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 10/21/25 election without traverse of Group I (claims 1-20) is acknowledged. Claims 21-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
Drawings
The 4/21/23 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
Information Disclosure Statement (“IDS”)
The 4/21/23 IDS fails to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. The IDS has been placed in the application file, but the lined-through item therein (KR101198461) has not been considered. Applicant is advised that the date of any re-submission of any item of information contained in this IDS or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-4 and 17-19 are rejected under 35 U.S.C. 112(b)/2nd par. as 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. Claims 2-3 and 17-18 recite impurity levels being present “throughout [a/the] cycle time of 6.5 hours”, but do not specify whether i) the claimed method requires a 6.5 hour cycle time, or ii) such impurity levels would be present if a 6.5 hour cycle time were employed (i.e. a prospective, rather than required, method parameter). The foregoing uncertainty creates confusion as to the claimed scope and how to avoid infringement thereof, rendering claims 2-3 and 17-18 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. While interpretation ii) has been employed for prior art purposes via the broadest reasonable interpretation standard (MPEP 2111.03), these rejections must nevertheless be addressed.
Applicant is hereby advised that, as dependent claims 2-3 and 17-18 are rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claims 13-14 are rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites that its dry feed air stream contains <10 ppm CO2, but this is already recited in claim 1.
Claim 14 recites “wherein the second intermediate effluent contains no more than 10 ppm carbon dioxide” and depends from claim 1, which recites “a second intermediate effluent stream with less than 10 ppm carbon dioxide[.]” MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.). Since claim 14 may be infringed without necessarily also infringing claim 1, i.e. by a second intermediate effluent having 10 ppm CO2, claim 14 is rejected under 35 U.S.C. 112(d)/4th par. as an improper dependent claim.
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 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.
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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1-9 and 13-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Golden et al., US 2014/0308176 (published 10/16/14) (“Golden”). Regarding claims 1, 5, and 13-14, Golden teaches a method comprising i) forming “dry, purified air” by passing feed air 17 through a(n initial) layer 24a/26a of an adsorbent comprising alumina to remove water/moisture and CO2 from the air to give a CO2-lean and dry feed air comprising 1-10 ppm water and 1-10 ppm CO2 (see Golden at, e.g., par. 63-64, 70, 75-78, 86, 102, and 109; Figs. 1-2), ii) spiking the feed air with 5 ppm H2 and 10 ppm CO to give spiked air (see id. at, e.g. par. 102 and 109), iii) passing the spiked air through a first layer 24c/26c of hopcalite (a catalyst comprising manganese oxide and copper oxide) to remove at least some CO and H2 from the spiked air to give a first intermediate effluent stream (“FIES”) (see id. at, e.g., par. 15, 57, 79, 103, and 110; Figs. 1-2, 4, and 6), and iv) passing the FIES through an (intermediate) adsorbent layer 24d/26d comprising a zeolite/molecular sieve downstream of the first layer (see id. at, e.g., par. 80, 86, and 105; Fig. 2) where CO2 is removed from the FIES to give a second intermediate effluent stream (“SIES”) comprising ≤1 ppm CO2.
While Golden does not teach a further step (herein “v)”) of passing the SIES through a second catalytic layer (herein “24e/26e”) of manganese oxide and copper oxide, downstream of adsorbent layer 24d/26d to thereby remove at least H2 from the SIES to give a third intermediate effluent stream (“TIES”), it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so, as this only involves duplicating step iii) and its hopcalite layer 24c/26c. Motivation to provide such an additional catalyst layer (and pass the SIES through it to give a TIES) is given from the fact that H2 will eventually and undesirably break through Golden’s specifically-taught catalyst and adsorbent layers (see Golden at, e.g., Ex. 4; Fig. 6), and that preventing, decreasing, and/or delaying such H2 breakthrough is conversely desirable (esp. since Golden is drawn to removing H2 and CO impurities from gas streams such as air: see id. at, e.g., par. 1). MPEP 2143 I.(G).
