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 .
This application is in response to an election/restriction filed on 02/02/2026.
Claims 1-11, 13-20 are pending. Applicant has cancelled claim 12. Applicant has elected species (b-1) with traverse and species of (a-1 and a-2) have been withdrawn as applicant amended claim 11 and cancelled claim 12. In addition species restriction mailed previously on 10/02/2025 will be withdrawn as previous examiner has not made the restriction between the two methods and only made species restriction. Therefore, new restriction is made between the two method claims and species of election where applicant has elected group II invention, claims 10-11, 13-16 on 06/10/2026 during the telephonic interview. Claims 1-9 and claims 17-20 are withdrawn as non-elected group I and species election.
Election/Restriction
4. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9 and 17-20, drawn to a method of generating hydrogen from an off gas, classified in C01b2203/0233.
II. Claims 10-11, 13-16, drawn to a method of generating hydrogen from an off gas, classified in C01b3/48.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, Invention II requires inputting the offgas to a pre-reformer reactor to produce methane, and inputting methane to a steam methane reformer, wherein the hydrogen is produced from the methane which are not required by invention I whereas invention I requires inputting offgas to a steam methane reformer, wherein the hydrogen is produced via utilization of the SMR which is not required by invention II.
This application also contains claims directed to the following patentably distinct species as follows:
Category A:
Species (a-i): CO2 is captured from the SMR flue gas.
Species (a-ii): CO2 is captured from the PSA purge gas.
The species are independent or distinct because category are drawn to different gases. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, Claims 1-111, 13-17 and 20 are generic.
Restriction for examination purposes as indicated is proper because all the grouping inventions and species listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• the species or groupings have acquired a separate status in the art in view of their different classification, and/or
• the species or groupings have acquired a separate status in the art due to their recognized divergent subject matter, and/or
• the species or groupings require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species and grouping invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
5. A telephone call was made to Mr. Mario A. Gaviria on 06/10/2026 to request an oral election to the above restriction requirement and applicant has elected Group II, Claims 10-11 and 13-16 without traverse. Group I claims 1-9 and 17-20 are withdrawn as non-elected claims.
6. Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
7. Currently abstract is less than 50 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
8. The disclosure is objected to because of the following informalities: Specification currently contains claims (see paragraph 0006) but the claims should be filed separately as per the guidelines listed below for the specification layout and are filed separately.
Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 10-11 and 13-16 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 pre-AIA the applicant regards as the invention.
Claim 10 recites “renewable diesel unit” which is not clear what renewable means as applicant does not define clearly what renewable diesel unit means. Clarification is requested.
Claim 16 recites “substantially” is not clear from applicant specification how much methane from natural gas is present. Clarification is requested.
Regarding dependent claims 11, 13-15, these claims does not remedy the deficiencies of parent claim 10 noted above and are rejected for the same rationale.
Claim Rejections - 35 USC § 103
11. 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.
10. Claims 10-11, 13-16 are rejected under 35 U.S.C. 103 as obvious over Roy et al (US PGPUB No.: 2022/0049166) in view of Foody (GB2592531).
Regarding Claims 10-11, 13, 15, Roy discloses a method for generating hydrogen by steam reforming of an offgas stream (fig.1, 2, abstract) obtained after hydroprocessing a renewable source to obtain a hydrocarbon product (i.e., methane). Roy further discloses hydrocarbon product can be renewable diesel and the hydroprocessing unit (paragraphs 0038, 0058, reads on obtaining offgas from a renewable diesel unit). Roy discloses the hydrotreated stream obtained in the hydroprocessing stage is subjected to a separation step thereby obtaining the offgas stream that is supplied to a steam reformer in hydrogen production unit wherein the hydrogen production unit comprises a catalytic steam methane reformer (STM), a shift reactor and a PSA unit, optionally also pre-reformer (reads on pre-reformer) and a CO2 removal unit and the hydrogen stream separated in the hydrogen production unit which can be recycled to the hydroprocessing unit (reads on claim 11)and wherein offgas stream contains C1 to C4 hydrocarbons (reads on methane, reads on claims 1 and 15), hydrogen, NH3, CO and CO2 (paragraphs 0016-0028, 0037)
Roy does not explicitly disclose inputting methane to steam methane reformer.
However, Foody discloses a method comprising a fuel production process for producing one or more fuels that includes methane reforming (i.e., steam methane reforming), wherein the methane-containing feed ( reads on inputting methane) for the steam methane reformer contains renewable methane (i.e., RNG) and/or renewable methane is allocated to the feed or portion thereof then hydrogen production unit can produce renewable hydrogen (see abstract, paragraphs 0007, 0021-0027, figs. 1, reads on claims 1 and 13).
Given Roy and Foody are both directed to utilizing fuel in the steam reforming unit, therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of applicant invention to modify the method of Roy with Foody to include feeding methane to steam methane reformer (SMR) producing hydrogen which would provide increase the yield of renewable content and/or renewable hydrogen for one or more liquid transportation fuels produced from the fuel production process as taught by Foody (see paragraph 0023).
Regarding Claim 14, Roy discloses reduced greenhouse gas emissions from the SMR which includes reduced nitrogen levels (paragraphs 0080, 0085, 0087, 0103) therefore lower levels of nitrogen oxide emissions would be expected unless otherwise unexpected results are shown.
Regarding claim 16, Roy disclose wherein the method is performed minimizing natural gas consumption (reads on substantially free of using methane from natural gas, see abstract).
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. 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. 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.
/SMITA S PATEL/Primary Examiner, Art Unit 1732 06/26/2026
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