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 .
Response to Amendment
The examiner acknowledges Applicant’s response filed on 10/07/2025 containing remarks and amendments to the claims.
Claim Interpretation
In the Non-Final Rejection dated 07/16/2025, the examiner initially construed the limitation “wherein the C2H4-containing stream comprises at least a portion of a C2H4-containing stream produced by the reactor apparatus," recited in claim 9, as a functional limitation requiring a structure, e.g., a recycle pipe. In Remarks (pg. 6), Applicant submitted that “[t]he Office's interpretation-to require a "recycle pipe" or other particular hardware-imports structure that is not recited. Claim 9 recites a functional relationship between streams and the reactor apparatus and does not recite any specific structural implementation.”
In view of the Applicant’s remarks, claim 9 is interpreted such the recitation at issue will be treated as a functional intended use rather than a structural requirement. However, Applicant is reminded that “apparatus claims cover what a device is, not what a device does.” MPEP 2114. The recitation of how a stream is processed or routed pertains to a manner in which the claimed apparatus is intended to be operated. It does not define a structural difference between the claimed apparatus and the prior art. Accordingly, the recitation at issue will not be given patentable weight because any reactor capable of processing a C2H6-containing stream to produce a C2H4-containing stream is inherently capable of having a portion of its effluent diverted or recycled.
Response to Arguments
Applicant's arguments (see Remarks) respect to the rejection of claims 1-3 and 6-8 under 35 USC 103 over Keusenkothen et al. (US 2017/0305812) have been fully considered but they are not persuasive. On page 7, Applicant contends that “Keusenkothen’s apparatus drives any ethylene towards formation of aromatic hydrocarbons. Incidental formation is not a teaching that the reactor apparatus is configured to produce a C2H4-containing stream.”
The examiner respectfully disagrees. One of ordinary skill in the art would understand that ethane aromatization for producing aromatics also produces ethylene as byproduct and not just as an intermediate product. This is evidenced by Lauritzen et al. (US 2014/0256536 A1), which demonstrates that conversion of ethane over a catalyst comprising Pt and Ga deposited on a zeolite produces ethylene as a major byproduct ([0012]-[0020], [0034], [0045]-[0046]). Therefore, while an effluent from ethane aromatization in Keusenkothen is expected to comprise primarily heavier hydrocarbons, it is reasonably expected to also contain ethylene formed during the reaction, thereby reading on “a C2H4-containing stream” as recited in claim 1.
Applicant's arguments respect to the rejection of claims 9-12, 14, and 17 under 35 USC 103 over Basset et al. (US 2020/0171475 A1), in view of Gosling et al. (US 5,401,893) and Khabashesku et al. (US 2011/0257452 A1), have been fully considered but they are not persuasive. On page 11, Applicant argues that the applied references fail to teach or suggest “wherein the C2H6-containing stream comprises at least a portion of a C2H4-containing stream produced by the reactor apparatus" as recited in claim 9.
As discussed above, the recitation that the C2H6-containing stream comprising a portion of a C2H4-containing stream produced by the reactor apparatus is construed as a functional intended use rather than a structural requirement. The manner of operating the claimed apparatus does not define a structural difference between the claimed apparatus and the prior art. Furthermore, the reactor in Basset is directed to ethane aromatization, which is known to produce ethylene as a byproduct. Therefore, the reactor in Basset, which teaches all the structural limitations of claim 9, is deemed inherently capable of having a portion of its effluent diverted or recycled.
Applicant’s arguments with respect to the rejection of claims 15, 16, and 18-20 under 35 USC 103 over Basset et al. (US 2020/0171475 A1; provisional application filed on 08/17/2017), in view of Gosling et al. (US 5,401,893), have been fully considered and are persuasive. The applied references fail to teach a catalyst comprising “one or more of a Pt-Ga alloy, a Pt-Zn alloy, a Pt-Fe alloy, a Fe-Zn alloy, a Fe-Ga alloy, a Zn-Ga alloy, and oxides thereof.” The rejection has been withdrawn. However, a rejection of said claims is made under 35 USC 112(a).
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.
