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 .
Election/Restrictions
Applicant's election with traverse of Group I, in the reply filed on January 9th, 2026 is acknowledged. While the election states, “Applicant elects for further examination the claims of Group I, i.e., claims 1-11 and 21, drawn to a method,” claim 21 is drawn to a system. It is therefore assumed that “claims 1-11 and 21” contains a typographical error and is intended to read, “claims 1-11 and 22”. The traversal is on the grounds that the amended claims 1 and 12 share a special technical feature. This is not found persuasive because, in addition to the shared features anticipated by Roesch (U.S. 9,969,666), the amended limitation requiring a CO2 removal unit, arranged to receive at least part of the fourth synthesis gas stream and to provide a CO2-rich stream and a fifth synthesis gas stream is rendered obvious by Vidalin (U.S. 2002/0085963 A1), who teaches that retrofitting a methanol plant with this functionality significantly reduces capital costs associated with CO generation for a new acetic acid plant (Vidalin, [0006], Figs. 3 and 7; see stream in Fig. 7 being directed from CO2 removal 714 and CO separation 706 to MeOH synthesis 710).
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 9.
Claim Interpretation
Claims 1-3 and 6-8 each recite limitations directed to “the step of” a recited respective step. While the claims do not provide explicit antecedent basis for “the step of” in each claim, it is clear that “the step of” does not refer to a previously recited step and is accordingly interpreted to be equivalent to “a step of”.
Similarly, in claim 3, the recited limitation directed to “the amount of CO2 is removed” is not indefinite, despite lacking antecedent basis for “the amount of CO2” — this phrase is interpreted as “an amount of CO2”. In claim 4, “the increase in the amount of CO2 removed” is interpreted as “an increase in the amount of CO2 removed”, as it is clear that the increase derives from the step of adjusting the amount of CO2 which is removed in claim 3.
Claim 22 recites limitations directed to the claimed method being “configured to” operate in one of two recited modes. As the configuration of the method does not positively recite a method step, methods that can reasonably be construed to be capable of selectively operating in the first and second modes will be considered to read on the claim.
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.
Claim 9 is 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 9 recites the limitations “the O2-containing feed” and “the H2-containing feed” in line 3. There is insufficient antecedent basis for these limitations in the claim. For purposes of examination, these limitations will be interpreted to mean “an O2-containing feed” and “an H2-containing feed”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6, 8-11, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vidalin (U.S. 2002/0085963 A1) in view of Hirotani (U.S. 6,100,303, 2000).
Regarding claim 1, Vidalin teaches a method for upgrading a hydrocarbon-containing feed gas to a methanol product stream and a hydrogen product stream (Vidalin, Figs. 3-5, [0043]-[0045], [0067]-[0081]), comprising the steps of:
providing a hydrocarbon-containing feed gas (Vidalin, Fig. 3, feed gas) to a reforming reactor (Vidalin, Fig. 3, [0067], reformer 106),
reforming said hydrocarbon-containing feed gas in the reforming reactor, to provide a first synthesis gas stream (Vidalin, Fig. 3, [0073], line 115),
cooling said first synthesis gas stream in a cooling unit (Vidalin, Fig. 3, [0073], heat recovery unit 116), to provide a second synthesis gas stream (Vidalin, Fig. 3, [0074], synthesis gas in line 118),
removing water from said second synthesis gas stream, in a water removal unit (Vidalin, Fig. 3, H2O out), to provide a third synthesis gas stream (Vidalin, Fig. 3, line 118 after H2O out),
compressing said third synthesis gas stream in a compressing unit to a first pressure (Vidalin, Fig. 3, [0074], two-stage compressor 120), to provide a fourth synthesis gas stream (Vidalin, Fig. 3, [0074], line 121, corresponding to Fig. 5, line 20),
e1) feeding at least part of the fourth synthesis gas stream from step e) to a CO2 removal unit (Vidalin, Fig. 3, [0075], aMDEA CO2 removal system 128, corresponding to Fig. 5, CO2 removal system 22), to provide a CO2-rich stream (Vidalin, Fig. 3, line 133, corresponding to Fig. 5, line 24) and a fifth synthesis gas stream (Vidalin, Fig. 3, line 132, corresponding to Fig. 5, line 26),
feeding at least part of the fifth synthesis gas stream from step (e1) to the methanol synthesis unit (Vidalin, Fig. 5, [0063], part of syngas stream 26 after CO2 removal 22 is directed via lines 32 and 35 to MeOH synthesis unit 12), to provide a methanol-rich stream (Vidalin, [0044], Fig. 4 illustrates methanol stream 170),
feeding at least part of the methanol-rich rich stream from step f) to a separation unit (Vidalin, Fig. 4 illustrates methanol stream 170 being fed into methanol separator 172), to provide a methanol product stream (Vidalin, Fig. 4, [0080], methanol line 178) and a hydrogen rich stream (Vidalin, Fig. 4, [0080]-[0081], H2 in recycle line 104).
