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 1-13) and Species F - Fig. 4 in the reply filed on 1/26/2026 is acknowledged. Claims 2, 4-6, 8, 10, 11, and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/26/2026 but did not point out any errors in the restriction requirement and therefore the requirement is still deemed proper and is therefore made FINAL. Further in addition to the withdrawal of non-elected claims 14-15, claim(s) 2, 10 is/are not directed to the elected species Fig. 4, since the elected species does not raise the fifth pressure above the third pressure. Further, claim 4 is not directed to the elected species because the elected species does not compress the third partial stream (D) with the first booster, rather the first partial stream (B) is compressed by the first booster (5). Further, claim 5 is dependent on withdrawn claim 4 and in addition is not directed to the elected species, since the elected species does not liquefy the third partial stream (D) at the third pressure. Further, claim 6 is dependent on withdrawn claim 5 and is not directed to the elected species as the elected species does not have the second mode as recited. Further, claim 8 is not drawn to the elected species, since the third pressure and the fifth pressure of the elected species are the same not different as claimed. Further, claim 11 is not drawn to the elected species, since the second partial air stream is expanded in the second expander and is further expanded to the first or second pressure range as already recited in claim 1 and is not separately sent through the main heat exchanger as claimed in claim 11.
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 3, 7, 9, 12-13 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 1, the recitation, “at least one of the plurality of partial air streams is further compressed, cooled in a main heat exchanger and expanded before being introduced into the column system” in combination with the recitation, “the plurality of partial air streams include a first partial air stream…is, at least in part, in the order indicated and in a single pass, compressed to a pressure in a fourth pressure range above the third pressure range in a first booster operated in an inlet temperature of more than 0C, cooled in the main heat exchanger, and expanded before being introduced into the column system,” is new matter as the disclosed and elected invention and species only has the first partial air stream and does not support both of these streams as recited. The recitation of a third partial air stream in claim 3 further confirms that the recitation of claim 1 noted above is new matter and there is no support for the recited “at least one” stream.
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, 3, 7, 9, 12-13 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, “supplying the column system, and thereof at least the pressure column” is indefinite as it is unclear what “and thereof” means.
The recitation, “wherein all air” is indefinite as the claim already introduced previously compressed air as what is supplied to the column system and it is unclear what the present “air” is referencing.
The recitation, “forming a plurality of partial air streams from the air compressed to the first pressure range,” is indefinite since the disclosed plurality of partial air streams are formed from the compressed air, not from some air stream at the first pressure range. The first pressure range is the pressure of the pressure column and not the pressure of “the compressed air” previously introduced. The recitation is entirely unclear and indeterminate. For present examination, the plurality of the partial air streams are formed from the compressed air.
The recitation, “wherein at least one of the plurality of partial air streams” is indefinite for improperly reintroducing partial air streams and it is unclear why the recitation is not --wherein at least one of the plurality of the partial air streams--.
The recitation, “the plurality of partial air streams include a first partial air stream whose air is” is indefinite for improperly reintroducing partial air streams and it is unclear why the recitation is not --the plurality of the partial air streams include a first partial air stream--. The portion of the recitation, “whose air is” is entirely unclear what air is being referenced.
The recitation, “in the order indicated” is indefinite for lacking proper antecedent basis.
The recitation, “the plurality of partial air streams further include a second partial air stream whose air is at least in part” is indefinite for improperly reintroducing partial air streams and it is unclear why the recitation is not --the plurality of the partial air streams include a second partial air stream--. The portion of the recitation, “whose air is at least in part” is entirely unclear what air is being referenced and the recitation is missing a comma.
The recitation, “in the order indicated” is indefinite for lacking proper antecedent basis.
The recitation, “the air of the second partial air stream” is indefinite for being unclear as the second partial air stream is air and there is no second partial air stream without the air itself and the repetition of the air is unclear and redundant to the recitation of the second partial air stream and it is entirely unclear why the recitation is not just --the second partial air stream--.
