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 .
Applicant’s election without traverse of Group I, claims 18-31 in the reply filed on July 27, 2026, is acknowledged.
Claims 32-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 27, 2026.
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.
Claims 18-31 are rejected under 35 U.S.C. 103 as being unpatentable over Colombo et al (US 2024/0076255 A1) in view of Fitzpatrick (US 2009/0018220 A1).
Applicants’ claimed invention is directed to a process for producing methanol, comprising:" admixing a make-up gas stream from a reformer unit comprising hydrogen and carbon oxides with a hydrogen-containing stream from a hydrogen recovery stage to obtain a synthesis gas stream having a stoichiometry number SN, defined as SN = [n(H2) - n(CO2)] / [n(CO) + n(CO2)], of less than 2.0," combining the synthesis gas stream with a residual gas stream and the synthesis gas stream and the residual gas stream are passed through a bed of a methanol synthesis catalyst at elevated pressure and elevated temperature to obtain a product stream comprising methanol and the residual gas stream," cooling the product stream is cooled to separate methanol from the residual gas stream, and" separating a portion of the residual gas stream as a purge gas stream and sending the separated portion to the hydrogen recovery stage for producing the hydrogen-containing stream.
Colombo teaches a process for producing methanol. Colombo teaches a make-up gas stream (3) from an autothermal reformer unit comprising hydrogen and carbon oxides. Colombo explicitly teaches that this make-up gas from the autothermal reformer has a sub-stoichiometric content of hydrogen, defined by an R or SN number of less than 2.0. Colombo teaches passing a syngas feed through a gas-solid catalytic methanol synthesis loop over a CuO/ZnO/Al2O3 catalyst bed at elevated pressure and temperature(e.g. 50 to 100 bar, 250 to 300 C) to yield a raw/crude product stream comprising methanol and unreacted residual gas. Colombo teaches cooling the product stream to recover/separate the raw methanol from unreacted loop gases. Colombo teaches removing a purge gas stream from the loop containing unreacted hydrogen and inert compounds and recovering unreacted hydrogen from the loop purge gas using a hydrogen recovery unit such as membrane separation system or pressure swing adsorption apparatus. The recovered hydrogen stream is added back to the make-up gas feed line. See [0004]-[0005], [0008], [0022], [0030], [0078] and claim 1.
Colombo primarily differs from claim 18 in that Colombo teaches that the hydrogen recovered strictly from the loop purge gas is insufficient to fully adjust the stoichiometry up to an optimal value of 2.02 to 2.1 [0007], [0011]. To bridge this deficit, Colombo splits a portion of the raw reformer gas through an external water gas shift reactor to create a first hydrogen stream that is blended alongside the loop purge hydrogen. Consequently, Colombo lack an explicit disclosure of:
Admixing only the make-up gas stream and the loop-purge hydrogen stream to obtain a final synthesis gas stream that remain at a stoichiometry number SN of less than 2.0 directly prior to entering the loop. However, Fitzpatrick fills the gas by explicitly teaching a methanol synthesis loop optimized for handling synthesis gases that are continuously deficient in hydrogen (R<2) without requiring Colombo’s front-end water gas shift infrastructure [0001], [0003].
Fitzpatrick teaches that for an inherently hydrogen deficient feed (R<2), it is known to recover hydrogen from the loop purge gas stream using a hydrogen recovery unit and recycle it directly back into the feed gas stream [0004]. Fitzpatrick teaches balancing the loop constraints by admixing fresh compressed make-up gas with the recovered hydrogen-containing stream at the front end [0002], [0004].
It would have been obvious to a person having ordinary skill in the art (PHOSITA), prior to the effective filing date of the claimed invention to modify the methanol production process of Colombo by incorporating the continuous, un-shifted sub-stoichiometric loop -purging configuration taught by Fitzpatrick.
The PHOSITA would be motivated to operate the combined stream at a target SN <2 (as claimed) to eliminate Colombo’s costly and complex front-end split-stream water gas shift reactors [0012], [0014]. Colombo explicitly notes that water gas shift unit represent high capital expenditure and suffer from catalyst deactivation over time [0014]. By adapting Fitzpatrick’s teachings to manage a continuously sub-stoichiometric feed loop (SN<2) directly through targeted purge-gas hydrogen recycling, the PHOSITA would successfully minimize capital deployment while maximizing operational simplicity, arriving precisely at the sequence steps recited in claim 18.
