DETAILED ACTION
Claims 1-20 were subjected to restriction requirement mailed on 07/21/2026.
Applicants filed a response, and elected Group I, species (a), claims 1-4 and 7-10, and withdrew claims 11-20, with traverse on 07/23/2026.
Claims 1-20 are pending, and claims 5-6 and 11-20 are withdrawn after consideration.
Claims 1-4, 7-8 and 10 are rejected.
Claim 9 is objected to.
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 .
Examiner’s Note
It is noted that in Requirement for Restriction/Election mailed on 07/21/2026, on page 2, paragraph 2, “Claims 1-10” is inadvertently written as “Claims 1-11”; and “Claims 11-20” is inadvertently written as “Claim 12-20”.
Election/Restrictions
Applicant's election with traverse of Group I, species (a), claims 1-4 and 7-10, in the reply filed on 07/23/2026 is acknowledged. This is not found persuasive because the reason set forth below.
Applicants primarily argue:
“Applicant respectfully traverses the Restriction Requirement because the Examiner has not provided sufficient reasons to show that such a burden exists. First, the claims of Group I include claims directed to a continuous process including supplying, to a hydrogen production unit, an energy source in the form of mechanical energy or electrical energy produced from thermal energy generated in a hydrogenation process in a hydrogenation reactor unit (claims 1-10), while the claims of Group II include claims directed to a continuous process including converting thermal energy generated in the hydrogenation reactor unit to an energy source in the form of mechanical energy or electrical energy, and supplying the energy source to
a hydrogen production unit to convert a light hydrocarbon feed stream to a second hydrogen gas enriched stream (claims 11-20). Applicant therefore submits that the Examiner, in searching for the continuous process as claimed by Applicant in Group I, would necessarily find art related to the continuous process as claimed by Applicant in Group II). As such, any search and consideration of the claimed subject matter of Group I shall overlap the search considerations of the claimed subject matter of Group II. Accordingly, the overlapping relevance mitigates a restriction requirement.”
Remarks, p. 2-3
The examiner respectively traverses as follows:
While applicant argues that “Applicant therefore submits that the Examiner, in searching for the continuous process as claimed by Applicant in Group I, would necessarily find art related to the continuous process as claimed by Applicant in Group II”, applicants have provided no evidence to support this position. Therefore, the examiner’s position remains that Group I and Group II have a separate status in the art for the reasons set forth on pages 2-3 of the Office Action mailed on 07/21/2026. Further, as set forth on page 2 of the Office Action mailed on 07/21/2026, the examiner has established that the two groups have a different classification. Specifically, Group I, drawn a continuous process, classified in C01B 3/26, and Group II, drawn to a continuous process, classified in C10G 45/44.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-6 and 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/23/2026.
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.
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.
Claim(s) 1-4, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshio, JP 200304060A (Yoshio) in view of Che et al., CN 112871091A (Che) (both provided in IDS received on 05/27/2025).
The examiner has provided a machine translation of Yoshio, JP 200304060A (Yoshio) and Che et al., CN 112871091A (Che). The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1-4, Yoshio teaches a method of supplying hydrogen, hydrogen reacts with an aromatic compound at a hydrogen supplying site, hydrogen is separated by dehydrogenation reaction at a hydrogen utilization site (which would necessarily comprise a hydrogen production unit) (Yoshio, Abstract);
Yoshio further teaches in continuous hydrogenation reaction (Yoshio, page 6, 3rd paragraph from bottom), therefore the method of Yoshio can be a continuous process;
In the dehydrogenation reaction of a hydrogenated aromatic compound, for example, cyclohexane as the hydrogenated aromatic compound (reading upon a light hydrocarbon stream) and hydrogen is formed (reading upon a hydrogen enriched stream) (Yoshio, page 4, bottom paragraph);
dehydrogenation may be carried out in the presence of a catalyst (Yoshio, page 5, 2nd paragraph).
Yoshio further teaches the hydrogenation reaction is an exothermic reaction, unless the heat of the reaction is removed, the temperature in the hydrogenation reaction device gradually rises and the hydrogenation catalyst is deactivated by sintering, therefore the hydrogenation reaction heat recovery is provided to recover and effectively utilize the thermal energy (Yoshio, page 4, 6th-9th paragraphs); at the hydrogenation reaction heat recovery device, a heat engine such as Rankine cycle that coverts heat into electric or mechanical energy (which would necessarily require at least one thermodynamic cycle) (Yoshio, page 4, 9th paragraph); dehydrogenation of a hydrogenated aromatic compound is an endothermic reaction (Yoshio, page 8, 1st paragraph).
Further regarding claim 1, Yoshio does not explicitly disclose supplying, to a hydrogen production unit, an energy source in the form of mechanical energy or electrical energy produced from thermal energy generated in a hydrogenation process in a hydrogenation reactor unit.
With respect to the difference, Che teaches a new liquid organic hydrogenation carrier system composed of liquid organic hydrogenation carrier and Rankine cycle (Che, Abstract). Che specifically teaches the heat released by the hydrogenation reaction is absorbed and taken away by the working medium, and the generated steam drives the expander to drive the generator to operate; the generated electric energy can be used for internal consumption of the system (Che, Abstract).
As Che expressly teaches, the method provides high whole energy utilization rate and low energy requirement of the outside (Che, Abstract).
Che is analogous art as Che is drawn to a new liquid organic hydrogenation carrier system composed of liquid organic hydrogenation carrier and Rankin cycle.
In light of the motivation of utilizing the heat energy released by the hydrogenation reaction, either through the generated steam to drive the expander to drive the generator to operate; or through the generated electric energy for internal consumption of the system, as taught by Che, it therefore would have been obvious to a person of ordinary skill in the art to apply the mechanical energy converted from heat energy from hydrogenation to drive generator to operate, or apply the electric energy converted from heat energy from hydrogenation for internal consumption in the method of hydrogenation of Yoshi, in order to provide high whole energy utilization rate and low energy requirement of the outside, and thereby arrive at the claimed invention.
Regarding claim 7, as applied to claim 1, Yoshio in view of Che further teaches hydrogen (reading upon hydrogen gas enriched stream) is fed to the hydrogenation reaction device (Yoshio, page 3, 3rd paragraph from bottom); the hydrogenation reaction of the aromatic compound, such as toluene, ethylbenzene, biphenyl and naththalene (reading upon a liquid organic hydrogen carrier) are used as the aromatic compound (Yoshio, page 4, 1st paragraph).
Claim(s) 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshio in view of Che.
Regarding claim 8, as applied to claim 1, Yoshio in view of Che further teaches the hydrogenation reaction of the aromatic compound, such as toluene, may be carried out under heating (i.e., the aromatic compound, such as toluene needs to be heated for hydrogenation reaction) (Yoshio, page 4, 2nd paragraph). It therefore would have been obvious to a person of ordinary skill in the art to vary the order, and preheat the aromatic compound, such as toluene, prior to being received in a reactor and heated for hydrogenation reaction.
Further, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Regarding claim 10, as applied to claim 1, Yoshio in view Che teaches for the hydrogenation reaction, the temperature is preferably about 100 ˚C to 500˚C (i.e., 212˚F to 932 ˚F), and the pressure is about 0.1 to 25 MPa (i.e., 14.5 psig to 3626 psig), which overlap the ranges of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 9 is 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.
Regarding claim 9, neither Yoshio nor Che discloses or suggests wherein the light hydrocarbon is natural gas. On the contrary, Yoshio teaches methylcyclohexane, ethylcyclohexane, cyclohexane and decalin are formed (Yoshio, page 4, 1st paragraph).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights