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 .
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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
Claim Rejections - 35 USC § 112
Claim 14 is 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.
In claim 14, Applicant claims “the stream” in line 2. It is not clear if this “stream” is the same as the “rich MEG stream” of claim 1 rendering the claim indefinite. Clarification is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 4 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walterick (US 2014/0124452).
Regarding claim 1-2, Walterick discloses a process for removing mercury from a stream containing monoethylene glycol (MEG), comprising the steps of:
in a hydrocarbon production facility (see abstract which discloses natural gas production):
separating hydrocarbons from the stream containing MEG to generate a rich MEG stream comprising MEG, water and mercury (see paragraphs 2 and 4 which explicitly disclose that the glycol is MEG and the MEG rich stream is separated from a natural gas stream and the MEG rich stream comprises water and mercury),
adding an additive to the rich MEG stream (see paragraphs 6 and 9 which disclose that the water/glycol mixture, or aqueous stream, comprises mercury and that an additive, such as a sulfide or carbamate is added to the stream to produce solids containing mercury), wherein the additive coagulates, binds, and/or agglomerates the mercury (as discussed in paragraph 6); and
filtering at least some of the coagulated, bound, and/or agglomerated mercury out of the rich MEG after adding the additive to produce a mercury-depleted stream (see paragraph 6 which states that the solids are separated from the aqueous stream to produce a solids containing stream that includes the mercury and an aqueous stream comprising water and MEG).
Regarding claim 4, Walterick further discloses the mercury in the stream is in particulate form (as evidenced by the removal of the mercury by solid precipitation and removal from the aqueous stream).
Regarding claim 8, Walterick further discloses mixing the additive with the rich MEG stream for a period of time within a vessel (see paragraph 48 which discloses adding the additives to MEG in beakers and mixes them with paddles).
Regarding claim 9, Walterick teaches a total mixing time of 11 minutes (5 minutes + 6 minutes, see paragraph 48).
Claim(s) 1, 2, 4 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jani (US 2021/0246376).
Regarding claim 1 and 2, Jani discloses a process for removing mercury from a stream containing monoethylene glycol (MEG), comprising the steps of:
in a hydrocarbon production facility:
separating hydrocarbons from the stream containing MEG to generate a rich MEG stream comprising MEG, water and mercury (see paragraphs 3-4 which explicitly disclose that the glycol rich stream is separated from a natural gas stream and produces a rich glycol stream comprising water and mercury, and see paragraph 10 that discloses that the glycol is monoethylene glycol),
adding an additive to the rich MEG stream (see paragraph 16 which discloses a glycol fluid comprising mercury is combined with a chelant such as a dithiocarbamate derivative and see paragraph 10 which disclose that the glycol fluid is monoethylene glycol), wherein the additive coagulates, binds, and/or agglomerates the mercury (forms a complex); and
filtering at least some of the coagulated, bound, and/or agglomerated mercury out of the rich MEG after adding the additive to produce a mercury-depleted stream (see paragraph 18 which discloses the filtration of the mercury complexes that are formed by the chelant).
Regarding claim 4, Jani further discloses the mercury in the stream is in particulate form (as disclosed in paragraph 18 which discloses that the chelate complex is removed as a solid).
Regarding claim 13, Jani further discloses that the mercury depleted stream comprises less than 50ppb of mercury (see Table II which discloses a concentration of 6ppb after filtering).
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson (US 2017/0355920).
Regarding claim 15, Thompson discloses a process for producing natural gas (see abstract), comprising the steps of:
separating alkylene glycol and mercury from the natural gas stream to generate a rich stream (Rich TEG stream exiting bottom of absorber in Fig. 4) and natural gas (Drygas stream exiting top of absorber in Fig. 4), wherein the rich stream contains the alkylene glycol and mercury (see paragraph 18 which discloses alkylene glycol is the glycol and see Fig. 4 which illustrates that the mercury follows the glycol out the bottom of the absorber),
adding an additive (filter aid such as thiocarbamates, see paragraph 17) to a rich stream containing alkylene glycol and mercury, wherein the additive coagulates the mercury (complexes with the mercury to form solids);
filtering at least some of the coagulated mercury out of the rich stream after adding the additive to the rich stream to produce a mercury-depleted rich stream (see paragraph 24 which discloses filtering the mercury from the rich stream);
distilling the mercury-depleted rich stream containing alkylene glycol to produce a lean stream containing alkylene glycol (distilling in regenerator which produces a lean stream); and
combining the lean stream containing alkylene glycol with a natural gas stream to prevent hydrate formation in the natural gas stream (the glycol stream is then added with a natural gas stream in the absorber to remove water and prevent hydrate formation).
Claim Rejections - 35 USC § 103
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walterick (US 2014/0124452) in view of Jensen (US 2015/0112102).
