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 .
Response to Amendment
The examiner acknowledges Applicant’s response filed on 05/18/2026 containing remarks and claim amendments.
The objection to claim 20 is withdrawn in view of the amendment.
The double patenting rejection over Application No. 18/169,377 is withdrawn in view of the amendment.
The double patenting rejection over U.S. Pat. 12,496,550 is maintained.
Response to Arguments
Applicant's arguments with respect to the rejection of claim 1 under 35 USC 102(a)(1) as being anticipated by Huang (US 9,217,116) have been fully considered but they are not persuasive. Claim 1 has been amended to recite “subjecting at least a portion of said gas to a halogen removal system comprising a halogen removal material, wherein at least a portion of said gas contacts said halogen removal material within said halogen removal system to remove at least a portion of said halogen from said gas to produce (i) a salt formed from at least a portion of said halogen and (ii) said halogen-depleted gas” (emphasis added). On page 10, Applicant argues that Huang does not disclose producing a salt from at least a portion of the halogen upon contact with a halogen removal material.
The previous action, in the rejection of claim 4, incorrectly treated the “COCl2” and “COF2” generated from the oxidation step of Hwang as corresponding to salts formed from the halogen in the feed gas. Nonetheless, Hwang is considered to teach the formation of salts. Specifically, the reference teaches that alkaline impregnated carbon, such as activated carbon impregnated with sodium hydroxide (NaOH) and potassium hydroxide (KOH), is effective for removal of HCl and HF, which are generated in the oxidation (col. 6, lines 56-67). It is known in the art that HCl and HF would readily react with the sodium hydroxide and/or potassium hydroxide to form corresponding salts and water via a neutralization reaction, as evidenced by Lee et al. (Ind. Eng. Chem. Res. 2003, 42, 6166-6170). Accordingly, it is reasonably expected, or alternatively, it would be obvious to conclude, that the HCl and HF generated in the oxidation will react with the activated carbon impregnated with NaOH and KOH in module 80 and form corresponding salts, i.e., NaCl, NaF, KCl, and/or KF.
The instant office action contains a new ground(s) of rejection necessitated by the amendment to claim 1 and the addition of new claims 21-30.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required.
In particular, the instant specification fails to provide proper antecedent basis for the limitation of claim 10, which recites “said secondary compound comprises one or more selected from the group consisting of an ion, an anion, a cation, a free radical, an unsaturated compound, an unsaturated hydrocarbon, a polymer, an organic chloride, a metal complex, ionic polymerization termination, coordination polymerization termination,--er and free radical polymerization termination.”
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 21-22 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 21 recites “said halogen removal material comprises alumina including a promoter.” Similarly, claim 22 recites “said halogen removal material comprises an alumina adsorbent including a promoter configured to increase a rate at which said halogen or an acid derived from said halogen interacts with said halogen removal material.”
Claims 21 and 22 are indefinite because the recitation of “said halogen removal material comprises alumina [or an alumina adsorbent]” leads to confusion over the intended scope of the claim. Specifically, claim 1, upon which claims 21 and 22 depend, recites “subjecting at least a portion of said gas to a halogen removal system comprising a halogen removal material, wherein at least a portion of said gas contacts said halogen removal material within said halogen removal system to remove at least a portion of said halogen from said gas to produce (i) a salt formed from at least a portion of said halogen and (ii) said halogen-depleted gas.” Accordingly, while claim 1 does not specify the composition of “said halogen removal material,” the claim is interpreted such that said halogen removal material is capable of forming a salt from the halogen in the gas upon contact. However, it is unclear whether the alumina recited in claim 21 or the alumina adsorbent in claim 22 are intended to have the capability of generating salts upon contact with the halogen in the gas or to serve an unrelated role, e.g., as carrier, adsorbent, etc. The instant specification discloses that the halogen removal system may comprises a plurality of vessels in series and also discloses that the halogen removal materials in the first vessel and the second vessels may be different (pg. 2-3). For the purpose of examination, the limitation “a halogen removal system comprising a halogen removal material” is interpreted such that the system can comprise a plurality of vessel in series, each vessel containing a halogen removal material, wherein the halogen removal materials in different vessels can be the same or different, and wherein at least a portion of the halogen removal material is capable of producing a salt. Thus, claims 21 and 22 are interpreted such that the alumina component of the halogen removal material may or may not cause the formation of salt upon contact with the halogen.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 5, 7-12, 16, 18-20, 24-26, and 30 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Huang (US 9,217,116 B2), as evidenced by Lee et al. “Activated-Carbon-Supported NaOH for Removal of HCl from Reformer Process Streams.” Ind. Eng. Chem. Res. 2003, 42, 6166-6170).