The recitation, “the air separation plant is operated without a turbine expanding air of the first partial stream and/or air of the second partial stream into the low pressure column” is indefinite as it is unclear as the first partial stream and the second partial stream lack proper antecedent basis. Further the recitation is indefinite since it is unclear what is excluded since it is not clear if turbine expansion of the streams is permitted so long as they are not expanded into the low pressure column or does the recitation exclude the streams from being expanded at all at any location upstream of the low pressure column? The recitation is unclear.
The recitation, “at least one of the plurality of partial air streams is further compressed, cooled in a main heat exchanger and expanded before being introduced into the column system” in combination with the recitation, “the plurality of partial air streams include a first partial air stream…is, at least in part, in the order indicated and in a single pass, compressed to a pressure in a fourth pressure range above the third pressure range in a first booster operated in an inlet temperature of more than 0C, cooled in the main heat exchanger, and expanded before being introduced into the column system,” is indefinite for being contrary to the disclosed and elected invention and species which only has the first partial air stream and does not support both the first partial air stream and the recited one of the plurality as recited. The recitation of a third partial air stream in claim 3 further confirms that the recitation of claim 1 noted above is new matter and there is no support for the recited “at least one” stream.
In regard to claim 3, the recitation, “wherein the plurality of partial air streams” is indefinite for improperly reintroducing partial air streams and it is unclear why the recitation is not --wherein the plurality of the partial air streams--.
The recitation, “whose air” is indefinite for being unclear what is being referenced.
In regard to claim 9, the recitation, “wherein, from the air compressed to the third pressure range,” is indefinite for inconsistently referencing the previously introduced “compressed air” and it is unclear if this is referencing the “compressed air” or some other portion.
In regard to claim 12, the recitation, “the air of the first partial air stream” is indefinite for being unclear as the first partial air stream is air and there is no first partial air stream without the air itself and the repetition of the air is unclear and redundant to the recitation of the first partial air stream and it is entirely unclear why the recitation is not just --the first partial air stream--.
The recitation, “the air of the second partial air stream” is indefinite for being unclear as the second partial air stream is air and there is no second partial air stream without the air itself and the repetition of the air is unclear and redundant to the recitation of the second partial air stream and it is entirely unclear why the recitation is not just --the second partial air stream--.
The recitation, “the first partial air stream is at least in part cooled in the main heat exchanger” is indefinite for improperly reintroducing the cooling that has already been recited and it is unclear if this is some other cooling or the cooling that was already recited in claim 1.
Note that the dependent claims listed in the rejection heading are also rejected at least for their dependency on indefinite claims.
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.
All of the claims have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, and it is considered that none of the claim recitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goloubev (US 2016/0187059). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted. Further note the interpretation of the claim language as outlined in the rejection below.
In regard to claim 1, Goloubev teaches a process for cryogenic separation of air using an air separation plant (see whole disclosure including Fig. 2) comprising a column system (at least 22, 21) with a pressure column (21) operated at a pressure in a first pressure range (para. 36) and a low-pressure column (22) operated at a pressure in a second pressure range (para. 36) below the first pressure range, the process comprises:
supplying the column system (21, 22) with compressed air (see compressed at 2), wherein the compressed air (from 2) is compressed to a pressure in a third pressure range at least 5 bar above the first pressure range (para. 9, 34, 36), and forming a plurality of partial air streams (at least 8, 36, 41) from the compressed air (from 2), wherein
the plurality of the partial air streams (at least 8, 36, 41) include a first partial air stream (8) is, at least in part, in order and in a single pass, compressed to a pressure in a fourth pressure range above the third pressure range in a first booster (9) operated with an inlet temperature of more than 0°C (para. 8, implicit to the purified and compressed ambient air before cooling), cooled in the main heat exchanger (13), expanded in a first expander (15) mechanically coupled (see fig. 2) to the first booster (9) to a pressure in the first pressure range (pressure of 21), and introduced into the pressure column (21),
the plurality of the partial air streams (at least 8, 36, 41) further include a second partial air stream (36) that is at least in part, in order and in a single pass, supplied at a pressure in a fifth pressure range, corresponding to the third pressure range (provided by 2), to a second expander (38), expanded in the second expander (38) to a pressure in a sixth pressure range (after 38) between the fifth pressure range and the first pressure range (per expansions), further expanded (by 341) to a pressure in the first pressure range (of 21), and introduced into the column system (21, 22), the second partial air stream (36) is at least in part cooled (in 13) before being expanded (by 38) to the pressure in the sixth pressure range (after 38) in a first cooling step (cooling of 36 in 13 before 38), and at least in part cooled after having been expanded (by 38) to the pressure in the sixth pressure range (after 38) in a second cooling step (cooling of 339 in 13), wherein the first and second cooling steps are performed using the main heat exchanger (13),
internally compressed gaseous oxygen (72) is produced in and withdrawn from the process at an absolute pressure between 3 and 9 bar (para. 36), and
the air separation plant (Fig. 2) is operated without a turbine expanding the first partial air stream (8) or the second partial air stream (36) into the low pressure column (22).
