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 election without traverse of Group II, claims 7-12 in the reply filed on June 8th, 2026 is acknowledged.
Claims 1-6 and 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 8th, 2026.
Claim Objections
Claims 7-8 and 11 are objected to because of the following informalities:
In lines 24-25 of claim 7, the phrase “will not be in service during continuous plant operation” should be edited to be the same tense as the rest of the claim.
In claim 7, the step beginning “the third syngas stream is mixed with water” is the only recited step not beginning with a gerund or gerund phrase (e.g., “producing a raw syngas stream”, “cooling the raw syngas stream”). This step should be edited to be grammatically consistent with the rest of the steps.
Claim 8 recites the phrase “preceded or succeeded by hydrogen purification unit” in line 2. An article is required between ‘by’ and ‘hydrogen’ in this phrase.
Claim 11 recites the phrase beginning “wherein fired heater might be functional during normal plant operation however the sum of the heat exchange…” in lines 1-2. An article is required between ‘wherein’ and ‘fired’ in this phrase.
In the above phrase, ‘operation’ is the end of a clause, and ‘however’ introduces a new clause. Punctuation should be added to clearly separate these clauses.
In line 4 of claim 11, a comma should be inserted after “produced”.
Appropriate correction is required.
Claim Interpretation
Claim 9 recites the limitation, “wherein the produced hydrogen may be used for ammonia synthesis”. This limitation is not interpreted to require that the produced hydrogen is used in an ammonia synthesis process step, only that the produced hydrogen would be expected by a person having ordinary skill in the art to be capable of being used for ammonia synthesis, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
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.
Claims 7-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being 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.
Claim 7 recites the limitation, “wherein a fired heater might be functional during plant start-up but will not be in service during continuous plant operation” in lines 24-25 (emphasis added). The word “functional” is not recited in the instant Specification. Merriam-Webster’s relevant definition of “functional” is “performing or able to perform a regular function” (“Functional”, 2026). In the recited context, it is unclear whether “functional” requires the fired heater to be performing its function or whether it is merely required to be able to perform its function. At least each of the above interpretations will be considered to read on “functional”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claims 8-12 are indefinite due to their dependence on the indefinite and because they do not cure the indefiniteness of “functional” as it is recited therein.
Claim 11 recites the phrase “wherein fired heater” in line 1. It is unclear which fired heater is being referenced, i.e., whether “fired heater” in claim 11 is the same or different from the fired heater recited in independent claim 7. Any fired heater will be interpreted to read on “fired heater” in claim 11.
Claim 11 recites the limitation “wherein fired heater might be functional during normal plant operation” and goes on to further limit the sum of the heat exchange duties taking place in the fired heater. However, independent claim 7 recites that “a fired heater… will not be in service during continuous plant operation” in lines 24-25. For any heat exchange duties to take place in the fired heater, it would need to be in service as well as functional. While it is not entirely clear whether “the heat exchange duties taking place in the fired heater” are required to be taking place during the previously recited “normal plant operation”, the claimed limitation “the sum of the heat exchange duties taking place in the fired heater does not exceed 3 MWh/ ton hydrogen (on 100% hydrogen purity basis) produced” appears to describe a continuous plant operation producing tons of hydrogen, thereby contradicting independent claim 7 and rendering claim 11 indefinite. See Trs. of Columbia Univ. v. Symantec Corp., 117 USPQ2d 1659, 1665 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.).
Claim 12 recites the limitation "the fired heater required during start-up or normal operation" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 7, upon which claim 12 depends, does not recite that the fired heater is required during either “start-up” or “normal operation”. It is therefore unclear which fired heater is being replaced and/or supplemented by an electric heater. Because no fired heater is previously recited to be required during start-up or normal operation, any fired heater will be interpreted to read on “the fired heater required during start-up or normal operation”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Further, claim 12’s limitation “the fired heater required during start-up or normal operation” would contradict independent claim 7’s limitation “wherein a fired heater might be functional during start-up but will not be in service during continuous operation” if “normal” is the same as “continuous”. While it is not entirely clear that “normal” and “continuous” are the same, claim 12 recites “start-up” in opposition to “normal”, and claim 7 recites “start-up” in apparent opposition to “continuous” in the above-cited limitation. Additionally, the Specification states, “Thus no residue gas is required to be disposed of in a fired heater and thus a fired heater can be removed from the hydrogen generation unit and the unit can experience no emission during continuous normal operation” (Specification, Page 12, lines 12-14, emphasis added). As claim 12 is apparently internally contradictive, it is indefinite. See Trs. of Columbia Univ. v. Symantec Corp., 117 USPQ2d 1659, 1665 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.).
