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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/09/2025 has been entered.
Claims 20, 22-31, and 34-38 are currently pending and have been fully considered.
Claims 1-19, 21, and 32-33, have been cancelled.
The USC 112 rejections of claims 20-28 have been withdrawn in light of applicant’s amendments.
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.
Parent claim 29, along with dependent claims 30-31 and 34-38, teach the limitation “drying means for drying the gaseous phase” which is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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) 20, 22-23, 26-31, and 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over MITTRICKER (U.S. 6585784) in view of PHOENIX et al. (USPGPUB 2018/0290124) and as evidenced by SAVARI (USPGPUB 2014/0262283) and as evidenced by MOORE (USPGPUB 2017/0037720).
Regarding claim 20, MITTRICKER teaches in the abstract a method of fueling gas turbines. It is noted that although MITTRICKER teach in lines 15-32 of column 1 that removing impurities from natural gas to make pipeline quality natural gas of methane concentrations of more than 95% is capital intensive, one of ordinary skill in the art may stick employ a natural gas with methane concentrations of more than 40% if there are no capital intensive steps to convert the natural gas into a natural gas with methane concentrations of more than 95%.
MITTRICKER teaches in lines 13-17 of column 4 that the process can be can be performed with sour natural gas.
Natural gas is blended with hydrogen and dehydrated. (drying the gaseous phase)
The hydrogen enhanced natural gas blend is used to fuel gas turbine generators and generated electricity. MITTRICKER teach in Table I the heat consumption of the turbine. By function the turbine generates work from high pressure gas to low pressure gas. (passing the gaseous phase through a work recovery engine to convert the high pressure, high temperature gaseous phase into lower pressure, lower temperature gaseous phase and thereby generate energy)
One method of extracting natural gas is taught in PHOENIX et al.
PHOENIX et al. teach a method and system for extracting stranded gas from underwater environments and converting it. PHOENIX et al. teach in paragraph 5 the stranded gas may be natural gas and the underwater environments are reservoirs in subterranean environments.
PHOENIX et al. teach in reference claim 1 the method comprising the steps of:
(a) optionally drilling a well into the ocean floor to extract hydrocarbons as a natural gas or oil and natural gas mixture; (extracting natural gas from a subterranean natural gas reservoir)
(b) extracting hydrocarbons as a natural gas or oil and natural gas mixture;
(b) separating oil from the natural gas in a separator; (separating the liquid and gas phases)
(c) optionally transporting, pumping or piping the oil to the ocean surface;
(d) cleaning the natural gas of debris. (filtering the gas phase stream to remove entrained solids)
It would be obvious to one of ordinary skill in the art to apply steps (a)-(d) that PHOENIX et al. teach to generate the natural gas to convert to electricity in MITTRICKER.
The separator in PHOENIX et al. is taught in paragraph 25 to be operated at an internal pressure of about one to two bar above the ambient pressure of the sea water. Given that the natural gas is obtained from under the sea floor and processed underwater, it would well within one of ordinary skill in the art to employ safety measures such as an overpressure protector that monitors the pressure to be in a safe range for the separator.
The motivation to apply the steps that PHOENIX et al. teach can be found in paragraphs 3-4 of PHOENIX et al. Natural gas is considered an undesirable component to deal with when exploring deep ocean petroleum reserves. Extracting natural gas reserves from underwater environments provides an added valuable resource for exploring deep ocean reserves.
PHOENIX et al. teach in paragraph 36 that the gas/oil mixture in the reservoir can be up to 70 MPa and temperature around 115°C. A pressure of up to 70 MPa is about 10152.6 psia. (about 10,000 psia). A pressure of about 10,000 psia would be considered high pressure as defined by the current specification.
The current specification also state that a high temperature is about 149°C.
Although PHOENIX et al. teach a temperature of around 115°C, subterranean gas wells with gas/oil mixture with temperatures about 149°C exist and using one with gas/oil mixture with temperatures about 149°C would be well within one of ordinary skill in the art.
