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 .
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 (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.
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 1-8 and 10-11 are rejected under 35 U.S.C. 103 as obvious over Iaquaniello et al (WO2023/012836) (for applicant’s convenience, equivalent document US 2024/0343567 has been used for citations hereof) in view of Weedon (US2009/0117024).
Iaquaniello et al teaches a process of producing hydrogen comprising
providing a raw hydrocarbon feed, e.g. natural gas feed, to a syngas production system comprising an electrical steam reformer, a water gas shift reactor and a hydrogen separation unit; reacting the hydrocarbon feed with steam in the electrical steam reformer to produce a syngas comprising hydrogen, CO and CO2; shifting said syngas in said water gas shift reactor to form a hydrogen enriched syngas comprising hydrogen and CO2 (and unconverted methane and water); separating the hydrogen from the syngas in said hydrogen separation unit ( preferably pressure swing absorption unit) providing a hydrogen product stream and a recycle stream (i.e. a tailgas stream); compressing said recycle stream and feeding it to the electrical steam reformer; removing CO2 from the recycle stream (i.e. tailgas separation) to obtain a CO2 product stream before recycle stream (i.e. corresponding to claimed an offgas stream) being returned to hydrocarbon feed stream (claim 12-17, para. [0056]- [0060], Fig. 2-4) (Fig. 3 has been reproduced hereof).
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Iaquaniello et al also teaches using electric heater to heat up natural gas containing feedstock stream (para. [0076]).
Regarding claim 1, Iaquaniello et al does not expressly teach separating the recycle stream into a hydrogen rich stream, or recycling at least a portion of the off-gas stream obtained in the tail gas separation step to the hydrocarbon containing feedstock stream.
Weedon teaches a process for the production of hydrogen with the co-production of carbon dioxide comprising steam methane reforming (SMR) and a water gas shift unit, so as to result in the production of a reformed gas stream comprising hydrogen and carbon dioxide, separating and removing most or all of the hydrogen from the reformed gas stream; and recovering most or all of the carbon dioxide as a separate by-product stream; and then recycling the remaining gases from the gas stream by mixing these gases with the SMR feed stream (para. [0011]-[0014]), [0075], [0128], [0165], Fig. 1-3). Weedon further teaches in the tail gas separation, hydrogen rich stream is obtained by means of a membrane separation wherein a hydrogen rich stream as permeate stream (item 117, Fig. 1-2, para. [0075]).
It would have been obvious for one of ordinary skill in the art to adopt separating the recycle stream into a hydrogen rich stream and to adopt recycling at least a portion of the off-gas stream obtained in the tail gas separation step to the hydrocarbon containing feedstock stream as shown by Weedon to modify the hydrogen producing process of Iaquaniello et al because by doing so can help provide a cost-effective method of obtaining pure hydrogen product for intended applications while capture carbon dioxide minimizing treatment cost of carbon dioxide as suggested by Weedon (para. [0006]-[0014]). Furthermore, adopting such well-known technique of separating the recycle stream into a hydrogen rich stream and of recycling at least a portion of the off-gas stream obtained in the tail gas separation step to the hydrocarbon containing feedstock stream as shown by Weedon to modify a well-known hydrogen producing process for improvement would have predictable results (See MPEP §2143 KSR).
Regarding claim 2 and 6, Weedon already teaches recycle at least a portion of the off-gas to fuel stream of SMR combustion reaction ([0175], Fig. 3), wherein the at least a portion of the off-gas being routed to a combustion device is expected. Weedon also teaches reformed gas from such SMR reaction being cooled via a heat recovery device to recover heat for use within SMR (para. [0176]). It would have been obvious for one of ordinary skill in the art to adopt the heat generated by the combustion device to close the heat balance of the process because adopting combustion heat provided desired heat balance of a process only involves routine skill for one of ordinary skill in the art.
Regarding claim 3, Weedon does not expressly teach the volume of the off-gas volume being 5 to 15% of volume of the total off-gas stream, but Weedon already teaches a portion of the total off-gas stream can be recycled into SMR reactor, therefore, greater than 0% but less than 100% volume of the total off-gas stream is expected and such range overlapping with that of instantly claimed recycled off-gas stream volume thus renders a prima facie case of obviousness (see MPEP §2144. 05 I). It would have been obvious for one of ordinary skill in the art to adopt same recycled off-gas stream as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) because by doing so can help obtaining a recycle stream for SMR fuel for desired cost-effective hydrogen co-production with CO2 capture as suggested by Weedon (para. [0006]-[0014], Fig. 1-3).
Regarding claim 4, Weedon further teaches a stream of hydrogen being recycled as a fuel stream into SMR combustion reactor (e.g. item 110 in Fig. 1-2, item 103 in Fig. 3, [0057], [0066], para. [0126], [0175], [0176]) and another portion of hydrogen steam can be feed to a gas turbine or other combustion device.
Regarding claim 5, Weedon does not expressly teach the volume of the recycled hydrogen volume being 10 to 20% of volume of the total hydrogen rich stream, but Weedon already teaches a portion of the hydrogen rich stream can be recycled into SMR reactor as hydrogen fuel, therefore, greater than 0% but less than 100% volume of the hydrogen rich stream is expected and such range overlapping with that of instantly claimed recycled off-gas stream volume thus renders a prima facie case of obviousness (see MPEP §2144. 05 I). It would have been obvious for one of ordinary skill in the art to adopt same recycled hydrogen gas stream as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) because by doing so can help obtaining a hydrogen fuel stream for SMR fuel for desired cost-effective hydrogen co-production with CO2 capture as suggested by Weedon (para. [0006]-[0014], Fig. 1-3).
