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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-20, in the reply filed on 20 November 2025 is acknowledged. The traversal is on the grounds that there is no search burden. This is not found persuasive, particularly in view of the different principles behind the Examination of apparatus claims vs. method claims, i.e. apparatus claims need not actually perform the claimed function and require different search fields and strategies.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 4, 6, 7, 10, 11, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 2 803 654 B1 to Schweitzer et al. (Schweitzer).
As to claims 1, 6, 10, 19 and 20, Schweitzer teaches a method of making a reaction product, (methanol), using carbon dioxide produced at a bioprocessing facility (1), the method comprising fermenting (2) a fermentable composition (6) (sugars derived from corn starch) at the bioprocessing facility (1), to generate a target biochemical (4) (ethanol) and carbon dioxide (8), reacting (3) a reactant (10) (hydrogen) and the carbon dioxide (8) from the fermenting to form a reaction product (5) (methane/methanol) via an exothermic reaction, and using the thermal energy from the exothermic reaction in the bioprocessing facility (Paragraphs 0002, 0020 and 0061-0063; Figure 3).
As to claim 3, Schweitzer teaches the method of claim 1. Schweitzer further teaches that the thermal energy is used in, for example, an evaporator system (Paragraph 0061).
As to claims 4 and 7, Schweitzer teaches the method of claim 1. Schweitzer further teaches that the hydrogen (10) is produced by a chemical production system (18) (a water electrolysis cell) that is co-located with the bioprocessing facility (1) (Paragraph 0031; Figure 3).
As to claim 11, Schweitzer teaches the method of claim 7. Schweitzer further teaches that the electrolysis of water (18) produces the hydrogen (10) and oxygen (13) and that the system further comprises a combustion process (12) that generates thermal energy for the bioprocessing facility via the combustion of a carbon material (16) and the oxygen (13) from the electrolysis (18), thus producing a flue gas comprising carbon dioxide (Paragraphs 0052 and 0062; Figure 3).
As to claim 17, Schweitzer teaches the method of claim 1. Schweitzer further teaches that the methane can be used as a reactant to form a derivative thereof (Paragraph 0045).
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 2, 5, 8, 9, 12, 13, 14, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schweitzer as applied to claims 1, 4, 7 and 11 above, and further in view of CA 2 587 434 to Moller et al. (Moller).
As to claim 2, Schweitzer teaches the method of claim 1. Schweitzer teaches that the thermal energy is utilized to generate steam for thermal transfer to the process (Paragraph 0046) but fails to contemplate using the thermal energy to generate electricity for the process. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen to form methanol wherein steam is generated from a combustion reaction. Moller teaches that this steam should be sent to a turbine to generate electrical energy for use in the process (Page 10, Line 20 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of Schweitzer to utilize as least some of the generated steam from the thermal energy to produce electric power to provide electrical energy for use in the process, as taught by Moller.
As to claim 5, Schweitzer teaches the method of claim 4. Schweitzer teaches that the thermal energy is utilized to generate steam for thermal transfer to the process (Paragraph 0046) and teaches that the electrolysis cell requires an electric power supply (Paragraph 0032), but fails to contemplate using the thermal energy to generate electricity for the process. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen produced via electrolysis to form methanol wherein steam is generated from a combustion reaction. Moller teaches that this steam should be sent to a turbine to generate electrical energy for use in the process including the electrolysis cell (Page 10, Line 20 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of Schweitzer to utilize as least some of the generated steam from the thermal energy to produce electric power to provide electrical energy for use in the process including in the electrolysis cell, as taught by Moller.
As to claims 8 and 9, Schweitzer teaches the method of claim 7. Schweitzer teaches that the electrolysis cell requires an electric power supply (Paragraph 0032), but is silent as to the specific supply. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen produced via electrolysis. Moller teaches that the electrolysis cell should be powered via renewable energy such as wind, solar and hydroelectric power (Page 12 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to power the electrolysis cell via renewable energy such as wind, solar and hydroelectric power with the expectation of effectively providing the power to the cell in a renewable fashion as taught by Moller.
As to claim 12, Schweitzer teaches the method of claim 11. However, Schweitzer is silent as to the specific formation of the carbon source for combustion with the oxygen from the water electrolysis. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen produced via electrolysis to form methanol wherein steam is generated from a combustion reaction. Moller teaches that an effective carbon source for the combustion reaction is biomass (Page 10, Line 20 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the fuel for the combustion reaction in the form of biomass with the reasonable expectation of effectively combusting as taught by Moller.
As to claim 13, Schweitzer teaches the method of claim 11. However, Schweitzer fails to further teach that a carbon dioxide byproduct of the combustion is utilized in the reaction of hydrogen and carbon dioxide to methane/methanol. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen produced via electrolysis to form methanol wherein steam is generated from a combustion reaction. Moller teaches in addition to sending carbon dioxide byproduct from the ethanol production process, carbon dioxide byproduct from the combustion should also be sent to the methanol production process (Page 10, Line 20 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to send the carbon dioxide from the flue gas of combustion to the methane/methanol production process in order to provide another source of reactant as taught by Moller.
As to claim 14, Schweitzer teaches the method of claim 1. Schweizer further teaches that the hydrogen (10) is produced by a chemical production system, a water electrolysis cell (18) that is co-located with the bioprocessing facility (1) (Paragraph 0031; Figure 3). Schweitzer further teaches that the electrolysis of water (18) produces the hydrogen (10) and oxygen (13) and that the system further comprises a combustion process (12) that generates thermal energy for the bioprocessing facility via the combustion of a hydrocarbon (16) and the oxygen (13) from the electrolysis (18), thus producing a flue gas comprising carbon dioxide (Paragraphs 0052 and 0062; Figure 3).
However, Schweitzer fails to further teach that a carbon dioxide byproduct of the combustion is utilized in the reaction of hydrogen and carbon dioxide to methane/methanol. However, Moller also discusses an integrated process for producing ethanol from biomass with byproduct carbon dioxide that is reacted with hydrogen produced via electrolysis to form methanol wherein steam is generated from a combustion reaction. Moller teaches in addition to sending carbon dioxide byproduct from the ethanol production process, carbon dioxide byproduct from the combustion should also be sent to the methanol production process (Page 10, Line 20 to Page 14; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to send the carbon dioxide from the flue gas of combustion to the methane/methanol production process in order to provide another source of reactant as taught by Moller.
As to claim 15, the combination of Schweitzer and Moller teaches the method of claim 14. Schweitzer further teaches that the thermal energy is used in, for example, an evaporator system (Paragraph 0061).
As to claim 16, the combination of Schweitzer and Moller teaches the method of claim 14. Schweitzer further teaches that the electrolysis cell is, for example, a PEM electrolysis cell with a water feed, thus a cell that would produce, at an anode side, simply water and oxygen, thus on a dry basis, substantially pure oxygen (Paragraph 0032).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schweitzer as applied to claim 17 above, and further in view of US 2009/0239279 to Hall et al. (Hall).
As to claim 18, Schweitzer teaches the method of claim 17. Schweitzer teaches that methane is a starting point for many other organic compounds; however, fails to specifically contemplate a sustainable aviation fuel. However, Hall also discusses the production of methane and teaches that a known product from the produced methane comprises aviation fuels (Paragraph 0044). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the methane of Schweitzer to produce an aviation fuel, thus a sustainable aviation fuel in the sustainable methane production method of Schweitzer, as a valuable usage of methane as taught by Hall.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794