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
In Applicant response dated June 24, 2026, claims 1 and 5-8 are amended. Claims 2-4 and 12-20 are canceled. Claims 21-24 are new. Claims 1, 5-11 and 21-24 are pending and examined.
Status of Application
The Applicant’s amendments to claim 1 are sufficient to overcome the statutory type Double Patenting rejection provided in the Office Action dated 3/26/2026; however, in view of Applicant amendments and new claims, nonstatutory Double Patenting rejections are applied below.
The Applicant’s amendments to claim 1 overcome the anticipation rejections in the recited Office Action; thus, those rejections are withdrawn.
Modified rejections are provided below as necessitated by Applicant amendments to claim 1.
Claim Objections
Claim 1 is objected to because of the following informalities: line 11 recites “a second sorption sulfur species sorbent”, which appears to be a typographical error. For purpose of compact prosecution, the Examiner has interpreted line 11 as “a second sulfur species sorbent”. If the interpretation is incorrect, the Examiner will provide 35 U.S.C. 112(b) rejections in future Office Actions for claim 5, which depends on claim 1 and requires “the second sulfur species sorbet” in line 5.
Claim 21 is objected to because of the following informalities: line 2 recites “at least one organosulfur species comprise” and should be corrected to “at least one organosulfur species comprises”.
Appropriate correction is required.
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 1, 5-11, and 22-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/759423 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 1 is obvious over claims 1-5 of the reference application (where the claimed water is inherently required for hydrolysis). Further, claim 10 in the reference application is obvious over instant claim 1.
Claim 5 is obvious over claim 5 of the reference application.
Claim 6 is obvious over claim 6 of the reference application due to overlapping ranges for the volume of the hydrolysis bed, first sorption bed, and second sorption bed.
Claim 7 is obvious over claim 7 of the reference application for the limitation the first sorption bed is located between the hydrolysis bed and the second sorption bed.
Claim 8 is obvious over claim 8 of the reference application.
Claim 9 is obvious over claim 9 of the reference application.
Claim 10 is obvious over claim 11 of the reference application.
Claim 11 is obvious over claim 11 of the reference application.
Claims 22-24 are obvious over claim 2 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. [US2006140852A as provided on the IDS dated 02/04/2025 and the EPO dated 12/11/2024], hereinafter Russell.
Regarding Claim 1, Russell discloses a fuel desulfurization system [Russell throughout, Figs. 1-6], comprising:
at least one reaction vessel [Russell 0030, 0077-0124 and throughout, Figs. 1, 2, 4, 6. Fig. 1 vessel 102/124; Fig. 2 vessel 202/218/226; Fig. 4 vessel 202/224/226; Fig. 6 vessel 408/412] comprising an inlet and an outlet [Russell 0012, 0030, 0077, 0077-0124 and throughout, Figs. 1, 2, 4, 6, The broadest reasonable interpretation of Russell would be that an inlet and an outlet are inherently required for the entry and exit of fuel from each of the reactors. See MPEP 2112- There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Specifically, Fig. 1 has an inlet prior to reactor 102 and an outlet after reactor 124; Fig. 2 has an inlet prior to 218 and after 226; Fig. 4 has an inlet prior to 202 and an outlet after 226 ; Fig. 6 has an inlet prior to 408 and an outlet after 412.]