Regarding claim 7, Iaquaniello et al further teaches CO2 product stream obtained via at least one tail gas compression (para. [0085]).
Regarding claim 8, Iaquaniello et al further the recycle tail gas stream comprising methane, CO2, CO and hydrogen (claim 17-19). Weedon further teaches in the tail gas separation, hydrogen rich stream is obtained by means of a membrane separation wherein a hydrogen rich stream as permeate stream while a stream rich in carbon dioxide, carbon monoxide and methane is produced as retentate stream (item 117, Fig. 1-2, para. [0075]).
Regarding claim 10, Iaquaniello et al already teaches using electric heater to heat up natural gas containing feedstock stream for reforming (para. [0046], [0048], [0076]), while Weedon also teaches reformed gas from such SMR reaction being cooled via a heat recovery device to recover heat for use within SMR (para. [0176]). Therefore, converting electrical energy into heat comprising electro-reforming is expected.
Regarding claim 11, Iaquaniello et al expressly teach 0.32 Kg natural gas being consumed for every Nm3 H2 (table 2-4), wherein such teachings suggest a natural gas consumed/hydrogen produced molar ratio being within or overlapping with that of instantly claimed natural gas consumed/hydrogen produced molar ratio, thus renders
and the reformed gas being a prima facie case of obviousness (see MPEP §2144. 05 I).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as obvious over Iaquaniello et al (WO2023/012836) (for applicant’s convenience, equivalent document US 2024/0343567 has been used for citations hereof) in view of Weedon (US2009/0117024) as applied above, and further in view of Terrien (US2012/0291481).
Regarding claim 8, in arguendo about Iaquaniello et al in view of Weedon not expressly teach hydrogen rich stream is obtained via a first membrane separation step, Terrien teaches a process for recovering hydrogen and carbon dioxide from a process stream comprising removal of hydrogen product (item 23) from the feed gas (item 15) in the process unit (item 0) to obtain a process stream (item 1) which contains at least methane, carbon monoxide, carbon dioxide, water, and any unrecovered hydrogen, the process stream is further treated to remove additional hydrogen and carbon dioxide by passing the process stream through a carbon dioxide separation unit (item 4), a hydrogen selective membrane unit (item 7) and a carbon dioxide selective membrane unit to permeate carbon dioxide over caron monoxide, methane and other components in the stream for carbon dioxide separation (item 10, Fig. 1-7, para. [0018]-[0022], [0031], [0032], [0040]-[0042]).
It would have been obvious for one of ordinary skill in the art to adopt a first membrane separation in the tail gas separation step to obtain a hydrogen rich stream as permeate stream and a stream rich in carbon dioxide, carbon monoxide methane as retentate stream, and to adopt a second membrane separation step to obtain a carbon dioxide stream as permeate stream and a carbon monoxide and methane rich stream as retentate stream to separate carbon dioxide in the tail gas separation step as shown by Terrien to modify the tail gas separation process of Iaquaniello et al in view of Weedon because by doing so can help increasing the recovery of hydrogen and capture equal or greater than 80% of the carbon dioxide in the syngas stream as suggested by Terrien (para. [0002], Fig. 1-6).
Regarding claim 9, such limitations have been met as discussed above.
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.
Claim 1-7 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. S/N 18/599,736 in view of Weedon (US2009/0117024). Co-pending application ‘736 teaches a substantially the same method as that of instantly claimed, except recycling at least a portion of the hydrogen rich stream to the hydrogen production step, but such limitation has been taught by Weedon as discussed above. It would have been obvious for one of ordinary skill in the art to adopt recycling at least a portion of the hydrogen rich steam to the hydrogen production step as shown by Weedon to modify the hydrogen producing process of co-pending application’736 because by doing so can help provide a cost-effective method of obtaining pure hydrogen product for intended applications while capture carbon dioxide minimizing treatment cost of carbon dioxide as suggested by Weedon (para. [0006]-[0014]). Furthermore, adopting such well-known technique of recycling at least a portion of the hydrogen rich stream to the hydrogen production step as shown by Weedon to modify a well-known hydrogen producing process for improvement would have predictable results (See MPEP §2143 KSR).
Claim 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. S/N 18/599,736 in view of Weedon (US2009/0117024) as applied above, and further in view of Terrien (US2012/0291481).
Co-pending application ‘736 in view of Weedon already teaches a substantially the same method as that of instantly claimed, except hydrogen rich stream is obtained via a first membrane separation step, or a second membrane separation step to obtain a carbon dioxide stream as permeate stream and a carbon monoxide and methane rich stream as retentate stream to separate carbon dioxide. But such limitations have been taught by Terrien. It would have been obvious for one of ordinary skill in the art to adopt a first membrane separation in the tail gas separation step to obtain a hydrogen rich stream as permeate stream and a stream rich in carbon dioxide, carbon monoxide methane as retentate stream, and to adopt a second membrane separation step to obtain a carbon dioxide stream as permeate stream and a carbon monoxide and methane rich stream as retentate stream to separate carbon dioxide in the tail gas separation step as shown by Terrien to modify the tail gas separation process of co-pending application ‘736 in view of Weedon because by doing so can help increasing the recovery of hydrogen and capture equal or greater than 80% of the carbon dioxide in the syngas stream as suggested by Terrien (para. [0002], Fig. 1-6).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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