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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-23 and 35-39 and species “c”, a reactor having one or more walls, wherein an array of heaters provides heat to the walls through both conduction and radiation, in the reply filed on June 24th, 2026 is acknowledged.
Claims 2-5, 7-11, 13-17, and 19-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 4th, 2026. Applicant indicated in the reply that claim 7 also read on the elected claims and species, but the Examiner believes this to be in error, as claim 7 depends on the nonelected claim 2.
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 Interpretation
Claim 1 recites the limitation “and wherein the Reverse Water Gas Shift Reactor is indirectly heated” in line 6. The instant Specification states, “The first category of approaches involves heat addition to the system indirectly — that is, applied externally to the vessel(s) containing the catalyst - with several possible configurations to achieve this” (Specification, Page 13, lines 1-3, emphasis added). This is interpreted to explicitly define indirect heating as heating applied externally to the vessel. Accordingly, “wherein the Reverse Water Gas Shift Reactor is indirectly heated” is interpreted to require heat to be applied externally to the Reverse Water Gas Shift Reactor, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claim 18 recites a limitation to “an exit carbon activity” in lines 1-2. The instant Specification provides the following definition of “carbon formation activity” on Page 9, line 12:
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The Specification further states, “All above equations use Kelvin for temperature and bar for partial pressure” (Specification, Page 10, line 2), and “The carbon activity is specific to solid carbon forming reactions, so for a process it is likely that there will be more than one carbon activity that needs to be evaluated to assess carbon laydown risk” (Specification, Page 9, lines 3-5, emphasis added). Therefore, “carbon activity” is considered to be equivalent to the “carbon formation activity” provided by Eq. 5 in the Specification, where the temperature is in Kelvin and the partial pressure is in bar.
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schuetzle (U.S. 2021/0340015 A1) in view of Dang (CN 204408654 U) (the translation provided with the attached original document is referenced below).
Regarding claim 1, Schuetzle teaches a process for the production of a first product stream comprising carbon monoxide (Schuetzle, Fig. 1, Table 1, [0035]), wherein the process comprises feeding a first reactor feed stream comprising carbon dioxide to a Reverse Water Gas Shift reactor (Schuetzle, Fig. 1, [0035], Stream Number 1 (CO2) combines with Stream Number 2 (Hydrogen from electrolysis) to form Stream Number 3, which is directed to main reactor vessel unit 6), wherein the Reverse Water Gas Shift reactor has an inlet and an outlet (Schuetzle, Fig. 1, [0016], Table 1, 5 and 7, respectively), and wherein the inlet has an inlet temperature and the outlet has an outlet temperature, and wherein the inlet temperature and the outlet temperature are within 152.1°F of one another (Schuetzle, Fig. 1, Table 1, [0035], inlet point 5 is 1600.0°F, and outlet point 7 is 1447.9°F), which differs from the claimed range of 0 to 150 °F of one another, and wherein the Reverse Water Gas Shift reactor comprises a catalyst that converts carbon dioxide to carbon monoxide (Schuetzle, [0016]), thereby producing the first product stream (Schuetzle, Fig. 1, Table 1, [0035], Product Gas 7).
While the difference between inlet and outlet temperatures of 152.1°C in the embodiment of Schuetzle discussed above (Schuetzle, Fig. 1, Table 1, [0035]) differs from the claimed range of 0 to 150°F, Schuetzle teaches generally that a range of temperature differences from 105 to 160°F is preferable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have had the difference between inlet and outlet temperatures be from 105 to 150°F, as Schuetzle teaches that this is a preferable range of temperature differences (Schuetzle, [0016]). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the inlet-outlet temperature differences because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Schuetzle does not explicitly teach and that the Reverse Water Gas Shift Reactor is indirectly heated, but Schuetzle does teach an embodiment where additional heat is added to the vessel to maintain an isothermal or nearly isothermal temperature profile in the vessel (Schuetzle, [0013]). To that end, Dang teaches that heating a tubular reactor with heating sleeves improves the electrical safety of the tubular reactor (Dang, [007]-[0010]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected the indirect heating method of a plurality of heating sleeves taught by Dang in supplying the heat needed to maintain isothermal conditions in Schuetzle’s tubular reactor, as Dang teaches that this is a particularly safe means of supplying external heat to a tubular reactor (Dang, [007]-[0010]).