In regard to claim 3, Goloubev teaches that the plurality of the partial air streams (at least 8, 36, 41) include a third partial air stream (41) is at least in part liquefied in the main heat exchanger (13), expanded (by 43) to a pressure in the first pressure range (of 21), and introduced into the column system (21, 22).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 7, 9, 12, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golobuev (US 2016/0187059). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted. Further note the interpretation of the claim language as outlined in the rejection below.
In regard to claims 7, 9, 12, Goloubev teaches most of the claim limitations, including providing liquid products (LOX, LN2, Lar; para. 43, 44, 47, Fig. 2-LAr) withdrawn from the air separation plant (Fig. 2); and further teaches that the method has a ratio of an equivalent value comprising a total amount of the liquid products (LOX, LN2, LAr) to a total amount of the internally compressed gaseous oxygen (GOX-IC, para. 22); further the first partial air stream (8) is a first relative proportion of the compressed air (from 2) and the second partial air stream (36) is a second relative proportion of the compressed air (from 2); further the cooling of the first partial air stream (8) is to a first temperature (para. 35) before being expanded in the first expander (15), the cooling of the second partial air stream (36) in the first cooling step (cooling of 36 in 13 before 38) is to a second temperature (para. 38, 50), the cooling in the second cooling step is to a third temperature (para. 38, 50).
Goloubev does not explicitly teach that the ratio is in a range from 0.6 to 1.6, the first relative proportion is 0.6 to 0.8, the second relative proportion is 0.15 to 0.30, the first temperature is between -132C and -92C, the second temperature is between -30C and 30C, and the third temperature is between -87C and -47C. However, the ratio, the relative proportions, and the temperatures are required selections that must be made to even practice the method of Goloubev and are explicitly inter-related as evidenced by the disclosed heat exchange of the plurality of the partial air streams and the liquid and gas products (LOX, LN2, LAR, GOX-IC). Therefore, the ratio, temperatures, and relative proportions are result-effective variables, i.e. variables which achieves a recognized result. In this case, the recognized result is the provision of the gas and liquid products generated at a certain operational cost and efficiency. Since the general conditions of the claim were disclosed in the prior art, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the claimed invention to provide each of the ratio is in a range from 0.6 to 1.6, the first relative proportion is 0.6 to 0.8, the second relative proportion is 0.15 to 0.30, the first temperature is between -132C and -92C, the second temperature is between -30C and 30C, and the third temperature is between -87C and -47C as a matter of routine experimentation to provide efficient production of the liquid and gas products desired by the market.
In regard to claim 13, Goloubev teaches withdrawing gaseous nitrogen (78) from the pressure column (21), heating the gaseous nitrogen (78) in the main heat exchanger (13) producing an output gas (79). Goloubev does not explicitly teach that the output gas (79) is compressed. However, official notice is taken that compressing an output stream is routine and ordinary to provide higher pressure products. Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to compress the output gas (79) for the purpose of providing the output gas to applications requiring a higher pressure.
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
February 19, 2026
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763