Regarding claims 19, 24 and 25, Colombo teaches separating a portion of the gas streams at the front end to optimize mass balance distribution across the processing blocks [0021]. Fitzpatrick similarly teaches taking side-streams or portions of the fresh make-up gas or internal gases to fine-tune the volumetric flow rates entering the hydrogen recovery infrastructure [0005], [0007].
It would be obvious to a PHOSITA, prior to the effective filing date of the claimed invention to route a split proportion of the synthesis gas stream (between 0.1-0.95 or 0.001-0.999) to mix with the loop purge line as a routine optimization to prevent the hydrogen recovery membrane or PSA from stalling due to composition fluctuations.
Regarding claims 20, 21, 22 and 23, Colombo explicitly teaches compressing the fresh syngas feed to methanol synthesis loop conditions (50 to 100 bar) via a compressor system [0004]. Fitzpatrick similarly teaches that the fresh sub-stoichiometric make-up gas must be compressed, and the unreacted residual gases are continuously circulated via a loop circulator/compressor [0002].
Staging compressors, combining compressed gas lines, or adding a hydrogen booster compressor to match loop pressures represents basic, routine chemical engineering mechanics. It would be entirely obvious to a PHOSITA to place compressors upstream or downstream of the mixing junctions to satisfy baseline hydraulics and pressure drops.
Regarding claims 26, 27 and 28, Colombo explicitly details that the autothermal reformer naturally yields a sub-stoichiometric make-up gas stream with an R or SN number lower than 2.0 [0008], [0078], rendering claim 28 obvious.
Furthermore, Colombo [0008] and Fitzpatrick [0003] both identify operating parameters within sub-2.0 bounds. Optimizing the loop to sit precisely within a target envelope of 1.60 to 1.999 (claim 26) or 1.85 to 1.95 (claim 27) represents a routine optimization of a known process variable to balance reaction kinetics against catalyst longevity.
Regarding claim 29 and 30, Colombo explicitly discloses that downstream hydrogen recovery unit can be selectively configured to extract hydrogen utilizing either membrane separation or pressure swing adsorption (PSA) apparatuses [0005] and Figure 1. This disclosure directly anticipates or renders obvious the exact hardware limitation recited in claims 29 and 30.
Regarding claim 31, Colombo teaches the hydrogen recovery unit successfully separate unreacted high-purity hydrogen from inert compounds [0005]. Operating a PSA or membrane unit to yield a stream containing at least 80% hydrogen by volume is a standard engineering specification for commercial hydrogen recovery components. It would be entirely obvious to a PHOSITA to tune the recovery unit to achieve this industry-standard purity level [0030].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 18-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,024,485 in view of Colombo et al. (US 2024/0076255).
Claim 1 of the ‘485 patent teaches a methanol manufacturing process that mixes a reformer make-up gas with an hydrogen recovery unit derived hydrogen stream, passes the resulting synthesis gas and a residual recycle gas through a catalytic bed at elevated pressure and temperature, cools the stream to isolate liquid methanol, bleeds off a purge gas stream, splits a portion of the synthesis gas out, blends those two streams into a mixed synthesis gas stream, and routes it directly back to the hydrogen recovery stage.
This identical structural loop sequence is what is recited across present independent claim 18 and present dependent 19.
The sole patentable distinction between the granted claims of ‘485 patent and the present claims reside in the target operating parameter of the synthesis loop feed stream:
Granted ‘485 patent claim 1, requires an operating envelope where the synthesis gas stream is hydrogen-rich, possessing a stoichiometry number SN of not less than 2.0.
Present application claim 18 requires an operating envelope where the synthesis gas stream is hydrogen-deficient, possessing a stoichiometry number SN of less than 2.0
Colombo bridges this exact parameter gas by demonstrating that operating a methanol loop with a sub-stoichiometric feed is an established and predictable engineering alternative determined by the choice of upfront reforming technology.
