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 .
Claims 4, 19, and 21 have been amended. Claims 5-6, 9, 11, 20, 22, and 24 are cancelled. Claims 1-4, 7-8, 10, 12-19, 21, 23, and 25-30 are pending in the instant application.
Priority
This application is a US national phase application of PCT Application Serial No. PCT/US2021/059703 having a filing date of November 17, 2021, which claims priority to and the benefit of U.S. Provisional Application No. 63/126,247 having a filing date of December 16, 2020.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 11/13/2023, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Preliminary Amendment
The preliminary amendment of claims by Applicant’s representative Nathan P. Letts on 07/07/2023 has been entered.
However, the Amendment is objected to for non-compliance with MPEP§714(c). Claims 5-6, 9, 11, 20, 22, and 24 are indicated as “Cancelled”. No claim texts shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.” See MPEP§714(c)(4)(i). Appropriate correction is required.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention"). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions, which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Claims 1-4, 7-8, 10, 12-19, 21, 23, and 25-30 are drawn to more than one inventive concept (as defined in PCT Rule 13), and accordingly, a restriction is required according to the provision of PCT Rule 13.2
PCT Rule 13.2 states that the international application shall relate to one invention only or to a group of inventions so linked as to form a general inventive concept (requirement of unity of invention).
PCT Rule 13.2 states that unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.
Annex B, Part 1 (b), provides that “special technical features” mean those technical features, which, as a whole, define a contribution over the prior art.
Annex B, Part 1 (e), provides combinations of different categories of claims and states:
“The method for determining unity of invention under Rule 13 shall be construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:
(i) in addition to an independent claim for a given product, an independent claims for a process specially adapted for the manufacture of the said product, and an independent claim for use of the said product, or
(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specially designed for carrying out the said process, or
(iii) in addition to an independent claim for a given product, and independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for an apparatus or means specially designed for carrying out the said process,…”
This application contains the following inventions or groups of inventions, which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The instant claims are drawn to a method for producing syngas according to claim 1; a system for the conversion of biogas to methanol, DME and/or hydrocarbons according to claim 23; and a system for the conversion of natural gas to synthetic crude oil according to claim 27.
The instant application lacks unity of invention according to the PCT Search report (PCT/ISA/210) completed on May 2, 2022, see the cited “Y” reference KR-10-2008-0094725A, US2002-0144506, etc. Therefore, the pending claims are further restricted as following:
Group I: Claims 1-4, 7-8, 10, 12-19, and 21 are drawn to a method for producing syngas which comprises reacting a hydrocarbon fuel and enriched-oxygen containing feed gas in internal combustion engine reactor wherein the feed gas comprises a carbon dioxide diluent present at about 5 to about 50 mol.% and the enriched-oxygen is present about 25 to 95% mol.% so as to produce the syngas according to claim 1.
Group II: Claims 23 and 25-26 are drawn to a system for the conversion of biogas to methanol, DME and/or hydrocarbons which comprises (a) a biogas processing unit removing a substantial portion of sulfur compounds from the biogas and, optionally removing at least a portion of carbon dioxide from the biogas, to generate a clean biogas stream with about 1 to about 35 mol.% carbon dioxide content; (b) an air separation unit to generate an oxygen-rich gas stream with about 25 to about 95 mol.% oxygen; (c) an internal combustion engine reactor fluidly connected to the biogas processing unit and the air separation unit so as to react the clean biogas stream with the oxygen enriched stream so as to produce a syngas stream; (d) a gas separation unit and a syngas compression unit fluidly connected to the syngas stream from the internal combustion engine reactor so as to generate a processed syngas stream; and (e) a methanol, a DME, and/or a hydrocarbon synthesis unit fluidly connected to the processed syngas stream according to claim 23.
Group III: Claims 27-30 are drawn to a system for the conversion of natural gas to synthetic crude oil which comprises (a) a natural gas fluid stream; (b) an air separation unit to generate an oxygen-rich gas stream with about 25 to about 95 mol. % oxygen; (c) an internal combustion engine reactor fluidly connected to the natural gas source and the air separation unit so as to react the clean biogas stream with the oxygen enriched stream so as to produce a syngas stream; (d) a water gas shift/gas separation unit and a syngas compression unit fluidly connected to the syngas stream from the internal combustion engine reactor so as to generate a processed syngas stream and a carbon dioxide rich stream; (e) wherein the carbon dioxide rich stream is fluidly connected to the internal combustion engine reactor to provide a carbon dioxide containing diluent stream; and (f) a Fischer Tropsch (FT) reactor fluidly connected to the processed syngas stream according to claim 27.
Applicant needs to elect a single group for further examination.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 C.F.R. § 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a diligently filed petition under 37 C.F.R. § 1.48(b) and by the fee required under 37 C.F.R. § 1.17(h).
In the event of rejoinder, the requirement for restriction between the apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Response to Restriction Requirement
Applicant’s oral election without traverse of Group I (claim 1-4, 7-8, 10, 12-19, and 21) by Applicant’s representative Mr. Nathan P. Letts on 12/17/2025 is acknowledged.
Status of the Claims
Claims 23, and 25-30 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) in response to Applicant’s election of Group I of the restriction requirement. Claims 1-4, 7-8, 10, 12-19, and 21 are under examination on the merits.
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 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 of this title, 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.
Claims 1-4, 7-8, 10, 12-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over KR20080094725A (“the `725 publication”) to Mihailovich et al. in view of Yuan et al., Journal of Loss Prevention in the Process Industries, (2013), v.26, p.1321-1327, US2002/0144506A1 (“the `506 publication”) to Viteri et al., and U.S. Patent No. 3,986,349 (“the `349 patent”) to Egan et al.
