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 .
Summary
This is a non-final office action for application 18/245,469 filed on 15 March 2023. Claims 1-14 are currently pending in this 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 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.
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Claims 1-2 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 9-10, and 16-21 of U.S. Patent No. 20230356164-A1. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 20230356164-A1 includes more claim limitations than the instant application, but ultimately encompasses all of the claim limitations of claims 1-2 and 5-14 of the instant application. In certain instances, the instant application specifies that an inner wall is called first wall while an outer wall is called second wall, but this is merely a term of reference and does not render the limitation patentably distinct from that of U.S. Patent No. 20230356164-A1. Claim 2 of the instant application includes the phrase, “so that the flow rate of said gas depends on the path, called reactive path, of said gas in the annular space between the considered distributing opening and the collecting opening”, while U.S. Patent No. 20230356164-A1 does not include this phrase in the claims. However, this is not a structural limitation, but is merely describing a relationship already known as a fundamental statement of basic fluid mechanics. This relationship undeniably occurs as the structure of the claimed invention of U.S. Patent No. 20230356164-A1 is the same as that of the instant application.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation is: centering means in claim 12.
Because this claim limitation is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation does not recite sufficient structure, materials, or acts to perform the claimed function.
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 2-7 and 12 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 2 is indefinite because the term, “the path” does not have sufficient antecedent basis.
Claims 3-7 are indefinite by virtue of their dependence on claim 2.
Claim 3 is indefinite because the phrase “when the reactive path decreases” is unclear, as the claim language does not specify what physical dimension or parameter of the reactive path is decreasing. Therefore, the scope of the claim cannot be determined with reasonable certainty.
Claims 4-7 are indefinite by virtue of their dependence on claim 3.
Claim 4 is indefinite because the term “its section” is unclear. This is the first introduction of the term in the claims, and the specification does not offer explanation as to what is meant by “its section” in regards to a given distribution opening. Further, claim 4 merely states that pressure drop depends on geometry, which is always true. The claim does not specify how the length or “section” are adjusted or might vary within the apparatus, or whether and specific structural relationship is required at all. This creates ambiguity as to what structural limitation is being imposed.
Claim 12 is indefinite because it is unclear what the phrase “the latter” is referring to. For the purpose of examination, the limitation is being interpreted to read, “holding the hollow insert in a position…”.
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 1-9, 11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN-103990420-A).
Regarding Claim 1, Wei discloses a fixed-bed tubular reactor which extends (tubular fixed-bed reactor; see [0010]), according to a longitudinal axis, between a first end and a second end (extending longitudinally parallel to the axial direction of the reactor; see [0011]), said reactor comprises a catalytic powder (10-40 mesh ZSM-5 type MTP catalyst; see [0063]) bed confined in an annular space delimited by an inner wall, called first wall, of a hollow tube and an outer wall, called second wall, of a hollow insert disposed coaxially in the hollow tube (see Fig. 8, Parts 1 (reaction tube), 6 (catalyst bed), and 3-4 (chambers)), the hollow insert comprises at least one distribution chamber (inlet distribution chamber 3; see [0043]) and at least one collection chamber (outlet collection chamber 4; see [0043]), separated from each other by at least one partition wall (see annotated Fig. 8 below), and comprising, respectively, a gas intake opening at the first end and a gas discharge opening at the second end (reaction stream enters the inlet distribution chamber 3 through the stream inlet 2, then enters the catalyst chamber 6… fluid after the reaction is collected through the outlet collection chamber 4, and then flows out of the reaction tube through the stream outlet 5; see [0043]), the at least one distribution chamber is provided with a plurality of distributing openings (see Fig. 12 Part 3) whereas the at least one collection chamber is provided with a collecting opening (see Fig. 8 Part 4, where the dashed lines represent the openings that fluid travels through), the plurality of distributing openings and the collecting opening of each collection chamber are formed at the second wall (see Fig. 8 Part 3 and Part 4, where the dashed lines represent the openings that fluid travels through) and extend parallel to the longitudinal axis (see Fig. 1, Parts 3 and 4), the distributing openings of a distribution chamber enabling the distribution of a gas capable of being admitted through the intake opening from said distribution chamber towards the annular space and the collecting opening enabling the collection of the gas distributed in the annular space by the collection chamber (the reaction stream enters the inlet distribution chamber 3 through the stream inlet 2 of the reaction tube 1, then enters the catalyst chamber 6, passes laterally through the catalyst fixed bed, contacts the catalyst and reacts therein, and the fluid after the reaction is collected through the outlet collection chamber 4, and then flows out of the reaction tube through the stream outlet 5).
