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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a method, classified in B01D53/0462.
II. Claim 13, drawn to a method, classified in B01D53/047.
III. Claim 14, drawn to a method, classified in B01D53/047.
IV. Claims 15-19, drawn to a device, classified in C12M29/26.
Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design and mode of operation. Invention I is drawn to a process that integrates a temperature swing adsorption process and a gas fermentation process. Invention II is drawn to a process that integrates a temperature swing adsorption process, pressure swing adsorption process, and gas fermentation process. The inclusion of the pressure swing adsorption process in Invention II would result in a different design and mode of operation than that of invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design and mode of operation. Invention I is drawn to a process that integrates a temperature swing adsorption process and a gas fermentation process. Invention III is drawn to a process that integrates a temperature swing adsorption process, pressure swing adsorption process, and gas fermentation process. The inclusion of the pressure swing adsorption process in Invention III would result in a different design and mode of operation than that of invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design and mode of operation. Invention II requires that, after passing the gaseous feedstock through a TSA bed, the treated gaseous feedstock is then passed to a PSA bed. The dually treated gaseous feedstock is then passed to the gas fermentation process to produce a gas fermentation product. Conversely, Invention III requires that, after passing the gaseous feedstock through a TSA bed, the treated gaseous feedstock is then passed directly to the gas fermentation process. The fermentation tail gas is then passed through a PSA bed. These differences in process steps can result in a materially different design (the exact placement of the TSA beds, PSA beds, and the bioreactor) and mode of operation (running different gas streams through the different processes in different sequential order will produce different resulting gas streams). Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions IV and I are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, Invention IV can be used with a materially different process of using that product. Invention I requires that a portion of the treated gaseous feedstock is recycled as a regeneration gas in order to regenerate spent adsorbent. Invention IV does not require that the treated gaseous feedstock is recycled and could therefore undergo a different regeneration process. Examples of such include using a purge regeneration gas or with a heating mechanism directly attached to the adsorbent beds.
Inventions IV and II are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, Invention IV cannot be used in the process of Invention II, as Invention II requires a pressure swing adsorption process. Invention IV does not claim the necessary structural details to perform such a pressure swing adsorption process.
Inventions IV and III are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, Invention IV cannot be used in the process of Invention III, as Invention III requires a pressure swing adsorption process. Invention IV does not claim the necessary structural details to perform such a pressure swing adsorption process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with MaryAnn Maas on March 26th, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-19 stand withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112(b)
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 applicant regards as his invention.
Claims 8-9 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 8 recites the limitation "the syngas" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the industrial gas" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. US 2021/0284925 A1 to Gao et al. (hereinafter referred to as Gao), and futher in view of U.S. Patent Publication No. US 2022/0250001 A1 to Zick (hereinafter referred to as Zick).
Regarding claim 1, Gao teaches a process for an integrated temperature swing adsorption process and gas fermentation process comprising (¶0002 “In particular, the invention relates to employing at least a portion of the tail gas of the gas fermentation process to desorb at least one tar from an adsorbent used to separate tar from syngas produced by a gasification process before the syngas is used as a feed to the gas fermentation process.”): (a) providing a temperature swing adsorption process (¶0100 “BTEX may be removed by an adsorption unit such as a temperature swing adsorption (TSA) unit”) comprising at least a first adsorption bed comprising adsorbent (¶0009 “The disclosure further involves an apparatus comprising: an adsorption unit housing an adsorbent” ; Fig. 1, adsorption unit 10) and a gas fermentation process comprising a bioreactor comprising at least one C1-fixing microorganism in a nutrient solution (¶0010 “In one embodiment, the fermentation process utilizes one or more C1-fixing microorganisms” ; Fig. 1, gas fermentation process 100); (b) passing a gaseous feedstock comprising CO, CO2, H2, CH4, or any combination thereof (¶0047 “The syngas stream should primarily be composed of carbon monoxide (CO), hydrogen (H2), and carbon dioxide (CO2).”), and at least one contaminant to the first adsorption bed operating at an adsorption temperature, adsorbing the contaminant on the adsorbent (¶0120 “However, certain components of the syngas are to be removed in an adsorption unit 10 before the syngas is fermented in the fermentation process 300. … The component is adsorbed onto the adsorbent of the adsorption unit. The adsorption unit may be a temperature swing adsorption system"), and generating a treated gaseous feedstock depleted in the contaminant (¶0120 “However, certain components of the syngas are to be removed in an adsorption unit 10 before the syngas is fermented in the fermentation process”); (c) passing at least a portion of the treated gaseous feedstock to the gas fermentation process (Fig. 1, syngas stream 302 is sent to gas fermentation process 100) to generate a heated tail gas stream (Fig. 1, tail gas 104 ; ¶0143 “the tail-gas generated by the fermentation process 100 may also be used as a heating source for one or more processes.”) and a gas fermentation product stream comprising a gas fermentation product (Fig. 1, effluent 102); (d) first passing at least a portion of the heated tail gas stream from the gas fermentation process at a regeneration temperature to the adsorption bed and through the spent adsorbent to desorb the adsorbed contaminant and provide a heated regenerated adsorbent (¶0120 “a further integration of the gasification process and the gas fermentation process is to use at least a portion of tail gas 104 of fermentation process 100 as the desorbent or purge gas 12 for the adsorption unit 10. The tail gas used as desorbent or purge 12 for the adsorption unit 10 becomes enriched in components desorbed from the adsorbent”). Gao does not teach a second adsorption bed comprising spent adsorbent, a regeneration temperature that is greater than an adsorption temperature, passing a portion of the treated gaseous feedstock from the first adsorption bed to the second adsorption bed to cool the heated regenerated adsorbent to the adsorption temperature and provide an effluent stream of the treated gaseous feedstock; and passing the effluent stream of the treated gaseous feedstock to the gas fermentation process.