Vidalin does not explicitly teach that, in step e), said first pressure is higher than the feed pressure of said hydrocarbon feed gas. However, Hirotani clarifies that reforming of natural gas can be done at a pressure of 15-40 kg/cm2 - G (Hirotani, Col. 2, lines 26-33), specifically 19.4 kg/cm2 - G (Hirotani, Col. 4, linrs 62-63) followed by methanol production at a pressure of 40-100 kg/cm2 - G (Hirotani, Col. 2, lines 46-47), which is higher than 19.4 kg/cm2 - G and is almost entirely higher than the range of pressures prescribed for reforming.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have had said first pressure in step e) taught by Vidalin to be higher than the feed pressure of said hydrocarbon feed gas, as Hirotani teaches that these contribute to energy-efficient plant operation (Hirotani, Col. 2, line 22 - Col. 3, line 3). Moreover, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.). In the instant case, Hirotani merely illustrates the relative degree to which the hydrocarbon-containing feed gas and the syngas going into the methanol synthesis reactor would be compressed in Vidalin’s method to provide a reasonable expectation of successfully producing the syngas and methanol products, showing that the methanol synthesis reactor should operate at a higher pressure than the reformer, and therefore that gas stream provided to the methanol synthesis reactor should have a higher pressure than that provided to the reformer.
Additionally, while the embodiment represented by Fig. 5 of Vidalin is taught as an alternate embodiment to Fig. 2 (and therefore Fig. 3), its operation differs in the amounts of gases provided between units Vidalin, Fig. 5, [0063], “In the alternative embodiment of Fig. 5, the CO available for acetic acid manufacture is increased by diverting a much larger portion of the syngas from line 18 via line 20 to the CO2 removal unit 22, than in the embodiment of Fig. 2.”) and does not negate the teachings toward steps a)-e1) discussed above with respect to Fig. 3.
Regarding claim 2, modified Vidalin renders the method according to claim 1 obvious, as discussed above, further comprising the step of adjusting the molar ration between the hydrogen product stream and the methanol product stream (Vidalin, Fig. 5, [0063], diverting CO2 to MeOH synthesis causes more H2 to be consumed, thereby changing the molar ratio between the methanol product stream and the hydrogen product stream).
Regarding claim 3, modified Vidalin renders the method according to claim 1 obvious, as discussed above, further comprising the step of adjusting the amount of CO2 which is removed in the CO2 removal unit, relative to the CO2 content in the fourth synthesis gas stream (Vidalin, [0032] discusses recycling an amount of CO2 to the reformer to maintain a molar ratio R ((H2-CO2)/(CO+CO2)) from about 2.0 to about 2.9; Fig. 7 and [0082]-[0084] show the adjusting of diverting CO2 from the CO2 removal unit reduced to practice).
Regarding claim 5, modified Vidalin renders the method according to claim 3 obvious, as discussed above, wherein a first part of the fourth synthesis gas stream from step e) is fed to the CO2 removal unit (Vidalin, Fig. 5, line 20, derived from line 18, is fed to CO2 removal system 22), to provide the CO2-rich stream (Vidalin, Fig. 5, line 24) and the fifth synthesis gas stream (Vidalin, Fig. 5, line 26); and wherein at least part of the fifth synthesis gas stream is fed to said methanol synthesis unit (Vidalin, Fig. 5, line 35 is fed to MeOH synthesis unit 12) together with a second part of the fourth synthesis gas stream in step f (Vidalin, Fig. 5, line 38, derived from line 18, is fed to MeOH synthesis unit 12).
Regarding claim 6, modified Vidalin renders the method according to claim 1 obvious, as discussed above, said method further comprising a step of providing a CO2-containing feed to said reforming reactor (Vidalin, Fig. 3, recycle CO2 in line 112 to reformer 106).
