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 .
Status of the Application
Claims 1-20 are pending.
Election/Restrictions
Applicants’ election without traverse of Group I, claims 1-12, in the reply filed on 08/06/2026 is acknowledged. The election was made without traverse.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicants are reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-12 are under current examination.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fulde (US 20160226088 A1).
Fulde discloses a method comprising decomposing/pyrolyzing methane to produce C and H2 using microwaves; C is burned to form CO2; reacting at least a portion of CO2 and at least a portion of H2 to produce additional one carbon-containing molecule CH4; storing and using H2 in a fuel cell for producing energy/electricity/power/fuel/heat for different purposes, such as fueling hydrogen-powered vehicles, electric power to consumers etc.; using additional one carbon-containing molecule CH4 to again produce additional CO2 and electricity. Thus, the cited prior art reads on converting one-carbon containing molecule i.e., CH4 into electricity (through produced H2) with a co-production of CO2 (burning C to CO2); pyrolyzing CH4 to C and H2; and reacting a portion of CO2 and a portion of H2 to CH4 of the instant claims 1-12 (entire application, especially figures, paragraphs 0009-0037, 0049-0087 and claims). The cited prior art discloses using energy/electricity/power/fuel/heat generated through H2 in a fuel cell in methane conversion plant for preheating as well as conversion of methane source (entire application, especially figures, paragraphs 0009-0037, 0049-0087 and claims). The cited prior art also provides that other hydrocarbon compounds produced e.g., the Fischer-Tropsch reaction may also be used in the process as an alternative to CH4 (entire application, especially paragraph 0018).
Since the cited prior art reads on all the limitations of the instant claims 1-2 and 4-8, these claims are anticipated.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fulde (US 20160226088 A1).
Determining the scope and contents of the prior art
Fulde discloses a method comprising decomposing/pyrolyzing methane to produce C and H2 using microwaves; C is burned to form CO2; reacting at least a portion of CO2 and at least a portion of H2 to produce additional one carbon-containing molecule CH4; storing and using H2 in a fuel cell for producing energy/electricity/power/fuel/heat for different purposes, such as fueling hydrogen-powered vehicles, electric power to consumers etc.; using additional one carbon-containing molecule CH4 to again produce additional CO2 and electricity. Thus, the cited prior art reads on converting one-carbon containing molecule i.e., CH4 into electricity (through produced H2) with a co-production of CO2 (burning C to CO2); pyrolyzing CH4 to C and H2; and reacting a portion of CO2 and a portion of H2 to CH4 of the instant claims 1-12 (entire application, especially figures, paragraphs 0009-0037, 0049-0087 and claims). The cited prior art discloses using energy/electricity/power/fuel/heat generated through H2 in a fuel cell in methane conversion plant for preheating as well as conversion of methane source (entire application, especially figures, paragraphs 0009-0037, 0049-0087 and claims). The cited prior art also provides that other hydrocarbon compounds produced e.g., the Fischer-Tropsch reaction may also be used in the process as an alternative to CH4 (entire application, especially paragraph 0018).
Ascertaining the differences between the prior art and the claims at issue
Fulde teaches applicants process of pyrolyzing methane, converting it into C, CO2, H2 and electricity and reacting to a portion of CO2 and a portion of H2 to produce methane. However, % of methane; using generated electricity for a specific purpose of powering oilfield equipment.
Resolving the level of ordinary skill in the pertinent art
With regards to % of methane- The cited prior art teaches using methane with no other impurities. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art that methane of purity such as about 80%, 90%, 95% etc. may be used in the process, absent any evidence to the contrary.
With regards to using generated electricity for a specific purpose of powering oilfield equipment-The the cited prior art teaches using generated electricity for different purposes such as fueling hydrogen-powered vehicles, electric power to consumers etc. Thus, with the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that generated electricity in the process may be used for any purpose where electricity or heat or power maybe utilized such as oil field equipment.
Therefore, he cited prior art reads applicants claims.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Fulde teaches applicants process of pyrolyzing methane, converting it into C, CO2, H2 and electricity and reacting to a portion of CO2 and a portion of H2 to produce methane.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is reasonable expectation of success that generated electricity in the cited prior art process may be used for any purpose where electricity or heat or power may be utilized such as oil field equipment and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-8 and 21-32 of co-pending US application 18372492. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and co-pending application are drawn to a process of converting carbon-containing molecule to electricity using same steps with a difference in wording.
The difference in wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application. For the foregoing reasons, the instantly claimed process is made obvious.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented yet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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