Regarding claim 1, Huang discloses a process for purifying a biogas in a purification system 10 (Fig. 1), the process comprising:
providing a gas feed derived from a biogas source 20 containing contaminants including halogen (“halogenated compounds”) (col. 3, lines 8-38; col. 5, lines 54-61); and
subjecting the gas feed to catalytic oxidation in a contaminant removal module 80 containing an oxidation catalyst to produce an oxidized gas mixture containing an acid, such as HCl and HF (col. 6, lines 3-42); and
and treating the oxidized gas mixture in a contaminant removal module 90 containing an adsorbent, such as activated carbon impregnated with sodium and potassium hydroxide, to produce a halogen-depleted gas 100 (col. 6, lines 39-42). The halogen-depleted gas is expected to comprise a reduced amount of halogen relative to the starting gas, as halogenated compounds are consumed to produce acids, which are subsequently removed by adsorption. It is noted that the purification system 10 containing the modules 80 and 90 corresponds to “a halogen removal system,” and the oxidation catalyst in the module 80 and the adsorbent in the module 90 to “a halogen removal material.”
Huang does not explicitly disclose that contacting the gas with the oxidation catalyst in the module 80 or the adsorbent in the module 90 produces a salt from the halogen. However, Huang teaches that alkaline impregnated carbon, such as activated carbon impregnated with sodium hydroxide (NaOH) and potassium hydroxide (KOH), is effective for removal of HCl and HF, which are generated in the oxidation (col. 6, lines 56-67). It is known in the art that HCl and HF would readily react with the sodium hydroxide and/or potassium hydroxide to form corresponding salts and water via a neutralization reaction, as evidenced by Lee (pg. 6168). Accordingly, it is reasonably expected, or alternatively, it would be obvious to conclude, that the HCl and HF generated in the oxidation will react with the activated carbon impregnated with NaOH and KOH in module 80 and form corresponding salts, i.e., NaCl, NaF, KCl, and/or KF.
Regarding claim 2, Huang discloses that the halogenated compounds include trichloroethylene and chlorofluorocarbon compounds (col. 5, lines 54-56). Therefore, the biogas contains chlorine and fluorine.
Regarding claim 5, the HCl and HF acids contact the surface of the activated carbon impregnated with NaOH and/or KOH to in the module 90 to form salts (col. 6, lines 47-67). Accordingly, the generated salts are expected to be retained on or within surfaces of the activated carbon adsorbent where there were formed, as evidenced by Lee (pg. 6167, disclosing used activated carbon impregnated with NaOH undergoes washing to remove NaCl formed on the adsorbent).
Regarding claim 7, the contacting of the gas feed with the oxidation catalyst in the module 80 involves a catalytic reaction of halogen on a surface of the oxidation catalyst (col. 6, lines 3-26), and the conversion of the acid on the activated carbon impregnated with NaOH and KOH involves reaction of the halogen on the surface of the modified activated carbon (col. 6, lines 47-67). .
Regarding claims 8-10, the oxidation step may generate other components, such as water, sulfur components, chlorine, and nitrogen oxides, that can correspond to “a secondary compound” (col. 6, lines 39-52). Huang suggests that, in response to the reaction by the oxidation catalyst with the feed gas, water reacts in the formation of acids (col. 6, lines 38-42).
Regarding claim 11, the oxidation step reduces the content of halogenated compounds, such as halogenated hydrocarbons by producing acids and other components from said halogenated compounds (col. 5, lines 28-35 and 54-56).
Regarding claim 12, the gas feed is subjected to a halogenated volatile organic compound removal step (the “oxidation” step in Huang) in the presence of the oxidation catalyst, which dissociates a halogen portion of the halogenated volatile organic compound, and the halogen portion, e.g., in the form acid compounds, is supplied to the adsorbent (col. 6, lines 3-26 and 38-55).
Regarding claim 16, Huang discloses that the biogas source may be produced from a digester, a landfill, or a waste water treatment facility (col. 3, lines 20-24).
Regarding claim 18, Huang discloses that the feed gas, prior to being treated to remove halogenated compounds, may be subjected to a pretreatment step(s), such as a water removal process (Fig. 1, 30), a volatile organic compound removal process (40), a water-wash (50), and a siloxane removal process (70) (col. 4, lines 1-12; col. 5, lines 1-16).
Regarding claim 19, Huang discloses that the halogen-depleted gas may be subjected to a carbon dioxide removal process (Fig. 1, 210), a nitrogen and oxygen removal process (230), and a water removal process (see stream “Vent” exiting from heat exchanger 280).
Regarding claim 20, Huang discloses producing a product from at least a portion of the halogen-depleted gas, where said product comprises renewable natural gas/hydrocarbon (“methane”) (Fig. 1, 250) and/or power (130) (col. 8, lines 4-12 and 34-40).
Regarding claim 24, Huang teaches treating the oxidized gas mixture containing acids in the contaminant removal module 90 containing an adsorbent, such as activated carbon impregnated with sodium and potassium hydroxide, to produce a halogen-depleted gas 100 (col. 6, lines 39-42). The sodium and potassium hydroxide component corresponds to a metal promoter.
Regarding claim 25, the HCl and HF acids are expected to react with the NaOH and/or KOH on the activated carbon in the module 90 to form salts (col. 6, lines 47-67), as discussed above. Accordingly, the formation of the salt is expected to reduce the acid content in the product gas.
