Prosecution Insights
Last updated: April 19, 2026
Application No. 18/471,782

PROCESS AND APPARATUS FOR REGENERATING CATALYST FROM A METHANOL TO OLEFINS PROCESS

Non-Final OA §103§112
Filed
Sep 21, 2023
Examiner
MCCAIG, BRIAN A
Art Unit
1772
Tech Center
1700 — Chemical & Materials Engineering
Assignee
UOP LLC
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
2y 6m
To Grant
94%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
1057 granted / 1321 resolved
+15.0% vs TC avg
Moderate +14% lift
Without
With
+13.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
30 currently pending
Career history
1351
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
42.9%
+2.9% vs TC avg
§102
17.1%
-22.9% vs TC avg
§112
31.3%
-8.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1321 resolved cases

Office Action

§103 §112
DETAILED ACTION Notice of Pre-AIA or AIA Status This Office action is based on the 18/471,782 application filed 21 September 2023, which is being examined under the first inventor to file provisions of the AIA. Claims 1-20 are pending and have been fully considered. 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. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: carbon dioxide separation unit and regenerator unit in claim 20 . Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. In the instant case, a regenerator unit comprises heating coils and equivalents thereof [see paragraph 0103 of the published application]. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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 appl icant regards as his invention. Claim s 3- 7 , 15 -18 , and 20 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 3-4 and 15 recites the limitation "said carbon dioxide stream for methanol synthesis" in lines 5 (for claim 3), 2 and 3-4 (claim 4), and lines 5-6 (claim 15). There is insufficient antecedent basis for this limitation in the claim. Claim 17 recites the limitation " said recycle carbon dioxide stream " in line 2. There is insufficient antecedent basis for this limitation in the claim. Perhaps applicant should consider amending the limitation to recite “ said [[ recycle ]] carbon dioxide recycle stream .” With respect to claim 20, the preamble of said claim recites “[a] n apparatus for regenerating catalyst comprising: … ” However, the body of the claim does not recite any apparatus components that regenerate a catalyst except a regenerator unit, which is only mentioned tangentially: “… the flue gas inlet of the superheated steam section in fluid communication with an outlet of a regenerator unit …” Therefore, it is not clear that the apparatus is directed to regenerating catalyst at all. Additionally, the claim limitation “ carbon dioxide 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. T he disclosure is devoid of any structure that performs the function in the claim . 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. 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 § 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. Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (CN 108339357). Note: in the discussion that follows, reference will be made to the machine translations of the aforementioned document(s). Wang et al discloses “a MTO catalyst regeneration and smoke recycling device and method. The device comprises an oxygen-containing gas supplying device, a regenerator , a purifying device, a washing device and a gas separation device, wherein the oxygen-containing gas supplying device is provided with an oxygen-containing gas supplying port; the regenerator is provided with an oxygen-containing gas inlet ; the oxygen-containing gas inlet is connected with the oxygen-containing gas supplying port ; the purifying device is provided with a purifying device inlet; the purifying device inlet is connected with the smoke gas outlet; the washing device provided with a primary purified gas inlet and a purified gas outlet, and the primary purified gas inlet is connected with primary purified gas outlet; the gas separation device is provided with a purified gas inlet, and the purified gas inlet and a purified gas outlet are connected” [abstract] and “a gas separation device is provided with a purified gas inlet, outlet and carbon monoxide carbon dioxide outlet , a purified gas inlet and a purified gas outlet are connected” [see 2 nd paragraph under the heading “Summary of the Invention” on page 2 of translation] and “ the carbon dioxide outlet is connected with the inlet end of the oxygen-containing gas supply apparatus ” [see 5 th paragraph under the aforementioned heading]. Additionally, Wang et al discloses “…the oxygen-containing gas is a mixture of oxygen and pressure-regulated gas, and pressure-regulated gas is carbon dioxide ” [2 nd paragraph on page 3 of translation] and the “MTO catalyst regeneration process [comprises] the