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 .
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim(s) 1, 2, 4-10, 14, 15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pham US 2005/037245, in view of Pham et al. US20120258037
Regarding claims 1, 4, 5, 7-9, 14, 17, 18 and 20, (paragraphs [0040], [0046], [0056]; claims 1, 5, 23; figure 4) Pham US’7245 discloses a method for producing hydrogen. A hydrocarbon, such as natural gas is steam reformed in reformer 115 (first reactor) to produce syngas. Part of the syngas is directed to first bed 101b to reduce iron oxide to elemental iron ([0056]), while the remaining part 116b is delivered to a SOFC 102. Steam is provided to a second bed 101a containing elemental iron (elemental iron is Fe0) to generate iron oxide and a hydrogen stream 109 in an oxidation reaction. Section 101a and 101 b make the reactor 101 (See fig. 1. Here considered as the second reactor). Hydrogen stream 109 from iron oxidation bed 101a is purified by water-shift reactors, where the carbon monoxide is removed according to reaction CO + H2O = CO2 + H2. Hydrogen stream 109 from oxidation bed 101 a is purified in hydrogen purification step 110. Hydrogen purification step 110 includes a humidity removal step in which the hydrogen gas is cooled to a low temperatures to condense the steam in the hydrogen stream into water for removal. The purified hydrogen may be stored in hydrogen storage device 111. The first and second bed are interchanged.
The difference between the invention of Pham US’7245 and that of claim 1 is that claim 1 requires the first reaction of producing hydrogen and carbon monoxide to be a reaction between methane and oxygen.
Pham US’8037 teaches an apparatus and method for hydrogen producing using a catalytic membrane reactor (CMR) assembly that includes an autothermal reforming (AIR) catalyst, a water-gas-shift (WGS) catalyst, and a membrane that is permeable to hydrogen (Abstract). The reference recognizes steam reforming, partial oxidation and autothermal reforming as means for generation hydrogen (Para [0005]). Partial oxidation and autothermal reforming combine methane with oxygen. The reference teaches that based on the scale of the process or the feed composition, steam reforming, partial oxidation or autothermal reforming can be used or combined to obtain synthesis gas for downstream processing (Para [0099]).
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to use partial oxidation or autothermal reforming, in the process of Pham US’7245. One would be motivated to do so to provide the required syngas mixture of hydrogen can carbon monoxide. Additionally these processes are ideal for small scale or mobile applications (See Pham US’8037 Para [0009]).
Regarding claims 2 and 10, the Pham US’7245 reference teaches both iron and iron oxides are present after the reforming section (Para [0048]). Thus both elemental iron and oxidized iron are alternatively performed.
Regarding claims 6 and 19, the Pham US’7245reference teaches FeOx represents Fe3O4 (Para 0034]).
Regarding claim 15, The Pham US’7245 reference does not teach a third reactor which essentially is another second reactor and performs the same function. The reactor 101 is considered as the second reactor.
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to include another 101 reactor in the invention of Pham US’7245. One would be motivated to do so to increase production volume. Duplication of Parts is considered obvious (MPEP §2144.04 VI B).
Claim(s) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pham US 2005/037245, in view of Pham et al. US 20120258037 as applied to claims 1, 2, 4-10, 14, 15 and 17-20 above, and further in view of Michiels et al. EP 3194331.
Regarding claims 3 and 11, the Pham US’7245 reference does not teach forming carbonate from the metal.
EP’4331 (paragraph [0032]), which discloses the reversible conversion of elemental iron, carbon dioxide and water vapor into iron carbonate and hydrogen in the context of the production of hydrogen by cyclically oxidizing iron and reducing iron oxide. This produces syngas with higher purity hydrogen as some CO2 is used for further hydrogen generation (See EP’4331, Para [0031]-[0032]). The reaction described the reference is as follows:
[AltContent: textbox ([img-media_image1.png])]
Here reaction R.4 uses Fe0 which is considered as the claimed metal in a reduced state. In reaction R.5 the Fe3O4 is the claimed metal in an oxidized state that is formed.
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to use the CO2 from Pham US’7245 for iron carbonate formation which is then reacted with water to make more hydrogen, as taught by EP’4331 (Paras [0031-0033]). One would be motivated to do so in an effort to produce additional hydrogen at low temperature and pressure (See EP’4331 Para [0024]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pham US 2005/037245, in view of Pham et al. US 20120258037 and Michiels et al. EP 3194331 as applied to claims 3 and 11 above, and further in view of Erlandsson et al. US 20180072658.
