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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to a three-product PSA unit, classified in B01D 53/0454.
II. Claims 10-16, drawn to a method of separating a feed gas mixture, classified in B01D 53/047.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process, such as in the treatment of other gas mixtures that do not include the components listed in claim 10.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Based on the current disclosure, separate search strategies within multiple classes and subclasses would be required given the distinct set of elements and components between the two different inventions that must be given patentable weight. Given the scope of the potentially relevant classes and subclasses, the examiner’s search would necessitate consideration of a wide and divergent range of art.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Patricia Prior on April 28, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-16 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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) 1 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sircar (US 4,705,541).
Sircar ‘541 teaches a hydrogen PSA unit for producing synthesis gas, comprising vessels that each have a first (lower) end, a second (upper) end, a layer of activated carbon or zeolite adsorbent, a first opening at the first end, and a second opening at the second end, wherein the first opening is in selective fluid communication with a high pressure feed gas inlet line (10) and a low pressure tail gas outlet line (38) including a compressor (37), and wherein the second opening is in selective fluid communication with a high pressure product outlet line (30), an intermediate vent gas outlet line (50), and a purge gas inlet line (87) (see figure, col. 3, lines 9-62, col. 5, lines 3-54). Regarding the relative pressures of the lines, these do not structurally limit the device in a way that distinguishes over the prior device. The compressor (37) discharge is in fluid communication with a hydrogen production unit via the intermediate vent gas outlet line (anticipates claims 7 and 8). The feed gas can contain hydrogen, methane, nitrogen, carbon monoxide, and argon, derived from steam-methane reforming (col. 6, lines 29-37).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sircar ‘541 in view of Patel (US 2014/0352531 A1).
Sircar ‘541 discloses all of the limitations of the claim except that there is a first activated carbon layer and a second downstream zeolite layer. Patel ‘531 discloses a hydrogen PSA bed comprising a lower activated carbon layer and a n upper zeolite layer (paragraph 16, abstract). It would have been obvious to one having ordinary skill in the art at the time of the invention in order to provide layers that preferentially adsorb different target gases in the feed mixture.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sircar ‘541 in view of Mifflin (US 5,154,736).
Sircar ‘541 discloses all of the limitations of the claim except that the intermediate vent gas outlet line is in fluid communication with a burner. Mifflin ‘736 discloses a hydrogen PSA unit that sends residue gas including hydrogen and methane to a flare or as fuel for a stream reforming reaction (see abstract, col. 5, lines 32-37, col. 6, lines 14-19, 39-60). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the system of Sircar ‘541 by sending vent gas to a burner in order to recover combustible products that can be used as fuel.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sircar ‘541 in view of Hsu et al. (US 2013/0255492 A1).
Sircar ‘541 discloses all of the limitations of the claim except that the high-pressure feed line is in communication with a water-gas shift reactor. Hsu et al. ‘492 disclose a hydrogen PSA arrangement for purifying a reformate from a steam-hydrocarbon reforming process that has been shifted in a shift reactor (abstract, paragraph 90). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the system of Sircar ‘541 by using it to purify a feed gas from a water-gas shift reactor because it is known to be effective in producing a purified hydrogen from such a mixed gas.
Allowable Subject Matter
Claims 3 and 4 are 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 additional references listed on the attached PTO-892 form disclose hydrogen purification arrangements.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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