partial pressure of the burning speed proportional to the oxygen. Compared to the catalyst regeneration process using air, the invention uses … the mixed gas of oxygen and carbon dioxide …as reaction materials, which is in favour of improving the partial pressure of oxygen, so as to shorten the residence time of the catalyst in the regenerator to be regenerated, reduces abrasion of the catalyst” [2 nd paragraph on page 4 of translation] . center 0 0 Wang et al further discloses “ the carbon dioxide outlet is connected with the inlet end of the oxygen-containing gas supply apparatus . This facilitates adjusting the volume percentage of oxygen in oxygen-containing gas by carbon dioxide , thereby facilitating control of the reaction rate in the regenerator, and is good for improving the yield of carbon monoxide recovered from flue gas… the purifying device comprises a filtering device and a multi-level cyclone separating device. The filtering device is provided with a purifying device inlet and a filter outlet, and a multi-level cyclone separating device is provided with a multi-level cyclone separating device inlet, a second regenerated catalyst outlet and the primary purified gas outlet and the outlet of the filter inlet is connected with the multi-level cyclone separating device. This facilitates separating the regenerated catalyst from the flue gas outlet, and further remove the solid particles in the flue gas ” [7 th paragraph on page 4 of translation; see, also, figure above]. The oxygen-containing gas in the oxygen-containing gas supply device renders obvious the providing and mixing steps of instant claim 1. The filtering in the purifying device corresponds to the filtering in instant claim 1. Note the regenerated catalyst obtained therefrom [see figure above], which corresponds to the removal of catalyst fines. With respect to claim 8, recall that Wang et al discloses “ the carbon dioxide outlet is connected with the inlet end of the oxygen-containing gas supply apparatus. This facilitates adjusting the volume percentage of oxygen in oxygen-containing gas by carbon dioxide, thereby facilitating control of the reaction rate in the regenerator .” Consequently, the concentration of oxygen in the oxygen-containing gas is a result-effective variable; that is, a variable that achieves a recognized result. In this case, the recognized result is the reaction rate . Applicant is reminded that “w here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. ” In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 . Claim(s) 1 -2 , 8-11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al (CN 115055211) in view of Xing et al (CN 103214333) . Note: in the discussion that follows, reference will be made to the machine translations of the aforementioned document(s). With respect to claims 1-2, Shi et al discloses “pure oxygen 1 is mixed with recycled CO 2 29 and then enters a regenerator 4 to perform scorching regeneration in the regenerator 4, and the regenerated catalyst 5 returns to the reactor for catalytic reaction. The regenerat [or] flue gas 6 first separates the catalyst fines through the three-stage cyclone separator 7 , and then enters the waste heat boiler 8 to recover heat energy. The flue gas 9 discharged from the waste heat boiler enters the high-temperature heat exchanger 1 0 and heats the pressurized circulating CO 2 28 [which corresponds to the preheating of instant claim 2—Examiner’s amendment] , then the flue gas enters the low-temperature heat exchanger 12, and the domestic water 11 is heated to obtain the high-temperature water 13, and then the low-temperature flue gas 14 enters the absorption tower 15, and under the absorption of the mixed alcohol amine solution 24, the lean gas 17 discharged from the top of the CO 2 absorption tower 15 is further enriched into the drying device 18 to obtain the rich liquid 16 to be heated by the feed heat exchanger 22, Then, the mixed alcohol amine solution 24 is mixed with the fresh alcohol amine solution 23 after the circulating alcohol amine solution 21 discharged from the bottom of the desorption tower 20 passes through the feed heat exchanger 22, and a high concentration of CO is discharged from the top of the desorption tower 20, wherein a part of the high concentration CO 2 26 enters the CO 2 circulating compressor 27 and then enters the high-temperature heat exchanger 10 for heating to obtain a circulating CO 2 29, which is mixed with the oxygen 1 and then returns to the regenerator 4 , and the other part of the high concentration CO 2 30 is used for sequestration or oil displacement treatment ” [see 2 nd paragraph under the heading “Detailed Description of the Embodiments”]. center 0 0 Shi et al does not appear to disclose the filtering of instant claim 1. However, Xing et al, which is concerned with MTO processes, discloses “the process of