Specially, Colombo discloses in paragraph [0008] and [0078] that depending on the front-end configuration adopted, a synthesis loop feed can possess a sub-stoichiometric content of hydrogen, explicitly defining this condition as a gas stream having a stoichiometric number lower than 2.0. Colombo further teaches in paragraph [0009] that this exact hydrogen-deficient profile (SN<2.0) is inherently and unavoidably produced when a plant utilizes a stand-alone autothermal reformer (ATR) running at a relatively low steam to carbon ratio.
It would have been entirely obvious to a person having ordinary skill in the art to modify the process protected in claim 1 of the ‘485 patent by adjusting the target stoichiometry number parameter from an SN of not less than 2.0 to an SN of less than 2.0 as recited in present claim 18.
A PHOSITA would be directly motivated to execute this operational adjustment when configuring the applicant’s patented closed-loop recycling plumbing to process raw gas originating from an autothermal reformer rather than a standard steam methane reformer. Colombo explicitly provides the economic motivation for making this change in paragraph [0009], teaching that utilizing a sub-stoichiometric ATR front-end is highly desirable to plant operators because it ensures a significantly lower consumption of fuel.
Because the granted claims of ‘485 patent already provide and protect the exact mechanical splitters, bypass lines, and blending junctions required to manage internal hydrogen recoveries, it represents nothing more than a routine, optimization-driven application of known engineering principles to scale down the target loop feed ration to an SN<2.0 when processing an inherently hydrogen-deficient ATR stream. The resulting process yields a entirely predictable shift in gas concentration without producing an unexpected or non-obvious technical result.
The dependent claims of the present application do not introduce any novel structure elements or parameter boundaries that can escape this ODP rejection. Their limitations map directly to the corresponding patent claims already granted to the applicant in the ‘485 patent as follows:
Present claim 19 relates to a bypass mixing sequence where a portion of the synthesis gas is removed and combined with the purge gas stream. This feature is identical to and directly protect the structural limitation already patented in the baseline text of ‘485 patent claim 1.
Present claims 20 and 21 dictate specific loop compression sequences for the syngas and residual gas. This compression layout fully mirrors the staging elements detailed in ‘485 patent claims 2 and 3. Staging compression lines to handle a sub-stoichiometric gas mixture instead of a hydrogen-rich mixture is a routine design step.
Present claims 22 and 23 specify a compression sequence utilizing a dedicated hydrogen compressor. This layout fully mirrors the machinery sequence protected in ‘485 patent claims 4 and 5. Sizing an identical compressor component to match a slightly lower molar flow rate is an obvious engineering selection.
Present claim 24 and 24 define the specific molar flow rate proportions for the splitter lines. These flow windows copy the exact splitter ratios of 0.1 to 0.95 and 0.001 to 0.999 protected in ‘485 patent claims 6 and 7. Preserving the identical splitter dimensions across a sub-stoichiometric loop is a predictable optimization.
Present claims 26 and 27 restrict the loop’s operating profile to tight sub-2.0 boundaries. This optimization corresponds conceptually to the target windowing approach used in ‘485 patent claim 8. Turning a known variable to sit between 1.60 and 1.999 represents routine optimization when guided by Colombo’s sub-2.0 ATR baseline.
Present claim 28 specifies a make-up gas stream with an SN of less than 2.0. This feature is directly disclosed and complemented by ‘485 patent claim 9, which already claims a fresh make-up gas stream with an SN of less than 2.0.
Present claims 29 and 30 limit the hydrogen recovery stage to a pressure swing adsorption (PSA) or a membrane separation stage. These hardware definitions fully mirror the apparatus choices protected in ‘485 patent claims 10 and 11, utilizing identical physical equipment to process the loop recycled gas.
Present claim 31 requires the hydrogen-containing stream to have a hydrogen proportion of at least 80% by volume. This parameter substantially overlaps with ‘485 patent claim 12, which already protects a hydrogen purity profile of at least 95% by volume. Setting a slightly lower purity threshold within the identical hardware configuration represents a minor, obvious variation in product constraints.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAFAR F PARSA whose telephone number is (571)272-0643. The examiner can normally be reached M-F 10:00 AM-6:30PM.
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/JAFAR F PARSA/Primary Examiner, Art Unit 1692
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