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/Restriction
Applicant’s election, with traverse, of Group I (claims 1-11) in the reply filed on November 3, 2025, to the restriction requirement dated September 4, 2025, is hereby acknowledged.
The traversal is on the grounds that both sets of claims are drawn to methods. First, the examiner regrets the error regarding the specific classification of the elected Group I claims (1-11), which should be CPC class C01B 3/047 that is drawn to methods for producing hydrogen including cracking ammonia. Upon reconsideration, the second group of claims (12-16) should probably have instead been placed in CPC class B01D 53/047, which is drawn to pressure swing adsorption (PSA) units used in apparatus/systems involving separation of gases.
As to Applicant’s arguments traversing the restriction in that both sets of claims are drawn to “methods,” these arguments are not found persuasive. The claims of Group I are drawn to a method of producing hydrogen using a steam method reformer (SMR) via ammonia cracking. That is, they recite a chemical process that involves separation/reaction of gaseous compounds to provide a targeted chemical product. The Group II claims are drawn to “retrofitting” a SMR unit used for ammonia cracking. That is, the Group II claims are drawn to adjusting/enhancing a SMR (apparatus/system). Unlike the elected claims in Group I, the Group II claims are not drawn to a chemical process that provides a resultant compound/moiety, but instead are drawn to claims drawn to optimizing an apparatus/system.
For example, a method/recipe regarding preparing a blueberry muffin that includes using an oven for baking, would be examined by an examiner in the Food arts (chemical product area). However, a method of fixing/enhancing an oven (apparatus) used for baking foods would be examined by one in the mechanical arts area. Furthermore, in the instant case, instead of TC1700 where the elected claims are being examined, the Group II claims, however, would probably be examined in a different Tech Center (TC 3600).
Accordingly, claims 1-11 have been examined in the instant Office action whereas claims 12-16 have been withdrawn from consideration as drawn to nonelected invention but remain pending with the present application.
Claim Objections
Claim 9 is objected to because of the following informalities: there is no period at the end of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 8 and 10 are rejected under 35 U.S.C. 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The instant claims are rejected because they recite “preferably” ranges wherein a narrower range follows a recited broad range. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) can be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claims 8 and 10 recite broad recitations for the temperature and pressure ranges, respectively, followed by reciting a “preferably” narrower range statement of the same range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is merely exemplary of the remainder of the claim, and therefore not required, or whether it is a required feature of the claims.
Correction of the range limitations in the rejected claims in a subsequent reply to this action is respectfully requested.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-11 are provisionally rejected on the ground of non-statutory double patenting (‘ODP’) as unpatentable over claims 1-15 of U.S. Serial No. 18/133,576 A1 (‘576 app), which was published October 17, 2024.
Although present independent claim 1 is not identical to claim 1 of the ‘576 app in that the method recited therein in the latter claim further recites withdrawing ammonia from a vessel and preheating the ammonia to form a warm ammonia stream.
However, the two sets of claims are not patentably distinct from each other because they are both drawn to a method for producing hydrogen in a SMR via ammonia cracking, the SMR comprising a furnace and a PSA unit, wherein the furnace has a plurality of reactor tubes and burners, wherein the method includes: providing a stream consisting essentially of ammonia; introducing the gaseous stream into the SMR/furnace under conditions effective for catalytically cracking the ammonia; forming a crude stream comprising hydrogen, nitrogen, and unreacted ammonia; and introducing the crude stream into the PSA unit to produce a hydrogen product stream and a PSA off-gas. Present claims 2, 3 and 8 recite withdrawing ammonia from a storage vessel and preheating the ammonia, respectively.
Thus, the instant claims are provisionally unpatentable under ODP over claims of the ‘576 app.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 11 are rejected under 35 U.S.C. §102(a)(1) as anticipated by WO 2021/257944 A1 to Shaw et al, published December 23, 2021. For purposes of the instant rejection, the examiner will be relying on the United States corresponding application of this WO document, namely, US 2023/0242395 A1 to Shaw et al., published August 3, 2023 (hereinafter ‘Shaw’).