Regarding claim 26, the activated carbon is expected to adsorb at least a portion of the acid compounds in the module 90 (col. 6, lines 39-42).
Regarding claim 30, Huang discloses that the halogen-depleted gas leaving the module 90 may meet the engine requirements for halogen content, which may be <100 mg/m3 (col. 7, lines 10-46). This range is equivalent to about 34.5 ppm, which falls within the claimed range of “less than 100 parts per million (ppm).”
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 13-15, 17, and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 9,217,116 B2).
Regarding claim 13, Huang does not explicitly disclose that the gas feed comprises a halogenated volatile organic compound content of less than 12 vol%. However, Huang and the instant disclosure disclose the same sources of biogas source, i.e., a digester, a landfill, or a waste water treatment facility (col. 3, lines 20-24). Therefore, it would be obvious for one skilled in the art to conclude that the gas feeds in the claimed invention and Huang have similar volatile organic compound contents, including the claimed amount of less than 12 vol.%.
Regarding claim 14, Huang discloses that the gas feed comprises a methane content of 20-60 vol%. The claimed range of “greater than 30 percent, by volume” overlaps the methane content range taught by Huang and is, therefore, considered prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05. I.
Regarding claim 15, Huang does not explicitly disclose that the halogen-depleted gas has a halogen concentration or “less than 5 percent, by volume.” However, Huang suggests that 85-100% of halogen-containing compounds can be oxidized and the resulting oxidation products containing halogen are subsequently removed by adsorption/absorption (col. 6, lines 16-19 and 47-55). Therefore, Huang is interpreted to suggest that 85-100% of halogen present in the gas feed can be removed, thereby rendering obvious the claimed halogen concentration (< 5 vol%) of the halogen-depleted gas.
Regarding claim 17, Huang suggests operating a CO2 removal and N2/O2 removal apparatuses to produce the purified biogas containing >96% methane (col. 8, lines 34-40). Huang suggests that nitrogen and oxygen may be removed to <4% nitrogen and <0.2% oxygen to meet a pipeline specification (col. 1, lines 55-59). Furthermore, given that methane has an energy content of approximately 1010-1012 btu/sf, the purified biogas containing >96% methane is expected to contain an energy content greater than 800 btu/scf.
Regarding claims 27, it would be obvious to conclude that producing the salt will reduce corrosion of downstream equipment due to the reduced amounts of HCl and HF that are consumed in the process of forming the salt (col.3, lines 31-38).
Regarding claim 28, Huang notes that HCl and HF can cause corrosion problems in power generating units (col. 3, lines 31-38), which is interpreted to include a downstream gas processing system and piping.
Regarding claim 29, it would be obvious to conclude that producing the salt will reduce corrosion of downstream equipment due to the reduced amounts of HCl and HF and, thus, reduce replacement costs, repair costs, and/or plant downtime associated with corrosion of downstream equipment. (col.3, lines 31-38).
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 9,217,116 B2), as applied to claim 1, and further in view of Blachman (US 6,200,544 B1).
Regarding claims 21-23, Huang teaches the method of claim 1, as discussed above.
Huang does not teach that the adsorbent in the module 80 comprises alumina including a promoter in an amount of greater than 0 and less than or equal to 50 wt%, wherein the promoter is configured to increase a rate at which said halogen or an acid derived from said halogen interacts with said halogen removal material.
However, Blachman teaches an alumina adsorbent effective for removing HCl from fluid stream, wherein the alumina adsorbent is impregnated with alkali metal- or alkaline earth metal oxide and promoted with phosphate and/or organic amine (col. 3, lines 43-52).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Huang by applying the alumina adsorbent of Blachman in the module 90 of Huang, because (i) Huang and Blachman are both directed to a method of removing acidic compounds such as HCl by adsorption and neutralization, and (ii) it is prima facie obvious to combine or substitute equivalent known for the same purpose. MPEP 2144.06.
Regarding claim 21, Blachman teaches that the adsorbent may contain a metal oxide component in an amount of 0-20 wt% and a phosphate/amine promoter component in an amount of about 0.5-25 wt%, based on the alumina (col. 4, lines 23-16; col. 6, lines 16-19), which falls within the claimed limitation of “a promoter weight percent greater than 0 and less than or equal to 50 percent.”
Regarding claim 22, Blachman teaches that the metal oxide component and the phosphate/amine promoter component each enhances HCl adsorption by neutralization (col. 2, lines 3-23; col. 4, lines 32-49), which would increase the HCl adsorption rate.
Regarding claim 23, the phosphate/amine promoter corresponds to a non-metal promoter or an organic promoter.
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, 2, 5, and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-10, 14, 15, 18, 19, 25, and 26 of U.S. Patent No. 12,496,550 B2 (App. 18/740,992). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a method for gas purification comprising: removing a halogen from a gas feed derived from and/or including a biogas source by subjecting the gas feed to a halogen removal system to produce a salt and a halogen-depleted gas comprising a reduced amount of the halogen relative to the gas feed. Particularly, the reference claims recite converting a halogen to an acid, which is subsequently converted to a salt.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Y Chong whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON Y CHONG/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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