Claims 15-20 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 recites “a catalyst [..] comprising one or more of a Pt-Ga alloy, a Pt-Zn alloy, a Pt-Fe alloy, a Fe-Zn alloy, a Fe-Ga alloy, a Zn-Ga alloy, and oxides thereof” (emphasis added). The term “oxides thereof” in claim 15, as amended, is interpreted as referring to oxides of the recited alloys. However, such alloy oxide limitations are not supported by the originally-filed disclosure. Prior to the most recent amendment, claim 15 recited “one or more of Fe, Zn, Pt, Ga, alloys thereof, and oxides thereof” (see Claims filed on 04/14/2025). If Applicant intended the term “oxides thereof” to refer to oxides of the metals that were deleted during the amendment process, the claim must be corrected according to maintain support.
Claims 16-20 are also rejected under 35 U.S.C. 112(a) by virtue of their dependency upon claim 15.
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 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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Keusenkothen et al. (US 2017/0305812 A1), as evidenced by Lauritzen et al. (US 2014/0256536 A1).
Regarding claim 1, Keusenkothen discloses a method for catalytic aromatization and an apparatus for carrying out the method, the apparatus comprising:
a source of ethane ([0041]-[0043]); and
an apparatus in fluid communication with the source of ethane, the apparatus comprising ([0053], “the reactor”):
a housing structure configured and positioned to receive an ethane-containing stream from the source of ethane ([0053], “the catalyst bed”); and
discrete structures within the housing structure to catalyze the ethane-containing stream ([0052], “the catalyst”), each of the discrete structures comprising a composite medium comprising:
an aluminosilicate zeolite matrix ([0060]-[0061], “a molecular sieve component”); and
an EDH catalyst on surfaces of the matrix comprising Fe, Zn, Pt, and/or Ga ([0067], “a dehydrogenation component comprises the active metal…. [the] active metal is a first active metal selected from the group consisting of and includes one or more of zinc, gallium, indium, copper, silver, tin, iron, cobalt, nickel, gold, manganese, chromium, molybdenum, tungsten, and mixtures of two or more thereof”; [0068], “the second active metal is selected from the group consisting of and includes one or more of phosphorus, platinum, palladium, lanthanum, rhenium, and mixtures of two or more thereof”).
Keusenkothen does not explicitly teach that the catalyst catalyzes a dehydrogenation reaction of ethane to produce an ethylene-containing stream. However, the reference and the instant invention teach the same catalyst (zeolite matrix and dehydrogenation metals) and overlapping temperature and pressure conditions (Keusenkothen: [0052]; Spec: [0054], [0088]). Therefore, one skilled in the art would reasonably expect the Keusenkothen process to produce an effluent containing at least some amount of ethylene, absent any evidence to the contrary.
In addition, one of ordinary skill in the art would understand that ethane aromatization for producing aromatics also produces ethylene as byproduct and not just as an intermediate product. This is evidenced by Lauritzen et al. (US 2014/0256536 A1), which demonstrates that conversion of ethane over a catalyst comprising Pt and Ga deposited on a zeolite produces ethylene as a major byproduct ([0012]-[0020], [0034], [0045]-[0046]). Therefore, while an effluent from ethane aromatization in Keusenkothen is expected to comprise primarily heavier hydrocarbons, it is reasonably expected to also contain ethylene formed during the reaction, thereby reading on “a C2H4-containing stream” as recited in claim 1.
Keusenkothen does not explicitly teach that the EDH catalyst comprises one or more clusters and particles having a particle size less than or equal to about 50 nm.
However, the reference discloses that the catalyst particles comprising the zeolite matrix and the active metal (corresponding to the claimed composite medium) can be processed into a wide range of sizes including a range of from 50 nm to 10 µm ([0073]). A composite medium particle size of 50 nm is interpreted to suggest even smaller particle sizes of active metals deposited on the zeolite matrix (corresponding to the claimed EDH catalyst), thereby overlapping the claimed range of “less than or equal to about 50 nm.”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05. I.
Regarding claim 2, Keusenkothen teaches that the reactor may contain a fixed catalyst bed and that the catalyst can be in the form of pellets ([0052]-[0053]).