Shaw is drawn to a process for the recovery of “green hydrogen” from an ammonia cracking process in which the cracked gas is purified in a PSA device and is enhanced by using a membrane separator on the PSA tail/off-gas, wherein the process uses electricity from a renewable source (abstract; [0001]; [0082]; to [0084]; Figures 4-6; Examples 1 and 2 of Shaw, present claims 1 and 7). Particularly, Shaw discloses a method for producing hydrogen from ammonia, wherein the method comprises: pressurizing liquid ammonia; heating/vaporizing liquid ammonia by heat exchange with one or more hot fluids to produce heated ammonia; combusting a fuel in a furnace to heat catalyst-containing reactor tubes and to form a flue gas; supplying the heated ammonia to the catalyst-containing reactor tubes to cause cracking of the ammonia; wherein the crude cracked gas contains hydrogen gas and nitrogen gas; purifying the cracked gas in a PSA device to produce a hydrogen product gas and a PSA tail gas; and separating the PSA tail gas (off-gas), or a gas derived therefrom, wherein the fuel comprises one or more of ammonia, the PSA tail gas, hydrogen and methane; and wherein the one or more hot fluids contain flue gas and/or the cracked gas ([0014] to [0022]; [0028]; [0029]; [0082] to [0089]; Figures 4-6 and claims 1-9 of Shaw, present claim 1). The furnace may/may not be separate from the catalyst-filled reactor tubes although, preferably the furnace and the catalyst-filled reactor tubes are integrated within the same unit, wherein, in preferred embodiments, a steam methane reforming (SMR) type reactor is used in which the furnace comprises a radiant section through which pass the catalyst-containing reactor tubes ([0052] of Shaw, present claims 1 and 2).
Shaw further discloses that the liquid ammonia is typically heated to produce heated ammonia at a temperature greater than about 250°C, for example in a range from about 350°C to about 800°C, and can be vaporized ([0024] (present claims 1, 4-6 and 8), whereas the pressure for pumping the ammonia is greater than 1.1 bar (at least 10-15), wherein in some embodiments, the liquid ammonia is pressurized to a pressure in a range from about 30 bar to about 40 bar ([0023] of Shaw, present claims 3, and 6). The cracking reaction takes place in catalyst-filled reactor tubes that is heated by a furnace wherein a large number of conventional catalysts known in the art are useful for the ammonia cracking reaction, wherein the temperature and pressure are ultimately determined by the identity of the catalyst, and wherein the process is typically operated with no more than about 4% slip having a close approach to equilibrium with any appreciable pressure and at temperatures not above about 700°C ([0025] to [0027]; present claims 8 and 10).
Shaw also discloses that the ammonia can be removed/separated from the PSA tail gas, or prior to purifying the cracked gas, wherein the removed ammonia may be purified and recycled by using an adsorption/washing technique, wherein the ammonia can be recovered by a distillation column system (“vessel”) that is “downstream” of the SMR tubes ([0032] to [0037]; [0096]; present claims 2-5 and 11) The process can result in hydrogen recovery of 98.5 percent by weight of the crude/liquid ammonia (Examples 1 and 2, paragraphs [0119] to [0122] of Shaw (present claim 10).
Thus, claims 1-8 and 11 are anticipated by Shaw.
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 9 and 10 are rejected under 35 U.S.C. 103 as unpatentable over Shaw.
Shaw was discussed above. Shaw does not expressly disclose an example wherein the crude stream contains less than 5.0 mole percent of unreacted ammonia (claim 9) or wherein the pressure for catalytically cracking ammonia is between 15 and 80 bar (claim10).
However, as discussed above, Shaw teaches that the cracking temperature and pressure are ultimately determined by the identity of the catalyst, wherein the cracking process is typically operated at any appreciable pressure at temperatures not above about 700°C ([0025]). The examples in Shaw, also discussed above, depict a hydrogen recovery percentage of 98.95% by weight, which implies an amount of unreacted ammonia of about 1.05% by weight that infers that the amount of unreacted ammonia would be less than 5 percent by mole.
Therefore, it would have been within the purview of one skilled in the art at the time of filing to optimize the cracking pressure/temperatures in Shaw’s hydrogen process to obtain an efficient resultant process that provide a desired hydrogen recovery rate (such as about 99% as taught in Shaw). An optimal pressure of 15 bar or more, for example can thus be arrived by routine optimization of this variable. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (citations omitted)); Pfizer, Inc. V. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) ("discovery of an optimum value of a result effective variable is ordinarily within the skill of the art" and thus usually obvious (citation omitted)). See MPEP $2144.05 Il A.
Thus, the instant claims are unpatentable over Shaw.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J FIGUEROA whose telephone number is (571)272-8916. The examiner can normally be reached on 8:30 am -6:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J FIGUEROA/Primary Examiner, Art Unit 1763
February 7, 2025