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 .
This action is responsive to Applicant's amendments/remarks filed 07/23/2026.
Claims 1-18 and 20-22 are currently pending and under examination.
The rejection of claims 3-10, 14-15, and 18-22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendments.
The rejection of claims 1-3, 5-11, 17-18, and 20-22 under 35 U.S.C. 103 as being unpatentable over Kim (WO 2020204218 A1, see US 2022/0186986 A1) is withdrawn in view of the above amendments.
The rejection of claim 19 under 35 U.S.C. 103 as being unpatentable over Haberberger (US 2015/0260451 A1) is withdrawn in view of the cancellation of claim 19.
The rejection of claim 18 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is maintained in view of the above amendments.
The rejection of claims 1, 2, 4, and 11-16 under 35 U.S.C. 103 as being unpatentable over Haberberger (US 2015/0260451 A1) is maintained in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 5, 7, 14, and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 depends from claim 1 and recites “said methane is no more than about 15 mol% in the composition”. However, claim 1 recites “about 11 to about 15 mol% methane”. Therefore, claim 4 fails to further limit the subject matter of claim 1.
Claim 5 depends from claim 1 and recites “said methane is no less than about 25 mol% in the composition”. However, claim 1 recites “about 11 to about 15 mol% methane”. Therefore, claim 5 fails to include all the limitations of claim 1.
Claim 7 depends from claim 1 and recites “said C3 hydrocarbon is no more than about 35 mol% in the composition”. However, claim 1 recites “about 20 to about 35 mol% C3 hydrocarbon”. Therefore, claim 7 fails to further limit the subject matter of claim 1.
Claim 14 depends from claim 12 and recites “said C3 hydrocarbon is no more than about 35 mol% in the composition”. However, claim 12 recites “about 20 to about 35 mol% C3 hydrocarbon”. Therefore, claim 14 fails to further limit the subject matter of claim 12.
Claim 18 depends from claim 1 and recites “said inert gas is no more than about 7 mol% in the composition”. However, claim 1 recites “about 0 to about 7 mol% inert gas”. Therefore, claim 18 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1-4, 6-18, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Haberberger (US 2015/0260451 A1, hereinafter Haberberger).
Regarding claims 1 and 2, Haberberger teaches that a mixed refrigerant composition can comprise methane, ethane, propane, and isopentane ([0025]),
wherein methane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 11 to about 15 mol%”;
ethane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 25 to about 40 mol%”, and reads on the claimed C2 hydrocarbon;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 20 to about 35 mol%”, and reads on the claimed C3 hydrocarbon;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 0 to about 15 mol%”, and reads on the claimed C5 hydrocarbon.
Haberberger also teaches that the mixed refrigerant composition can exclude nitrogen ([0025]). Thus, the mixed refrigerant composition of Haberberger can comprise about 0 mol% nitrogen, which falls within the claimed range of “about 0 to about 7 mol%”.
Haberberger also teaches that the mixed refrigerant composition is utilized in a refrigeration cycle ([0025]).
Haberberger does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a composition comprising about 0 mol% of nitrogen, 10-30 mol % of methane, 10-30 mol % of ethane, 5-30 mol % of propane, and 2-15 mol % of isopentane as taught by Haberberger, in order to make a mixed refrigerant composition for use in a refrigeration cycle with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Alternatively regarding claims 1-2, and regarding claim 3, Haberberger teaches that a mixed refrigerant composition can comprise methane, ethane, propane, and isopentane, and can exclude certain components, for example, nitrogen ([0025]). Thus, in some embodiments, the mixed refrigerant composition of Haberberger can comprise nitrogen. Thus, the mixed refrigerant composition of Haberberger can comprise methane, ethane, propane, isopentane, and nitrogen.
Haberberger also teaches that methane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 11 to about 15 mol%”;
ethane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 25 to about 40 mol%”, and reads on the claimed C2 hydrocarbon;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 20 to about 35 mol%”, and reads on the claimed C3 hydrocarbon;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 0 to about 15 mol%”, and reads on the claimed C5 hydrocarbon;
nitrogen can be in an amount of 0 to 20 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed ranges of “about 0 to about 7 mol%” and “at least 3 mol%”.
Haberberger also teaches that the mixed refrigerant composition is utilized in a refrigeration cycle ([0025]).