a hydrolysis bed located in the at least one reaction vessel [Russell 0012, 0035, 0079, 0091, 0107, and throughout, claim 13; Figs. 1/2/4, beds 104/220/204] and comprising a hydrolysis catalyst [Russell 0012, 0079-0085, 0091-0092 ,0106-0110, 0124 and throughout, claim 16] configured to hydrolyze at least one sulfur species in a fuel received from the inlet [Russell 0011, 0079, and throughout, conversion of CXS to hydrogen sulfide, where CXS is, for example, carbonyl sulfide or carbon disulfide] using water to generate hydrogen sulfide and carbon dioxide [Russell 0012-0015, 0056-0057 and throughout], the at least one sulfur species comprising at least one of carbonyl sulfide or carbon disulfide [Russell 0011-0012, 0035, 0038, 0079-0094, 0106-0109, and throughout, one or both are taught]; and
a first sorption bed located in the at least one reaction vessel downstream of the hydrolysis bed [0012, 0035, 0091 and throughout, claim 13; Figs. 1/2/4, beds 126, 228 (or alternatively 206, see rearrangement of modified Fig. 2 below), and 224/226] and comprising a first sulfur species sorbent configured to sequester at least one organosulfur species in the fuel output [Russell 0011-0012, 0023-0038, 0056-0057 and throughout, Russell teaches solid sorbets for sequestering hydrogen sulfide as well as organosulfur for embodiments of Fig. 1, 2, and 4; thus, it would be obvious to try a sorbent for organosulfur. See MPEP 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.] from the hydrolysis catalyst [Russell 0086-0118 and throughout, Figs. 1/2/4, any of beds 126 (Fig. 1), 228 (Fig. 2), or 224/226 (Fig. 4) would be considered to receive fuel output from the hydrolysis catalyst 104, 220, and 204, respectively];
and a second sorption bed located in the at least one reaction vessel and comprising a second sulfur species sorbent configured to sequester the hydrogen sulfide in the fuel output [Russell 0011-0012, 0023-0038, 0056-0057, 0086-0118, and throughout, Fig. 2 bed 228 and Fig. 4 the other of bed 224/226 reads on the limitation. Russell’s solid sorbet sequesters hydrogen sulfide as well as organosulfur; thus, it would be obvious to try a sorbent for hydrogen sulfide per MPEP 2143 E.].
Russell is silent to the second sulfur species sorbent is different from the first sulfur species sorbent and is silent to the second sorption bed is configured to receive the fuel output from the first sorption bed; however, the claim limitations are obvious over Russell as described below.
Russell teaches the sorbents for removing hydrogen sulfide are wide ranging including molecular sieves or reactive sorbents such as zinc oxide, iron oxide, copper oxide, and nickel on alumina, all of which have high capacities for hydrogen sulfide [Russell 0094-0095] and teaches solid sorbents for sorbing organosulfur compounds such as molecular sieves and molecular sieves that have been ion exchanged with one or more transition metals, such as Ag, Cu, Ni, Zn, Fe and Co. Molecular sieves include the X-type, A-type, Y-type, and beta-type [Russell 0061-0063]. Russell teaches the type of sorbents required depend on the design requirements of the system such as the amount of sulfur in the fuel, the type of fuel, purging [0060-0072, 0094-0095]. It would have been obvious to one of ordinary skill in the art before the effective filing date to use Russell’s teachings to select a sorbent for sorbing organosulfur compounds that is different from the sorbent for sorbing hydrogen sulfide as described above with a reasonable expectation of success in removing both organosulfur compounds and hydrogen sulfide from the fuel stream as needed for the specific desulfurization requirements. See MPEP 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, Russell teaches there may be additional sorption beds as determined by the design requirements for the system [Russell 0060 and throughout]. Further, Russell teaches the locations of the sorption beds relative to the hydrolysis bed may change due to the requirements of the desulfurization system [Russell 0117 and throughout]. it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Russell’s desulfurization system such that a first sorption bed is after the hydrolysis bed and the second sorption bed is after the first sorption bed. Such modification is obvious per MPEP 2144.04 C, rearrangement of parts, and or MPEP 2144.04 B, duplication of parts.
For example, such modification merely requires an additional sorption bed 124 of Fig. 1 before or after the first sorption bed 124, or an additional sorption bed 206 or 228 of Fig. 2 before or after sorption bed 228 , or additional sorption beds 224/226 of Fig. 4 before or after the first sorption bed 224 and/or 226, all additional sorption beds with the second sulfur species sorbent as described above. Regarding modifying the Fig. 2 embodiment such that sorption bed 206 is after hydrolysis (i.e. like the embodiment of Fig. 4 where sorption or organosulfur is after hydrolysis [Russell 0117]), such modification can be provided by duplicating sorption bed 206 after the hydrolysis bed 220 or by rearrangement. Russell explicitly teaches that hydrolysis may precede organosulfur sorption [Russell 0015 and throughout]. See below for clarity.
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Figure 2, modified Russell
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Russell as provided above since such modification of providing additional sorption beds would not change the function of the sorption beds, which is obvious per MPEP as described above, and such modification could provide removal of additional sulfur species from the fuel to reduce potential poisoning of the catalysts [Russell 0005].
Alternative rejection of claim 1:
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. [US2006140852A as provided on the IDS dated 02/04/2025 and the EPO dated 12/11/2024], hereinafter Russell, and in further view of Katikaneni et al. US20050022449A1, hereinafter Kat’.
