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 Claims
Claims 1-20 are pending. This is the first Office Action on the merits.
Claim Objections
Claim 20 is objected to because of the following informalities.
Claim 20 recites “said halogen-depleted biogas,” which lacks antecedent basis. Applicant is suggested to amend it to state “said halogen-depleted gas.”
Appropriate correction is required.
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 1-12, 16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang (US 9,217,116 B2).
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 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 to produce a processed gas mixture containing an acid, such as HCl and HF (col. 6, lines 3-42); and separating the acid from the processed gas mixture in a contaminant removal module 90 by adsorption to produce a halogen-depleted gas 100. The halogen-depleted gas is expected to comprise a reduced amount of halogen relative to the biogas source, as halogenated compounds are consumed to produce reaction products in the oxidation (col. 6, lines 39-42). Accordingly, the modules 80 and 90, which reduce the halogen content in the gas feed, collectively correspond to “a halogen removal system.”
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 3, the contaminant removal module 80 comprises an oxidation catalyst which removes halogen (e.g. Cl or F) from the gas feed upon contact (col. 6, lines 3-26 and 38-46). Additionally, an adsorbent in module 90 removes HCl and HF by adsorption (col. 6, lines 47-67). Thus, either one of the oxidation catalyst and the adsorbent can correspond to a halogen removal material.
Regarding claims 4-6, the contacting of the gas feed with the oxidation catalyst generates an acid (e.g., HCl or HF) and salts (e.g., COCl2, COF2,) (col. 6, lines 47-52)
Regarding claim 7, the contacting of the gas feed with the oxidation catalyst involves a catalytic reaction of halogen on a surface of the oxidation catalyst (col. 6, lines 3-26).
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 is subjected to oxidation 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)
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 and 17 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 35 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.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, 12, 14-16, 18, and 26-34 of copending Application No. 18/169,377 (reference application). 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 halogen-depleted gas comprising a reduced amount of the halogen relative to the gas feed. The reference claims do not explicitly recite a halogen removal system to remove at least a portion of the halogen included in the feed gas. However, the reference claims recite converting a halogen to an acid in a pre-processing system and then removing the acid in an acid removal material. Thus, the pre-processing combined with the acid removal system in the reference claims would correspond to the claimed halogen removal system of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 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 halogen-depleted gas comprising a reduced amount of the halogen relative to the gas feed. The reference claims do not explicitly recite a halogen removal system to remove at least a portion of the halogen included in the feed gas. However, the reference claims recite converting a halogen to an acid and then removing the acid to produce the halogen-depleted gas. Thus, the processing zone(s) for conducting the halogen conversion and the acid removal would correspond to the claimed halogen removal system of the instant claims.
Conclusion
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/JASON Y CHONG/Examiner, Art Unit 1772