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 .
Claim Objections
Claim 29 objected to because of the following informalities: in order to ensure proper antecedent basis, it is suggested to amend “pulling concentrated waste stream” to “pulling the concentrated waste stream”. Appropriate correction is required.
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.
Claim 29 is 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 29 recites, “the process further comprises disposing of at least a portion of the concentrated waste stream in a pond and wherein the process further comprising continuously pulling concentrated waste stream from the pond to mitigate mineral precipitation in the pond”. While there is support for,
“The electrolyzing may employ an electrolysis tank. The temperature and other parameters of such tanks may be controlled as necessary. The tanks may be open like ponds or in some embodiments the tanks are enclosed. The processes may further comprise producing a concentrated saltwater, desalinating a waste stream, disposing of a waste stream, and/or removing a waste stream comprising minerals from the electrolysis tank.” (Specification, [0019]) (emphasis added),
there is not support for “disposing of the concentrated waste stream in a pond” or “continuously pulling concentrated waste stream from the pond to mitigate mineral precipitation in the pond”. There is only a teaching that open electrolysis tanks are “like a pond”, not that they are a pond. Further, there is no teaching about “continuously pulling concentrated waste stream from the pond” or about mitigating mineral precipitation at any point in the process.
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.
Claims 1-6, 13, and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (“Seawater electrolysis for hydrogen production: a solution looking for a problem?”, 2021) (Khan) in view of Burnett et al. (“Recovery of Fresh Water Resources from Desalination of Brine Produced During Oil and Gas Production Operations”, 2006) (Burnett) and Kato et al. (“Effective utilization of by-product oxygen from electrolysis hydrogen production”, 2005) (Kato).
Regarding claims 1 and 30, Khan teaches seawater electrolysis for hydrogen production (Khan, Title; Abstract), wherein water is desalinated before being sent to an electrolyzer system to produce hydrogen and oxygen (Khan, p. 4834, Fig. 3), wherein the hydrogen is used as an energy carrier (i.e., storing hydrogen) (Khan, p. 4831, Paragraph 1). Khan further teaches the desalination unit uses reverse osmosis which uses high-pressure pumps to force water through semi-permeable membranes that have a dense separation layer allowing the passage of pure water molecules while rejecting dissolved salts and other impurities (Khan, p. 4833-4834, Seawater reverse osmosis coupled with water electrolysis) (i.e., purifying the produced water, electrolyzing the produced water to produce at least hydrogen and oxygen; and storing hydrogen).
However, Khan does not explicitly teach (a) providing a mixture comprising an oil, a gas, and a produced water from an oil and gas well and separating the produced water from the mixture; or (b) storing, selling, releasing, or converting oxygen into an oxygen product.
With respect to the difference (a), Burnett teaches the management and disposal of produced water is one of the most important problems associated with oil and gas production as produced water is typically treated as a waste and is not available for any beneficial purposes (Burnett, Abstract). Therefore, Burnett teaches the recovery of fresh water from desalination of brine produced during oil and gas production operations (Burnett, Title; Abstract). Burnett teaches produced water can come from offshore oil and gas wells (i.e., providing a mixture comprising an oil, a gas, and a produced water from an oil and gas well) (Burnett, p. 21, Last Paragraph), and the produced water requires pretreatment including desalination to remove various contaminants including oil and grease (hydrocarbons), other organics, salts, silt, sediments and other solids. Different metals and heavy metals such as iron, copper, barium, strontium, cadmium, chromium, lead, mercury, zinc, etc. and naturally occurring radioactive metals may also be present in the produced water (Burnett, Abstract; p. 24, Paragraph 1 and Last Paragraph) (i.e., separating the produced water from the mixture; claim 30, removing NaCl, salts, metals, and organic materials from the produced water before electrolyzing the produced water).
As Burnett expressly teaches the contribution of fresh water from produced water will contribute enormously to the sustainable development of the communities where oil and gas are produced and fresh water is a scarce resource. This water can be used for many beneficial purposes such as agriculture, horticulture, rangeland and ecological restorations, and other environmental and industrial applications (Burnett, Abstract).
Burnett is analogous art as it is drawn to production of fresh water from saline water (Burnett, Abstract).
In light of the motivation of using produced water from an oil and gas well as the starting material as disclosed by Burnett, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Khan by using the produced water from an oil and gas well in Burnett order to create a beneficial resource for industrial applications rather than a harmful waste, and thereby arrive at the claimed invention.
With respect to the difference (b), Kato teaches the effective utilization of by-product oxygen from electrolysis hydrogen production (Kato, Title; Abstract), wherein the by-product oxygen is used for improving the energy efficiency of industrial processes (Kato, p. 2584, Paragraph 3), including blast furnaces, electric arc furnaces, glass melting, electric power plants, gasification, and medical care (Kato, p. 2585-2589; Sections 4.1-4.6) (i.e., selling and converting oxygen to a useful oxygen product). Kato further teaches the oxygen produced may be harmlessly vented (Kato, p. 2581, Paragraph 2) (i.e., releasing oxygen).
As Kato expressly teaches utilizing the by-product oxygen effectively would contribute to the improvement of the energy efficiency of various industrial processes and electric power production, as well as reduction of CO2 emissions (Kato, p. 2954, Conclusion).
Kato is analogous art as it is drawn to electrolysis (Kato, Abstract).