Regarding Claim 1, Russell discloses a fuel desulfurization system [Russell throughout, Figs. 1-6], comprising:
at least one reaction vessel [Russell 0030, 0077-0124 and throughout, Figs. 1, 2, 4, 6. Fig. 1 vessel 102/124; Fig. 2 vessel 202/218/226; Fig. 4 vessel 202/224/226; Fig. 6 vessel 408/412] comprising an inlet and an outlet [Russell 0012, 0030, 0077, 0077-0124 and throughout, Figs. 1, 2, 4, 6, The broadest reasonable interpretation of Russell would be that an inlet and an outlet are inherently required for the entry and exit of fuel from each of the reactors. See MPEP 2112- There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Specifically, Fig. 1 has an inlet prior to reactor 102 and an outlet after reactor 124; Fig. 2 has an inlet prior to 218 and after 226; Fig. 4 has an inlet prior to 202 and an outlet after 226 ; Fig. 6 has an inlet prior to 408 and an outlet after 412.]
a hydrolysis bed located in the at least one reaction vessel [Russell 0012, 0035, 0079, 0091, 0107, and throughout, claim 13; Figs. 1/2/4, beds 104/220/204] and comprising a hydrolysis catalyst [Russell 0012, 0079-0085, 0091-0092 ,0106-0110, 0124 and throughout, claim 16] configured to hydrolyze at least one sulfur species in a fuel received from the inlet [Russell 0011, 0079, and throughout, conversion of CXS to hydrogen sulfide, where CXS is, for example, carbonyl sulfide or carbon disulfide] using water to generate hydrogen sulfide and carbon dioxide [Russell 0012-0015, 0056-0057 and throughout], the at least one sulfur species comprising at least one of carbonyl sulfide or carbon disulfide [Russell 0011-0012, 0035, 0038, 0079-0094, 0106-0109, and throughout, one or both are taught]; and
a first sorption bed located in the at least one reaction vessel downstream of the hydrolysis bed [0012, 0035, 0091 and throughout, claim 13; Figs. 1/2/4, beds 126, 228 (or alternatively 206, see rearrangement of modified Fig. 2 below), and 224/226] and comprising a first sulfur species sorbent configured to sequester at least one organosulfur species in the fuel output [Russell 0011-0012, 0023-0038, 0056-0057 and throughout, Russell teaches solid sorbets for sequestering hydrogen sulfide as well as organosulfur for embodiments of Fig. 1, 2, and 4; thus, it would be obvious to try a sorbent for organosulfur. See MPEP 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.] from the hydrolysis catalyst [Russell 0086-0118 and throughout, Figs. 1/2/4, any of beds 126 (Fig. 1), 228 (Fig. 2), or 224/226 (Fig. 4) would be considered to receive fuel output from the hydrolysis catalyst 104, 220, and 204, respectively];
and a second sorption bed located in the at least one reaction vessel and comprising a second sulfur species sorbent configured to sequester the hydrogen sulfide in the fuel output [Russell 0011-0012, 0023-0038, 0056-0057, 0086-0118, and throughout, Fig. 2 bed 228 and Fig. 4 the other of bed 224/226 reads on the limitation. Russell’s solid sorbet sequesters hydrogen sulfide as well as organosulfur; thus, it would be obvious to try a sorbent for hydrogen sulfide per MPEP 2143 E.].
Russell is silent to the second sulfur species sorbent is different from the first sulfur species sorbent and is silent to the second sorption bed is configured to receive the fuel output from the first sorption bed; however, the claim limitations are obvious over Russell as described below.