Regarding claim 3, Keusenkothen teaches that the feedstock is heated to a temperature from 400°C to 750 °C ([0051]), which implies a heating device configured to heat the ethane-containing stream.
Regarding claim 6, Keusenkothen teaches that the catalyst can be used in the form of pellets with a size of ≥ 1mm ([0073]), which overlaps and renders obvious the claimed range of “about 0.25 cm to about 2.5 cm.”
Regarding claim 7, Keusenkothen teaches that the zeolite matrix can be ZSM-5 or HZSM-5 ([0065], [0077]).
Regarding claim 8, Keusenkothen teaches that the feedstock may contain propane and butane (C3 and C4 hydrocarbons) in addition to ethane ([0041]).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Keusenkothen et al. (US 2017/0305812 A1), as applied to claim 1, and further in view of Harris (US 4,313,013).
Regarding claims 4-5, Keusenkothen teaches the system of claim 1, as discussed above.
Keusenkothen does not explicitly disclose that the system further comprises a membrane separation apparatus configured and positioned to receive a C2H4-containing stream produced by the reactor apparatus and at least partially separate C2H4 from H2 by permitting H2 molecules to pass through the membrane separation apparatus while substantially preventing C2H4 molecules from passing therethrough.
However, Harris teaches a palladium or palladium alloy hydrogen diffusion membrane which can be used to recover hydrogen from a mixture of it with a hydrocarbon produced by a dehydrogenation process (col. 1, lines 18-42; cl. 7). Harris notes that the membrane is selectively permeable to hydrogen, suggesting that the membrane is configured to permit H2 to pass therethrough while substantially preventing ethylene from passing therethrough (col. 2, lines 4-32).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Keusenkothen by including a membrane separation apparatus downstream of the dehydrogenation reactor such that the membrane apparatus is configured to recover hydrogen from ethylene via selective permeation, because (i) Keusenkothen teaches a system for carrying out aromatization of paraffins ([0001]), which is known to involve dehydrogenation and thus produce hydrogen as a byproduct, (ii) Harris teaches a known membrane separation apparatus useful for separating hydrogen from dehydrogenated hydrocarbon, such as ethylene (col. 1, lines 18-42; Example I), and (iii) this involves application of a known separation technique to recover a valuable product (hydrogen) which can be used in other refining processes.
Claims 9-12, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Basset et al. (US 2020/0171475 A1; provisional application filed on 08/17/2017), in view of Gosling et al. (US 5,401,893) and optionally Khabashesku et al. (US 2011/0257452 A1).
Regarding claim 9, Basset teaches an apparatus comprising ([0019], “The invention of the present disclosure relates to … methods of dehydrocyclization of hydrocarbon.” The apparatus implied by the reference for operating the dehydrocyclization corresponds to the claimed system):
a source of C2H6 ([0047], “… the alkane may include one or more of ethane, propane, n-butane, isobutane, n-pentane, 2-methybutane, 2,2-dimethypentane”);
a reactor apparatus in fluid communication with the source of C2H6 and comprising ([0058], “PID reactor”):
a housing structure configured and positioned to receive a C2H2-containing stream from the source of C2H6 ([0046], the reaction zone within the reactor corresponds to “a housing structure);
one or more structures within the housing structure, the one or more structures comprising a composite medium comprising ([0019], “dehydrocyclization catalyst”):
a microporous aluminosilicate zeolite matrix ([0034], “The molecular sieve material may include a microporous material”);
an ethane dehydrogenation (EDH) catalyst formulated to promote an EDH reaction with the C2H6 of the source of C2H6 to produce ethylene (C2H4) and comprising one or more Fe, Zn, Pt, Ga, alloys thereof, and oxides thereof; and
at least one alkali metal ([0035], “the dehydrogenation metal may include one or more of Ti, Zn, Ni, Mo, Nb, Ga, Sr, Sn, Cu, Ru, W, Ta, Cr, V, Hf, Co, Ce, Ir, Pt, Os, Zr, Cs, Li, Mg, Mn, Fe, V, Re, Pd, Au, Cd, Ag, Bi, and La” [emphasis added]).