Regarding claim 12, the EP’4331 reference teaches using carbon dioxide to make additional hydrogen via the carbonate reaction mechanism (See Para [0032]). However, there is no teaching from Pham US’7245 in view of Pham US’8037 and EP’4331 regarding separating CO2 from hydrogen and then storing CO2.
Erlandsson teaches syngas generation and then using the components to make further products such as methanol etc. (Abstract). The reference teaches that the syngas is generated from hydrocarbon reforming (Para [0016]). The reference teaches a carbon dioxide removal unit 24 (See Para [0060] and Fig. 1) that separates carbon dioxide form hydrogen for use in methanol synthesis. Erlandsson et al. also teaches an embodiment where the separated CO2 is stored for use in urea formation (Para [0023]). The reference further clarifies that holding tanks and storage tanks are used (Para [0059]). This is considered as the storage vessel of the claim. The separation unit 24 is considered as the second separation unit of the claim.
Before the effective filing date of the claimed invention to use the separation unit and storge vessel of Erlandsson to separate the hydrogen and carbon dioxide mixture of EP’4331. One would be motivated to do so to capture the greenhouse gas CO2 for further conversion to useful products such as formaldehyde or urea as taught by Erlandsson (Para [0060] and [0023]).
Allowable Subject Matter
Claims 13 and 16 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 13 requires “wherein passing the carbon monoxide produced in the first reactor to the second reactor comprises: passing at least some of the carbon monoxide produced in the first reactor and the hydrogen produced in the first reactor to a first separation unit; separating the carbon monoxide from the hydrogen in the first separation unit; passing the carbon monoxide separated in the first separation unit to a carbon monoxide storage vessel; and passing the carbon monoxide from the carbon monoxide storage vessel to the second reactor.” There is no teaching or suggestion from Pham US’7245 regarding “the carbon monoxide produced in the first reactor to the second reactor comprises: passing at least some of the carbon monoxide produced in the first reactor and the hydrogen produced in the first reactor to a first separation unit; separating the carbon monoxide from the hydrogen in the first separation unit; passing the carbon monoxide separated in the first separation unit to a carbon monoxide storage vessel; and passing the carbon monoxide from the carbon monoxide storage vessel to the second reactor”
Claim 16 requires “the second reactor is oxidizing the metal in the reduced state while the third reactor is reducing the metal in an oxidized state; and the second reactor is reducing the metal in an oxidized state while the third reactor is oxidizing the metal in a reduced state”. There is no teaching or suggestion from the Pham et al. US’7245 reference regarding “the second reactor is oxidizing the metal in the reduced state while the third reactor is reducing the metal in an oxidized state; and the second reactor is reducing the metal in an oxidized state while the third reactor is oxidizing the metal in a reduced state”.
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 § 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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending Application No. 18/523574 in view of Schunk et al. US 20100305221. The instant application requires the same method of hydrogen generation with reducing and oxidizing a metal component, as the co-pending application. The difference between the two inventions is that the co-pending application requires that the carbon monoxide/hydrogen mixture in the first step is generated by reacting methane and carbon dioxide. Schunk et al. teaches the reactions of dry reforming of carbon dioxide, steam reforming and partial oxidation are performed with gas mixtures which comprise a plurality of hydrocarbon compounds which have a very high methane content. This makes it possible, in the process which may include a plurality of operating states, to produce a synthesis gas which has a defined overall composition with regard to the carbon monoxide to hydrogen content. The most preferred composition of synthesis gas possesses a carbon monoxide to hydrogen content of 1 to 2 (CO/H2 equal to 1:2), since a synthesis gas of such a composition constitutes a suitable starting basis for producing products of value (Para [0015]). This indicates that the ratio of CO/H2 can be controlled by combining or substituting one process for another based on the methane composition.
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to use partial oxidation instead of dry reforming in the process of 18/233574. One would be motivated to do so in an effort to provide the syngas mixture required. The Schunk et el. reference provides motivation to substitute the oxidants in the reforming reaction to adjust or control the CO/H2 ratio See Para [0015]).
This is a provisional nonstatutory double patenting rejection.
Relevant Art
US 20130171049 teaches a method and apparatus for sequestering carbon dioxide (Abstract). The reference teaches using hot reduction gases comprising hydrogen, carbon monoxide, carbon dioxide and water vapor to reduce iron oxide into metallic iron (Para [0012]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED TAHA IQBAL whose telephone number is (571)270-5857. The examiner can normally be reached M-F; 7-5.
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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/SYED T IQBAL/ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736