In light of the motivation of utilizing the by-product oxygen from electrolysis as disclosed by Kato, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Khan by selling the oxygen to industrial processes disclosed in Kato in order to contribute to the improvement of the energy efficiency of various industrial processes and electric power production, as well as reduction of CO2 emissions, and thereby arrive at the claimed invention.
Regarding claims 2 and 3, Khan, in view of Burnett and Kato, teaches the process of claim 1, wherein the water goes through a desalination unit before entering the electrolyzer system (Khan, p. 4834, Fig. 3) (i.e., treating the produced water before electrolyzing; the treating comprises desalinizing).
Regarding claims 4 and 31, Khan, in view of Burnett and Kato, teaches the process of claim 1, wherein the hydrogen (i.e., H2) is used as an energy carrier which is used in the grid electricity to power the desalination unit (i.e., produce fresh water) and PEM electrolyzer unit (Khan, p. 4831, Col. 2; p. 4834, Fig. 3) (i.e., the hydrogen is converted into electrical power and fresh water for beneficial reuse; claim 31, at least a portion of the hydrogen product is H2 and the H2 is employed to power the electrolyzing).
Regarding claim 5, Khan, in view of Burnett and Kato, teaches the process of claim 1, wherein brine (i.e., concentrated saltwater) from the desalination unit is disposed (Khan, p. 4834, Fig. 3) (i.e., process further comprises producing concentrated saltwater).
Regarding claim 6, Khan, in view of Burnett and Kato, teaches the process of claim 1, wherein the electrolyzer system includes an electrolyzer stack (Khan, p. 4834, Fig. 3), which corresponds to the claimed electrolysis tank as it would necessarily be housed in a structure, i.e., tank.
Regarding claim 13, Khan, in view of Burnett and Kato, teaches the process of claim 1, wherein solar and wind energy as well as produced hydrogen are used to power the electrolyzer system (Khan, p. 4834, Fig. 3).
Response to Arguments
In response to applicant’s amendments to claim 1, the previous 35 U.S.C. 112(b) rejections are withdrawn from the record. However, the amendments necessitate a new claim objection and 35 U.S.C. 112(a) rejection over new claim 29 as set forth above.
Applicant primarily argues:
“Applicant has amended independent claim 1 to specify "providing a mixture comprising oil, a gas, and a produced water from an oil and gas well and separating the produced water from the mixture." Khan pertains to seawater (Khan, abstract) and does not teach or suggest anything about an oil and gas well or separating produced water from an oil and gas mixture as required in amended independent claim 1. Kato pertains to "the relative costs of hydrogen production by means of PEM electrolysis and SMR". (Kato, abstract). Thus, Kato does not remedy the deficiencies of claim 1. The suggested combination does not obtain independent claim 1 and the rejection should be withdrawn.
What's more, the suggested combination would not be modified by an ordinarily skilled artisan to employ produced water from an oil and gas well. That is, Khan is concerned about the "need of highly pure water feeds" (Khan, p.4832, left column). A person of ordinary skill in the art would appreciate that a produced water is much less pure and has more contaminants than that of seawater. Therefore, a person of ordinary skill would not be led from Khan or Kato to consider employing produced water as in the claimed process.”
Remarks, p. 7
The examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Khan does not expressly teach the claimed providing a mixture comprising oil, a gas, and a produced water from an oil and gas well and separating the produced water from the mixture. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Khan does not disclose the entire claimed invention. Rather, Burnett is relied upon to teach claimed elements missing from Khan. See item #10 above.
It is noted that while Kato does not disclose all the features of the present claimed invention, Kato is used as a teaching reference, namely to teach releasing, or converting oxygen into an oxygen product, in order to contribute to the improvement of the energy efficiency of various industrial processes and electric power production, as well as reduction of CO2 emissions (Kato, p. 2954, Conclusion), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Further, while applicant argues that one of ordinary skill in the art would not be motivated to employ produced water from an oil and gas well as Khan is concerned about the need of highly pure water feeds, the examiner respectfully disagrees. Burnett teaches pretreatment processes to prepare the produced water for desalination (Burnett, Abstract), as well as the importance of the pretreatment prior to desalination using reverse osmosis in order to prevent membrane fouling (Burnett, p. 24, Paragraphs 3 and 4). Therefore, it is clear that the pretreatment process in Burnett would ensure that the produced water is pure enough as a feed for the process of Khan.
Applicant further argues:
“New claim 30 pertains to removing a number of compounds as specified in the claim from the produced water prior to electrolyzing. Neither Kahn nor Kato teaches or suggests the limitations of new dependent claims 29-31.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Khan does not expressly teach the claimed removing NaCl, salts, metals, and organic materials from the produced water before electrolyzing the produced water. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Khan does not disclose the entire claimed invention. Rather, Burnett is relied upon to teach claimed elements missing from Khan. See item #10 above.
It is noted that while Kato does not disclose all the features of the present claimed invention, Kato is used as a teaching reference, namely to teach releasing, or converting oxygen into an oxygen product, in order to contribute to the improvement of the energy efficiency of various industrial processes and electric power production, as well as reduction of CO2 emissions (Kato, p. 2954, Conclusion), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Further, it is the examiner’s position that the combination of Khan with Burnett and Kato teaches the limitation of claim 31, see item #13 above.
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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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