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 .
DETAILED ACTION
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 of Group I (claims 1-13), Species A, subspecies 2, subspecies C, and subspecies 1A in the reply filed on 2/19/2026 with traverse is acknowledged. Claims 4, 5, 10, 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. It is noted that claim 13 is withdrawn for not being drawn to the elected species, since in the elected species - the at least one part of the gas phase is heated in the heat exchanger and therefore claim 13 does not describe the elected species. Further, claim 10 does not describe the elected species at least because the elected species has a membrane separation that produces a permeate and does not have another fluid enriched in hydrogen separate from the permeate as presently claimed. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/19/2026. The traversal is on the ground(s) that the groups share features. This is not found persuasive because having some common features does not make the restriction improper. The applicant alleges that the search would be coextensive. This is unpersuasive as the restriction has shown burden by separate classification. The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the one or more permeates must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1-3, 6-9, 11-12 is/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 pre-AIA the applicant regards as the invention.
In regard to claim 1, the recitation, “the following steps” (line 5) is indefinite for lacking proper antecedent basis.
The recitation, “the partial condensation” (line 7) is indefinite for lacking proper antecedent basis.
The recitation, “sending of the at least one heated part from step c)” (line 16) is indefinite for lacking proper antecedent basis for “the at least one heat part” and it is unclear why the recitation does not reference --the step c)--. For examination, it is presumed that the step c) ends with --by indirect heat exchange to form at least one heated part--.
The recitation, “the sole feed flow” (line 18) is indefinite for lacking proper antecedent basis. Further, the recitation is not consistent with the disclosed and elected species which does have some fluid fed to the membrane separation unit that is not
The recitation, “the heated part” (line 20) is indefinite for lacking consistency with the previously recited “at least one heated part”.
The recitation, “with respect to the heated part” (line 22) is indefinite for failing to be consistent with the previous recitation and it is unclear why the recitation is not --with respect to the at least one heated part--.
The recitation, “produced in step e)” (line 27) is indefinite for improperly reintroducing step e) and it is unclear why the recitation is not
--produced in the step e)--.
The recitation, “of step a)” (line 28) is indefinite for improperly reintroducing step a) and it is unclear why the recitation is not --of the step a)--.
The recitation, “by indirect heat exchange” (line 28) is indefinite for improperly reintroducing indirect heat exchange and it is unclear if this is referencing the previously recited indirect heat exchange or not.
Note that the dependent claims listed in the rejection heading are also rejected at least for their dependency on indefinite claims.
In regard to claim 6, the recitation, “wherein one part of the gas phase” is indefinite since claim 1 already recites “at least one part of the gas phase” and therefore the present recitation does not properly refer to the already recited at least one part of the gas phase.
The recitation, “the two parts” is indefinite, it is not clear why the claim does not reference --the one part and the another part of the gas phase.--
The recitation, “the ratio” is indefinite for lacking proper antecedent basis.
The recitation, “the flow rates” is indefinite for lacking proper antecedent basis.
The recitation, “after mixture of the two parts” is indefinite since the claim already recites “a mixture” in claim 1 and it is unclear why the present recitation is not --after the mixing of the one part and the another part to form a mixed flow--.
In regard to claim 7, the recitation, “wherein the mixture of the two parts is sent to the membrane separation unit” is indefinite since the claim already has a mixture and it is unclear why the present recitation is not --wherein the mixed flow is the feed flow of the membrane separation unit--.
In regard to claim 8, the recitation “hydrogen and carbon dioxide” is unclear why the recitation is not --the hydrogen and the carbon dioxide--.
The phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In regard to claim 9, the recitation, “step b)” is indefinite for improperly reintroducing step b) and it is unclear why the recitation is not “the step b)”.
The recitation, “produces a fluid containing at least 60 mol% of carbon dioxide” is indefinite since the step b) separates the gas phase and the liquid phase and it is unclear if the presently recited fluid is the gas phase or the liquid phase.
In regard to claim 11, the recitation, “of step b)” is indefinite for improperly reintroducing step b) and it is unclear why the recitation does not recite
--of the step b)--.
In regard to claim 12, the recitation, “the turbine” is not consistent with the recitation of one or more turbines in claim 1.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitation “membrane separation unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure never defines what structure the recited membrane separation unit must have. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For present examination, it is interpreted as at least a separation membrane.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 9, 11, 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liao (CN 106931722). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted. Further note the interpretation of the claim language as outlined in the rejection below.
