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 Amendment
The Amendment filed 20 January 2026 has been entered. Claims 1-2, 7, and 11-12 are amended; claims 3-4 and 10 are cancelled. Accordingly, claims 1-2, 5-9, and 11-15 remain pending in the application.
Examiner’s Note
Claim 1, line 27, recites “the stage units S1 to Sn”, and Claim 1, line 24 of the Claims filed 21 April 2023 recites “the stage S1 to Sn”. There is no indication of this claim amendment in the present claims filed 20 January 2026.
Claim 8, line 2, recites “one or more stage units selected”, and Claim 8, line 2 of the Claims filed 21 April 2023 recites “one or more stage selected”. There is no indication of this claim amendment in the present claims filed 20 January 2026.
Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5, line 5, “factoring tools .” should read “factoring tools.” There appears to be an extra space between “tools” and the period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, lines 11-14, recite “the preconditioning unit comprising the temperature and/or pressure of the off-gas stream upstream of one or more of the stage units S1 to Sn that is adjustable”. It is unclear what is adjustable. This limitation is interpreted as requiring the temperature and/or pressure of the off-gas stream upstream of one or more of the stage units S1 to Sn is adjustable.
Claim 1, lines 35-36, recite “the off-gas inlet via which said off-gas stream is introduced into the preconditioning device is selected in function of said determined components”. It is unclear what is meant by “selected in function of said determined components”. It is interpreted the off-gas stream is introduced in the off-gas inlet which corresponds to the stage for which said determined components are removed and/or chemically converted. For example, if the off-gas stream contains hydrocarbons, and stage S2 is where hydrocarbons are removed, the off-gas stream is introduced into the off-gas inlet corresponding to stage S2 where hydrocarbons are removed.
Regarding claim 5, line 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, line 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11, lines 2-5, recite “the temperature of the off-gas stream upstream of one or more of the stage units S1 to Sn selected from electrical gas heating units, gas/gas heat exchange units, gas/liquid heat exchange units and adiabatic compression heaters that is adjustable”. It is unclear what is adjustable. This limitation is interpreted as requiring the preconditioning unit comprises electrical gas heating units, gas/gas heat exchange units, gas/liquid heat exchange units and adiabatic compression heaters upstream of one or more of the stage units S1 to Sn, and the temperature of the off-gas stream upstream of one or more of the stage units S1 to Sn is adjustable.
Claims 2, 7-9, and 12-15 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
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.
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 1-2, 8-9, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/02017479) as evidenced by NOAA (“The Atmosphere”).
Regarding Claim 1, Hale discloses a process for recovery of helium from a purge gas stream 201 (the purge gas stream of Hale contains helium, and meets the limitation of one helium-containing off gas stream; [0017], [0059], [0119], Fig. 2). Hale further discloses incoming gas stream 201 passes through an acid gas removal step 202 (aka S1) where CO2 is removed by scrubbing the gas with amine solution, acid gas stream 203 is sent for disposal and sweetened gas stream 204 is sent to a dehydration step 205 (aka S2) to remove water vapor 206 and sweet, dry gas 207 goes to a hydrocarbon removal step 208 (aka S3) to remove hydrocarbons 209 (acid removal step, dehydration step, and hydrocarbon removal step meet the limitation of preconditioning/a preconditioning device with stages S1 to Sn, where n=3; [0119]-[0121], Fig. 2); therefore, Hale meets the limitation of preconditioning the off-gas using a multi-stage preconditioning device so as to obtain preconditioned off-gas, wherein the preconditioning device comprising 3 stages S1 to S3, each stage being adapted to precondition off-gas by at least partially removing at least one component other than helium from the off-gas, wherein the stage S1 to S3 are in linear fluid succession so that off-gas which has been preconditioned in stage Sx, with 1: x < 3, is sent to stage Sx+1 for further preconditioning, whereas off-gas which has been preconditioned in stage S3 is sent as the preconditioned off-gas to the cryogenic separation device.
The limitation of chemically converting at least one component other than helium in the off-gas was not addressed because this limitation is considered optional.
Hale is silent to the temperature and/or pressure of the off-gas upstream of one or more of the stages S1 to Sn being adjustable.
Hale, however, discloses that an actual process train will usually include many additional components such as heaters, chillers, gas compressors, etc. [0117], which are capable of adjusting the temperature and/or pressure of the off-gas.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to provide adjustability to the temperature and/or pressure of the off-gas upstream of one or more of the stages S1 to Sn based on the desired conditions for the preconditioning step, absent a showing of unexpected results, because many additional components such as heaters, chillers, gas compressors, etc. are included in the actual process train of Hale [0117].
