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 .
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 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-17 of U.S. Patent No. 10,639,583. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instantclaims are encompassed in the patent claims.
Claims 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18 of U.S. Patent No. 11,253,810. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are encompassed in the patent claims.
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.
Claim(s) 8-10, 12, 21-23 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Monereau et al. (2011/0088551 A1).
Monereau et al. ‘551 teach a pressure swing adsorption arrangement comprising bed layers that include amorphous Sorbead LE-32 silica gel particles with a diameter of 1-4mm and specific surface area of 750 m2/g (see paragraphs 59 and 63). These particles inherently have a density of 583 kg/m3, a relative micropore surface area of greater than 10% and a total pore volume for pores between 500-20000 nm in diameter of greater than 70 mm3/g (see instant application Tables 1-3). The particles will also inherently have a BJH pore volume of greater than 0.40 cm3/g because the pore volume between 500-20,000 nm alone is 170 mm3/g (1.7 cm3/g) (see Table 3 of the instant application. Regarding the limitations of a thermal swing adsorption system, one skilled in the art will understand that the pressure swing adsorption bed of Monereau et al. is also capable of being heated for regeneration by using external regeneration gas or other heat sources. Regarding the phrase “to remove C5+ hydrocarbons from a natural gas stream,” this does not structurally limit the claimed adsorbent bed or system in a way that distinguishes over the prior art adsorbent, which is inherently capable of removing heavy hydrocarbons from a fluid volume. Monereau et al. ‘551 discloses the removal of carbon dioxide from methane containing streams, so the device is inherently capable of receiving a natural gas stream.
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.
Claim(s) 11, 15-18 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Monereau et al. ‘551.
Monereau et al. ‘551 disclose all of the limitations of the claims except that the bulk bed density is less than 600 kg/m3 (600 kg/m3 is disclosed). It is submitted that one having ordinary skill in the art would have known to adjust the bed density based on the process flow rate, acceptable pressure drop, and amount of target gas that must be removed. A denser bed will result in higher contact time and more target gas removal, but could unacceptably increase the pressure drop across the bed. Bed density can be altered by adjusting particle size or by using fillers.
Allowable Subject Matter
Claims 13, 14, 19, 20, 24 and 25 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The reference “The Determination of Pore Volume and Area Distributions in Porous Substances. I. Computations from Nitrogen Isotherms” discusses how pore volume is computed in adsorbents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK LAWRENCE whose telephone number is (571)272-1161. The examiner can normally be reached Mon-Fri 8:30am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK M LAWRENCE JR/Primary Examiner, Art Unit 1776
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