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 has not been filed. Thus claims 1-17 filed on 05/09/2023 are currently pending.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a process for producing liquid hydrocarbons, classified in C10G2/30.
II. Claims 13-17, drawn to an apparatus, classified in B01J19/245.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process can be conducted by a different apparatus.
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 10/27/2025 a provisional election was made without traverse to prosecute the invention of I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Replace “STREAM-METHANE-REFORMING” with “STEAM-METHANE-REFORMING”.
Claim Objections
Claim 1 is objected to because of the following informalities: a conjunction word is missing before step (f). Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International publication WO2022/171643A1 (WO’643).
Regarding claim 1, WO’643 teaches a process for producing liquid hydrocarbons, wherein the process comprises:
a. converting water into an electrolysis product stream comprising H2 using an electrolysis module powered by an amount of electricity (page 12, lines 9-15);
b. reacting CO2 with the electrolysis product stream in a reverse water gas shift module to produce a first synthesis gas mixture comprising CO and H2 (page 5, lines 6-9)
c. converting the first synthesis gas mixture into a product mixture using a hydrocarbon synthesis module (page 5, lines 10-25), wherein the product mixture comprises liquid hydrocarbons, light gases, and wherein the liquid hydrocarbons comprise C5-C24 hydrocarbons, and the light gases comprise C1-C4 hydrocarbons and unreacted CO and H2 (page 10, lines 1-11; page 15, lines 19-29).
WO’643 is silent that the product mixture comprises water, however, since the reference teaches every limitation of steps a-c, there is a prima facie case of anticipation for the product mixture of WO’643 to also comprise water. See MPEP § 2112.01.
The reference further teaches
d. separating the liquid hydrocarbons for further processing and the light gases (pages 5 and 15) and water would have necessarily been separated before processing the liquid hydrocarbons;
e. feeding the light gases to an electrified steam-methane-reforming reactor to produce a second synthesis gas mixture comprising CO and H2 (page 15, line 31 to page 16, lines 1-15 and lines 25-30; and page 38, lines 28-33);
f. feeding the second synthesis gas mixture back to the hydrocarbon synthesis module thereby producing additional liquid hydrocarbons (page 38, lines 28-33).
Regarding claims 2 and 9, since WO’643 teaches feeding of the second synthesis gas mixture back to the hydrocarbon synthesis module (page 38, lines 28-33), the amount of electricity used to power the electrolysis module in necessarily reduced, wherein the amount of electricity used to power the electrolysis module is necessarily reduced in an amount ranging from five percent to forty percent.
Regarding claim 3, the liquid hydrocarbons are distilled to provide a primary liquid hydrocarbon product and a secondary product, wherein the primary liquid hydrocarbon product is diesel fuel, and the secondary product is naphtha (page 38, lines 19-24; page 37, lines 23-25).
Regarding claim 5, the light gases are pre-reformed using a pre-reformer before being fed into the electrified steam-methane-reforming reactor (page 16, lines 1-23).
Regarding claim 8. the electrolysis module of WO’643 comprises a solid oxide electrolysis electrolyzer (page 37, lines 19-20).
Regarding claims 10-12, WO’643 is silent that the liquid hydrocarbons are 51-100 mol %, 60-100 mol % or 80-100 mol % C5-C24 hydrocarbons. However, since the reference teaches the same process steps as claimed in producing liquid hydrocarbons, there is a prima facie case of anticipation for the liquid hydrocarbons of WO’643 to be 51-100 mol %, 60-100 mol % or 80-100 mol % C5-C24 hydrocarbons. See MPEP § 2112.01.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2022/171643A1 (WO’643) in view of International publication WO2021/110754A1 (WO’754).
The teachings of WO’643 has been set forth above.
Regarding claim 4, while WO’643 teaches the use of electrified SMR reactor, the reference fails to teach that the reactor comprises vertical tubes comprising a catalyst, and wherein the catalyst comprises nickel.
The deficiency is cured by WO’754.
WO’754 teaches a method of using electrically heated steam methane reformer comprising a vertical tube having structured catalyst to reform methane to syngas, wherein the structured catalyst comprises Ni, Ru, Rh, Ir, or a combination thereof as a catalytically active material (Figs. 1a-b, reactor 70; Figs. 3a-b, reactor 700; page 16, lines 27-30). The reference teaches the method further comprises providing a plurality of reforming reactors arranged in parallel to each other (page 13, lines 7-9).