Russell teaches the sorbents for removing hydrogen sulfide are wide ranging including molecular sieves or reactive sorbents such as zinc oxide, iron oxide, copper oxide, and nickel on alumina, all of which have high capacities for hydrogen sulfide [Russell 0094-0095] and teaches solid sorbents for sorbing organosulfur compounds such as molecular sieves and molecular sieves that have been ion exchanged with one or more transition metals, such as Ag, Cu, Ni, Zn, Fe and Co. Molecular sieves include the X-type, A-type, Y-type, and beta-type [Russell 0061-0063]. Russell teaches the type of sorbents required depend on the design requirements of the system such as the amount of sulfur in the fuel, the type of fuel, purging [0060-0072, 0094-0095]. It would have been obvious to one of ordinary skill in the art before the effective filing date to use Russell’s teachings to select a sorbent for sorbing organosulfur compounds that is different from the sorbent for sorbing hydrogen sulfide as described above with a reasonable expectation of success in removing both organosulfur compounds and hydrogen sulfide from the fuel stream as needed for the specific desulfurization requirements. See MPEP 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, Russell teaches there may be additional sorption beds as determined by the design requirements for the system [Russell 0060 and throughout]. Further, Russell teaches the locations of the sorption beds relative to the hydrolysis bed may change due to the requirements of the desulfurization system [Russell 0117 and throughout].
Kat’ teaches a reaction vessel of Fig. 1 with a desulfurization system 106 with a first sorption bed 106A comprising a first sulfur species sorbent 202 and a second sorption bed 106B connected in series with the first sorption bed and comprising a second sulfur species sorbent 204 [Kat’ 0019-0021, 0031-0035]. For example, the first sulfur sorbent species traps higher molecular weight organosulfur containing compounds and the second sulfur sorbent species traps lower molecular weight organosulfur compounds. Kat’ further teaches the first and second sulfur sorbents are different with some as sorbents for organosulfur and others as sorbents for hydrogen sulfide [Kat’ 0031-0035]. Kat’ further teaches hydrolysis using a catalyst to produce hydrogen sulfide by reaction with the sulfur compounds in the fuel [Kat’ 0004 and throughout]. It would be within the ambit of the skilled artisan to apply Kat’ teachings to Russell’s fuel desulfurization system by substituting Kat’s first and second sorption beds 106A/106B with different first and second sulfur sorbents and the associated conduits and valves of Fig. 1 such that the sorption beds are connected in series for any of Russell’s embodiments as follows:
bed 124 with sorbent 126 in Fig. 1,
bed 226 with sorbent 228 in Fig. 2, or
the sorbent beds and valve system replacements as would be understood by one of ordinary skill in the art in Fig. 4.
Such combination meets the limitations of claim 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Kat’s teachings in Russell’s desulfurization system as described above for the predictable result of a desulfurization system designed to capture a broad range of sulfur-containing compounds [Kat’ 0031-0035] such as organosulfur species [Russell 0005 and throughout; Kat’ 0031-0035] and hydrogen sulfide [Russell 0011 and throughout; Kat’ 0031-0035] to reduce the chances of poisoning catalyst used to convert the feed to hydrogen for the fuel cell [Russell 0005; Kat’ 0003].
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Claim(s) 6-11 and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell, or alternatively Russell in view of Kat’, as provided for claim 1 above, both are referenced as modified Russell below.
Regarding Claim 6, modified Russell discloses the desulfurization system of claim 1 but does not provide the volume % of each of the hydrolysis bed, first sorption bed, and second sorption bed as it relates to the total volume of the reaction vessel as required in the claim. However, it would be obvious to one of ordinary skill that the size of each of the beds, and thus the volume % as compared to the total volume of the reaction vessel, would be a result effective variable dependent on the specific design of the desulfurization system and the sorbents applied to the sorbent bed. For example, Russell teaches regeneration of solid sorbents to support a more compact system with reduced maintenance [Russell 0010, 0018-0020] and further teaches the volume of sorbent depends on temperature, pressure, purge to feed ratio, the components of the fuel, and the sorbents used [Russell 0059]. Even further, Russell teaches the volume of the sorbent bed is “a design choice based upon the duration that the bed is to be used before being replaced or regenerated with a given concentration of sulfur compounds in the feed” [Russell 0087]. It would be within the ambit of the skilled artisan to apply Russell’s teachings to determine the workable range of volume % for each of the hydrolysis and sorbent beds relative to the size of the reaction vessel by balancing the specific design requirements for the desulfurization system as discussed above through routine experimentation, which is obvious per MPEP 2144.05II,A. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
Regarding Claim 7, modified Russell discloses the fuel desulfurization system of claim 1, wherein: the first sorption bed is located between the hydrolysis bed and the second sorption bed [Russell, as modified above: In modified Fig. 2, the first sorbent bed 206 is after the hydrolysis bed 220 and before the second sorbent bed 228. Russell combined with Kat’, the first and second sorption beds connected in series are provided after Russell’s hydrolysis bed]. Russell does not explicitly teach the at least one reaction vessel comprises a first reaction vessel having the inlet and the outlet; the hydrolysis bed, the first sorption bed, and the second sorption bed are located in the first reaction vessel; however, Russell explicitly teaches the hydrolysis and removal of hydrogen sulfide can be position within the same vessel [Russell 0097]. Thus, such modification of any of Russell’s embodiments of modified Fig. 1 or Russell Figs. 1/2/4 modified by Kat’ would merely require making the Russell hydrolysis and sorption beds integral within one vessel such that the input is the fuel entry and the output is the desulfurized fuel for the fuel cell. This modification would be obvious per MPEP 2144.04 V, making integral or continuous. For clarity, see below.