Haberberger does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a composition comprising 0-20 mol % of nitrogen, 10-30 mol % of methane, 10-30 mol % of ethane, 5-30 mol % of propane, and 2-15 mol % of isopentane as taught by Haberberger, in order to make a mixed refrigerant composition for use in a refrigeration cycle with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 4 and 6-11, Haberberger teaches that the mixed refrigerant composition can comprise methane, ethane, propane, and isopentane ([0025]),
wherein methane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no more than about 15 mol%”;
ethane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no less than about 30 mol%”;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed ranges of “no more than about 35 mol%” and “no less than about 30 mol%”;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed ranges of “no more than 8 mol%” and “no less than 5 mol%”.
Regarding claims 12, 13, and 16, Haberberger teaches that a mixed refrigerant composition can comprise methane, ethane, propane, and isopentane, and can exclude certain components, for example, nitrogen ([0025]). Thus, in some embodiments, the mixed refrigerant composition of Haberberger can comprise nitrogen. Thus, the mixed refrigerant composition of Haberberger can comprise methane, ethane, propane, isopentane, and nitrogen.
Haberberger also teaches that methane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 11 to about 15 mol%”;
ethane can be in an amount of 5 to 40 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 30 to about 40 mol%”, and reads on the claimed C2 hydrocarbon;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 20 to about 35 mol%”, and reads on the claimed C3 hydrocarbon;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 0 to about 8 mol%”, and reads on the claimed C5 hydrocarbon;
nitrogen can be in an amount of 0 to 20 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 3 to about 7 mol%”.
Haberberger also teaches that the mixed refrigerant composition is utilized in a refrigeration cycle ([0025]).
Haberberger does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a composition comprising 0-20 mol % of nitrogen, 10-30 mol % of methane, 5-40 mol % of ethane, 5-30 mol % of propane, and 2-15 mol % of isopentane as taught by Haberberger, in order to make a mixed refrigerant composition for use in a refrigeration cycle with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 14 and 15, Haberberger teaches that propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no more than about 35 mol%”;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no less than 5 mol%”.
Regarding claim 17, Haberberger teaches that a mixed refrigerant composition can comprise methane, ethane, propane, and isopentane ([0025]),
wherein methane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 11 to about 15 mol%”;
ethane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 25 to about 40 mol%”, and reads on the claimed C2 hydrocarbon;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 20 to about 35 mol%”, and reads on the claimed C3 hydrocarbon;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “about 5 to about 15 mol%”, and reads on the claimed C5 hydrocarbon.
Regarding claim 18, Haberberger teaches that nitrogen can be in an amount of 0 to 20 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no more than about 7 mol%”.
Regarding claims 20-22, Haberberger teaches that ethane can be in an amount of 10 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no less than about 30 mol%”;
propane can be in an amount of 5 to 30 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no less than about 30 mol%”;
isopentane can be in an amount of 2 to 15 mol % in the mixed refrigerant composition (Table 1), which overlaps with the claimed range of “no more than 8 mol%”.
2. Claims 1-4, 6-9, 12-14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 105698487 A, hereinafter Yang).
Regarding claims 1 and 2, Yang teaches a mixed refrigerant comprising 15-40 mol% methane, 1-13 mol% nitrogen, 20-40 mol% ethylene, 15-35 mol% propane ([0021]), which overlap with the claimed ranges of “about 11 to about 15 mol% methane”, “about 0 to about 7 mol% inert gas”, “about 25 to about 40 mol% C2 hydrocarbon”, and “about 20 to about 35 mol% C3 hydrocarbon”.
The nitrogen in Yang reads on the claimed inert gas. The ethylene in Yang reads on the claimed C2 hydrocarbon. The propane in Yang reads on the claimed C3 hydrocarbon.
The mixed refrigerant as taught by Yang can comprise 0 mol% of C5 hydrocarbon, which falls within the claimed range of “about 0 to about 15 mol%”.
Yang does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, 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 ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 3, 4, 6-9, and 18, Yang teaches a mixed refrigerant comprising 15-40 mol% methane, 1-13 mol% nitrogen, 20-40 mol% ethylene, 15-35 mol% propane ([0021]), which overlap with the claimed ranges of “at least 3 mol%” and “no more than about 7 mol%” of the claimed nitrogen/inert gas, “no more than about 15 mol%” of the claimed methane, “no less than about 30 mol%” of the claimed C2 hydrocarbon, “no more than about 35 mol%” and “no less than about 30 mol%” of the claimed C3 hydrocarbon.
The nitrogen in Yang reads on the claimed inert gas. The ethylene in Yang reads on the claimed C2 hydrocarbon. The propane in Yang reads on the claimed C3 hydrocarbon.
