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
Applicant's election without traverse of Invention I (Claims 1-15) in the reply filed on March 18, 2026 is acknowledged.
Claims 16-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claims:
a first expansion device configured to receive and expand fluid from the feed stream heat exchanger; c. a first feed stream separation device configured to receive expanded fluid from the first expansion device of Claim 1
said vapor outlet of the second feed stream separation device configured to direct vapor to the fourth expansion device wherein said fourth expansion device is configured to direct fluid to the first column of Claim 3
ii) said sixth expansion device configured to receive and expand a first reboiler stream from the first column; iii) said first column reboiler warming passage configured to receive an expanded first reboiler fluid stream from the sixth expansion device, warm the expanded first reboiler fluid stream so that refrigeration is provided within the first column reboiler heat exchanger and to return a warmed first reboiler fluid stream to the first column of Claim 4
a first main heat exchanger configured to receive and cool a vapor stream from the vapor outlet of the first feed stream expansion device, direct a cooled fluid stream to the feed stream expansion device of Claim 5
a second main heat exchanger configured to receive and cool fluid from the first after-cooler, direct fluid to the first expansion valve of Claim 6
a nineth expansion device and a third main heat exchanger configured to receive and cool a reflux stream from the second column and to return the cooled reflux stream to the second column of Claim 7
a seventh expansion device, an eighth expansion device of Claim 10
an outlet configured to direct a cooled fluid stream to the seventh expansion device, said seventh expansion device configured to direct a cooled fluid stream to the second column; ii) said eighth expansion device configured to receive and expand a second reboiler stream from the second column; iii) said second column reboiler warming passage configured to receive an expanded reboiler fluid stream from the eighth expansion device of Claim 10
wherein the first column is positioned within a first cold box and the second column is positioned within a second cold box of Claim 11.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Such claim limitation(s) is/are:
a first expansion device-eighth expansion device in claims 1-10. For purposes of examination: this term is interpreted as comprising, any other expansion valve described below, may be Joule-Thomson (JT) valve, or other type of expansion valve known in the art (Applicant Specification Publication [0020]) and its equivalents.
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “device” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “expansion”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
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 Objections
Claim 8 is objected to because of the following informalities:
In re Claim 8, the recitation “head exchanger” should be amended to recite—heat exchanger--to avoid potential ambiguities and/or § 112(b) issues.
Appropriate correction is required.
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 4-10 is 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.
In re claim 4, the phrase "a cooled fluid stream" renders the claim indefinite because it is unclear whether this is the same a cooled stream in line or a different cooled fluid stream. For purposes of examination: this phrase/term is interpreted as the cooled fluid stream.
In re Claim 5, the claim recites the limitation "the first feed stream expansion device" in 2-3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination: as best understood by the examine, this phrase/term is interpreted as the first expansion device.
In re Claim 10, the claim recites the limitation " warm the expanded reboiler fluid stream" in lines 12-13. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination: this phrase/term is interpreted as the expanded reboiler fluid stream from the eight expansion device.
the expanded reboiler fluid stream
Claims 6-9 are rejected at least by virtue of its dependency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 12, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US4948405A) in view of Kaminsky (US20210063083A1) and Chen (US20010052241A1).
In re Claim 1, Thompson discloses a system for removing nitrogen (Fig. 1) from a natural gas fluid stream (3) comprising:
a. a feed stream heat exchanger (200) configured to receive and cool the natural gas fluid stream (3);
said first feed stream separation device (204) including a vapor outlet (10) and a liquid outlet (8);
d. a first column (210) in fluid communication and vapor (10) outlets of the first feed stream separation device (204) and configured to operate at a first operating pressure (first column necessarily has an operating pressure),
said first column (210) including a first column vapor outlet (opening of 21) and a first column liquid outlet (opening of 50) and
configured so that a first nitrogen-enriched vapor stream (21) exits the first column vapor outlet (opening of 21) and a first methane-enriched liquid stream (50) exits the first column liquid outlet (opening of 50);
f. a first after-cooler (216)
g. a second expansion device (230) configured to received fluid from the first after-cooler (216);
h. a second column (218) in fluid communication with the second expansion device (230) and configured to operate at a second operating pressure (second column necessarily has an operating pressure),
where the second operating pressure () is greater than the first operating pressure (),
said second column (230) including a second column vapor outlet (opening of 42) and a second column liquid outlet (opening of 32) and
configured so that a second nitrogen-enriched vapor stream (42) exits the second column vapor outlet (opening of 42) and a second methane-enriched liquid stream (32) exits the second column liquid outlet (opening of 32); and
i. said feed stream heat exchanger (200) in fluid communication with the second column vapor outlet (opening of 42) and the first (opening of 50) and second (opening of 32) column liquid outlets and configured to warm nitrogen-enriched fluid (42 becomes warm 48) and methane-enriched fluid (50 becomes 40) to provide refrigeration within the feed stream heat exchanger (cools 200).
However, Thompson does not explicitly teach, a first expansion device configured to receive and expand fluid from the feed stream heat exchanger; and a first feed stream separation device configured to receive expanded fluid from the first expansion device, said first feed stream separation device including a vapor outlet and a liquid outlet.