Regarding claim 8, modified Vidalin renders the method according to claim 1 obvious, as discussed above, said method further comprising a step of providing an H2-containing feed upstream the methanol synthesis unit (Vidalin, Fig. 3, [0069], line 104 containing recycle H2 from loop purge).
Regarding claim 9, modified Vidalin renders the method according to claim 6 obvious, wherein the molar ratio between the methanol product stream and the hydrogen product stream is changed by regulating the CO2-containing feed (Vidalin, Fig. 5, [0063], diverting CO2 to MeOH synthesis causes more H2 to be consumed, thereby changing the molar ratio between the methanol product stream and the hydrogen product stream).
Regarding claim 10, modified Vidalin renders the method according to claim 1 obvious, as discussed above, wherein said reforming rector comprises a convective reformer (Vidalin, Fig. 3, [0069], convection section 116 of the reformer 106).
Regarding claim 11, modified Vidalin renders the method according to claim 1 obvious, as discussed above, wherein a portion of the hydrogen rich stream from step g) is compressed and returned to the methanol synthesis unit as a methanol loop recycle stream (Vidalin, Fig. 4, line 124 which derived from H2-containing stream 104, [0074], compressed in recycle circulator 126).
Regarding claim 22, modified Vidalin renders the method according to claim 1 obvious, as discussed above, wherein the method is configured to selectively operate in:
a first mode producing increased CO2 and hydrogen with reduced methanol production (Vidalin, Fig. 3, [0074], valve 66 could be partially closed, which would decrease the amount of syngas which is directed to MeOH synthesis, thereby consuming less CO2 and hydrogen and producing less methanol); and
a second mode producing increased methanol with reduced CO2 and hydrogen production (Vidalin, Fig. 3, [0074], valve 66 could be fully open, which would consume more CO2 and hydrogen and produce more methanol relative to the first mode).
While Vidalin is silent to implementing the first mode, the method is nonetheless configured to selectively operate in either the first or second modes, as Vidalin teaches control over methanol synthesis via closing valve 66 (Vidalin, [0065]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Vidalin (U.S. 2002/0085963 A1) in view of Hirotani (U.S. 6,100,303, 2000), as applied to claim 3 above, and further in view of BP (EP 2023067 A1, 2009).
Regarding claim 4, modified Vidalin renders the method according to claim 3 obvious, as discussed above, but does not teach that the CO2 removal unit is a cryogenic separation unit or that an increase in the amount of CO2 removed in the cryogenic separation unit is achieved by decreasing the operating temperature in the cryogenic separation unit. However, BP teaches that CO2 can be separated from hydrogen in a synthesis gas stream (BP, [0016], [0021]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted the aMDEA CO2 removal system of Vidalin with the cryogenic CO2 removal system of BP. Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II. In the instant case, a cryogenic CO2 removal system would serve the same purpose of removing CO2 from Vidalin’s gas stream.
In substituting the aMDEA CO2 removal system of Vidalin with the cryogenic CO2 removal system of BP, an increase in the amount of CO2 removed in the cryogenic separation unit is achieved by decreasing the operating temperature in the cryogenic separation unit (BP, [0021], “Where the CO2 condensation plant comprises a plurality of cryogenic separation stages arranged in series, the separator vessels of the cryogenic separation stages are operated at successively lower temperature.” The operating temperature thereby decreases with each successive stage.).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Vidalin (U.S. 2002/0085963 A1) in view of Hirotani (U.S. 6,100,303, 2000), as applied to claim 1 above, and further in view of Roesch (U.S. 9,969,666, 2018).
Regarding claim 7, modified Vidalin renders the method according to claim 1 obvious, as discussed above, wherein said reforming reactor comprises a steam reformer (Vidalin, [0006]), which differs from the claimed limitation of an autothermal reformer. However, Roesch teaches that syngas reforming can be equivalently performed in a steam reformer or an autothermal reformer (Roesch, Col. 5, lines 18-25, SMR is steam methane reforming).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted the steam reformer of Vidalin with an autothermal reformer, as Roesch teaches that an autothermal reformer accomplishes the same task of reforming natural gas (Roesch, Col. 5, lines 18-25). Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II.
In substituting a steam reformer for an autothermal reformer, it would have further been obvious to provide an O2-containing feed to said autothermal reformer, as Roesch teaches that this is necessary (Roesch, Col. 3, lines 4-5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736