However, Zick teaches a temperature swing adsorption process with a first adsorption bed comprising adsorbent and a second adsorption bed comprising spent adsorbent (Fig. 1, three adsorbers A, B, and C), to ensure continuous operation (¶0003 “In order to ensure a continuous operation, several adsorption cylinders in parallel are often operated, which are at various steps of adsorption or regeneration.”), passing a heated gas stream at a regeneration temperature to the second adsorption bed and through the spent adsorbent to desorb the adsorbed contaminant and provide a heated regenerated adsorbent (¶0037 “the plant comprises a means 3 for heating the regeneration gas.”), wherein the regeneration temperature is greater than the adsorption temperature (¶0048 “in the heating step, the gas that is in the adsorber is heated to a temperature of between 100⁰C. and 300⁰C.” ; if the gas in the adsorber is heated to a regeneration temperature, then the regeneration temperature must be higher than the adsorption temperature); passing a portion of treated gaseous feedstock from the first adsorption bed to the second adsorption bed and through the regenerated adsorbent to cool the heated regenerated adsorbent to the adsorption temperature (¶0039 “the plant comprises a means for cooling the adsorber before the adsorption. This means will preferably be a means for sending all or a large portion of the gas purified by another adsorber to the adsorber that has just been regenerated.”) and provide an effluent stream of the treated gaseous feedstock (¶0068 “it is possible to send all or a large portion of the gas purified by another adsorber through the hot but clean adsorber.” ; the resulting stream would be an effluent stream of treated gaseous feedstock). Zick further teaches that using a treated gaseous feedstock to cool the adsorbent is less expensive and easier to implement (¶0068 “For this, it is possible to send all or a large portion of the gas purified by another adsorber through the hot but clean adsorber. This ay of proceeding is much less expensive and easier to implement than a system with a specific flow for the cooling of the adsorber.”).
Gao and Zick are considered analogous to the claimed invention because they are in the same field of temperature swing adsorption. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process as taught by Gao to include a second adsorption bed as taught by Zick to ensure continuous operation of the system, further modifying the process to include the self-cooling step as taught by Zick to decrease overall costs. As to passing the effluent stream of the treated gaseous feedstock to the gas fermentation process, with the modification of the process as taught by Gao to include the second adsorption bed as taught by Zick, one of ordinary skill in the art would understand that placing a second adsorption bed in parallel would not change the overall process steps as taught by Gao. That is to say, the effluent stream of the treated gaseous feedstock (after use in the cooling step) would naturally continue on the gas fermentation process (Fig. 1, all gas streams from adsorption unit 10 pass to gas fermentation process 100).
Regarding claim 2, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches periodically repeating the process (Claim 1 “d. utilizing the enriched tail gas stream in at least one of: … iii. recycling to a gasification process” ; Fig. 1, effluent 202 is recycled to the gasification process 300 which will then repeat through the process of adsorption and fermentation).
Regarding claim 3, Gao and Zick teach the process as applied to claim 1 above. Zick further teaches a third adsorption bed comprising regenerated adsorbent in standby mode (Fig. 1, adsorbers A, B, and C ; After the regeneration step and before starting the next adsorption cycle, the adsorber will be in “standby” mode even if just momentarily).
