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 .
Status of the Claims
A preliminary amendment to the claims has not been filed. Thus claims 1-24 filed on 05/08/2023 are currently pending.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to a process for the production of low-carbon CH4, classified in C07C1/12.
II. Claims 19-24, drawn to a catalyst, classified in B01J23/78.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the catalyst can be used to reform carbon dioxide and hydrocarbon to synthesis gas in view of Patent number US9,611,145B2.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Jeffrey A. McKinney on 11/17/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-24 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 11 is objected to because of the following informalities: replace “H2” in line 2 with “H2” to conform with the proper chemical formula representation.
Claim 12 is objected to because of the following informalities: the limitation “wherein the percentage conversion of CO2 to CH4 is between 85% and 99.9% between 275° C. and 350° C” is replete with idiomatic error. Appropriate correction is required.
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 1-18 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 1 recites the limitation "the CO2 conversion reactor" in line 4. There is insufficient antecedent basis for this limitation as the claim contains no earlier recitation of the limitation.
Claims 2-18 are rendered indefinite for their dependency on claim 1.
Claim 6 recites the limitation "Cu3Ni" in line 2. There is insufficient antecedent basis for this limitation in the claim since the catalyst in claim 1 can only comprise a combination of Ni and Mg or a combination of Cu and Mg.
Claims 7-15 are indefinite for being dependent on claim 6.
Regarding claims 14-16, the limitations “wherein the CO2 conversion reactor is cooled…”, “wherein the hydrogenation catalyst is cooled by…” and “to assist in cooling of the catalyst” render the claims vague and indefinite as it is unclear at what stage of claim 1 are the cooling steps of the CO2 conversion reactor and of the catalyst being conducted.
Claim 14 recites the limitation " the production of steam" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-5 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0017800A1 4A1 (US’800) in view of Nakayama (Nakayama, T. et al. “Ni/MgO catalyst prepared using citric acid for hydrogenation of carbon dioxide” Applied Catalysis A: General 158 (1997)) 185-199) and International publication number WO2017/098020A1 (WO’020).
Regarding claim 1-3 and 17-18, US’800 teaches a method for producing methane from an electrical energy source comprising: a. providing a source of electrical energy; b. using electrical energy from said source to electrolyze water to form hydrogen (renewable hydrogen) and oxygen; and c. using hydrogen thereby formed to hydrogenate carbon dioxide to form methane (claim 1), wherein the process is conducted in the presence of a hydrogenation catalyst comprising Ru on Al2O3 ([0028]) and wherein CO2 is obtained from stationary sources ([0212], Fig.9, CO2 from storage tank 960). The reference teaches the product stream comprises CH4 and H2O and passes to a condenser where the H2O condenses to liquid water ([0201]). US’800 further teaches removal of unreacted CO2 from the reaction product by scrubbing, the separation of CH4 from the reaction product and using the purified CH4 to the downstream CCGTEG (oxy-fuel combined cycle gas turbine electricity generator) plant and in the natural gas pipeline ([0089], [0155], [0173]-[0174], [0183], [0201] and [0202]). It is noted that since the reaction product comprises unreacted CO2 ([0201]), the conversion rate of CO2 to methane did not go to completion and thus a skilled artisan would understand that the reaction product would also comprise unreacted hydrogen in addition to unreacted CO2 and methane product.
Regarding claim 4, 4 equivalents of H2 (4 moles) to 1 equivalent of CO2 (1 mol) has been used ([0028]), which is equivalent to H2/CO2 (v/v) ratio to about 3.66:1 (using the formulas
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21
243
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and
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167
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). In view of MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, absent any showing of unexpected results or criticality.
Regarding claim 5, US’800 teaches the use of plurality of conduits, e.g. tubes ([0015]).
Regarding claim 1, US’800 fails to teach or suggest that the hydrogenation catalyst of CO2 is a solid solution catalyst comprising Ni and Mg or a solid solution catalyst comprising Cu and Mg. Furthermore, the reference, while it teaches removing H2O and unreacted CO2, it fails to teach the removal of H2. The deficiencies are however cured by Nakayama and WO’020.
Nakayama teaches hydrogenation of carbon dioxide to methane using a solid solution hydrogenation catalyst comprising Ni and Mg (pg. 197):
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170
920
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Furthermore, Nakayama teaches in Table 1 (pg. 190) methanation reactions using different catalysts, i.e. solid solution catalysts according to the reference’s work and other catalysts such as Ru/Al2O3 (same catalyst used in US’800). Most of the solid solution catalysts that comprise Ni and Mg and Ru/Al2O3 catalysts show comparable methane selectivity, however, the solid solution catalyst provides a better CO2 conversion than that of Ru/Al2O3. Accordingly, a skilled artisan would have been motivated to use the solid solution catalyst of Nakayama in place of Ru/Al2O3 of US’800 and would have a reasonable expectation of success in obtaining methane with a higher CO2 conversion rate. Moreover, since the hydrogenation of CO2 in Nakayama does not provide a 100% conversion of CO2, a skilled artisan would understand that the reaction product would also comprise unreacted CO2, unreacted H2 in addition to methane product.
WO’020 teaches a process for separating hydrogen gas from an input stream comprising gaseous methane and gaseous hydrogen using an electrochemical pump. The reference further teaches that the process obtains compressed natural gas stream that meets the natural gas end specification (pgs. 7-8). Thus, a skilled artisan would have been motivated to use the methods of WO’020 in the combination of the process of US’800 and Nakayama, with a reasonable expectation of success in separating the unreacted H2 from methane and in obtaining methane that complies with the natural gas end specification.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing a hydrocarbon or a hydrocarbon derivative from an electrical energy source, said method comprising a. providing a source of electrical energy; b. using electrical energy from said source to electrolyze water to form hydrogen and oxygen; and c. using hydrogen thereby formed to hydrogenate carbon dioxide to form methane in view of the combination of US’800, WO’020 and Nakayama.
Allowable Subject Matter
The subject matter of claims 6-15 is free of prior art reference. The closest prior art references and their teachings have been set forth above. Furthermore, Nakayama teaches that the hydrogenation catalyst specifically comprises NiO-MgO solid solution in the catalyst core, however it fails to teach or suggest that the solid solution hydrogenation catalyst comprises Ni2Mg or CuMg. Thus claims 6-15 are deemed novel and unobvious.
NOTE:
The recited Cu3Ni catalyst of claim 6 is not given patentable weight and thus not examined because the main claim 1 requires the catalyst to either be a combination of Ni and Mg or of Cu and Mg, and NOT a combination of Cu and Ni.
Due to unclear scope of claim 16, the limitations of the claim have not been examined for purpose of applying art.
Conclusion
Claims 1-18 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692