Regarding claim 6, modified Schuetzle renders the process according to claim 1 obvious, as discussed above, wherein the Reverse Water Gas Shift Reactor has one or more walls (Schuetzle, Fig. 2, being a solid container which holds pressurized gases, the Reverse Water Gas Shift Reactor necessarily has walls), wherein an array of heaters provides heat to the walls through both conduction and radiation (Dang, Fig. 3, [0046], plurality of heating sleeves 2 are disposed on the outer wall of the tubular reactor 1; [0037]). The obviousness of incorporating heating sleeves as taught by Dang is discussed with respect to claim 1 above.
Claims 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Schuetzle (U.S. 2021/0340015 A1) in view of Rytter (U.S. 2023/0174376 A1).
Regarding claim 35, Schuetzle teaches a process for the production of a first product stream comprising carbon monoxide (Schuetzle, Fig. 1, Table 1, [0035]), wherein the process comprises feeding a first reactor feed stream comprising carbon dioxide to a Reverse Water Gas Shift reactor (Schuetzle, Fig. 1, [0035], Stream Number 1 (CO2) combines with Stream Number 2 (Hydrogen from electrolysis) to form Stream Number 3, which is directed to main reactor vessel unit 6), wherein the Reverse Water Gas Shift reactor has an inlet and an outlet (Schuetzle, Fig. 1, [0016], Table 1, 5 and 7, respectively), and wherein the inlet has an inlet temperature and the outlet has an outlet temperature, and wherein the inlet temperature and the outlet temperature are within 152.1°F of one another (Schuetzle, Fig. 1, Table 1, [0035], inlet point 5 is 1600.0°F, and outlet point 7 is 1447.9°F), which differs from the claimed range of 0 to 150 °F of one another, and wherein the Reverse Water Gas Shift reactor comprises a catalyst that converts carbon dioxide to carbon monoxide (Schuetzle, [0016]), thereby producing the first product stream (Schuetzle, Fig. 1, Table 1, [0035], Product Gas 7).
While the difference between inlet and outlet temperatures of 152.1°C in the embodiment of Schuetzle discussed above (Schuetzle, Fig. 1, Table 1, [0035]) differs from the claimed range of 0 to 150°F, Schuetzle teaches generally that a range of temperature differences from 105 to 160°F is preferable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have had the difference between inlet and outlet temperatures be from 105 to 150°F, as Schuetzle teaches that this is a preferable range of temperature differences (Schuetzle, [0016]). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the inlet-outlet temperature differences because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Schuetzle does not teach that pressurized steam is fed into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream. However, Rytter teaches adding pressurized steam to the feed gas into a Reverse Water Gas Shift reactor (Rytter, [0070]-[0071]; since steam is combined with feed gas, and feed gas is at an elevated pressure, pressurized steam is fed into the Reverse Water Gas Shift reactor).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have fed pressurized steam into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream, as Rytter teaches that this favorably suppresses coke formation (Rytter, [0070]).
Regarding claim 36, modified Schuetzle renders the process according to claim 35 obvious, as discussed above, wherein there is a CO2 conversion efficiency associated with the production of the first product stream, and wherein the CO2 conversion efficiency is 70 percent (Schuetzle, [0035], 70 mol %).
Regarding claim 37, modified Schuetzle renders the process according to claim 35 obvious, as discussed above, wherein methane is also formed in the Reverse Water Gas Shift reactor (Schuetzle, [0017]). While Schuetzle does not explicitly teach that this methane formation is the result of the Reverse Water Gas Shift reactor catalyst catalyzing a methanation reaction, wherein the methanation reaction is an exothermic reaction, and wherein the heat from the exothermic reaction offsets the temperature drop produced by the conversion of carbon dioxide to carbon monoxide, these features are necessarily present in Schuetzle’s method. If the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps. It would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”). In the instant case, it would not be reasonable to attribute the production of methane to a result other than the Reverse Water Gas Shift catalyst also catalyzing the methanation side reaction, the exothermicity of which would be the same as instantly claimed, which would necessarily offset the temperature drop produced by the conversion of carbon dioxide to carbon monoxide.