Regarding claim 4, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches passing the heated tail gas stream from the gas fermentation process through a purification step prior to passing to the first adsorption bed to remove and recover gas fermentation product from the heated tail gas stream (¶0121 “One or more products produced by the fermentation process 100 is removed and/or separated from the fermentation broth by a product recovery process 400.”). Gao does not disclose the exact product recovery process. However, Gao further teaches scrubbing as an appropriate removal method (¶0084 “Depending on the composition of the substrate, it may be desirable to treat, scrub, or filter the substrate to remove any undesired impurities.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process as taught by Gao and Zick to further include a scrubbing apparatus as the product recovery process as taught by Gao. Simple substitution of one known element for another to obtain predictable results (in this case, the recovery of the gas fermentation product) supports a prima facie case of obviousness. See MPEP § 2143(I)(B).
Regarding claim 5, Gao and Zick teach the process as applied to claim 1 above. Zick further teaches wherein the adsorption temperature is in the range of from about 40⁰C to about 60⁰C (¶0034 “Typically, the gas circulator will make it possible to cool the gas circulating in the closed loop to a temperature below 80⁰C, preferably below 60⁰C.”). Furthermore, where 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. See MPEP § 2144.05(II)(A).
Regarding claim 6, Gao and Zick teach the process as applied to claim 1 above. Zick further teaches wherein the regeneration temperature is in the range of from about 150⁰C to about 200⁰C (¶0048 “in the heating step, the gas that is in the adsorber is heated to a temperature of between 100⁰C and 300⁰C”). Furthermore, where 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. See MPEP § 2144.05(II)(A).
Regarding claim 7, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches wherein the gaseous feedstock is selected from an industrial waste gas, a syngas, a biogas, a landfill gas, a direct air capture, or any combination thereof (¶0008 “The disclosure involves a method comprising treating a syngas stream from a gasification process or an industrial gas”).
Regarding claim 8, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches wherein the syngas is generated by a reforming process, a partial oxidation process, a gasification process, or any combination thereof (¶0008 “The disclosure involves a method comprising treating a syngas stream from a gasification process or an industrial gas”).
Regarding claim 9, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches wherein the industrial gas is obtained from a source selected from steel manufacturing, non-ferrous product manufacturing, petroleum refining, electric power production, carbon black production, paper and pulp manufacturing, ammonia production, methanol production, coke manufacturing, petrochemical production, carbohydrate fermentation, cement making, aerobic digestion, anaerobic digestion, natural gas extraction, cellulosic fermentation, oil extraction, industrial processing of geological reservoirs, processing fossil resources, or any combination thereof (¶0043 “the industrial process is selected from ferrous metal products manufacturing, such as a steel mill manufacturing, non-ferrous products manufacturing, petroleum refining, coal gasification, electric power production, carbon black production, ammonia production, methanol production, and coke manufacturing.”).
Regarding claim 10, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches wherein the contaminant is selected from at least one of a hydrocarbon, an oxygenate, a sulfur compound, a nitrogen compound, or any combination thereof (¶0039 “Syngas from a gasification process is passed through an adsorption unit to remove at least one tar such as a hydrocarbon or oxygenate.”).
Regarding claim 12, Gao and Zick teach the process as applied to claim 1 above. Gao further teaches adjusting the operating pressure of the first adsorption bed to correspond with the pressure of the gaseous feedstock (¶0032 “The invention may further provide for the increase and/or decrease of pressure of the syngas stream at one or more points in the process.” ; As the gaseous feedstock is introduced to the first adsorption bed the pressure will naturally equilibrate).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gao and Zick, and further in view of U.S. Patent Publication No. US 2018/0126299 A1 to Doong et al. (hereinafter referred to as Doong).
Regarding claim 11, Gao and Zick teach the process as applied to claim 1 above. Gao and Zick do not disclose the adsorbent material used in the adsorption beds.
However, Doong teaches a temperature swing adsorption process (Fig. 1), wherein the adsorbent beds comprise activated carbons, silica gel, activated aluminas, or any combination thereof (¶0032 “Suitable adsorbents may include one or more crystalline molecular sieves, activated carbons, activated clays, silica gels, activated aluminas and combinations thereof”).
Gao, Zick, and Doong are considered analogous to the claimed invention because they are in the same field of temperature swing adsorption. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the adsorption bed as taught by Gao and Zick could include a suitable adsorbent as taught by Doong. Simple substitution of one known element for another to obtain predictable results (in this case, the removal of contaminants) supports a prima facie case of obviousness. See MPEP § 2143(I)(B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rosin (US 2023/0323276 A1) teaches a gas fermentation process wherein a contaminant is removed prior to passing the gaseous stream through the fermentation process.
Rosin (US 2025/0058274 A1) teaches a gas fermentation process that utilizes temperature swing adsorption or pressure swing adsorption to remove a contaminant prior to passing the gaseous stream through the fermentation process.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL MARIE SLAUGOVSKY whose telephone number is (571)272-0188. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL MARIE SLAUGOVSKY/Examiner, Art Unit 1776 /Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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