For example, SAVARI teaches methods for treatments of subterranean formation. SAVARI teaches subterranean formations are defined in paragraph 44 to include those under the surface of the ocean. SAVARI teaches in paragraph 74 wellbores drilled from the surface into the subterranean formation include high-temperature-high-pressure (HTHP) wells.
it has been established that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the natural gas in PHOENIX e al., MOORE teaches in paragraphs 2-10 that natural gas from subsea reservoirs comprises gas and hydrocarbon liquids as well as water and impurities such as carbon dioxide, mercaptans and hydrogen sulfide.
One of ordinary skill in the art would expect that the underwater reservoir, that the natural gas is extracted, is from one that is an acid/sour gas field that comprises impurities such as carbon dioxide, mercaptans and hydrogen sulfide.
Regarding claim 22, PHOENIX et al. teach in paragraph 36 that the gas/oil mixture in the reservoir can be up to 70 MPa and temperature around 115°C. A pressure of up to 70 MPa is about 10152.6 psia. (about 10,000 psia)
Although PHOENIX et al. teach a temperature of around 115°C, subterranean gas wells with gas/oil mixture with temperatures about 149°C exist and using one with gas/oil mixture with temperatures about 149°C would be within one of ordinary skill in the art.
it has been established that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 23, MITTRICKER teaches in the abstract fueling gas turbines from natural gas reserves to generate electrical power.
Regarding claims 26 and 28, PHOENIX et al. teach (b) separating oil from the natural gas in a separator. (separating the liquid and gas phases)
Regarding claim 27, filtering particles of greater than 2-3um would be obvious to one of ordinary skill in the art as PHOENIX et al. explicitly teach cleaning the natural gas of debris and any debris regardless of size would be preferably removed.
Claims 29-31 and 34-38 are system claims and have been construed as apparatus claims.
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 29, the claim has been interpreted under 35 U.S.C. 112(f) for the limitation “drying means for drying the gaseous phase.”
MITTICKER teaches in lines 58-62 of column 3 a knockout drum 12 for dehydrating the water content.
PHOENIX et al. teach a method and system for extracting stranded gas from underwater environments and converting it. PHOENIX et al. teach in paragraph 5 the stranded gas may be natural gas and the underwater environments are reservoirs in subterranean environments.
PHOENIX et al. teach in reference claim 1 the method comprising the steps of:
(a) optionally drilling a well into the ocean floor to extract hydrocarbons as a natural gas or oil and natural gas mixture;
(b) extracting hydrocarbons as a natural gas or oil and natural gas mixture;
(b) separating oil from the natural gas in a separator; (fluid communication with a separator for separating liquid and gas phases)
Given that the natural gas is obtained from under the sea floor and processed underwater, it would well within one of ordinary skill in the art to employ safety measures such as an overpressure protector that monitors the pressure to be in a safe range for the separator.
(c) optionally transporting, pumping or piping the oil to the ocean surface;
(d) cleaning the natural gas of debris. (a filter system for separating entrained solids comprising at least one filter unit cleaning the gaseous phase)
Regarding claims 31 and 36, MITTRICKER teaches in the abstract fueling gas turbines from natural gas reserves to generate electrical power. MITTRICKER teaches in lines 1-5 of column 4 condensate pump 16. Although not explicitly taught, powering a condensate pump with electricity would be well within one of ordinary skill in the art. (means for making use of recovered energy comprises one or more compressor pump and an electrical generator).
It is noted in regards to how the recovered energy is used, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 37, MITTRICKER teaches in lines 13-18 of paragraph 4 that when sour gases are used, some of the acid gases such as H2S may be removed in part.
A cleaning plant to remove the H2S would be well within one of ordinary skill in the art.
Regarding claims 34-38, the claims use the term “may” which has been construed as being optional.
Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Claim(s) 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over MITTRICKER (U.S. 6585784) in view of PHOENIX et al. (USPGPUB 2018/0290124) as evidenced by SAVARI (USPGPUB 2014/0262283) and as evidenced by MOORE (USPGPUB 2017/0037720) as applied to claims 20, 22-23, 25-31, and 34-38 above, and further in view of RASMUSSEN et al. (USPGPUB 2010/0212493)
The above discussion of MITTRICKER in view of PHOENIX et al. is incorporated herein by reference.
Claim 24 has been interpreted under 35 U.S.C. 112(f).
Claims 25 has not been interpreted under 35 U.S.C. 112(f) as sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
Regarding claims 24-25, RASMUSSEN et al. teach in the abstract methods for using gaseous streams in rotating equipment such as compressors, turbines and pumps and for other utilities.
RASMUSSEN et al. teach in paragraph 14 using a turboexpander generator. RASMUSSEN et al. also teach in paragraph 14 a turboexpander compressor.
RASMUSSEN et al. teach that these are known utility devices.
Using these known utility devices to generate electricity would be well within one of ordinary skill in the art.
Regarding claim 25, MITTRICKER teaches in the abstract fueling gas turbines from natural gas reserves to generate electrical power.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's arguments filed 09/09/2025 have been fully considered but they are not persuasive.
Claims 20-20 have been amended.
Applicant argues that MITTRICKER does not teach production flow that comprises a high-pressure, high-temperature fluid. Applicant further argues that MITTRICKER is directed toward the processing of sweet gas/water blends and not sour/acid gas.
MITTRICKER teaches the application of natural gas to general electrical power. The natural gas is sweetened from one that has sour components such as hydrogen sulfides and carbon oxides. Furthermore, MITTRICKER further teaches in lines 13-17 of column 4 that the same process can be used can be performed with sour gas.
The claims as presently written do not exclude other steps to be present in the process.
SAVARI has been added to teach the conditions for subterranean formations under the surface of the ocean. SAVARI teaches in paragraph 74 wellbores drilled from the surface into the subterranean formation include high-temperature-high-pressure (HTHP) wells.
MOORE teaches that natural gas from subsea reservoirs comprise gas and hydrocarbon liquids as well as water and impurities such as carbon dioxide, mercaptans and hydrogen sulfide.
Applicant argues that PHOENIX is not analogous art and is directed toward extracting stranded gas from subterranean environments such as the deep sea, separating oil and stranded gas and converting the stranded gas into a readily transportable form.
This is not persuasive as subterranean environments such as the deep sea include those that comprises HPHT wells and those that comprise acid/sour gas such as hydrogen sulfide. SAVARI et al. and MOORE teach the conditions of the reservoirs of subterranean environments.
Applicant further argues that PHOENIX teaches the addition of seawater and other techniques to promote hydrate formation which is in contrast with the current process that teaches a drying step. Applicant also argues that PHOENIX does note address HPHT conditions or acid/sour reservoirs.
PHOENIX is relied on to teach that it is known how to extract natural gas from underwater subterranean environments. SAVARI et al. and MOORE teach the conditions of the reservoirs of subterranean environments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
RASMUSSEN et al. (USPGPUB 2010/0212493) teach in the abstract methods for using gaseous streams in rotating equipment such as compressors, turbines and pumps and for other utilities.
RASMUSSEN et al. teach in paragraph 14 using a turboexpander generator. RASMUSSEN et al. also teach in paragraph 14 a turboexpander compressor.
RASMUSSEN et al. teach that these are known utility devices.
Using these known utility devices to generate electricity would be well within one of ordinary skill in the art.
PRONOVOST et al. (U.S. 4505127) teach a method and apparatus (system) for treating natural gas from gas wells for safe transportation in pressure vessels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MING CHEUNG PO whose telephone number is (571)270-5552. The examiner can normally be reached M-F 10-6.
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, PREM SINGH can be reached at 5712726381. 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.
/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771