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 .
The election is noted. Claims 10-15 are withdrawn. These claims should be so indicated by the status identifiers.
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 applicant regards as his invention.
Claims 1-9 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.
In claim 1, ‘derived from a source of renewable hydrogen’ is unclear what those derivation steps are and whether the claims require them. Furthermore, how can one tell whether a H atom is renewable? Are all H atoms renewable? If not, then why not? The entire clause should be deleted.
The parentheses in claim 1 line 5 should be removed.
In claim 1 line 12, how and when is the ammonia-depleted gas formed? See also line 17 and claim 2.
In line 15, ‘hot’ is subjective and thus unclear.
In line 16, ‘as required’ is unclear as to the basis for determination.
Lines 18-19 are awkward and unclear. Is ‘to form’ meant? It appears that a word/verb is missing.
The last 3 lines of claim 1 are unclear as to what, if anything, is actually required. How is the ‘predetermined value’ chosen, how it is calculated and can it be zero or 100,000,000? If not, then why not?
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6, 8, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Andersen et al. 20190084831.
Andersen teaches, especially in fig. 2 and paras 30 and 36, cracking vaporized liquid ammonia, treating the off-gas and returning it to the reactor as secondary fuel. PSA separation is taught as an option. Element 9 heats the ammonia. While not ‘pressurizing’ the liquid ammonia, this is obvious to control the rate of the input stream (note para 24). The last 3 lines do not require anything (see above) but in so far as they do, para 25 teaches a range (and thus adjustment) of recycle fuel.
For claim 6, see para 25.
For claims 8 and 9, methane is taught in para 41, which suggests ‘natural gas’.
Claims 3, 4, 5, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Andersen as applied to claim 1 above, and further in view of Jiang et al. 20200398240.
Andersen does not teach the multiple PSA steps, however Jiang teaches, especially in para 64 and fig. 5, a similar scheme in which streams can be passed through membrane and PSA systems multiple times. Using it in the scheme of Andersen is obvious to purity the valuable hydrogen gas.
For claim 4, both references teach recycling tail gas.
For claim 5, Jiang teaches making high purity H2 in para 64.
For claim 7, see Andersen para 25.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12421109. Although the claims at issue are not identical, they are not patentably distinct from each other because the use of heated liquid ammonia is patentably indistinct from ammonia gas as a matter of handling ease. The use of PSA in the ‘109 patent is taught in col. 12 and the claims of ‘109 do not exclude it.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of allowed copending Application No. 17/990815 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the heated liquid ammonia is recited in claim 8 and the use of PSA in ‘815 is taught in col. 12 and the claims of ‘815 do not exclude it.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 29-33 of allowed copending Application No. 18/010971 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of allowed copending Application No. 18/205854 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the heated liquid ammonia is patentably indistinct from ammonia gas as a matter of handling ease. The use of PSA in ‘854 is taught on pg. 8 and the claims of ‘854 do not exclude it.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not yet been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/569464 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the combustion of tail gas is recited in claim 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/569741 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
Prosecution Insights