On the other hand, Kaminsky teaches a first expansion device (150) configured to receive and expand fluid from the feed stream heat exchanger (fluid leaving heat exchanger 130); and a first feed stream separation device (160) configured to receive expanded fluid from the first expansion device (fluid leaving expansion valve 150).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Thompson and to have modified them by having a first expansion device configured to receive and expand fluid from the feed stream heat exchanger; and a first feed stream separation device configured to receive expanded fluid from the first expansion device as taught by Kaminsky, said first feed stream separation device of Thompson including a vapor outlet and a liquid outlet as taught by Kaminsky, in order to improve the efficiency by further reduction of temperature of the intermediary fluid stream (See Kaminsky [0028]), without yielding unpredictable results.
Modified Thompson supra does not explicitly teach, a first column in fluid communication with the liquid and vapor outlets of the first feed stream separation device and configured to operate at a first operating pressure, a first compressor configured to receive and compress the first nitrogen-enriched vapor stream; and a first after-cooler configured to receive the compressed first nitrogen-enriched vapor stream from the first compressor.
On the other hand, Chen teaches a first column (84) in fluid communication with the liquid (20) and vapor (18) outlets of the first feed stream separation device (70) and configured to operate at a first operating pressure ([0026]: has an operating pressure); a first compressor (92) configured to receive and compress the first nitrogen-enriched vapor stream (40 which becomes 46a); and a first after-cooler (94) configured to receive the compressed first nitrogen-enriched vapor stream (40 which becomes 46a) from the first compressor (92).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of modified Thompson and to have modified them by having a first column in fluid communication with the liquid and vapor outlets of the first feed stream separation device of modified Thompson as taught by Chen and configured to operate at a first operating pressure, a first compressor configured to receive and compress the first nitrogen-enriched vapor stream; and a first after-cooler configured to receive the compressed first nitrogen-enriched vapor stream from the first compressor as taught by Chen, in order to produce residue gas at appropriate pressure for subsequent processes or customers (See Chen [0033]), without yielding unpredictable results.
In re Claim 2, Modified Thompson via Kaminsky teaches a feed stream compressor (110) configured to receive and cool the natural gas fluid stream (101 corresponding to Thompson 12) and
a feed stream after-cooler (120) configured to receive and cool a cooled natural gas fluid stream (101 after 110) from the feed stream compressor (120),
said feed stream after-cooler (120) configured to direct fluid to the feed stream heat exchanger (130).
In re Claim 3, Modified Thompson teaches a third expansion device (203) and a fourth expansion device (213),
said third expansion device (Naminsky 252) configured to receive a liquid stream (8) from the liquid outlet (opening of 8) of the first feed stream separation device (204) and
a second feed stream separation device (Naminsky 261 corresponding to Thompson 208) configured to receive fluid from the third expansion device (Naminsky 252),
said second feed stream separation device (206) having a liquid outlet (opening of 15) and a vapor outlet (opening of 18),
said liquid outlet (opening of 15) of the second feed stream separation device (Naminsky 261) configured to direct a fluid stream (Naminsky 204; See [0037]) to the feed stream heat exchanger to provide refrigeration within the feed stream heat exchanger (See Thompson Col 4:15-25: where bottom stream from separator can be directed to feed stream heat exchanger for refrigeration) and
said vapor outlet (opening of 18) of the second feed stream separation device (206) configured to direct vapor (18) to the fourth expansion device (213)
wherein said fourth expansion device (213) is configured to direct fluid (20) to the first column (210).
In re Claim 12, Modified Thompson teaches via Chen, “wherein the first operating pressure of the first column is about 230 to 320 psig ([0034]: 330 psia is 315.7 psig).
In re Claim 15, Modified teaches wherein the first nitrogen-enriched stream (49) exiting the feed stream heat exchanger (200) is directed to a vent (See Fig. 1 49 sent to atmosphere, i.e., vent).
Claims 11, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US4948405A) ).as modified by Kaminsky US20210063083A1 and Chen (US20010052241A1) further in view of Butts (US 20210180864 A1).
In re Claim 11, Modified Thompson does not explicitly teach, wherein the first column is positioned within a first cold box and the second column is positioned within a second cold box.
On the other hand, Butts teaches wherein the first column is positioned within a first cold box and the second column is positioned within a second cold box ( [0016]: the two columns are erected independently he two columns may be erected inside a cold box).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of modified Thompson and to have modified them by wherein the first column is positioned within a first cold box and the second column is positioned within a second cold box, in order to increase the efficiency of separation of methane and nitrogen by exploiting boiling point differentials to increase nitrogen and methane purity, without yielding unpredictable results.
In re Claim 13 and Claim 14, Modified Thompsons does not explicitly teach wherein the second operating pressure of the second column is about 300 to 350 psig.
However, Butts teaches the pressure differential between the two columns allows for efficient energy sharing between the columns, including through heat exchange between first and second column streams.
In the further alternative, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the pressure range of the second column of modified Thompson, and thus the claimed particle size cannot be considered critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", where Huang teaches the general conditions of the claim in the prior art, including the same composition in all other respects and identical experimental data. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Potentially Allowable Subject Matter
Claims 4-10 would be potentially allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art Chen (US20010052241A1) and additional prior art Butts (US 20210180863 A1) or Sharma (US 4710214 A) when taken as a whole, neither anticipates nor render prima facie obvious the claimed invention as currently recited in at least claims 4-10. Depending on how the rejections and Drawing objections supra are resolved will affect the potential allowability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM M ADENIJI whose telephone number is (571)272-5939. The examiner can normally be reached 8:00-5:00 PM.
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/IBRAHIM A. MICHAEL ADENIJI/Examiner, Art Unit 3763
/JOEL M ATTEY/Primary Examiner, Art Unit 3763
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