Hale further discloses sweet, dry gas 207 goes to a hydrocarbon removal step 208 (aka S3) to remove hydrocarbons 209 and stream 210 (stream 210 meets the limitation of preconditioned off-gas) proceeds to a methane removal step 211 for cryogenic separation, where methane is removed 212 ([0121], [0122] , Fig. 2), and a side stream 214 is withdrawn from overhead stream 213 (stream 213 and 214 meet the limitation of a helium-enriched gas) and passed to membrane separation 215 (membrane separation meets the limitation of a purification device; [0125]), which produces a helium-enriched permeate stream 217 (helium-enriched permeate stream 217 meets the limitation of a purified helium gas with a higher helium content than the helium enriched gas; [0127]; Fig. 2). Therefore, Hale meets the limitation wherein the off-gas streams are treated, in order of succession, by preconditioning, cryogenic separation and purification in an installation.
Hale is silent to the preconditioning device having multiple off-gas inlets, each off-gas inlet corresponding to one of the stages S1 to Sn so that the off-gas of an off-gas stream introduced into the preconditioning device via one of the off-gas inlets is thereafter preconditioned in the corresponding stage.
However, the incoming gas stream of Hale passes through all of the stages of the preconditioning device, such that the incoming gas stream of Hale is preconditioned in its corresponding stage, and therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to flow the off-gas to each stage, because selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.04 IV C). It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide multiple off-gas inlets to accommodate the off-gas flow to each stage.
Hale is further silent to, for each off-gas stream from which helium is to be recovered, components other than helium which are present in the off-gas and which are to be chemically converted and/or removed therefrom in the preconditioning device are determined and the off-gas inlet via which said off-gas stream is introduced into the preconditioning device is selected in function of said determined components.
However, the incoming gas stream of Hale passes through all of the stages of the preconditioning device, such that the incoming gas stream of Hale is preconditioned in its corresponding stage for which said determined components are removed and/or chemically converted, and therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale wherein for each off-gas stream from which helium is to be recovered, components other than helium which are present in the off-gas and which are to be chemically converted and/or removed therefrom in the preconditioning device are determined and the off-gas inlet via which said off-gas stream is introduced into the preconditioning device is selected in function of said determined components, because selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.04 IV C).
Regarding Claim 2, Hale discloses stream 210 (stream 210 meets the limitation of preconditioned off-gas) comprises methane, nitrogen, and helium [0121].
NOAA teaches methane, nitrogen, and helium are all considered air gases (bottom of pg. 2).
Therefore, Hale meets the limitation wherein the preconditioned off- gas consists of between 99.0000 %vol and 100.0000 %vol of helium and air gases.
Regarding Claim 8, Hale discloses incoming gas stream 201 passes through an acid gas removal step 202 where carbon dioxide is removed by scrubbing the gas with an amine solution (gas scrubbing meets the limitation of off-gas washing; [0120], Fig. 2). Hale further discloses a hydrocarbon removal step 208 to remove hydrocarbons 209 ([0121], Fig. 2), wherein heat exchangers and a turboexpander to cool the gas, vessels to separate condensed hydrocarbons from the gas (separating condensed hydrocarbons meets the limitation of a condensation device; [0079]).
Regarding Claim 9, Hale discloses a hydrocarbon removal step 208 to remove hydrocarbons 209 ([0121], Fig. 2), wherein heat exchangers and a turboexpander to cool the gas, vessels to separate (vessels to separate meets the limitation of a separator device) condensed hydrocarbons from the gas (separating condensed hydrocarbons meets the limitation of a condensation stage; [0079]).
Regarding Claim 12, Hale is silent to the compressor being upstream of one or more of the stages S1 to Sn.
Hale, however, discloses that an actual process train will usually include many additional components such as gas compressors, etc. [0117].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to provide adjustability to the pressure of the off-gas upstream of one or more of the stages S1 to Sn using a compressor based on the desired conditions for the preconditioning step, absent a showing of unexpected results, because many additional components such as gas compressors are included in the actual process train of Hale [0117].
Regarding Claim 14, Hale discloses cryogenic distillation to separate liquid methane (aka natural gas) from crude helium ([0002], [0003], [0079], [0122]).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/02017479) in view of Baksh (US 2004/0237789).