The mixed refrigerant as taught by Yang can comprise 0 mol% of C5 hydrocarbon, which falls within the claimed range of “no more than 8 mol%”.
Regarding claims 12 and 13, Yang teaches a mixed refrigerant comprising 15-40 mol% methane, 1-13 mol% nitrogen, 20-40 mol% ethylene, 15-35 mol% propane ([0021]), which overlap with the claimed ranges of “about 3 to about 7 mol% inert gas”, “about 11 to about 15 mol% methane”, “about 30 to about 40 mol% C2 hydrocarbon”, and “about 20 to about 35 mol% C3 hydrocarbon”.
The nitrogen in Yang reads on the claimed inert gas. The ethylene in Yang reads on the claimed C2 hydrocarbon. The propane in Yang reads on the claimed C3 hydrocarbon.
The mixed refrigerant as taught by Yang can comprise 0 mol% of C5 hydrocarbon, which falls within the claimed range of “about 0 to about 8 mol%”.
Yang does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, 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 ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 14, Yang teaches that the mixed refrigerant comprises 15-35 mol% propane ([0021]), which overlaps with the claimed range of “no more than about 35 mol%”.
Response to Arguments
1. Applicant's arguments with respect to the prior rejections over Kim (WO 2020204218 A1, see US 2022/0186986 A1) have been considered but are moot, because the rejection of claims 1-3, 5-11, 17-18, and 20-22 under 35 U.S.C. 103 as being unpatentable over Kim is withdrawn in view of the amendments.
2. Applicant evaluated a refrigerant composition derived from Haberberger as shown in the table below:
PNG
media_image1.png
200
376
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Greyscale
(Remarks, p. 8).
Applicant argues that the Haberberger composition is within the narrow range indicated in Table 1 therein but outside the claim range at least for the C2 hydrocarbons; the simulation produced a temperature cross of approximately -3.7°F within the cold-box exchanger, again indicating a negative approach temperature and thermodynamic infeasibility within a dehydrogenation process configuration for the separation of hydrogen; thus, a narrow variant of the Haberberger composition that is outside of the claim scope would not be useful for hydrogen separation in a dehydrogenation process; hence, applicant has discovered a critical mixed refrigerant composition that is superior for the separation of hydrogen from dehydrogenated hydrocarbons (Remarks, p. 9).
Applicant also argues that the simulation of Haberberger demonstrates that refrigerant selection is not a routine optimization exercise; instead, they establish that the performance of a mixed refrigerant is highly process-dependent and that broad overlap of compositional ranges does not provide a reasonable basis for predicting operability; such evidence strongly supports the criticality of Applicant's claimed refrigerant compositions (Remarks, p. 9).
In response, Applicant’s arguments are not persuasive.
Firstly, Applicant further submits an additional experiment/data of the simulation of Haberberger’s refrigerant composition. The additional experiments and data presented on pages 8-9 of the present arguments appear to be new evidence not present in the original specification. 37 C.F.R. 1.132 requires any evidence submitted to traverse a claim rejection must be by way of an oath or declaration. Accordingly, this evidence is submitted improperly and is not persuasive for that reason. See MPEP 716.
Secondly, for purposes of compact prosecution, the following is noted about Applicant's simulation of a composition derived from Haberberger. Applicant argues that the data obtained from Applicant's simulated composition demonstrates overlap of composition ranges does not provide a reasonable basis for predicting operability. In response, this argument is not persuasive, because a simulation does not rebut the presumption of operability.
Additionally, note that Haberberger (US 2015/0260451 A1) later issued as a US patent (U.S. Patent No. 9,574,822). Under 35 U.S.C. 282, all U.S. Patents are presumed valid. The burden of establishing invalidity of a patent rests on Applicant to provide. This high burden has not been met. See also MPEP 716.07 and 2121.
It is also noted Applicant simulated a specific dehydrogenation process with Haberberger’s composition, but Haberberger is more broadly drawn to refrigeration cycles for producing liquefied natural gas with a mixed refrigerant (Haberberger’s abstract). Haberberger is not limited to the particular dehydrogenation process used by Applicant to argue inoperability and is not persuasive for at least that reason.
Thirdly, regarding Applicant’s argument that the simulation of a Haberberger’s composition constitutes evidence that strongly supports the criticality and superiority of the claimed refrigerant compositions, in response, this argument is not persuasive. Demonstration of unexpected results or criticality requires tests, and the instant specification contains no working examples that test the claimed composition.
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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