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
This is the response to amendment filed 02/04/2026 and supplemental amendment filed 04/27/2026 for application 18/393482.
Claims 1-2, 4-8, 10-15, and 17-20 are currently pending and have been fully considered.
Claims 3, 9, and 16 have been cancelled.
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.
Claim(s) 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATTHIS (US 2982797).
Applicant is reminded that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 11, MATTHIS teaches in lines 10 - 70 of column 2 an apparatus for catalyst regeneration.
The apparatus comprises conduits 1 (catalyst tubes in the firebox) disposed vertically within a shell 2 (a firebox). Plural burners 3 are located on sides (burners in the side of the firebox) of the shell 2.
Conduits 1 are at least partially filled with a solid catalyst. Conduits 1 are taught to comprise flanged connections in the top and bottom to facilitate the removal of a single tube. (inlet and outlet to catalyst tubes with catalyst inlet to catalyst tube)
Headers 7 are provided for providing the fluid to the furnace. (a distribution header in communication with an inlet to the catalyst tubes for distributing ethanol to the catalyst tubes)
Headers 8 are provided for withdrawing the converted products. (a collection header in communication with an outlet from the catalyst tubes for collecting ethylene from the catalyst tubes)
Headers 7 and headers 8 are structurally capable of distributing ethanol to the conduits 1 and withdrawing ethylene from the conduits 1 respectively.
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Regarding claims 12 and 13, the catalyst inlet and catalyst outlet are shown in Figs 1 and 2 to be outside shell 2.
One of ordinary skill in the art would employ a setup with the catalyst inlet and catalyst outlet outside the shell 2 with a reasonable expectation of success.
Regarding claims 14 and 15, the headers 7 and headers 8 are shown in Figs 1 and 2 to be outside the shell 2.
One of ordinary skill in the art would employ a setup with the headers 7 and headers 8 outside the shell 2 with a reasonable expectation of success.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Claim(s) 1-2, 4-7, 10, and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATTHIS (US 2982797) as applied to claims 11-15 above, and further in view of WEI (CN103242122A) and the machine translation of WEI and further in view of GAMLIN (US 8906970 B2).
The above discussion of MATTHIS will be incorporated herein by reference.
WEI will hereafter be referring to the machine translation of WEI.
Regarding claims 1 and 17, MATTHIS teaches a process and the apparatus using catalyst tubes in a furnace for catalytic conversion processes.
WEI teaches in the abstract a process for preparing ethylene from ethanol. Ethanol is fed into a tube reactor with a catalyst bed layer and reacted with an ethanol dehydration catalyst to form ethylene.
It would be well within one of ordinary skill in the art to apply the apparatus that MATTHIS teaches in preparing ethylene from ethanol with an ethanol dehydration catalyst in the conduits 1 of MATTHIS.
MATTHIS teaches in lines 21-54 that the apparatus setup allows for increased rates of catalyst regeneration.
MATTHIS teaches headers 7 and headers 8 is for the supply of a fluid and the withdrawing of a converted fluid respectively. In the case of ethanol conversion, ethanol would the fluid supplied and ethylene would the converted fluid withdrawn.
Collecting the converted fluid from the headers 8 in the process and apparatus of MATTHIS is well within one of ordinary skill in the art.
The type of container or basket does not appear to be for any specific purpose or solve any particular problem and one of ordinary skill in the art would employ any known container or basket to collect the converted fluid with a reasonable expectation of success.
For example, GAMLIN teaches a radial reactor for converting synthesis gases employing a catalyst container. The catalyst container comprises an annular container 2 and a corrugated upstanding skirt 14. The annular container 2 comprises an inner perforated wall 3 and an outer perforated wall 4. The annular container 2 has a bottom 7. The catalyst container may be considered a collection basket and the corrugate upstanding skirt 14 may be considered an outer imperforate wall with an annulus between the corrugate upstanding skirt 14 and the perforated walls.
Regarding claim 10, the radial reactor that GAMLIN teaches is fully capable of collecting a converted fluid such as ethylene with a reasonable expectation of success.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Regarding claim 2, headers 7 and headers 8 of MATTHIS is taught to be for the supply of a fluid and the withdrawing of a converted fluid respectively. In the case of ethanol conversion, ethanol would the fluid supplied and ethylene would the converted fluid withdrawn.
Regarding claims 4 and 6, and 18 and 19, conduits 1 of MATTHIS are taught to be at least partially filled with a solid catalyst. Conduits 1 are taught to comprise flanged connections in the top and bottom to facilitate the removal of a single tube.
The removed single tube comprises an inlet and outlet where the catalyst may be added and removed.
Regarding claims 5 and 7, and 20, the catalyst inlet and catalyst outlet are shown in Figs 1 and 2 to be outside shell 2.
One of ordinary skill in the art would employ a setup with the catalyst inlet and catalyst outlet outside the shell 2 with a reasonable expectation of success.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATTHIS (US 2982797) in view of WEI (CN103242122A) and the machine translation of WEI as applied to claims 1-2, 4-7, 10, and 17-19 above, and further in view of PAUL (USPGPUB 20040037760).
The above discussion of MATTHIS and WEI is incorporated herein by reference.
PAUL teaches in paragraph 28 that flexible bellows at the inlet of reaction tubes allow for compensating axial and radial thermal expansion of the reactor tube due to thermal loads applied to the tube.
It would be obvious to add the flexible bellows that PAUL teaches to the inlet of the conduits 1 in MATTHIS with a reasonable expectation of success.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's arguments filed 02/04/2026 and 04/27/2026 have been fully considered but they are not persuasive.
Applicant stated that Examiner has erred in applying MATTHIS. Applicant argues that although Examiner has stated that apparatuses are limited by positively recited elements, that applicant argues that the claims state a positively recited statement in catalyst tubes containing a dehydration catalyst which is a positively recited element.
This is not persuasive as the apparatus claims are directed toward claim 11-15. Claims 11-15 do not positively recite catalyst tubes containing a dehydration catalyst.
Applicant also argues that there is no explanation as to the prior art of having a setup with the catalyst inlet and the catalyst outlet outside the shell with a reasonable expectation of success.
This is not persuasive as the setup has been addressed above.
“Conduits 1 of MATTHIS are taught to be at least partially filled with a solid catalyst. Conduits 1 are taught to comprise flanged connections in the top and bottom to facilitate the removal of a single tube.
The removed single tube comprises an inlet and outlet where the catalyst may be added and removed.
The catalyst inlet and catalyst outlet are shown in Figs 1 and 2 to be outside shell 2.
One of ordinary skill in the art would employ a setup with the catalyst inlet and catalyst outlet outside the shell 2 with a reasonable expectation of success.”
Applicant argues that there is no connection between the teachings of MATTHIS and GAMLIN and why one of ordinary skill in the art to would look to a radial reactor as taught by GAMLIN to employ a catalyst container or basket.
This is not persuasive as the type of container or basket for collecting the ethylenen does not appear to be for any specific purpose or solve any particular problem and one of ordinary skill in the art and GAMLIN teaches a reactor that is fully capable of collecting a converted fluid such as ethylene with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TAHERI (USPGPUB 20130178674) teaches a reactor and a process for dehydration of ethanol to ethylene.
WEEDON (US 7279019) teach an endothermic reaction process and apparatus with reaction tubes with fuel combusted to generate heat.
TOIDA (Machine Translation of JPH01231932A) teach an isothermal shell and tube reactor that may be used to convert ethanol to ethylene with a dehydration catalyst.
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 MING CHEUNG PO whose telephone number is (571)270-5552. The examiner can normally be reached M-F 10-6.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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