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 .
US 2008/0221227 is a relevant art. This reference targets methane (CH4), a C1 product. Nickel-based catalyst (including Fe-Ni alloys) are highly efficient at breaking C-O bonds and immediately hydrogenating the carbon to its most saturated C1 form. The present claim specially targets liquid hydrocarbons (C5+). Producing these requires C-C coupling, a mechanism that is actively suppressed a standard methanation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 11, 12, 14-19 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,104,125 and over claim 1 of US patent No. 11,498,886. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the pending claims and the patented claims are merely obvious variation that do not impart a new non-obvious technical advantage:
Integrated syngas vs. direct conversion:
The patented claims ‘125 specifically define a multi-stage process where H2 and CO2 are first converted to syngas in one reactor, which is then moved to a second reactor to produce liquid fuel.
The pending claims (18/445,376) recite a more generalized mixing step to create a reactor feed stream that produces liquid hydrocarbons. One of ordinary skill in the art, before the effective filing date of the claimed invention would recognize that the pending claims encompass the multi-state syngas intermediate process already claimed in the ‘125 patent.
Recycling and byproduct utilization: The ‘125 patent contains a specific limitation (claim 1 d) regarding the use of byproduct oxygen from the electrolyzer to convert tail gas back into syngas. The pending claims omits the specific loop but claims the broader underlying method of combining CO2 and renewable H2 to achieve the same result. The omission of a specific efficiency step (the oxygen loop) or the use of renewable hydrogen is an obvious design choice for one skilled in the art of e-fuel synthesis.
Catalyst material overlap: The ‘125 patent specifies a metal alumina spinel catalyst. While the pending claims may use broader catalyst terminology, the functional transformation, hydrogenation of CO2 to C5+ remains essentially the same.
The same analysis applies to claim 1 of US patent No. 11,498,886
Adding 30% to 95% CO2 conversion efficiency range to the pending claims fail to overcome an obviousness type double patenting rejection over the ‘125 patent. Because the physical steps of the reaction are essentially identical, the law of inherency dictates that the process in the ‘125 patent will naturally yield the exact same efficiency metrics when operated, even if the written claims are silent on the specific percentage. Therefore, stating a broad, expected industrial range does not make the new claim a non-obvious variation.
The pending claims are not patentably distinct from the patented claims merely by reciting the specific weight percentages of copper and magnetite, as this represents a mere optimization of known catalytic components or an inherent property of the patent process. Under the doctrine of inherency and obviousness, if a person of ordinary skill in the art practices the foundational catalyst and process steps described in the ‘125 patent, the resulting catalyst will naturally contain or require optimized weight percentages of these active metals to function. Because adjusting the concentration of known active components like copper and magnetite to maximize yield is considered a routine design choice in chemical engineering, this limitations does not impart a new, non-obvious technical advantage, and the rejection can only be overcome by proving that the specific claimed weight percentages yield critical, unexpected results or by filing a terminal disclaimer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAFAR F PARSA whose telephone number is (571)272-0643. The examiner can normally be reached M-F 10:00 AM-6:30PM.
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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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/JAFAR F PARSA/Primary Examiner, Art Unit 1692
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