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 (14-23) without traverse and Species 2 (Fig. 2) with traverse in the reply filed on 5/13/2026 is acknowledged. Applicant timely traversed the election requirement (but not the restriction between the groups). The traversal is on the ground(s) that Nguyen does not teach method steps (page 6 last para, page 7 element 1). This is not found persuasive because the common features do not require method steps. Further, the applicant alleges that Nguyen teaches a different architectural concept. This is not found persuasive because the claims do not claim an architectural concept that forms common features. Further the applicant alleges that the venting of Nguyen performs a different function. This is not found persuasive since the claimed common features were demonstrated in Nguyen and therefore the lack of unity showing was proper. The requirement is still deemed proper and is therefore made FINAL.
Claims 19-21, 23 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. In addition to the withdrawal of claim 20, claim 19 is withdrawn for not reading on the elected species because the elected species has a first portion of air and a second portion of air and does not have another separate first portion and second portion as claimed. Claim 21 does not read on the elected species because the elected species does not have several restart and several normal operations as claimed. Claim 23 does not read on the elected species because the elected species has a first portion of air and a second portion of air as recited in claim 14 and does not have another first portion and second portion separately as claimed.
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) 14-18, 22, 27-29 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 14, the recitation, “at least one gas extracted from the system of columns is sent to the heat exchanger” introduces new matter, since in the context of claimed invention, there are provided at least two gases from the system of columns, the introduction of a third separate gas as recited is not supported. The disclosed and elected invention sends at least one of the at least two gases coming from the system of columns, not some third gas as claimed.
In regard to claim 15, the recitation, “a flow of cooled air” introduces new matter since claim 14 already defines the fluid that is vented as the “second portion” and there is no support in the original disclosure for another vented air stream as claimed in claim 15.
The recitation, “the overall flow-rate of gases cooled in the heat exchanger” introduces new matter since claim 14 already defines the feed air as what is cooled in the heat exchanger and there is no support in the original disclosure for some other gases to be cooled in the heat exchanger.
In regard to claim 27, the recitation, “the heat exchanger comprises an absence of means for separation within the heat exchanger” introduces new matter as the original disclosure never even mentions a means for separation, much less excludes such in the heat exchanger.
In regard to claim 28, the recitation, “the heat exchanger comprises an absence of any distillation columns within the heat exchanger” introduces new matter as the original disclosure never even mentions distillation columns within the heat exchanger much less excludes such.
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) 14-18, 22, 27-29 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 14, the recitation, “at least one gas extracted from the system of columns is sent to the heat exchanger” is indefinite for being inconsistent with the disclosed invention which does not have another at least one gas in addition to the already recited “at least two gases” and it is unclear if this is one of the at least two gases or some other gas.
The recitation, “at least one part of air feed” (line 21-22) is indefinite since the claim already introduces an air feed earlier in the claim and it is unclear if this is another air feed or not.
In regard to claim 15, the recitation, “a flow of cooled air” is indefinite since claim 14 already defines what is vented as the “second portion” and therefore it is unclear whether the present recitation is improperly referencing the second portion or is some other fluid.
The recitation, “the overall flow-rate of gases cooled in the heat exchanger” is indefinite for lacking proper antecedent basis and since claim 14 already defines the feed air as what is cooled in the heat exchanger and therefore it is unclear what streams are and what streams are not included in the recited gases.
In regard to claim 16, the recitation, “a flow of gas” is indefinite since claim 14 already defines what is vented as “at least a part of the at least one gas extracted from the system of columns” and therefore it is unclear whether the present recitation is improperly referencing what was already recited or if this is a different gas than what was previously recited.
The recitation, “an overall flow-rate of gases to be heated in the heat exchanger” is indefinite since claim 14 already defines what is heated in the heat exchanger and therefore it is unclear what streams are and what streams are not included in the present recitation.
The recitation, “during normal operation” is indefinite for improperly reintroducing what was already introduced in claim 14.