Regarding Claim 5, Hale teaches the elements as described above with regards to claim 1.
Hale discloses the feed stream can be described as an effluent stream, secondary stream, side stream or ancillary stream [0068], and include, but are not limited to, reject streams sent to vent, flare or reinjection, side streams used as fuel gas to run plant equipment, such as engines, turbines, boilers, reboilers or fuel cells, and miscellaneous streams taken off to provide purge gas for regeneration of unit operations, insulation of cold boxes or the like, blanketing of storage tanks and so on [0070], and the gas streams contain helium [0071].
Hale is silent to the off-gas stream being generated during semiconductor manufacturing.
Baksh discloses a helium recovery process to recover and purify helium for use in semiconductor applications [0016]. Baksh further discloses helium is used in the production of semiconductor devices such as semiconductor integrated circuits, which is used large quantities of helium [0002]-[0003]. Baksh further discloses the cost of using helium would be prohibitive without some form of recycle system for the used gas [0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Baksh wherein the one or more off-gas streams include or consist of off-gas which has been generated during semiconductor manufacturing in a semiconductor manufacturing installation, because helium is used in large quantities in semiconductor manufacturing, such that the cost of using helium would be prohibitive without some form of recycle system for the used gas, as recognized by Baksh [0003], and the off-gas of Hale is not limited [0070].
The limitation “the one or more off-gas streams preferably including off-gases generated by one or more than one semiconductor factoring tools” was not addressed because this limitation is considered optional.
Regarding Claim 6, Hale discloses the permeate stream is sent for further helium separation or purification in the gas plant or at another facility or sold as crude helium (Abstract), such that the helium product of Hale is not particularly limited as to how the helium is used.
Hale is silent to the purified helium gas being recycled to and used in a semiconductor manufacturing installation.
Baksh discloses a helium recovery process to recover/recycle and purify helium for use in semiconductor applications [0001], [0016]. Baksh further discloses helium is used in the production of semiconductor devices such as semiconductor integrated circuits, which is used large quantities of helium [0002]-[0003]. Baksh further discloses the cost of using helium would be prohibitive without some form of recycle system for the used gas [0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Baksh wherein at least part of the purified helium gas is recycled to and used in the semiconductor manufacturing installation, because helium is used in large quantities in semiconductor manufacturing, such that the cost of using helium would be prohibitive without some form of recycle system for the used gas, as recognized by Baksh [0003], and the helium product of Hale is not particularly limited as to how the helium is used.
The limitation “at least part of the purified helium being preferably recycled to and used in the one or more semiconductor factoring tools” was not addressed because this limitation is considered optional.
Regarding Claim 7, Hale discloses the feed stream can be described as an effluent stream, secondary stream, side stream or ancillary stream [0068], and include, but are not limited to, reject streams sent to vent, flare or reinjection, side streams used as fuel gas to run plant equipment, such as engines, turbines, boilers, reboilers or fuel cells, and miscellaneous streams taken off to provide purge gas for regeneration of unit operations, insulation of cold boxes or the like, blanketing of storage tanks and so on [0070], and the gas streams contain helium [0071].
Hale is silent to a process for manufacturing semiconductors.
Baksh discloses a highly efficient and low-cost helium recovery system, which may be used for helium recovery from plasma CVD, sputtering system, reactive ion etching system, etc. [0017]. Baksh further discloses during the manufacture of the semiconductor devices, systems for generating plasma in a noble gas (i.e. helium) atmosphere under reduced pressure are utilized for various treatments of the semiconductor devices with the plasma, for example, a sputtering system, a plasma CVD system and reactive ion etching system [0002]. Baksh further discloses the cost of using helium would be prohibitive without some form of recycle system for the used gas [0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Baksh to produce semiconductors in a semiconductor production installation, during which helium-containing off-gas is generated; collecting one or more streams of helium-containing off-gas from the semiconductor production installation; and recovering purified helium from the collected off-gas streams by means of the process of claim 1, because helium is used in large quantities in semiconductor manufacturing, such that the cost of using helium would be prohibitive without some form of recycle system for the used gas, as recognized by Baksh [0003], and the off-gas of Hale is not limited [0070].
Claims 11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (US 2005/02017479) in view of Shah (US 2016/0231051).
Regarding Claim 11, Hale teaches the elements as described above with regards to claim 1.
Hale discloses that an actual process train will usually include many additional components such as heaters, chillers, etc. [0117].
