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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: solvent recovery unit in claims 1-20 understood to be at minimum a stabilizer,
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 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 1 recites “directing the condensed liquid to a solvent recovery unit (SRU)” but the claims have already required that the debutanizer receives the condensed liquid. It is unclear how the condensed liquid can still exist or when it would be directed after the debutanizer as it would be a different stream or a continuation of the stream from the debutanizer. For the purpose of examination, this limitation is understood to be that condensed liquid passes from the debutanizer to the SRU.
Claim 4 recites “the feed chiller heat exchanger” which is considered indefinite as it lacks antecedent basis in the claims. For the of examination, this limitation is understood that there isa feed chiller heat exchanger upstream of the heavies removal unit.
Claim 9 recites “to a temperature” which is indefinite as it is unclear how this limitation limits the claims as any cooling would be to a temperature. For the purpose of examination, this limitation is considered to be met as long as cooling occurs.
Regarding Claim 15, the recitation of the air cooler exchanger cooling” in line 2 renders indefinite the metes and bounds sought for protection of the claim. In the instant case, the claim recites both an apparatus and process in the same claim. Per MPEP 2173.05(p): “[a] single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” For the purpose of examination, this limitation is understood such that the air cooler is configured to cool the recovered solvent.
Claim 16 recites the debutanizers are disposed upstream of the SRU; however, claim 12 requires a stream fed from the debutanizer to the SRU which would already appear to require this limitation so it unclear how this further limits the claims. For the purpose of examination, it is not considered to further limit the claim as claim 12 already requires such a limitation.
Regarding Claim 20, the recitation of ”is cooled” in line 1 renders indefinite the metes and bounds sought for protection of the claim. In the instant case, the claim recites both an apparatus and process in the same claim. Per MPEP 2173.05(p): “[a] single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” For the purpose of examination, this limitation is understood such that the recovered solvent is configured to be cooled.
Claims 2-3, 5-8, 10-11 are rejected as being dependent upon a rejected claim.
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 1-4, 6-8, 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11-18 of U.S. Patent No. 11662141.
Claim 1 is entirely taught by claim 11 of the allowed claims except for the presence of “directing the recovered solvent to the solvent injection point to combine the revered solvent with the feed of natural gas”. Claim 11 of the allowed claims does recite “for recovering a solvent to be recycled into the feed of natural gas” which anticipates the limitations of claim 1 above as recycling back to the feed would be understood to be “directing the recovered solvent to the solvent injection point to combine the recovered solvent with the feed”.
In view of the rejection of claim 1 above, the following claims are rejected in view of the allowed claims:
Present Claims Allowed Claims
2 11
3 12
4 13
6 11
7 17
8 18
11 11
In view of the rejection above of claim 1, claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 of U.S. Patent No. 11662141 in view of Embry et al. (US PG Pub 20180266757), hereinafter referred to as Embry.
With respect to claim 5, the limitations of the claim 11 of the allowed claim differs from the present claim in that the solvent is not a hydrocarbon solvent.
Embry teaches that a solvent is preferentially composed of hydrocarbons as they are known to provide a suitable solvent (paragraph 17).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Embry to have had the solvent of claim 11 of the allowed claim be a hydrocarbon solvent since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a hydrocarbon solvent would provide the predictable result of a known and suitable solvent for use with natural gas.
In view of the rejection above of claim 9-10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 of U.S. Patent No. 11662141 in view of Huang et al. (US PG Pub 20090151391), hereinafter referred to as Huang.
With respect to claim 9, the limitations of the claim 1 of the allowed claims do not teach “directing the recovered solvent to a recycler; and cooling, via the recycler, the recovered solvent”.
Huang teaches that when recycling a stream back to a feed stream (11 back to 100) that the recycled stream is cooled using an air cooler before combining the stream with the feed (paragraph 30).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Huang to have as part of the directing the recovered solvent to the injection point to have provided an air cooler to reduce the temperature of the stream in the allowed claims 1 since it has been shown that combining prior art to yield predictable results is obvious whereby providing the cooler prior to the mixing step would provide the predictable result of lowering the temperature of the solvent to ensure that mixing would not unnecessarily increase the temperature of the mixed stream. The heat exchanger would be the recycler.
Claim 10 of the present claims is rejected in view of the modification above as the modification includes an air cooler.
Claims 12-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-18 of U.S. Patent No. 12025371 in view of Wood et al. (US Patent No. 5462583), hereinafter referred to as Wood and Abdemalek (US Patent No. 5642630), hereinafter referred to as Abdelmalek.
Claim 12 is entirely taught by claim 10 of the allowed claims except for the presence of “a drum configured to separate the condensed liquid from a vapor of the feed of natural gas” and “a feed chiller heat exchanger configured to receive the vapor”.