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Regarding Claim 8, modified Russell discloses the fuel desulfurization system of claim 1. Russell does not explicitly teach the configuration of claim 8; however, modification of Russell to meet the limitation “wherein: the at least one reaction vessel comprises a first reaction vessel having the inlet and a second reaction vessel having the outlet; an intermediate fuel conduit connects an intermediate outlet of the first reaction vessel to an intermediate inlet of the second reaction vessel; the hydrolysis bed is located in the first reaction vessel; and the first sorption bed and the second sorption bed are located in the second reaction vessel” merely requires obvious modifications.
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Figure 2 modified
Specifically in Fig. 2, reactor 218 reads on the first reaction vessel having an inlet, where the fuel enters 218, which contains hydrolysis bed 220. Russell’s line 216 reads on the claimed intermediate conduit, which connects the outlet of the reactor 218 with the inlet of sorption bed 202 as the respective intermediate outlet and inlet. Modification of Russell modified Fig. 2 meeting the claimed configuration merely requires integrating the reactors 202 and 226, containing the first sorption bed 206 and second sorption bed 228, respectively, as a second reaction vessel. For the modifications of Russell in view of Kat’ of claim 1, the claimed features are shown below. These modifications would be obvious per MPEP 2144.04 V, making integral or continuous.
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Regarding Claim 9, modified Russell discloses the fuel desulfurization system of claim 8, further comprising:
a fuel source conduit fluidly connecting the inlet of the first reaction vessel to a fuel source [Russell 0085, 0091, 0111 and throughout, Fig. 1, feed line 106; Fig. 2 feed line 204; Fig. 4 feed line 206 as the fuel source conduits connected to the feedstock as the fuel source];
a heating device located on or adjacent to at least one of the first reaction vessel or the fuel source conduit [Russell 0085, 0091, 0111, and throughout, Russell teaches a heat exchangers (Fig. 1, exchanger 114; Fig. 2 exchanger 210, Fig. 4 exchanger 214) increases the temperature for the hydrolysis reaction, which are adjacent to the hydrolysis beds in the first reaction vessel as shown above.]; and
a cooling device located on or adjacent to the intermediate fuel conduit [Russell 0086, 0093, 0111-0112 and throughout, Russell teaches after hydrolysis it may be necessary to adjust the temperature of the line after the hydrolysis bed. Specifically, in Fig. 1, heat exchanger 108 cools the fuel after the hydrolysis bed 102 [0086]. In Fig. 2, Russell teaches heat exchange may or may not be required depending on the temperature of line 224 [0093]. In Fig. 4, Russell teaches the effluent after hydrolysis reactor 202 may be cooled through heat exchanger 208 or a length of piping where ambient heat loss provides cooling [0111-0112]. Each of these embodiments reads on the limitation since the cooling would be on or adjacent to the intermediate fuel conduit between the hydrolysis bed and the sorbent beds.].
Regarding Claim 10, modified Russell discloses the fuel desulfurization system of claim 1, wherein the outlet is fluidly connected to a fuel cell system [Russell discussed throughout- see abstract; 0086, Fig. 1, fluidly connected through line 128 to hydrogen generator for fuel cell; 0095, Fig. 2, fluidly connected through line 230 to hydrogen generator for fuel cell; 0112-0116, Fig. 4, fluidly connected through line 234 to 260 as reformate for a fuel cell].
