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 .
Restriction/Election of Species
Applicant’s election, without traverse, of Group I (claims 1-11) in its reply filed Oct. 14, 2025, to the restriction requirement dated Oct. 2, 2025, is hereby acknowledged.
Accordingly, claims 1-11 have been examined in the instant action whereas claims 12-21 have been withdrawn from consideration but remain pending in the instant application.
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 non-statutory 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 non-statutory 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Independent claim 1, and claims 2-11 that depend therefrom, are rejected on the ground of non-statutory double patenting as unpatentable over claims 1, 7-12 and 14-16 of U.S. Patent No. 12/421,109 B2 patent (‘109 patent), which issued on December 23, 2025.
The claims at issue are not identical in that the process of present independent claim 1 recites the heated ammonia gas passed through a first catalyst in an electrically heated reactor whereas the process of the cited claims of the ‘109 patent recites the heated ammonia gas fed at first temperature to an adiabatic reactor.
However, they are not patentably distinct from each other because both sets of claims are drawn to a process for cracking ammonia comprising providing a heated ammonia gas at super-atmospheric pressure; passing the heated ammonia gas over a catalyst in a heated reactor to cause cracking of ammonia and produce a partially cracked ammonia gas comprising hydrogen gas and nitrogen gas; combusting a fuel with an oxidant gas to heat reactor tubes containing a catalyst in a fired/heated reactor to produce a flue gas; and feeding the partially cracked ammonia gas to the reactor tubes in the fired reactor to cause cracking of further ammonia and produce a cracked gas comprising hydrogen gas, nitrogen gas and residual ammonia gas; wherein offgas, or a cracked offgas derived therefrom, is used as part of the fuel combusted with the oxidant gas (see, particularly claims 14-16 of the 109 patent).
Thus, the present claims are unpatentable due to ODP over the cited claims of the ‘109 patent.
Independent claim 1, and claims 2-11 that depend therefrom, are provisionally rejected on the ground of non-statutory double patenting as unpatentable over claims 1 10 of co-pending application U.S. Ser. No. 18/205,837 (‘837 app), which was published on Dec. 5, 2024). This is a provisional non-statutory double patenting rejection.
The claims at issue are not identical in that independent claim 1 of the ‘837 app recites the initial reactor as a fired reactor whereas present claim 1 recites the initial reactor as an electric reactor.
However, they are not patentably distinct from each other because both sets of claims are drawn to a process for cracking ammonia comprising providing a heated ammonia gas at super-atmospheric pressure; passing/combusting the heated ammonia gas over a catalyst in a reactor tubes to cause cracking of ammonia to produce a partially cracked ammonia gas comprising hydrogen gas and nitrogen gas; passing/combusting the partially cracked ammonia gas over a second catalyst in a fired/heated reactor to further crack the ammonia gas and produce a cracked gas comprising hydrogen gas, nitrogen gas and residual ammonia gas; cooling the cracked gas; and recovering hydrogen and an offgas from the cooled cracked gas, where the offgas can be used as part of the fuel combusted with the oxidant gas.
Thus, the present claims are unpatentable due to ODP over the cited claims of the ‘837 app.
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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. 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 J Figueroa/
Primary Examiner, Art Unit 1763
January 24, 2026