In providing such an additional catalyst layer (and passing the SIES through it to give a TIES), the TIES would reasonably be expected to possess the residual H2 and CO impurity concentrations as claimed; it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps- it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Regarding claim 2 (interpreted as detailed above), Golden’s SIES stream 40 most preferably has residual H2 and CO contents of ≤10 ppb each. See Golden at, e.g., par. 68-69. Given the foregoing, and the obviousness of providing an additional catalyst layer (and pass the SIES through it to give a TIES) as detailed above, such a TIES would, a fortiori, reasonably be expected to have residual H2 and CO contents equal or lower than those in its SIES. MPEP 2144.01 (use of reasonably-drawn inferences from prior art teachings or suggestions is proper in obviousness rejections).
Regarding claims 3-4 (interpreted as detailed above), given the obviousness of providing an additional catalyst layer (i.e. 24e/26e, a duplicate of layer 24c/26c) downstream of Golden’s adsorbent layer 24d/26d (and pass the SIES through it to give a TIES) as detailed above, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, for the same reasons as those detailed above, to employ a further adsorbent layer (comprising a zeolite/molecular sieve as in, i.e. a duplicate of, layer 24d/26d), herein “24f/26f”, and pass the TIES through it to thereby remove residual water and CO2 therefrom and yield a purified stream. As Golden’s SIES stream 40 has residual H2O and CO2 contents of ≤1 ppm each (see Golden at, e.g., par. 80), and given the obviousness of sequentially providing an additional catalyst layer (and pass the SIES through it to give a TIES) and an additional adsorbent layer (and pass the TIES through it to give a purified stream) as detailed above, such a purified stream would, a fortiori, reasonably be expected to have residual H2O and CO2 contents equal or lower than those in its SIES or TIES. MPEP 2144.01 (use of reasonably-drawn inferences from prior art teachings or suggestions is proper in obviousness rejections).
Regarding claim 6, Golden’s spiked air has a residence time within hopcalite layer 24c/26c of ≥1.5 s, preferably ~2-5 s; a specific 1.2 s residence time is also taught. See Golden at, e.g., par. 60 and 110-11; MPEP 2123 & 2144.05.
Regarding claim 7, given the obviousness of providing an additional catalyst layer (i.e. 24e/26e, a duplicate of layer 24c/26c) downstream of Golden’s adsorbent layer 24d/26d (and pass the SIES through it to give a TIES) as detailed above, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ an identical residence time within layer 24e/26e, i.e. ≥1.5 s, preferably ~2-5 s; a specific 1.2 s residence time is also taught. MPEP 2123 & 2144.05.
Regarding claims 8-9, Golden’s SIES stream 40 most preferably has residual H2 and CO contents of ≤10 ppb each; ≤500 ppb H2 and CO residual concentrations are also specifically taught. See Golden at, e.g., par. 68-69 and 80. Given the foregoing, and the obviousness of providing an additional catalyst layer (and pass the SIES through it to give a TIES) and an additional adsorbent layer (and pass the TIES through it to give a purified stream) as detailed above, such a purified stream would, a fortiori, reasonably be expected to have residual H2 and CO contents equal or lower than those in its SIES or TIES. MPEP 2144.01 (use of reasonably-drawn inferences from prior art teachings or suggestions is proper in obviousness rejections).
Regarding claim 15, Golden’s feed air 17 is @ 3-25 bar and 5-60oC. See Golden at, e.g., par. 76.
Regarding claim 16, given the obviousness of providing an additional catalyst layer (i.e. 24e/26e, a duplicate of layer 24c/26c) downstream of Golden’s adsorbent layer 24d/26d (and pass the SIES through it to give a TIES) as detailed above, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, for the same reasons as those detailed above, to employ a further/2nd intermediate adsorbent layer (comprising a zeolite/molecular sieve as in, i.e. a duplicate of, layer 24d/26d), herein “24f/26f”, downstream of catalyst layer 24e/26e, and pass the TIES through adsorbent layer 24f/26f to thereby remove residual water and CO2 therefrom and yield a fourth intermediate effluent stream (“4IES”), and pass the 4IES through a 3rd catalyst layer of manganese oxide and copper oxide (i.e. duplicating layers 24c/26c and/or 24e/26e), herein “24g/26g”, downstream of adsorbent layer 24f/26f, thereby removing at least H2 from the 4IES to give a fifth intermediate effluent stream (“5IES”).
