DETAILED ACTION
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 of Group I (claims 1-20), species 3 (Fig. 3) in the reply filed on 10/27/2025 without traverse is acknowledged. Claims 7, 10, 21 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Examiner Comment
The applicant is thanked for aiding providing claim numbers to the claims.
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.
Claim(s) 1-6, 8, 9, 11-20 is/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.
In regard to claim 1, the recitation, “a methane-rich fluid” is indefinite since “rich” is a relative term and the specification does not provide a clear definition of what amount of methane is sufficient to meet the recitation and therefore one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Examples throughout the specification indicating certain values demonstrate that the terms alone do not require any particular percent value and therefore the present recitation fails to define the amount of methane required to meet the term.
The recitation, “a flow rich in carbon dioxide” is indefinite since “rich” is a relative term and the specification does not provide a clear definition of what amount of carbon dioxide is sufficient to meet the recitation and therefore one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Examples throughout the specification indicating certain values demonstrate that the terms alone do not require any particular percent value and therefore the present recitation fails to define the amount of carbon dioxide required to meet the term
The recitation, “the recovery of cold” (line 3) is indefinite for lacking proper antecedent basis for “the recovery”.
The recitation, “providing cold for step a) by evaporation” (line 10) is indefinite for improperly reintroducing the step a) and unclear if this is referencing the step a). Further, the step a) recites cooling and it is unclear why line 10 recites “cold” anew and separately instead of reciting “providing the cooling for the step a) by evaporation”.
The recitation, “exchange of heat” (line 15) is unclear how this relates to the recitation of line 3 “recovery of cold” as it appears to be referencing the same exchange of heat and yet the recitation is made as if they are different.
The recitation, “according to step b)” (line 24) is indefinite for improperly reintroducing the step b).
In regard to claim 3, the recitation, “a pressure lower” is indefinite for improperly reintroducing “a pressure” that was already introduced in claim 2.
In regard to claim 4, the recitation, “the at least a part of the intermediate fluid heated according to step d)” is indefinite since it is unclear if the present part is referring to “the at least one condensed intermediate fluid flow pressurized by the pump” recited in the step e) of claim 1 or if this references some other part. Further the recitation does not make any sense because the step d) is not a heating step but is a pressurizing step. Further the recitation does not properly reference --the step d)--.
The recitation, “at least a part of the intermediate fluid pressurized by the pump” is indefinite for being inconsistent with the disclosed invention and the recitations of claim 2. The recitations of claim 2 recite “at least another part of the intermediate fluid” which is then pressurized in the pump in claim 3. Therefore the present recitation is not consistent with claims 2 and 3 and therefore creates unacceptable ambiguity.
In regard to claim 5, the recitation, “the evaporation pressure” is indefinite for lacking proper antecedent basis. Claim 1 only recites “at least one pressure level” in the step b) and therefore the present recitation is indefinite.
The recitation, “of intermediate fluids, than the highest of the evaporation pressures of the intermediate fluid in the first heat exchanger.” is indefinite for reintroducing anew improperly “intermediate fluids”. There is only one intermediate fluid recited in claim 1 and it is unclear what the present plurality is referencing. The recitation, “the highest” is indefinite for lacking proper antecedent basis.
In regard to claim 6, the recitation, “the compression” is indefinite for lacking proper antecedent basis.
The recitation, “the part of the evaporated intermediate fluid” is indefinite for lacking proper antecedent basis for “the evaporated intermediate fluid” and not consistent with the recitation of “at least a part of the intermediate fluid” recited in line 13 of claim 1.
The recitation, “at a higher pressure” is indefinite for failing to properly refer to --the higher pressure-- recited in claim 5.
The recitation, “of intermediate fluids” is indefinite since there is only one intermediate fluid recited in claim 1 and it is unclear what the present plurality is referencing. Further it is unclear if this is the same or other plurality as was recited in claim 5.
The recitation, “than the highest of the evaporation pressures is carried out” appears to require a comma after “pressures”.
The recitation “by a compressor driven by a turbine which reduces in pressure another part of the evaporated intermediate fluid” is indefinite since it is unclear what “which” refers to.
In regard to claim 8, the recitation, “the evaporation pressures of the intermediate fluid” appears to lack proper antecedent basis in claim 1 for “the evaporation pressures”.
The recitation, “the condensation pressures of the intermediate fluid” appears to lack proper antecedent basis in claim 1 for “the condensation pressures”.
In regard to claim 11, the recitation, “the ratio” is indefinite for lacking proper antecedent basis. The recitation, “the at least one molar flow of intermediate fluid to the molar flow” is indefinite for lacking proper antecedent basis for “the at least one molar flow” and for improperly reintroducing “intermediate fluid. And for lacking proper antecedent basis for “the molar flow”.
In regard to claim 12, the recitation, “the ratio” is indefinite for lacking proper antecedent basis.
The recitation, “the at least one molar flow” is indefinite for lacking proper antecedent basis.
The recitation, “intermediate fluid” is indefinite for improperly reintroducing “intermediate fluid”.
The recitation, “the molar flow” is indefinite for lacking proper antecedent basis.
The recitation, “methane-rich gas” is indefinite as it is not clear if this is the methane-rich fluid of claim 1 or not.
In regard to claim 13, the recitation, “the liquefied CO2 rich gas” is indefinite for lacking proper antecedent basis.
In regard to claim 14, the recitation, “the inlet” lacks proper antecedent basis.
In regard to claim 15, the recitation, “the inlet” lacks proper antecedent basis.
In regard to claim 16, the recitation, “the methane-rich gas” is indefinite since it is not clear if this is the methane rich fluid or some or stream.
The recitation, “the CO2-rich flow” is indefinite for lacking proper antecedent basis and it is not clear if this is attempting to reference the
--flow rich in carbon dioxide--.
The recitation “this unit” is indefinite and it is unclear what is being referenced.
In regard to claim 17, the recitation, “the liquefaction” and “the separation” both fail to have proper antecedent basis.
The recitation, “the at least a part” is indefinite for improperly reintroducing “a part”.
In regard to claim 18, the recitation, “the CO2-rich flow” is indefinite for lacking proper antecedent basis and it is not clear if this is attempting to reference the --flow rich in carbon dioxide--.
In regard to claim 19, the recitation, “the bottom” is indefinite for lacking proper antecedent basis.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitation “steam methane reforming unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no delineation provided by the specification. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Presently, the recitation is interpreted as any structure that can perform steam methane reforming (pg. pub. para. 48).
Claim limitation “an autothermal reforming unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no delineation provided by the specification. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Presently, the recitation is interpreted as any structure that can perform autothermal reforming (pg. pub. para. 48).
Claim limitation “partial oxidation unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no delineation provided by the specification. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Presently, the recitation is interpreted as any structure that can perform partial oxidation (pg. pub. para. 48).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
The prior art made of record on the 892 form 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 F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. 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): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. 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, see http://pair-direct.uspto.gov. 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.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
JFPIII
November 7, 2025
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763
Prosecution Insights