Hale is silent to the preconditioning device comprises means for adjusting the temperature of the off-gas upstream of one or more of the stages S1 to Sn selected from electrical gas heating devices, gas/gas heat exchange devices, gas/liquid heat exchange devices and adiabatic compression heaters.
Shah discloses a process for recovery of helium from an off-gas feed stream [0035]. Shah further discloses hot permeate hydrogen provides heat to a membrane feed in a heat exchanger [0038]; hot permeate hydrogen is in gaseous form, and membrane feed is in gaseous form, such that Shah meets the limitation of gas/gas heat exchange devices.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Shah wherein the preconditioning device comprises gas/gas heat exchange devices and the temperature of the off-gas upstream of one or more of the stage units S1 to Sn is adjustable, because many additional components such as heaters and chillers are included in the actual process train of Hale [0117], and utilizing gas/gas heat exchange devices as heaters is a process parameter well-known in the art of recovering helium from off-gas streams, as recognized by Shah.
Regarding Claim 13, Hale discloses other gases such as hydrogen may be present in the gas stream [0072].
Hale is silent to an off-gas heating device and a catalytic oxidation stage downstream of the off-gas heating device.
Shah illustrates a heat exchanger 54 (heat exchanger meets the limitation of an off-gas heating device) to heat membrane feed 7 [0038] and an oxidation unit 58, which could contain a catalyst to promote oxidation reaction (an oxidation unit containing a catalyst meets the limitation of a catalytic oxidation stage) downstream of the off-gas heating device ([0040], Fig. 1). Shah further discloses the oxidation unit allows for removal of substantially all the hydrogen [0015].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Shah wherein the gas-preconditioning unit comprises an off-gas heating device and a catalytic oxidation stage downstream of the off-gas heating device, as the gas stream of Hale may contain hydrogen, and an oxidation unit removes substantially all the hydrogen, as recognized by Hale [0015], to obtain a high purity helium product.
Regarding Claim 15, Hale discloses membrane separation 215 (membrane separation meets the limitation of a purification device; [0125]), which produces a helium-enriched permeate stream 217 (helium-enriched permeate stream 217 meets the limitation of a purified helium gas with a higher helium content than the helium enriched gas; [0127]; Fig. 2). Hale further discloses the helium-enriched permeate stream may be sent for further helium separation or purification (Abstract). Hale further discusses purification of helium using pressure swing adsorption [0002]-[0003].
Hale is silent to the helium-enriched gas fraction being purified into the purified helium gas using adsorption processes.
Shah discloses purification is accomplished by adsorption, or a combination of membrane separation and adsorption in order to produce a purified helium product with more than 98% helium [0045].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to incorporate the teachings of Shah wherein the helium-enriched gas fraction is purified into the purified helium gas using adsorption processes in order to produce a purified helium product, as recognized by Shah [0045], as Hale discloses the helium-enriched permeate stream may be sent for further helium purification (Abstract).
Response to Arguments
Applicant's arguments filed 20 January 2026 have been fully considered but they are not persuasive.
Applicant argues Hale fails to disclose or teach adjustable temperature and/or pressure of the off- gas upstream of one or more of the stage units S1 to Sn, and since Hale adjusts the temperature and pressure before being passed to the membrane separation step, instead of adjusting the temperature and pressure in each units of 202, 205, 208 and 211 in FIG. 2, one of ordinary skill in the art would not have been motivated to modify Hale to flow the off-gas to each stage with the temperature and/or pressure adjustable (“Remarks”, pg. 8, par. 3-pg. 9, par. 2).
However, adjusting temperature and pressure before is not required by Hale [0031], and Hale discloses that an actual process train will usually include many additional components such as heaters, chillers, gas compressors, etc. [0117], which are capable of adjusting the temperature and/or pressure of the off-gas. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hale to provide adjustability to the temperature and/or pressure of the off-gas upstream of one or more of the stages S1 to Sn based on the desired conditions for the preconditioning step, absent a showing of unexpected results, because many additional components such as heaters, chillers, gas compressors, etc. are included in the actual process train of Hale [0117].
Applicant’s arguments, see "Remarks", pg. 10, par. 4, filed 20 January 2026, with respect to the rejection of claim 2 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(s) of rejection is made in view of Hale (US 2005/0217479).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SLONE ELZABETH SIMKINS whose telephone number is (571)272-3214. The examiner can normally be reached Monday - Friday 8:30AM-4:30PM.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
Prosecution Insights