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 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 12 recites “wherein the fired heater required during start-up or normal operation is replaced and/or supplemented by an electric heater” and depends from claim 7, which recites “wherein a fired heater might by functional during plant start-up but will not be in service during continuous operation”.
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., 119 USPQ2d 1773, 1783 (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.).
Here, claim 12 may be infringed without necessarily also infringing claim 7. Claim 12 explicitly states that the fired heater is required in claim 7 but, in one alternative, it is then replaced. In the alternative where the fired heater is replaced, the fired heater required in claim 7 is not present, thereby making it possible to infringe claim 12 but not claim 7.
Since claim 12 may be infringed without necessarily also infringing claim 7, claim 12 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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.
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 7-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over ‘433 (EP 2233433 A1, 2010), in view of Dahl (WO 2022/248434 A1), and further in view of Purola (U.S. 2023/0114999 A1).
Regarding claim 7, ‘433 teaches a process for producing hydrogen (‘433, Fig. 1, [0006]-[0067]), comprising:
producing a raw syngas stream within an autothermal reformer from an ATR feed stream comprising a hydrocarbon feed stream and a steam stream (‘433, Fig. 1, [0006], [0061], “Steam is introduced into the desulfurized natural gas feedstock 5 via line 7 thereby generating a pre-reformed feed stream 8), wherein the raw syngas stream comprises hydrogen, carbon monoxide, carbon dioxide, and water (‘433, [0061], “a mixture of essentially hydrogen, carbon monoxide, carbon dioxide, and steam”),
cooling the raw syngas stream by vaporizing boiler feed water thereby producing a steam stream and a second syngas stream (‘433, Fig. 1, [0062], A synthesis gas stream 17 exits the ATR 11 and is cooled in a waste heat boiler (steam generator) 18 by heat exchange with a boiler feed water stream 19… High pressure steam is withdrawn from the waste heat boiler 18”),
heating a hydrocarbon feed stream by utilizing the sensible heat of the second syngas stream thereby producing a third syngas stream (‘433, Fig. 1, [0063], “A cooled synthesis gas stream 23 exits the waste heat boiler and the remaining thermal energy in the cooled synthesis gas stream is used to preheat the pre-reformer feed stream 8, preferably, in heat exchanger 23a and to generate further HP steam (not shown).”),
the third syngas stream is mixed with water and/or steam added prior to introduction to a catalytic water-gas shift reactor thereby producing a minimum required ratio of steam to dry gas for the shift catalyst (‘433, [0036], [0006], “if necessary, introducing steam to the synthesis gas stream before passing at least a portion of the synthesis gas stream to a shift converter unit where the synthesis gas reacts with steam to generate additional carbon dioxide and hydrogen”)
producing a first shifted syngas stream by shift reaction inside the catalytic water-gas shift reactor (‘433, Fig. 1, [0063], “A partially shift converted gas stream exits the high temperature shift reactor…”),
producing a second shifted syngas stream by cooling the first shifted syngas stream by heat exchange with a steam stream superheater or a mixed stream of hydrocarbon and steam or by raising steam or all of these (‘433, [0063], “…and the thermal energy in the partially shift converted gas stream is used to generate more high pressure (HP) steam in a waste heat boiler”),
further cooling the second shifted syngas stream in subsequent step(s) (‘433, Fig. 1, [0063], “The thermal energy associated with the shift converted gas stream is used to heat ( 1) the natural gas feedstock 1 in heat exchanger 25a, (2) optionally the hydrogen stream that is fed to the gas turbine (not shown) and (3) optionally boiler feed water (not shown).”) prior to introduction to pre-combustion carbon dioxide capture unit producing at least one carbon dioxide-rich stream and one carbon dioxide-depleted stream (‘433, Fig. 1, [0064], “The shift converted gas stream that is withdrawn from the top of the second condensate drum is then passed to a CO2 removal unit 26 for example, a CO2 absorption unit comprising an absorber and desorber or a cryogenic plant, which separates the stream into a concentrated carbon dioxide stream 27 and a hydrogen stream 28.”),
wherein a fired heater might be functional during plant start-up (‘433, [0050], [0066], a fired heater is present).