In regard to claim 22, the recitation, “the second column” lacks proper antecedent basis.
In regard to claim 29, the recitation, “the entirety” lacks proper antecedent basis.
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.
Claim limitation “means for separation” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is nothing about what structure this recitation requires. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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) 14, 17, 22, 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Briglia (WO2019/126927) in view of Parsnick (US 2016/0161180). 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 14, Briglia teaches a method for restarting an air separation unit (page 2 “air separation apparatus”) comprising a system of columns (1, 2, first column, second column, page 2) comprising at least a first distillation column (first column, page 2) and a heat exchanger (5) by indirect exchange of heat for cooling an air feed (100) that is purified of water and of carbon dioxide (page 2 “air purification unit”) and intended to be separated in the first distillation column (1) by sending the air feed (100) to a hot end (warm end, page 3, 6) of the heat exchanger (5) and extracting the air feed (100) at a cold end (cold end, page 3, 6) of the heat exchanger (5), the heat exchanger (5) also serving to heat at least two gases (108, 109) coming from the system of columns (first column, second column),
the heat exchanger (5) being sited below the first column (1) with a main axis of the heat exchanger (5) being vertical and the cold end (cold end) being adjacent to a bottom (see figure 1) of the first column (1), and
i. during normal operation, at least part of the air feed (100) cooled in the heat exchanger (5) and intended to be distilled is sent to the system of columns (1, 2), and the at least two gases (108, 109) from the system of columns (1, 2) are sent to the heat exchanger (5).
Briglia does not explicitly teach steps ii, iii, and either of a) or b). However, such are routine and ordinary as evidenced by Parsnick. Parsnick teaches shutting down an air separation unit (para. 28), and no longer sending a feed air (para. 3) to a system of columns (para. 2, low and high pressure columns), and at least two gases (separated streams of nitrogen and oxygen from the column system) are no longer sent from the system of columns (low and high pressure columns to the heat exchanger (para. 3, 28, heat exchanger); and during a restart (para. 30), the air feed (air) is sent from a hot end (air feed end) of the heat exchanger (heat exchanger) to a cold end (air feed outlet to columns) of the heat exchanger (heat exchanger) to the system of columns (low and high pressure columns), where the air feed (air) is separated within the system of columns (para. 12); wherein during the restart at least a part (210) of the at least one gas (oxygen) extracted from the system of columns (low and high pressure columns) is vented to the atmosphere (para. 35) to maintain the pressure in a backup volume (22). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Briglia with the backup operations taught in Parsnick and identified above for the purpose of providing continued delivery of oxygen product when the air separation plant is shut down for maintenance or other operational issues and to provide pressure maintenance in a backup system during the restart operation.
In regard to claim 17, Briglia, as modified teaches that the at least two gases extracted from the system of columns is enriched in nitrogen or oxygen (page 3, see nitrogen and oxygen fluids).
In regard to claim 22, Briglia, as modified, meets the limitations of claim 22 as these are in the alternative.
In regard to claim 27, Briglia, as modified, does not explicitly teach a means for separation within the heat exchanger (5).
In regard to claim 28, Briglia does not teach any distillation columns within the heat exchanger (5).
In regard to claim 29, Briglia teaches that an entirety of the system of columns (1, 2) is disposed at an elevation higher than the cold end (cold end) of the heat exchanger (5).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Briglia (WO2019/126927) in view of Parsnick (US 2016/0161180). 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.
Briglia, as modified, teaches most of the claim limitations but does not appear to explicitly teach that the heat exchanger is a brazed plate and fin exchanger. However, such main heat exchangers are routine and ordinary as taught by Howard. Howard teaches the main heat exchanger is a braced plate and fin heat exchanger (para. 32) providing efficient heat exchange of many streams. Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to employ a brazed plate and fin heat exchanger as taught by Howard for the purpose of providing a heat exchanger that is compact, strong, efficient and easy to design with multiple streams.
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
Prosecution Insights