the present invention not only uses the filter 5 …to remove fine particles and/or fine powders with a particle size below 5 microns, which cannot be separated by the conventional 1-3 stage cyclone gas-solid separator , more in order to set or add at least one filter 5 to intercept and separate the catalyst fine particles and/or fine powder in a suitable section, so that the type, material selection and operation requirements of the filter 5 are not too high, and the filtration efficiency is very good” [see 4 th paragraph on page 6 of translation] and “the filtration efficiency of the filter is as high as 80%, which effectively separates and traps catalyst fine particles and/or fine powder with a particle size of 1-5 microns that cannot be separated by the 1-3 stage cyclone gas-solid separator ” [see bottom of page 7 of translation]. At the time of the effective filing date of the instant application, it would have been obvious to add a filter to the three-stage cyclone separator 7 of Shi et al to remove fine catalyst particles to “thereby [prevent] the reduction of the working efficiency of the quench tower 6, the water washing tower 7, the quench water hydrocyclone separator 8 and 9 and various heat exchangers , and [prevent] the operation of the system from being abnormal ” [see 5 th paragraph on page 5 of translation]. Therefore, the invention as a whole would have been prima facie obvious. With respect to claim 8, Shi et al discloses “ the volume fraction of oxygen in the mixed gas is 15-25%. ” [see middle of page 2 of translation]. Furthermore, recall that the concentration of oxygen in the oxygen-containing gas is a result-effective variable; that is, a variable that achieves a recognized result. In this case, the recognized result is the reaction rate in the regenerator , as discussed above . Applicant is reminded that “w here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. ” In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 . With respect to claim 9, oxygen from air separation units for use in MTO processes is well known and obvious to one of ordinary skill in the art. With respect to claim 10, see text in the table at bottom of translation : “ [t] he steam production amount of the waste heat boiler is t/h …,” which renders the limitations of the instant claim obvious. With respect to claim 11, while modified Shi et al does not disclose the process steps in the order delineated in the instant claim, applicant is reminded that the “ selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results .” In re Burhans , 154 F.2d 690, 69 USPQ 330. With respect to claim 13, SAPO catalysts are well known in the art for methanol to olefin conversion processes. Allowable Subject Matter Claim 19 is allowed. Claims 3-7 and 15-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claims 12 and 14 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: with respect to claim 3, the cited prior art does not disclose the separating and passing steps; with respect to claim 4, the cited prior does not teach at least the removing and second passing step; with respect to claim 12, the cited prior art does not disclose any of the process steps recited therein; with respect to claim 14, Shi et al discloses a compressor instead of the required expander (see discussion above concerning such); with respect to claim 15, the cited prior art does not appear to disclose the second separating step; with respect to claim 19, the cited prior art does not teach at least the separating and second passing steps. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Meiswinkel et al (US 20240025819) , which discloses “… H- SAPO-34 for the methanol-to-olefin method ” [paragraph 0026] ; Van Egmond et al (WO2005/105956) , which discloses “ the invention is to an integrated process for forming methanol and light olefins. In the process, air components are separated in an air separation unit to form an oxygen stream and a nitrogen stream ” [paragraph 0011] . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT BRIAN A MCCAIG whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-5548 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday to Friday 8 to 4:30 Mountain Time . 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) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT In Suk Bullock can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-5954 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRIAN A MCCAIG/ Primary Examiner, Art Unit 1772 19 February 2026
Read full office action

Prosecution Timeline

Sep 21, 2023
Application Filed
Feb 19, 2026
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
94%
With Interview (+13.6%)
2y 6m
Median Time to Grant
Low
PTA Risk
Based on 1321 resolved cases by this examiner. Grant probability derived from career allow rate.

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