Regarding claim 38, modified Schuetzle renders the process according to claim 35 obvious, as discussed above, wherein hydrogen is fed into the Reverse Water Gas Shift reactor along with the first reactor stream (Schuetzle, Fig. 1, [0035], Stream Number 2 (Hydrogen from electrolysis)).
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 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,597,654 (“’654”) in view of Dang (CN 204408654 U) (the translation provided with the attached original document is referenced below).
Regarding instant claim 1, claim 11 of ‘654 claims a process for the production of a first product stream comprising carbon monoxide (‘654, claim 11, “A process for the conversion of a feed gas comprising carbon dioxide and hydrogen to a product gas comprising carbon monoxide and water”), wherein the process comprises feeding a first reactor feed stream comprising carbon dioxide to a Reverse Water Gas Shift reactor (‘654, claim 11, feature a, main reactor vessel; conversion of carbon dioxide and hydrogen to carbon monoxide and water is the Reverse Water Gas Shift reaction, making the main vessel a Reverse Water Gas Shift reactor), wherein the Reverse Water Gas Shift reactor has an inlet and an outlet, and wherein the inlet has an inlet temperature and the outlet has an outlet temperature, and wherein the inlet temperature and the outlet temperature are within 5°F of one another (‘654, claim 11, feature a recites temperature in °F, and feature f states that the product gas leaves the main reactor at an exit temperature where the exit temperature is within 5° of the inlet temperature.), and wherein the Reverse Water Gas Shift Reactor is heated (‘654, claim 11, feature d, “the main reactor vessel is maintain at or near isothermal conditions by the addition of heat produced by electricity to the vessel”), and wherein the Reverse Water Gas Shift reactor comprises a catalyst that converts carbon dioxide to carbon monoxide, thereby producing the first product stream (‘654, claim 11, feature e, “the main reactor vessel contains catalyst that converts the heated feed gas to the product gas”).
Claim 11 of ‘654 does not claim that the heating of the main reactor vessel (the Reverse Water Gas Shift reactor) is indirect. However, Dang teaches that heating a tubular reactor with heating sleeves improves the electrical safety of the tubular reactor (Dang, [007]-[0010]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected the indirect heating method of a plurality of heating sleeves taught by Dang in supplying the heat needed to maintain isothermal conditions in the main reactor vessel of claim 11 of ‘654, as Dang teaches that this is a particularly safe means of supplying external heat to a reactor (Dang, [007]-[0010]).
Regarding instant claim 6, claim 11 of ‘654 together with Dang renders the method of instant claim 1 obvious, as discussed above. While ‘654 does not explicitly claim that the Reverse Water Gas Shift Reactor has one or more walls, it would necessarily have walls, being a vessel capable of containing heated gas. Dang teaches that an array of heaters provides heat to the walls through both conduction and radiation (Dang, Fig. 3, [0046], plurality of heating sleeves 2 are disposed on the outer wall of the tubular reactor 1; [0037]). The obviousness of incorporating heating sleeves as taught by Dang is discussed with respect to claim 1 above.
Claims 35-36 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 11 of U.S. Patent No. 11,597,654 (“’654”) in view of Rytter (U.S. 2023/0174376 A1).
Regarding instant claim 35, claim 11 of ‘654 claims a process for the production of a first product stream comprising carbon monoxide (‘654, claim 11, “A process for the conversion of a feed gas comprising carbon dioxide and hydrogen to a product gas comprising carbon monoxide and water”), wherein the process comprises feeding a first reactor feed stream comprising carbon dioxide to a Reverse Water Gas Shift reactor (‘654, claim 11, feature a, main reactor vessel; conversion of carbon dioxide and hydrogen to carbon monoxide and water is the Reverse Water Gas Shift reaction, making the main vessel a Reverse Water Gas Shift reactor), wherein the Reverse Water Gas Shift reactor has an inlet and an outlet, and wherein the inlet has an inlet temperature and the outlet has an outlet temperature, and wherein the inlet temperature and the outlet temperature are within 5°F of one another (‘654, claim 11, feature a recites temperature in °F, and feature f states that the product gas leaves the main reactor at an exit temperature where the exit temperature is within 5° of the inlet temperature.), and wherein the Reverse Water Gas Shift reactor comprises a catalyst that converts carbon dioxide to carbon monoxide, thereby producing the first product stream (‘654, claim 11, feature e, “the main reactor vessel contains catalyst that converts the heated feed gas to the product gas”).