The limitation claiming the catalyst bed to be powder is a functional limitation that does not further limit the structure of the reactor, but merely sets forth a manner of operating said reactor. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). If the prior art structure is capable of performing the function, then it meets the claim. In this case, the prior art uses granular catalyst particles and is therefore capable of being loaded with powder catalyst. Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
Wei discloses the second partition walls in a different embodiment than the rest of the claimed limitations. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the second partition walls into the other embodiment so that the reaction stream passes through the catalyst fixed bed in a transverse direction perpendicular to the reactor axis (see [0022]).
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Regarding Claim 2, Wei discloses the reactor according to claim 1, wherein each distributing opening of the plurality of distributing openings of the at least one distribution chamber is shaped so as to impose a pressure drop on the gas likely to be admitted into the distribution chamber (Any opening that allows gas flow and has finite dimensions necessarily imposes a pressure drop due to viscous and inertial losses. Therefore, an opening of any non-infinite area and non-zero length meets this limitation).
Regarding the limitation claiming, “so that the flow rate of said gas depends on the path, called reactive path, of said gas in the annular space between the considered distributing opening and the collecting opening”, this is a functional limitation that does not further define the structure of the apparatus, but merely sets forth a manner in which the apparatus functions. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus. Further, gas flowing between the defined openings necessarily travels along a flow path defined by the structure of the apparatus. The flow rate of a gas through such a system is determined by the pressure differential and resistance along that flow path. Flow rate in any fluid system is determined by the overall flow resistance, which depends on path length, geometry, friction, pressure differential, etc., and this relationship exists regardless of whether the opening is specially shaped. Not only is this limitation a functional limitation that does not require further structure, it is also merely describing a relationship already known as a fundamental statement of basic fluid mechanics.
Regarding Claim 3, Wei discloses the reactor according to claim 2. Regarding the limitation claiming, “wherein the pressure drop increases when the reactive path decreases” pressure drop is always governed by resistance, which depends on geometry. For example, pressure drop increases when cross-sectional area decreases, hydraulic diameter decreases, constrictions increase, etc. This is a general relationship arising from flow resistance, not a uniquely defined reactor structure. The claim does not recite any particular structural arrangement, any specific geometry, or any defined dimensional relationship. It merely describes a functional relationship.
Regarding Claim 4, Wei discloses the reactor according to claim 3. Regarding the limitation claiming “wherein the pressure drop associated with a given distributing opening is adjusted by its section and/or its length”, this is merely a functional relationship and does not specify any particular configuration or dimensional relationship. The claim does not provide objective boundaries for determining when or why the pressure drop is “adjusted”. Further, Wei discloses distribution openings having defined geometry, which naturally includes flow area and length. Pressure drop through an opening is determined by these geometric properties. The claimed limitation describes the relationship between pressure drop and the geometry of the openings, rather than requiring any additional structural feature. The claim therefore does not recite any specific dimensional relationship or structural configuration that would distinguish over the prior art apparatus.
Regarding Claim 5, Wei discloses the reactor according to claim 3, wherein a porous element is accommodated within the distributing opening (the inlet distribution chamber and the outlet collection chamber can be suitable forms commonly used in the art, such as porous tubes, porous plates; see [0024]), the porous element having a porosity allowing imposing the pressure drop (this is a natural consequence/effect of a porous element on a fluid).
Regarding Claim 6, Wei discloses the reactor according to claim 5, wherein the porous element may comprise at least materials selected from among: a fibrous material, in particular wool, a braid or a metal or ceramic fabric (the inlet distribution chamber and the outlet collection chamber can be suitable forms commonly used in the art, such as porous tubes, porous plates… and the materials can be suitable materials commonly used in the art, such as metals, alloys, ceramics or glass; see [0024]).
Regarding Claim 7, Wei discloses the reactor according to claim 3, wherein said reactor is provided with a porous film covering the second wall (the inlet distribution chamber and the outlet collection chamber can be suitable forms commonly used in the art, such as porous tubes; see [0024]; it is understood that the distribution chamber and collection chamber together comprise the hollow insert, and a porous tube necessarily has a porous surface layer or film), and arranged so as to prevent the passage of powder from the catalytic powder bed through the distributing openings and/or the collecting opening (this is a natural consequence of the hollow insert being made of porous material and/or a film covering the hollow insert).