Applicant’s claim 1 is drawn to a method for producing syngas which comprises reacting a hydrocarbon fuel and enriched-oxygen containing feed gas in internal combustion engine reactor wherein the feed gas comprises a carbon dioxide diluent present at about 5 to about 50 mol.% and the enriched-oxygen is present about 25 to 95% mol.% so as to produce the syngas.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `725 publication [1] discloses a method for producing synthesis gas (syngas) in a compression-type internal combustion engine. The `725 publication [37] discloses it is possible to produce synthesis gas by burning a mixture of hydrocarbon fuel with oxygen-enriched air at α=0.5-0.8 (“α” means air excess coefficient), explosive partial oxidation of the hydrocarbons within the cylinder volume of an internal combustion engine, expansion and cooling of the process product during the movement of the engine piston to bottom dead center, recovery of the process product containing synthesis gas from the reaction during the movement of the engine piston to top dead center, and injection of a new portion of the air-fuel mixture during the movement of the engine piston to bottom dead center. The `725 publication [37] further discloses coal production mixed gas, which mainly contains carbon dioxide (CO2), methane and ethylene fractions, is used as a hydrocarbon raw material. The `725 publication [40] discloses when the method is carried out with oxygen-enriched air at α=0.5-0.8 (oxygen contents of 50% and 29%), the H2/CO ratio does not satisfy the catalyst synthesis requirement (in some cases of 1 below). Therefore, for α= 0.8 (oxygen contents of 29%), the CO2 content is equal to the CO content. The `725 publication [64] discloses the method can be carried in a synthesis gas production plant consisting of a multi-cylinder 4-cucle or 2-piston 2-cycle compression-ignition internal combustion engine.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between Applicant’s claim 1 and the `725 publication is that the prior art does not specifically teach the feed gas comprises a carbon dioxide diluent present at about 5 to about 50 mol.%. Instead, the `725 publication [37] further discloses coal production mixed gas, which mainly contains carbon dioxide (CO2), methane and ethylene fractions, is used as a hydrocarbon raw material. The `725 publication [40] further discloses when the method is carried out with oxygen-enriched air at α=0.5-0.8 (oxygen contents of 50% and 29%), and for α= 0.8 (oxygen contents of 29%), the CO2 content is equal to the CO content.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, the difference of the feed gas comprises a carbon dioxide (CO2) diluent present at about 5 to about 50 mol.% over the CO2 content disclosed by the `725 publication [40] (i.e., produced as a coal production mixed gas via oxygen-enriched air at α=0.5-0.8 (oxygen contents of 50% and 29%), and for α= 0.8 (oxygen contents of 29%), the CO2 content is equal to the CO content) is further taught and/or suggested by Yuan et al. According to Yuan et al., spontaneous heating of coals at varying O2 concentration, the CO/CO2 ratios tended to converge to the same value from under the same heating temperatures, see Figs. 11-12. Based on the disclosure above, it would be obvious to one ordinary skilled in the art that the CO2 content in the coal production mixed gas of the `725 publication would be within the range of about 5 to about 50 mol.%.
Furthermore, the `506 publication [0084] teaches in the combustion device 550, the enriched oxygen gases from the air separation plant 530 are combined with the hydrogen containing fuel from a fuel supply 540 and combustion is initiated within the combustion device 550. A water or carbon dioxide diluent is added into the combustion device to decrease a temperature of the products of combustion within the combustion device 550 and to increase a mass flow rate for a steam or steam and carbon dioxide working fluid exiting the combustion device 550. Therefore, the `725 publication in view of Yuan et al. and the `506 publication would have rendered claim 1 obvious.
In terms of claim 2, the additional features of the claim can be easily derived by a person skilled in the art, considering the feature of the `506 publication in the enriched oxygen gases from the air separation plant (see paragraph [0084)).
In terms of claims 3-4, 7-8, and 12-13, the additional features of the claims can be easily modified by a person skilled in the art without the exercise of inventive skill, considering the feature of the `725 publication in the hydrocarbon fuel such as natural gas and a mixed gas comprising H2, CO for producing the syngas (see paragraph [0003]; claim 1).
In terms of claim 10, the additional features of the claims can be easily modified by a person skilled in the art without the exercise of inventive skill, considering the feature of the `506 publication in that carbon dioxide diluent path is provided out of a condenser for returning carbon dioxide diluent back to the combustion device (see paragraph [0086]).
In terms of claims 14-15, the additional features of the claims can be easily modified by a person skilled in the art without the exercise of inventive skill, considering the feature of the `725 publication in the step of heating the composition comprising the hydrocarbon fuel and the enriched-oxygen gas in the internal combustion engine to produce the syngas (see claim 1).
In terms of claims 16 and 21, the additional features of the claims are merely matters of design option from the feature of the `725 publication in the step of heating the composition comprising the hydrocarbon fuel and the enriched-oxygen gas in the internal combustion engine to produce the syngas (see claim 1). In addition, the `725 publication [27] describes a process from the `349 patent for converting coal into a liquid hydrocarbon fuel by gasifying coal into a syngas, hydrogenating the resulting syngas, and extracting a liquid hydrocarbon fuel from the hydrogenation product.
In terms of claim 17, the additional features of the claims can be easily derived by a person skilled in the art, considering the feature of the `725 publication in the step of separating a product comprising the syngas (see paragraph [0109]).
In terms of claims 18-19, the additional features of the claims can be easily derived by a person skilled in the art, considering the feature of the `725 publication in the steps of: recovering the product comprising the syngas; and converting the syngas to methanol or dimethyl ether (see claim 1).
Conclusions
Claims 1-4, 7-8, 10, 12-19, and 21 are rejected.
The preliminary amendment filed on 07/07/2023 is objected to.
Claims 23, and 25-30 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731