‘433 does not explicitly teach that the minimum required ratio of steam to dry gas for the shift catalyst is > 0.2 mol/mol. However, Dahl teaches that an optimal of steam to dry gas in a catalytic water-gas shift reaction is 0.3 to 0.8 mol/mol.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected a steam to dry gas ratio of 0.3 to 0.8 mol/mol, as Dahl teaches that such a ratio ensures optimal conversion of CO to CO2 (Dahl, Page 7, line 30 - Page 8, line 2).
‘433 does not explicitly teach that a fired heater will not be in service during continuous plant operation. On the contrary, ‘433 teaches that a fired heater is in service during plant operation (‘433, [0066]). However, Purola teaches replacing a fired heater in a hydrogen producing facility with a rotary generated heating apparatus (Purola, [0056]-[0071]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have replaced the fired heater of ‘433 with the electrified rotary fluid heater taught by Purola, at least because Purola teaches that doing so provides a smaller, cheaper, safer heating solution (Purola, [0060]-[0062]) which improves energy efficiency (Purola, [0068]).
Regarding claim 8, modified ‘433 renders the process of claim 7 obvious, as discussed above, wherein the pre-combustion carbon dioxide capture unit is preceded by a hydrogen purification unit (‘433, [0039], condensate removal) producing at least one hydrogen-rich stream (>90 mol% hydrogen purity) (‘433, [0044], the process produces a hydrogen stream having greater than 90 mol% hydrogen purity).
Regarding claim 10, modified ‘433 renders the process of claim 7 obvious, as discussed above, wherein the ATR feed stream passes through a pre-reforming stage (‘433, Fig. 1, [0061], desulfurization unit 4).
Regarding claim 11, modified ‘433 renders the process of claim 7 obvious, as discussed above, wherein the fired heater is not present (see rejection of claim 7 above, wherein the fired heater is replaced with an electric heater; see also rejection of claim 11 under 35 U.S.C. 112(b)/2nd Paragraph above), and the direct carbon dioxide emission from the hydrogen production is 0 kg carbon dioxide / kg hydrogen (on 100% hydrogen purity basis) (Purola, [0056]-[0071]; see rejection of claim 7 above, the fired heater has been replaced by Purola’s electric rotary generated heating apparatus, eliminating direct carbon dioxide emissions, i.e., by firing).
Regarding claim 12, modified ‘433 renders the process of claim 7 obvious, as discussed above, wherein the fired heater is replaced by an electric heater (Purola, [0056]-[0071]; see rejection of claim 7 above and rejections of claim 7 under 35 U.S.C. 112(b)/2nd Paragraph and 35 U.S.C. 112(d)/4th Paragraph).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ‘433 (EP 2233433 A1, 2010), in view of Dahl (WO 2022/248434 A1), and further in view of Purola (U.S. 2023/0114999 A1), as applied to claim 7 above, and further evidenced by Pach (U.S. 2019/0047852 A1).
Regarding claim 9, modified ‘433 renders the process of claim 7 obvious, as discussed above, wherein the produced hydrogen may be used as a hydrogen feed to a chemical process (‘433, [0045]) but does not explicitly recite ammonia synthesis as a chemical process. However, Pach teaches that hydrogen may be used for ammonia synthesis (Pach, [0002], describing the Haber-Bosch process). Therefore, despite ‘433’s silence to ammonia synthesis, the produced hydrogen in ‘433 may be used for ammonia synthesis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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 571-270-3590. 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.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
Prosecution Insights