Regarding claim 3, Walterick teaches an additive to a glycol mixture to remove mercury, but does not teach any of the claimed sodium compounds of claim 3.
Jensen also discloses a system for removal of mercury from a hydrate inhibitor/glycol stream (see abstract and paragraph 24).
Jensen, like Walterick, teaches a MEG stream that has removed mercury from a natural gas stream (see abstract) and it is removed via adding an additive to react with the mercury and removed via filtration (see paragraph 47 which discloses removal of the solidified metal with a filter). Jensen goes on to teach that the additive for this process can be a sodium sulfide which is added to the rich MEG/inhibitor stream (paragraph 44).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Walterick with the additive of Jensen in order to precipitate the mercury that is contained in the MEG/inhibitor stream. Such a modification is nothing more than a simple substitution of one known additive for mercury precipitation for another to yield entirely predictable results.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jani (US 2021/0246376).
Regarding claim 6, Jani does not teach the claimed additive range but does teach a range that overlaps the claimed range (the additive/mercury removal compound is added in an amount of about 1ppm-500ppm, paragraph 19). As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walterick (US 2014/0124452).
Regarding claim 6, Walterick does not teach the claimed additive range but does teach a range that overlaps the claimed range (the additive/mercury removal compound thiocarbamate or PDTC is added in an amount of about 0.1ppm-500ppm, paragraph 18). As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walterick (US 2014/0124452) in view of Waite (US 2023/0192522).
Regarding claim 5, Walterick is silent regarding the content of MEG in the aqueous stream that is separated from the hydrocarbon stream.
Waite also discloses a process for removing mercury from a water/glycol solution (see abstract and paragraph 4).
Waite, like Walterick, teaches an aqueous stream comprising glycol (MEG) that has removed mercury from a hydrocarbon stream (see paragraphs 4 and 19). Waite goes on to teach that in these streams, the glycol content can include a wide range, such as 40-95 wt% (see paragraph 19 which teaches that this is an acceptable glycol content for removing mercury from a natural gas stream).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Walterick with the glycol concentration of Waite in order to provide an effective glycol concentration for removing mercury and water from a natural gas stream.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walterick (US 2014/0124452) in view of Morgan (US 2016/0122659).
Regarding claims 10-12, Walterick discloses a filter to remove the mercury precipitate (paragraph 45), but is silent regarding the pore size of the filter or the filter material.
Morgan also discloses a process for removal of mercury from a wastewater stream (see paragraph 23 which discloses pore sizes of a filter, such as 0.1-20 microns where the filter is made from a hydrophilic filter such as cellulose fiber). Morgan teaches such a feature as a known and effective process and structure to remove precipitated mercury from a liquid stream.
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the filter pore size and material of Morgan in the filter of Walterick in order to effectively remove the precipitated mercury from the liquid stream. Furthermore, while Morgan does not claim the exact claimed range, it claims a range that overlaps the claimed range. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walterick (US 2014/0124452) in view of Morgan (US 2016/0122659) and Waite (US 2023/0192522).
Regarding claim 14, Walterick further discloses:
the mercury of the stream is in elemental or particulate form (see paragraph 6 and 9 which discloses the mercury is in solid/particulate form);
the additive is in liquid form (PDTC is sold in liquid form);
the additive is a dithiocarbamate derivative (see paragraph 9 which discloses polydithiocarbamate);
the additive is mixed with the rich MEG stream for 10 minutes to 30 minutes before the filtering step (Walterick teaches a total mixing time of 11 minutes (5 minutes + 6 minutes, see paragraph 48)); and
the mercury-depleted stream includes less than 50 ppb of mercury (see Walterick which teaches a mercury concentration of 1580-1860 ng/L, see Table 1, which equates to approximately 1.58-1.86 ppb of mercury).
Walterick teaches a rich MEG stream but is silent regarding the content of MEG in the rich MEG stream
Waite, like Walterick, teaches an aqueous stream comprising glycol (MEG) that has removed mercury from a hydrocarbon stream (see paragraphs 4 and 19). Waite goes on to teach that in these streams, the glycol content can include a wide range, such as 40-95 wt% and implies that the balance is water by stating the glycol containing stream is an aqueous stream (see paragraph 19 which teaches that this is an acceptable glycol content for removing mercury from a natural gas stream).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Walterick with the glycol concentration of Waite in order to provide an effective glycol concentration for removing mercury and water from a natural gas stream.
While Walterick does not teach the claimed concentration range of the additive, it does teach an overlapping range (see paragraph 18 which discloses 0.1-500 ppm of PDTC). As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Walterick discloses a filter to remove the mercury precipitate (paragraph 45), but is silent regarding the pore size of the filter or the filter material.