In regard to claim 1, Liao teaches a process (Fig. 1) for separating a mixture (raw material gas, page 6, para. 2) containing hydrogen and carbon dioxide (page 6, para. 2) and at least one component lighter than carbon dioxide (page 6, para. 2), comprising:
a) cooling of the mixture (raw material gas) from a first temperature (entering HEAT1, MHEX, HEAT2) in a heat exchanger (HEAT1, MHEX, HEAT2) by sending the mixture (raw material gas) to the heat exchanger (HEAT1, MHEX, HEAT2), resulting in partial condensation (page 6, para. 6) of the mixture (raw material gas) into a liquid phase (liquid to bottom of SEPA) enriched in carbon dioxide (page 6, para. 6) and a gas phase (at least to 23) depleted in carbon dioxide (column 5, line 35-38), the mixture (raw material gas) exiting the heat exchanger (HEAT1, MHEX, HEAT2) at a second temperature lower than the first temperature (per cooling by HEAT1, MHEX, HEAT2; page 6, para. 6), said heat exchanger (HEAT1, MHEX, HEAT2) being at least partially cooled by a gaseous fluid (after TURB; page 6, para. 6) which is heated in the heat exchanger (HEAT1, MHEX, HEAT2) by indirect heat exchange (therein);
b) separation of the liquid phase (liquid to bottom of SEPA) from the gas phase (from top of SEPA) in a separator vessel (SEPA);
c) heating of at least one part of the gas phase (from top of SEPA) originating from the separator vessel (SEPA) in the heat exchanger (HEAT1, MHEX, HEAT2) by indirect heat exchange to form at least one heated part (toward MEMB);
d) sending of the at least one heated part (from top of SEPA after HEAT1, MHEX, HEAT2) from the step c) to a membrane separation unit (MEMB, page 5, para. 4; page 7, para. 1) as a feed flow (entering MEMB) of the membrane separation unit (MEMB), and generating a permeate (permeate, page 6, para. 3) enriched in hydrogen and/or carbon dioxide (page 5, para. 4; page 7, para. 7) and depleted in the at least one component lighter than carbon dioxide with respect to the at least one heated part (from top of SEPA after HEAT1, MHEX, HEAT2), and at least one residue (retentate, page 7, para. 4) depleted in hydrogen and carbon dioxide (page 7, para. 4) and enriched in the at least one component lighter than carbon dioxide with respect to the at least one heated part (from top of SEPA after HEAT1, MHEX, HEAT2);
e) expanding the at least one residue (from MEMB via TURB) from a first pressure (before TURB) in one or more turbines (TURB) producing a fluid (after TURB) expanded to a second pressure (pressure after TURB) lower than the first pressure (before TURB) and to a third temperature lower than the first temperature (per expansion cooling); and
f) the fluid (after TURB) at the second pressure (pressure after TURB) produced in the step e) constituting the gaseous fluid (from TURB) of the step a) which is heated in the heat exchanger (HEAT1, MHEX, HEAT2) by the indirect heat exchange with the mixture (raw material gas),
wherein the at least one residue (to TURB from MEMB) is sent from the membrane separation unit (MEMB) to the one or more turbines (TURB) without passing through the heat exchanger (HEAT1, MHEX, HEAT2).
In regard to claim 2, Liao teaches that the first temperature is greater than 0°C (page 6, para. 5).
In regard to claim 3, Liao teaches that the second temperature is less than 0°C (page 6, para. 6).
In regard to claim 9, Liao teaches that the step b) produces a fluid containing at least 60 mol% of carbon dioxide (page 6, para. 6).
In regard to claim 11, Liao teaches that no part of the permeate (permeate FP) is sent to the separation of the step b) (see that FP does not go directly to SEPA).
In regard to claim 12, Liao teaches that the residue (retentate) is sent to the one or more turbines (TURB) without being passed through a combustion chamber (no combustor).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao (CN 106931722) in view of Granados (US 2019/0118134) or LeClerc (US 2023/0027743). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted. Further note the interpretation of the claim language as outlined in the rejection below.
In regard to claim 6, Liao teaches most of the claim limitations but does not explicitly teach that another part of the gas phase from the separator vessel is not heated in the heat exchanger and the at least one part of the gas phase and the another part of the gas phase are mixed downstream of the heat exchanger to form a mixed flow, a ratio between flow rates of the at least one part of the gas phase and the another part of the gas phase being regulated in order to reach a target temperature of the mixed flow.
However, Granados teaches that such provides precise temperature control during transient phases of operation (para. 65). Granados teaches at least part (24) of a gas phase (to 23) produced in a separator vessel (PS1, PS2) is heated in a heat exchanger (H) and another part (26) of the gas phase (to 23) produced in the separator vessel (PS1, PS2) is not heated in the heat exchanger (H), the at least one part (24) of the gas phase and the another part (26) of the gas phase being mixed downstream of the heat exchanger (H) to form a mixed flow (toward V4 or V6 upstream of M), a ratio between flow rates of the at least one part (24) of the gas phase and the another part (26) of the gas phase being regulated in order to reach a target temperature (para. 67-68) of the mixed flow (toward V4 or V6 upstream of M).
Alternatively, LeClerc teaches that such provides temperature control. LeClerc teaches at least part (1 to E) of a gas phase produced in a separator vessel (para. 68 distillation) is heated in a heat exchanger (E) and another part (1A) of the gas phase produced in the separator vessel (para. 68 distillation) is not heated in the heat exchanger (E), the at least one part (1 to E) and the another part (1A) being mixed downstream of the heat exchanger (E) to form a mixed flow (to M1), a ratio between flow rates of the at least one part (1 to E) and the another part (1A) being regulated in order to reach a target temperature (para. 79) of the mixed flow (to M1).
Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Liao with the temperature control steps of Granados or LeClerc for the purpose of providing improved temperature control of the process during transients periods (para. 65).
In regard to claim 7, Liao, as modified above, teaches the limitations of claim 7, since Granados teaches that the mixed flow (through V4 or V6) is the feed flow of the membrane separation unit (M). See similar teachings in LeClerc (see M1).
In regard to claim 8, Liao teaches most of the claim limitations, but does not appear to explicitly teach that the mixture (raw material gas) is a waste gas from an adsorption process. However, Granados teaches that the mixture (11) is a waste gas from an adsorption process (A, para. 55-56). Alternatively, LeClerc teaches the mixture (1) is a waste gas of an adsorption process (para. 68 “adsorption unit”). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Liao to process such a waste gas for the purpose of profiting from the separation and purification thereof and expanding the applicability of Liao.
Conclusion
The prior art made of record on the 892 form and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F PETTITT whose telephone number is (571) 272-0771. The examiner can normally be reached on M-F, 9-5p. 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): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
JFPIII
March 10, 2026
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763