It is acknowledged that Basset only includes lithium in the list of exemplary metals in para. [0035] and is silent on sodium and potassium. However, the reference does disclose “[t]he dehydrogenation metals may include, among other things, alkali metals” ([0035]), which is interpreted to refer to all alkali metals that are known to be useful for dehydrocyclization.
For example, Gosling, which is drawn to a process for converting aliphatic C2-C6 hydrocarbons into C6+ aromatics, teaches a dehydrocyclization catalyst that contains an alkali metal component chosen from cesium, rubidium, potassium, sodium and lithium (col. 2, lines 43-45; col. 6, lines 44-46)
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Basset by choosing sodium or potassium as an alkali metal component, because (i) Basset suggests that the dehydrogenation metals may include alkali metals, (ii) preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, (iii) Gosling teaches that a dehydrocyclization catalyst containing alkali metals, wherein suitable alkali metals include sodium and potassium, and (iv) this merely involves application of a known catalyst component to yield predictable results.
Basset does not teach that the C2H6-containing stream comprises at least a portion of the a C2H4-containing stream produced by the reactor apparatus.
However, the recitation that the C2H6-containing stream comprising a portion of a C2H4-containing stream produced by the reactor apparatus is construed as a functional intended use rather than a structural requirement. The manner of operating the claimed apparatus does not define a structural difference between the claimed apparatus and the prior art. Furthermore, the reactor in Basset is directed to ethane aromatization, which is known to produce ethylene as a byproduct. Therefore, the reactor in Basset, which teaches all the structural limitations of claim 9, is deemed inherently capable of having a portion of its effluent diverted or recycled.
Alternatively, Khabashesku, drawn to a process of aromatization of paraffins over a catalyst comprising a molecular sieve and a metal dehydrogenation catalyst, teaches that the reaction products can be separated and then lower alkanes, such as ethane and propane, can be recycled and used as co-feed to the aromatization reaction ([0024], [0042]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Basset by recycling ethane from the reaction product and co-feed the recovered ethane to the reactor, because (i) the Basset process produces byproducts including ethane ([0050]), (ii) Khabashesku, drawn to a similar reaction process, suggests lower alkanes from the reaction product can be recovered and recycled to the reactor, and (iii) this merely involves application of a known technique (recycling) to improve a known process to yield predictable results.
Regarding claim 10, the limitation of claim 10 is directed to a functional intended use of the claimed apparatus. In any event, Basset discloses that the reaction products may include ethane ([0050]).
Regarding claim 11 and 12, Khabashesku discloses that the aromatization reaction products can be processed and separated by cooling or other standard recovery or separation techniques, wherein hydrogen is recovered for use in refining or petrochemical processing and lower alkanes, such as ethane and propane, are recovered and recycled to the aromatization reactor ([0052]). Thus, the reference is interpreted to teach employing a separation apparatus configured and positioned to receive the reaction products produced by the reactor apparatus and at least partially separate ethane from hydrogen to form an ethane-enriched stream, which is recycled to the reactor.
Regarding claim 14, Basset discloses an example in which the amount of Zn on the support is 2.7 wt% ([0055]), which lies within the claimed range of “about 0.5 wt% to about 20 wt% of the EDH catalyst.”
Regarding claim 17, Basset teaches the reactor apparatus of claim 15, as discussed above.
Basset does not explicitly teach that the reactor is a fixed bed reactor or a fluidized bed reactor.
However, Khabashesku, drawn to a process of aromatization of paraffins over a catalyst comprising a molecular sieve and a metal dehydrogenation catalyst, teaches that the reaction can be conducted in a fixed-bed or a fluidized bed reactor ([0024], [0042]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Basset by operating the dehydrocyclization (aromatization) reaction in a fixed bed reactor or a fluidized bed reactor, as taught by Khabashesku, because (i) Basset is silent on reactor types that can be used to operate the dehydrocyclization, (ii) Khabashesku, drawn to a similar reaction process, suggests the use of a fixed bed reactor or a fluidized bed reactor, and (iii) this merely involves application of a known reactor to operate a similar reaction to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON Y CHONG whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON Y CHONG/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772