WO’643 fails to teach the details of eSMR, and thus a skilled artisan would have been motivated to use the eSMR of WO’754 in the process of WO’643 with a reasonable expectation of success at arriving at the method of claim 4.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a process for producing liquid hydrocarbons, wherein the process comprises: a. converting water into an electrolysis product stream comprising H2 using an electrolysis module powered by an amount of electricity; b. reacting CO2 with the electrolysis product stream in a reverse water gas shift module to produce a first synthesis gas mixture comprising CO and H2; c. converting the first synthesis gas mixture into a product mixture using a hydrocarbon synthesis module, wherein the product mixture comprises liquid hydrocarbons, light gases, and water, and wherein the liquid hydrocarbons comprise C5-C24 hydrocarbons, and the light gases comprise C1-C4 hydrocarbons and unreacted CO and H2; d. separating the liquid hydrocarbons from the water and the light gases; e. feeding the light gases to an electrified steam-methane-reforming reactor to produce a second synthesis gas mixture comprising CO and H2; f. feeding the second synthesis gas mixture back to the hydrocarbon synthesis module thereby producing additional liquid hydrocarbons, wherein the electrified steam-methane reforming reactor comprises vertical tubes comprising a catalyst, and wherein the catalyst comprises nickel in view of the teachings of WO’653 and WO’754.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2022/171643A1 (WO’643) in view of Patent application publication number US2021/0113980A1 (US’980).
The teachings of WO’643 has been set forth above.
Regarding claim 6, WO’643 further teaches heating light gases before being fed to e-SMR (page 26, lines 29-33) but fails to teach that the light gases are heated using an electrically heated radiant furnace before being fed into the electrified steam-methane-reforming reactor.
The deficiency is cured by US’980.
US’980 teaches a method of using electrically heated steam methane reformer to reform methane to syngas. The reference further teaches preheating the reactant gases using electrical radiative heating element, wherein the heating element is in no direct contact with the eSMR reactor tube ([0009]-[0013]).
WO’643 fails to teach the details of the preheating process of the light gases, and thus a skilled artisan would have been motivated to use the methods of US’980 in the process of WO’643 with a reasonable expectation of success at arriving at the method of claim 6.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a process for producing liquid hydrocarbons, wherein the process comprises: a. converting water into an electrolysis product stream comprising H2 using an electrolysis module powered by an amount of electricity; b. reacting CO2 with the electrolysis product stream in a reverse water gas shift module to produce a first synthesis gas mixture comprising CO and H2; c. converting the first synthesis gas mixture into a product mixture using a hydrocarbon synthesis module, wherein the product mixture comprises liquid hydrocarbons, light gases, and water, and wherein the liquid hydrocarbons comprise C5-C24 hydrocarbons, and the light gases comprise C1-C4 hydrocarbons and unreacted CO and H2; d. separating the liquid hydrocarbons from the water and the light gases; e. feeding the light gases to an electrified steam-methane-reforming reactor to produce a second synthesis gas mixture comprising CO and H2; f. feeding the second synthesis gas mixture back to the hydrocarbon synthesis module thereby producing additional liquid hydrocarbons, wherein the light gases are heated using an electrically heated radiant furnace before being fed into the electrified steam-methane-reforming reactor in view of the teachings of WO’653 and US’980.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2022/171643A1 (WO’643) in view of Patent application publication number US2011/0054047A1 (US’047).
The teachings of WO’643 has been set forth above.
Regarding claim 7, while WO’643 teaches production of hydrogen by water electrolysis and further using hydrogen in RWGS, the reference fails to teach the electrolysis product stream comprising H2 is stored, and wherein the electrolysis product stream is fed to the reverse water gas shift module upon receipt of a stimulus.
The deficiency is cured by US’047.
US’047 teaches a method of electrolyzing water to hydrogen and reacting hydrogen in RWGS. US’047 further teaches control of hydrogen supply to the RWGS subassembly, in which the essential purpose of this control is to supply enough hydrogen for the desired H2/CO ratio on the output of the RWGS subassembly ([0285] and Fig. 31). As such, a skilled artisan would understand that hydrogen would have to be stored if enough hydrogen is already supplied to RWGS.
Thus, a skilled artisan would have been motivated to use the methods of US’047 in the process of WO’643 with a reasonable expectation of success in controlling the hydrogen supply to RWGS for the desired H2/CO ratio.
Accordingly, it would have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a process for producing liquid hydrocarbons, wherein the process comprises: a. converting water into an electrolysis product stream comprising H2 using an electrolysis module powered by an amount of electricity; b. reacting CO2 with the electrolysis product stream in a reverse water gas shift module to produce a first synthesis gas mixture comprising CO and H2; c. converting the first synthesis gas mixture into a product mixture using a hydrocarbon synthesis module, wherein the product mixture comprises liquid hydrocarbons, light gases, and water, and wherein the liquid hydrocarbons comprise C5-C24 hydrocarbons, and the light gases comprise C1-C4 hydrocarbons and unreacted CO and H2; d. separating the liquid hydrocarbons from the water and the light gases; e. feeding the light gases to an electrified steam-methane-reforming reactor to produce a second synthesis gas mixture comprising CO and H2; f. feeding the second synthesis gas mixture back to the hydrocarbon synthesis module thereby producing additional liquid hydrocarbons, wherein the electrolysis product stream comprising H2 is stored, and wherein the electrolysis product stream is fed to the reverse water gas shift module upon receipt of a stimulus in view of the teachings of WO’653 and US’047.
Conclusion
Claims 1-12 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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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692