Regarding claim 11, modified Russell discloses the fuel desulfurization system of claim 10, wherein: the inlet is fluidly connected to a fuel source [Russell 0001-0021 and throughout, The hydrocarbon feed is the fuel source, as discuss throughout, which is fluidly connected to the desulfurization system inlet as described in claim 1.]; and
the hydrolysis catalyst is configured to hydrolyze the at least one sulfur species in the fuel received from the inlet using a portion of the water in the fuel [Russell 0015, 0057, and throughout, Water from the fuel can be used in hydrolysis.].
Russell teaches fuels such as natural gas, propane, butane, liquified petroleum gas [Russell 0003, 005, and throughout] and does not explicitly teach a biogas as the fuel source; however, for a biogas fuel source having the same sulfur compounds as natural gas, propane, butane, liquified petroleum gas fuels taught by Russell, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply Russell’s fuel desulfurization system for use with a biogas fuel source for predictable result of a biogas with sulfur removed to protect the fuel cell system [Russell 0005 and throughout].
Regarding Claim 21, modified Russell discloses the fuel desulfurization system of claim 1, wherein the at least one organosulfur species comprises at least one of light mercaptans, dimethyl sulfide or thiophenes [Russell 0045 and throughout].
Regarding Claim 22, modified Russell discloses the fuel desulfurization system of claim 1, wherein at least one sulfur species comprises both the carbonyl sulfide and the carbon disulfide [Russell 0011-0012, 0035, 0038, 0079-0094, 0106-0109, and throughout, One or both are taught, and the limitation is thus met.].
Regarding Claim 23, modified Russell discloses the fuel desulfurization system of claim 22, wherein at least one sulfur species comprises the carbonyl sulfide [Russell 0011-0012, 0035, 0038, 0079-0094, 0106-0109, and throughout, Either one or both of carbonyl sulfide and the carbon disulfide are taught, and the limitation is thus met.].
Regarding Claim 24, modified Russell discloses the fuel desulfurization system of claim 22, wherein at least one sulfur species comprises the carbon disulfide [Russell 0011-0012, 0035, 0038, 0079-0094, 0106-0109, and throughout, Either one or both of carbonyl sulfide and the carbon disulfide are taught, and the limitation is thus met.].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Russell, or alternatively modified Russell with Kat’, as provided in claim 1 above, and in further view of Spivey et al. [US20060283780A1, as provided on the IDS dated 02/04/2025 and the EPO dated 12/11/2024], hereinafter Spivey.
Regarding claim 5, modified Russell discloses the fuel desulfurization system of claim 1, wherein: the hydrolysis catalyst comprises alumina [Russell 0082] and
the second sulfur species sorbent comprises CuO and MnO2 catalysts [Russell 0071, 0095, Russell teaches reactive sorbents for sequestration hydrogen sulfide at end stage desulfurization, where the reactive sorbent can be copper oxide. Thus Russell meets the limitations of the hydrolysis catalyst and second sulfur species sorbent. Further, in the alternative rejection over Russell in view of Kat’]. Regarding the limitation, the first sulfur species sorbent comprises CuO, Fe2O3, MnO2 and ZnO catalysts located on a carbon support, Russell teaches molecular sieves ion exchanged with one or more transition metals for removal of organosulfur [Russell 0061-0062]. Spivey teaches activated carbon as a support for copper oxide for the purpose of a sulfur absorbent for organosulfur compounds such as tetra hydro thiophene, tertiary butyl mercaptan, ethyl mercaptan and mixtures thereof [Spivey 0043-0044 and throughout]. Further, Spivey teaches manganese oxide and iron oxide with a support for sequestration of organosulfur compounds [Spivey 0028-0032, 0036, 0038]. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Spivey’s teaching of metal oxides on a carbon support for use as a sorbent for organosulfur compounds in the desulfurization system of modified Russell or modified Russell in view of Kat’ for use as the first sulfur species sorbent for the predictable success of sequestering organosulfur compounds from the fuel stream to improve the life expectancy for a fuel cell [Russell 0005 and throughout, Spivey 0003-0005]. Further, MPEP 2144.07, art recognized suitability for an intended purpose, applies.
Alternative rejection of claim 11:
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell, or alternatively modified Russell with Kat’, as provided in claim 10 above, and in further view of Venkataraman et al. [US20050164051A1], hereinafter ‘raman.
