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 .
Chakravarti (WO 2011/112484) and Kresnyak (EP 2487225 Al) are considered the closest prior art. While Chakravarti mentions an alternative embodiment in which "stream 5
produced in the gasification stage 2 is partially oxidized in partial oxidation stage 22 by reaction with oxygen or oxygen-enriched air stream 24" (page 20, lines 15-17), this is clearly not an essential feature of the process. There is certainly no teaching or suggestion in Chakravarti of the claim 1 "gasifying a first carbonaceous feedstock comprising waste materials and/or biomass in a gasification zone to produce a first synthesis gas; partially oxidizing the first synthesis gas in a partial oxidation zone to generate oxidized synthesis gas," which partial oxidation, as noted above, results in equilibrating the H2:CO ratio to below the usage ratio of the subsequent conversion/separation process. Rather, in Chakravarti it is stated that the purpose of the partial oxidation is "to convert tars, methane and hydrocarbon species, e.g., C2H4, C3S, present in stream 5 to more hydrogen and carbon monoxide" (page 20, lines 17-19). In addition, Chakravarti fails to teach or suggest the use of renewable natural gas in the second carbonaceous feedstock.
Kresnyak fails to cure the above noted deficiencies of Chakravarti. Kresnyak discloses an enhanced Fischer-Tropsch process wherein naphtha is destroyed in a hydrogen generator and recycled as feedstock to a syngas (FT) reactor in order to enhance the production of syndiesel from the reactor.
Kresnyak clearly does not disclose or suggest gasifying a first carbonaceous feedstock comprising waste materials and/or biomass to produce a first synthesis gas and subsequently partially oxidizing said synthesis gas. Kresnyak does not recognize the problem of fluctuating H2:CO ratios which can be above the desired level for the conversion/separation process. In fact, it is stipulated in Kresnyak that the H2:CO ratio of the clean syngas leaving the biomass gasifier stage is generally 1:1 (paragraph [0048]) i.e., well below the desired level for the conversion/separation process. Thus, there is no motivation for the skilled person to carry out a separate gasification followed by partial oxidation particularly to equilibrate the H2:CO ratio to be below the usage H2:CO ratio of the conversion or separation process.
In addition, Kresnyak, like Chakravarti, fails to teach or suggest the use of renewable natural gas in the second carbonaceous feedstock.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 and 21-25 of U.S. Patent No. 11,834,614. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
The subject matter claimed in the instant application is fully disclosed and covered in the above patented claims. The instant application and US patent 11,834,614 is claiming common subject matter as follows: a process for the manufacture of a useful product from synthesis gas having a desired hydrogen to carbon monoxide molar ratio comprising: gasifying a first carbonaceous feedstock comprising waste materials and/or biomass in a gasification zone to produce a first synthesis gas; partially oxidizing the first synthesis gas in a partial oxidation zone to generate oxidized synthesis gas; reforming a second carbonaceous feedstock comprising renewable natural gas to produce a second synthesis gas, in which reforming the carbon monoxide content and the hydrogen content are both increased, the second synthesis gas having a different hydrogen to carbon monoxide ratio from that of the first synthesis gas; combining at least a portion of the first partially oxidized synthesis gas and at least a portion of the second synthesis gas in an amount to achieve the desired hydrogen to carbon monoxide molar ratio and to generate a combined synthesis gas; subjecting at least part of the combined synthesis gas to a conversion or separation process effective to produce the useful product.
The only difference between present claim 1 and the patented claim 1 is that the instant claim 1, explicitly adds the phrase optionally oxidizing the first synthesis gas in a partial oxidation zone.
Claims 2-19 and 21-25 are the same as the claims recited in US patent No. 11,834, 614.
The present claim 1 is not patentably distinct from earlier issued claim. Adding an optional step does not usually create a patentably distinct invention. If the original claim covers the process, merely stating that a known step in the filed is “optional” is an obvious variant of the original claim.
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/JAFAR F PARSA/ Primary Examiner, Art Unit 1692
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