Claim 11 of ‘654 does not claim that pressurized steam is fed into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream. However, Rytter teaches adding pressurized steam to the feed gas into a Reverse Water Gas Shift reactor (Rytter, [0070]-[0071]; since steam is combined with feed gas, and feed gas is at an elevated pressure, pressurized steam is fed into the Reverse Water Gas Shift reactor).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have fed pressurized steam into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream, as Rytter teaches that this favorably suppresses coke formation (Rytter, [0070]).
Regarding instant claim 38, claim 11 of ‘654 together with Rytter together render the process according to instant claim 35 obvious, as discussed above, wherein hydrogen is fed into the Reverse Water Gas Shift reactor along with the first reactor stream (‘654, claim 11, feed gas comprises hydrogen).
Additionally regarding instant claim 35, claim 1 of ‘654 claims a process for the production of a first product stream comprising carbon monoxide (‘654, claim 1, “A process for the conversion of a feed gas comprising carbon dioxide and hydrogen to a product gas comprising carbon monoxide and water”), wherein the process comprises feeding a first reactor feed stream comprising carbon dioxide to a Reverse Water Gas Shift reactor (‘654, claim 1, feature a, main reactor vessel; conversion of carbon dioxide and hydrogen to carbon monoxide and water is the Reverse Water Gas Shift reaction, making the main vessel a Reverse Water Gas Shift reactor), wherein the Reverse Water Gas Shift reactor has an inlet and an outlet, and wherein the inlet has an inlet temperature and the outlet has an outlet temperature, and wherein the inlet temperature and the outlet temperature are more than 50°F of one another (‘654, claim 2), and wherein the Reverse Water Gas Shift reactor comprises a catalyst that converts carbon dioxide to carbon monoxide, thereby producing the first product stream (‘654, claim 1, feature e, “the main reactor vessel contains catalyst that converts the heated feed gas to the product gas”).
Additionally, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the differences between inlet and outlet temperatures because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim 1 of ‘654 does not claim that pressurized steam is fed into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream. However, Rytter teaches adding pressurized steam to the feed gas into a Reverse Water Gas Shift reactor (Rytter, [0070]-[0071]; since steam is combined with feed gas, and feed gas is at an elevated pressure, pressurized steam is fed into the Reverse Water Gas Shift reactor).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have fed pressurized steam into the Reverse Water Gas Shift reactor in addition to the first reactor feed stream, as Rytter teaches that this favorably suppresses coke formation (Rytter, [0070]).
Regarding instant claim 36, claims 1-2 of ‘654 together with Rytter together render the process according to claim 35 obvious, as discussed above. ‘654 additionally claims that there is a CO2 conversion efficiency associated with the production of the first product stream and wherein the CO2 conversion efficiency is greater than 60 percent (‘654, claim 9), thereby rendering the claim obvious.
Regarding instant claim 38, claims 1-2 of ‘654 together with Rytter together render the process according to instant claim 35 obvious, as discussed above, wherein hydrogen is fed into the Reverse Water Gas Shift reactor along with the first reactor stream (‘654, claim 1, feed gas comprises hydrogen).
Allowable Subject Matter
Claims 12, 18, and 39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Schuetzle (U.S. 2021/0340015 A1), Dang (CN 204408654 U) (the translation provided with the attached original document is referenced below), and Rytter (U.S. 2023/0174376 A1) are considered to be the closest prior art to the instant claims.
Regarding claim 12 and its dependent claim 18, Schuetzle in view of Dang renders the process according to claim 6 obvious, as discussed above, wherein the heaters are heating jackets (Dang, [007]-[0010]), which differ from the claimed clamshell heaters or bar style heaters. As there is no teaching or suggestion in any of the cited prior art references that Dang’s heating jackets could be replaced with clamshell heaters or bar style heaters while preserving the benefits taught by Dang, it would not be obvious to do so, and the claim contains allowable subject matter.
Regarding claim 39, Schuetzle in view of Rytter renders the process according to claim 38 obvious, as discussed above, but none of the cited prior art references teach or suggest that the hydrogen fed into the Reverse Water Gas Shift reactor is fed through multiple inlet points.
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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