Regarding claim 11, modified Russell discloses the fuel desulfurization system of claim 10,
wherein: the inlet is fluidly connected to a fuel source [Russell 0001-0021 and throughout, The hydrocarbon feed is the fuel source, as discuss throughout, which is fluidly connected to the desulfurization system inlet as described in claim 1.]; and
the hydrolysis catalyst is configured to hydrolyze the at least one sulfur species in the fuel received from the inlet using a portion of the water in the fuel [Russell 0015, 0057, and throughout, Water from the fuel can be used in hydrolysis.].
Russell teaches fuels such as natural gas, propane, butane, liquified petroleum gas [Russell 0003, 005, and throughout] and does not explicitly teach a biogas as the fuel source; however, for a biogas fuel source having the same sulfur compounds as natural gas, propane, butane, and liquified petroleum gas fuels taught by Russell, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply Russell’s fuel desulfurization system for use with a biogas fuel source for predictable result of a biogas with sulfur removed to protect the fuel cell system [Russell 0005 and throughout].
For purpose of compact prosecution, ‘raman teaches the desulfurization of fuel for a fuel cell [‘raman 0020-0022], where the hydrocarbon fuel can be methane, natural gas which contains methane with hydrogen and other gases, propane or other biogas [‘raman 0035, 0120, 0127, and throughout]. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Russell’s fuel desulfurization system for use with a biogas, as taught by ‘raman, for predictable result of a biogas with sulfur removed to protect the fuel cell system [Russell 0005 and throughout].
Response to Arguments
In response to Applicant’s argument that amended claim 1 is not anticipated by Russell, Applicant’s amendments are sufficient to overcome the previous anticipation rejections in the Office Action dated 3/26/2026; thus, those rejections are withdrawn.
The Examiner reconsidered the prior art for all that is taught and has provided updated rejections to claim 1 in view of Applicant’s amendments/arguments.
Regarding Applicant’s arguments on pgs. 6-7, Applicant argues against modification of Russell embodiment of Fig. 2 to move the organosulfur sorbent bed 206 downstream of the hydrolysis bed 220. Applicant specifically argues there is no reason to modify Russell with a second sorption bed receiving the fuel output of the first sorption bed, and such modification would impermissibly change the principle operation of the system by degrading the hydrolysis catalyst 220. The Examiner has fully considered Applicant arguments and respectfully disagrees.
Russell explicitly teaches that a sorbent bed can be before hydrolysis or after [0117 and throughout] and provides embodiments of sorbent beds after hydrolysis beds [Fig. 1 and Fig. 4] and before and after hydrolysis beds [Fig. 2]. Further, Russell explicitly teaches that hydrolysis may precede organosulfur sorption [Russell 0015 and throughout]. Further, Russell teaches that multiple sorbent beds can be provided and the type of sorbents required depend on the design requirements of the system such as the amount of sulfur in the fuel, the type of fuel, purging [0060-0072, 0094-0095]. Thus, from Russell’s teachings, as described, it would be understood that both the number of sorbent beds and their location are design factors which are determined based on the design requirements of the fuel system. Thus, varied locations of the sorption beds are taught by Russell and therefore cannot change the principle of operation as alleged. Further, providing additional sorption beds would not change the function of the sorption beds; thus, the duplication and/or rearrangement as provided above is obvious as provided by the MPEP sections recited above.
Regarding Applicant arguments on pgs. 8-10 in reference to the Examiner’s interpretation of Russell Fig. 4 teaching the second sorption bed sequesters the hydrogen sulfide in the fuel output from the first sorption bed, the Examiner has fully considered Applicant’s arguments and agrees that vessels 224 and 226 are taught as being used alternately instead of sequentially. However, as provided above, it would be obvious to modify Russell embodiments of Figs. 1, 2, or 4 by merely providing an additional sorbent bed as described above for the purpose of removing more sulfur species from the fuel before using it in a fuel cell. See above for more description.
For purpose of compact prosecution, the Examiner has provided alternative rejections of claims 1, 6-11, and 21-24 over Russell in view of Kat’. Further, an alternative rejection of claim 5 is provided over Russell in view of Kat’ and in further view of Spivey and an alternative rejection of claim 11 is provided over Russell in view of Kat’ and in further view of ‘raman.
For the reasons provided above, evidence of obviousness over the prior art outweighs evidence of novelty and distinction.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Monday, Wednesday, Thursday 9:00-5:00 EST.
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/M. T. LEONARD/Examiner, Art Unit 1724
/STEWART A FRASER/ Primary Examiner, Art Unit 1724
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