above, Hasegawa teaches a gas separation device that utilizes membrane separation (Fig. 3). Hasegawa further teaches that the structure of the membrane may be a DDR-type zeolite membrane, which is an eight-membered ring zeolite (¶0051 “A specific structure of the inorganic membrane 20 is not limited to a particular type, but an example thereof the use of a tubular member obtained by forming a DDR-type zeolite membrane”). Himeno also teaches that DDR-type zeolites are eight-membered ring zeolites (Introduction).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ungerank as applied to claim 1 above, and further in view of CN 210134073 to Lin et al. (hereinafter referred to as Lin).
Regarding claim 12, Ungerank teaches the separation system as applied to claim 1 above. Ungerank fails to teach an energy conversion part for converting pressure energy of a fluid exhausted from said non-permeate fluid exhaust port of said first separation part into different energy.
However, Lin teaches a membrane separation unit (Fig. 1, membrane separation unit 30) with a pressure energy recovery device (Fig. 1, pressure energy recovery device 80) attached to the exhaust end of the membrane separation unit. Lin further teaches that recovering the pressure energy and recycling said energy saves on overall energy consumption when operating the device (Pg. 5 “In order to recover the pressure energy and save energy consumption, in a preferred embodiment, the above device further includes a first pressure energy device 70 … In a preferred embodiment, the device further includes a second pressure energy recovery device 80”).
Ungerank and Lin are considered analogous to the claimed invention because they are in the same field of membrane separation of gases. It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the separation system of Ungerank to incorporate the pressure energy recovery device as taught by Lin in order to save on energy consumption of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Roodbeen (US 2020/0254383 A1) teaches a multi-stage membrane separation process with composition sensors and a controller capable of altering the parameters of the process dependent upon the values measured.
Bikson (US 2019/0321780 A1) teaches a three-stage separation system utilizing gas separation membranes to remove contaminants from a biomethane gas stream.
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/RACHEL MARIE SLAUGOVSKY/Examiner, Art Unit 1776
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776