Wood teaches that after an initial chiller (11) the feed gas can be passed into a separator drum (13) to remove heavy components from the feeds stream (Column 7, lines 8-13)
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have in claim 10 of the allowed claims provided a drum to separate condensed liquid from vapor of the feed based on the teaching of Wood since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a separator drum would allow for removal of heavy components from the feed which would prevent them from causing issues downstream during any cooling processes.
Abdelmalek teaches that separating of hydrocarbons can be in states with multiple coolers and separators (Figure 2, 302/303a, 302b/303b) such that water and heavier hydrocarbons is removed in the first stage and then the gas is cooled again for further separation (Column 8, lines 10-25).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have in allowed claim 10 as modified to have provided a feed chiller heat exchanger that is configured to receive the vapor from the drum based on the teaching from Abdelmalek since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing the heat exchanger would provide the predictable result of cooling the gas further which allows for further separation and processing to provide the final product.
In view of the rejection of claim 1 above, the following claims are rejected in view of the allowed claims:
Present Claims Allowed Claims
13 10
14 14
15 15
16 10
17 11
18 12
19 13
20 16
Allowable Subject Matter
Claims 1-20 would be allowable if the rejections for double patenting and under 35 USC 112(b) were resolved.
The following is an examiner’s statement of reasons for allowance: This application is a continuation of the two applications that are now the patents recited above in the double patenting section upon which the rejections are made and the claims are allowable for the same reason. The closest prior art is that of Mak (US PG Pub 20150166915) and Abdelmalek which together can be seen in the final rejection dated 7/26/2022 in the application 16/861,811 (now the above US Patent 11662141):
With respect to claim 1, Mak teaches a method for reducing fouling in a liquefied natural gas (LNG) facility (Figure 2), the method comprising: injecting a solvent into a feed of natural gas at a solvent injection point; producing a mixed feed from a dispersal of the solvent into the feed of natural gas (natural gas at 4 is mixed with solvent 3, paragraphs 29-30), the mixed feed containing heavy components (as the feed contains heavy components, including C3+ components, see Table 1, so does the mixed feed); producing a chilled feed by chilling the mixed feed, the chilled feed including a vapor and a condensed liquid (the phase gas at 2 is already two-phase and is cooled and formed into a chilled gas 7, paragraph 30 which would also thus be condensed), the condensed liquid containing a fouling portion of the heavy components condensed by the solvent during chilling (the two-phase portions based on the content in Table 1 would include CO2 and the heavier components, which would be fouling components), directing the vapor into a feed chiller heat exchanger (vapor in 8 is sent to cooler 70, paragraph 30 which would act as a feed chiller).
Mak does not teach separating the condensed liquid containing the portion of the heavy components from the vapor and directing the vapor into a feed chiller heat exchanger following separation of the condensed liquid containing the portion of the heavy components form the vapor wherein the condensed liquid is separated from the vapor upstream from the feed chiller heat exchanger.
Abdelmalek teaches that separating of hydrocarbons can be in states with multiple coolers and separators (Figure 2, 302/303a, 302b/303b) such that water and heavier hydrocarbons is removed in the first stage and then the gas is cooled again for further separation (Column 8, lines 10-25) separation stages such that after being condensed in the first cooler (the chilling the mixed feed stages 53), the heavy components there are removed and then a second chilling is used to provide separation for the absorber (69).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have between the two coolers (53 and 70) of Mak based on the teaching of Abdelmalek provided an additional stage of heavy hydrocarbon removal with a separator since it has been shown that combining prior art elements to yield predictable results is obvious whereby adding an additional stage would allow removal of a larger number of the heavier hydrocarbons by increasing the separation stages such that after being condensed in the first cooler (the chilling the mixed feed stages 53), the heavy components there are removed and then a second chilling is used to provide separation for the absorber (69).
This can be seen to teach substantially the limitations of claim 1 and the majority of those of claim 12 as well; however, the prior art as well as the additional reference of Gaskin (US PG Pub 20180066889) does not teach the combination of a solvent recovery unit to recover solvent and a debutanizer that both receive the condensed liquid as claimed as Gaskin teaches that it is the overhead, not the condensed liquid, that is used for recovery of the solvent (paragraph 58). Chen et al (CN 209193845) (Figure 1) teaches the presence of both a solvent recovery tower (7) and a debutanizer (12) in the same system but they are on separate paths from separator (2) and fluid from the separator (passes separately to teach and not sequentially as is required by the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M KING whose telephone number is (571)272-2816. The examiner can normally be reached Monday - Friday, 0800-1700.
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/BRIAN M KING/Primary Examiner, Art Unit 3763
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