Regarding claim 17 (interpreted as detailed above), Golden’s SIES stream 40 most preferably has residual H2 and CO contents of ≤10 ppb each. See Golden at, e.g., par. 68-69. Given the foregoing, and the obviousness of providing an additional catalyst layer (and pass the 4IES through it to give a 5IES) as detailed above, such a 5IES would, a fortiori, reasonably be expected to have residual H2 and CO contents equal or lower than those in its 4IES. MPEP 2144.01 (use of reasonably-drawn inferences from prior art teachings or suggestions is proper in obviousness rejections).
Regarding claims 18-19 (interpreted as detailed above) and 20, given the obviousness of providing additional, alternating catalyst and adsorbent layers downstream of preceding catalyst and adsorbent layers (and sequentially passing intermediate effluent streams therethrough to give the corresponding subsequent intermediate effluent streams) as detailed above, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, for the same reasons as those detailed above, to employ a further adsorbent layer (comprising a zeolite/molecular sieve as in, i.e. a duplicate of, layer 24d/26d and/or 24f/26f), herein “24h/26h”, downstream of catalyst layer 24g/26g, and pass the 5IES through it to thereby remove residual water and CO2 therefrom and yield a purified stream. As Golden’s SIES stream 40 has residual H2O and CO2 contents of ≤1 ppm each (see Golden at, e.g., par. 80), and given the obviousness of sequentially providing an additional, alternating catalyst and adsorbent layers (and sequentially passing intermediate effluent streams therethrough to give the corresponding subsequent intermediate effluent streams) as detailed above, such a purified stream would, a fortiori, reasonably be expected to have residual H2O and CO2 contents equal or lower than those in its SIES or TIES. MPEP 2144.01 (use of reasonably-drawn inferences from prior art teachings or suggestions is proper in obviousness rejections).
Claim 10 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Golden as illustrated by applicant’s admitted prior art (“AAPA”). Regarding claim 10, Golden’s initial adsorbent layer 24a/26a comprises alumina as detailed above vis-à-vis claim 1. While Golden is silent as to its alumina’s ability to remove hydrocarbons (“HC”) and N2O, par. 7-8 of the specification-as-filed state that “The air stream exiting the bed of molecular sieve and/or activated alumina is substantially free of… [HC] and [N2O]” and “a bed of molecular sieve and/or activated alumina is quite capable of removing… [HC] and [N2O] from the cooled feed air.” It is noted that Golden teaches that activated alumina is employed in adsorbing water and CO2, and the air fed to adsorbent layer 24a/26a is cooled upstream thereof. See Golden at, e.g., par. 22 and 76; Figs. 1-2. As applicant’s quoted statements appear in the “Background” portion of the specification-as-filed, they are taken to be AAPA, and Golden’s (activated) alumina is considered to possess the claimed property. See also MPEP 2112.01.
Claims 11-12 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Golden as illustrated by the 2008 Constant et al. article (“Constant”)1. Regarding claims 11-12, Golden’s teachings and suggestions are as detailed above; Golden’s feed air 17 is @ 5-60oC or ~15-30oC, “i.e. about ambient temperature.” See Golden at, e.g., par. 67 and 76. While Golden is silent as to its feed air 17’s H2 and CO contents, Constant teaches that (0-20oC ambient) air comprises 270-420 ppb H2 and 87-144 ppb CO. See Constant at, e.g., Table 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/DANIEL BERNS/ February 13, 2026
Primary Examiner
Art Unit 1736
1 Note: Constant is not meant to be combined with Golden, but is merely cited to show the H2 and CO contents of Golden’s feed air 17 despite Golden’s silence thereon.