Morgan also discloses a process for removal of mercury from a wastewater stream (see paragraph 23 which discloses pore sizes of a filter, such as 0.1-20 microns where the filter is made from a hydrophilic filter such as cellulose fiber). Morgan teaches such a feature as a known and effective process and structure to remove precipitated mercury from a liquid stream.
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the filter pore size and material of Morgan in the filter of Walterick in order to effectively remove the precipitated mercury from the liquid stream. Furthermore, while Morgan does not claim the exact claimed range, it claims a range that overlaps the claimed range. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 2017/0355920) in view of Kaasa (US 2012/0018293).
Regarding claim 18, Thompson discloses generating a rich and lean hydrate stream (see Rich TEG and Lean TEG in Fig. 3). Thompson, however, is silent regarding the water content of these two streams. More specifically, Thompson does not teach:
wherein the alkylene glycol in the rich stream is present in an amount ranging from 40 wt. % to 80 wt. %, based on the total amount of the rich stream, and a balance of water; and the alkylene glycol is present in the lean stream in an amount ranging from 60 wt. % to 90 wt. %, based on the total amount of the lean stream, and a balance of water.
Kaasa also discloses a treating a hydrocarbon stream in a pipeline (see paragraph 2).
Kaasa teaches, like Thompson, a distilling column in order to remove water from the rich glycol/inhibitor stream (paragraph 11). Kaasa further discloses that in these systems, it is typical to have a rich inhibitor stream with an inhibitor content of 30-75% and a lean inhibitor stream with an inhibitor content of 75-100% (paragraph 9). Kaasa teaches these ranges as well-known content ranges for distillation towers that are designed to remove water from a hydrate inhibitor stream in a gas treatment process (paragraphs 4-7).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the inhibitor content of Kaasa in the process of Thompson in order to effectively remove water from the inhibitor stream to regenerate it for use again.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 2017/0355920).
Regarding claim 19, Thompson further discloses that the amount of additive in the stream can be 1:1 to 10,000:1 relative to the amount of mercury in the stream (see claim 19 of Thompson). While Thompson does not explicitly teach the claimed range, it does teach a range that ties the amount of additive added to the amount of mercury present for removal. As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to arrive at the claimed range of additive given a mercury content in the range of 250ppb to 1000ppb.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 2017/0355920) in view of Morgan (US 2016/0122659).
Regarding claims 20, Thompson teaches filtration of the complexed mercury but is silent regarding the particular filter. More specifically, Thompson does not teach the claimed pore size of the filter or that the filter is hydrophilic.
Morgan also discloses a process for the removal of complexed mercury (paragraph 25).
Morgan goes on to teach that after this mercury is complexed and coagulated into a larger particle, it can be removed via filtration (paragraph 25). Morgan teaches that a filter can be sized to remove the desired contaminant and can be made from a cellulose fiber or paper (both of which are hydrophilic, see paragraph 23). Morgan teaches that these filter pore sizes can range from 0.1 to 50 microns (paragraph 23).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to add the hydrophilic filter of Morgan with a pore size of 0.1-50 microns to the process of Thompson in order to remove the complexed mercury. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the pore size of the filter to remove the desired amount of complexed mercury from the stream of modified Thompson.
Response to Arguments
Applicant's arguments filed 8/18/2026 have been fully considered but they are not persuasive. On page 7, Applicant argues that Jani does not teach separating the hydrocarbons from an MEG containing stream to form a rich MEG stream and adding an additive to the rich MEG stream. The Office respectfully disagrees with this argument. Jani, in paragraphs 4-5, expressly states how the glycol streams to be treated are generated, and that is through separation of the glycol stream containing mercury and water from a natural gas stream. Then, in paragraph 16, Jani teaches how this recovered glycol is treated. As such, Jani does indeed teach this limitation.
On page 8, with regards to the rejection of claim 15 in view of Thompson, Applicant argues that Thompson does not teach “adding an additive to the rich stream” and argues the portion of Thompson that adds a complexing agent to the lean glycol stream. However, the Office notes that this is not the only instance of additive addition to the system of Thompson. As pointed out in the rejection, Thompson also adds a filter aid to the rich glycol stream that exits the bottom of the reformer. This filter aid can be the same material as the complexing agent such as thiocarbamate, as disclosed in the rejection above. As such, the rejection of claim 15 in view of Thompson is still valid.
Allowable Subject Matter
Claims 7 and 17 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: The closest prior art, Thompson, expressly teaches adding the additive (filter aid) prior to an expansion valve (see Fig. 4 where the filter aid is added prior to the expansion valve) and the prior art neither teaches nor suggests a reason to modify Thompson to place the pressure reduction step before the addition of the additive.
Relevant Prior Art
EP 2859061 B1 – Discloses a process for the removal of mercury from a hydrate inhibitor stream, similar to that of the instant invention. This document also discloses regeneration of the inhibitor stream but is silent on the details of the particular additive to complex with the mercury.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725