Regarding Claim 8, Wei discloses the reactor according to claim 2, wherein the at least one distribution chamber is sealed at the second end, and the at least one collection chamber is sealed at the first end (see Fig. 13, which shows the inlet (part 2) to the distribution chambers (Part 3) at the top of the reactor while the outlet (part 5) of the collection chamber (part 4) is at the bottom. Fig. 13 does not show or indicate any other openings, meaning that at the opposing end, the distribution and collection chambers are closed).
Regarding Claim 9, Wei discloses the reactor according to claim 1, wherein said reactor comprises, at the first end and at the second end, respectively, a distributing space and a collecting space between which the hollow insert is disposed (see Fig. 13, which shows inlet 9 (a distribution space), which flows into the inlet distribution chamber 3, at the top of the reactor, outlets 5 and 12 (collection spaces) at the bottom of the reactor, which are outlets for distribution chamber 4, with the fixed catalyst bed 6 disposed therebetween).
Regarding Claim 11, Wei discloses the reactor according to claim 1, wherein the inner wall has no opening on a first section and a second section (see Fig. 1 Part 1, which is the inner wall of the reaction tube as defined in claim 1 and has no openings) which extend from, respectively, the first end and the second end (the inner wall extends from the top to the bottom of the reactor), the first section and the second section overlapping with the powder bed over a height (the inner wall 1 extends along the height of the catalyst bed 6), the height being comprised between 0.2 times and 10 times a distance separating a distributing opening from an immediately adjacent collecting opening, measured along the outer surface of the outer wall (see annotated Fig. 1 below which shows the measured distances of the figure, measured by hand. The height was measured to be 3 inches and the separating distance as 1 inch, which is a ratio of 3).
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Regarding Claim 13, Wei discloses the reactor according to claim 1, wherein the collecting opening and the distributing openings have a width comprised between 1/100 and ½ of the diameter of the hollow tube (see Fig. 1, wherein the measured distance of the gap in the dashed line (which represents collection and/or distributing openings) is 2mm and the measured distance of the diameter of the hollow tube (part 1) is 100mm, which equals a ratio of 1/50. It is noted that the exact measurements will change depending on how big/small the figure is printed or how big/small it appears on the screen, but the relative dimensions will maintain a ratio of 1/50).
Regarding Claim 14, Wei discloses the reactor according to claim 1. The limitation claiming that the hollow insert forms a single-piece part is merely a matter of engineering choice. The courts have held, “that the use of a one-piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” See In reLarson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN-103990420-A) in view of Ramler et al. (US-10335759-B2), hereinafter “Ramler”.
Regarding Claim 10, Wei discloses the reactor according to claim 1, wherein the catalytic powder is retained in the annular space (see Fig. 8, Parts 1 (reaction tube), 6 (catalyst bed), and 3-4 (chambers)).
Wei does not explicitly disclose a spring forming a seal. However, Ramler discloses catalytic powder being retained by a seal made of fibrous material (mesh to retain the catalyst in the reactor; see Col. 8 Line 49), the seal being held in compression against the catalytic powder by a spring (metal foam and mesh were fitted… then affixed to the reactor using bolts and a spring loaded “C” gasket to provide sealing; see Col. 8 Lines 46-48), the spring abutting against a mechanically linked holding plate of the tube (metal foam is analogous to the holding plate).
Wei and Ramler are both considered to be analogous to the claimed invention because they are in the same field of catalytic reactors. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wei by incorporating the teachings of Ramler and including a spring compression fit. Doing so would enable catalyst retention (see Ramler Col. 8 Line 49).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN-103990420-A) in view of Lee (US-4585059-A).
Regarding Claim 12, Wei discloses the reactor according to claim 1.
Wei does not explicitly teach centering means. However, Lee discloses wherein the hollow insert is provided with centering means holding the hollow insert in a position coaxial with the hollow tube (inner tube being held substantially concentric with the outer tube; see Abstract), the centering means comprise bosses formed on the hollow tube (held substantially concentric within the outer tube by a plurality of pairs of diametrally opposed depressions or dimples formed in the peripheral surface of the outer tube at regular intervals. Each depression or dimple projects inwardly such as to engage and indent the peripheral surface of the inner tube; see Abstract).
Wei and Lee are both considered analogous to the claimed invention because they are in the same field of concentric tubes for chemical processes. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wei by incorporating the teachings of Lee and providing bosses to center the hollow insert. Doing so would have offered coaxial support (see Lee, Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA LEE KUYKENDALL whose telephone number is (571)270-3806. The examiner can normally be reached Monday- Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.L.K./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774