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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, drawn to a purging system of a boil-off gas reliquefication apparatus for ships.
Group II, claim(s) 7-10, drawn to a purging method of a boil-off gas reliquefication apparatus for ships.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common features are not a special technical feature as they do not make a contribution over the prior art in view of Bernard (WO 2019/145643 A1) in view of Boll et al. (US 20200018307 A1) and further in view of Epstein et al. (US 2015/0330575 A1). Bernard as modified teaches all the common features as shown in the rejection of claim 1 below.
During a telephone conversation with Attorney Hochan Song on January 20, 2026 a provisional election was made without traverse to prosecute the invention of group 1, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-10 are 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.
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 limitation wherein “a vacuum insulation layer” and “vacuum pump” as recited in claim 1, “a hard pipe extending from the vacuum pump to the reliquefication apparatus; and a flexible pipe connecting the hard pipe to pipes and each device of the reliquefication apparatus” as recited in claim 3 must be shown or the feature(s) canceled from the claim(s). 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 3 recites the limitation "a hard pipe extending from the vacuum pump to the reliquefication apparatus; and a flexible pipe connecting the hard pipe to pipes and each device of the reliquefication apparatus.” However, the specification fails to reasonably convey to one of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of filing. Specifically: The drawings do not illustrate or label: a vacuum pump, a hard pipe extending from the vacuum pump to the reliquefaction apparatus, or a flexible pipe connecting the hard pipe to pipes and devices of the reliquefaction apparatus. The specification provides no structural, functional, or operational description of: the vacuum pump, the hard pipe, the flexible pipe, or how these components interact with the reliquefaction apparatus as claimed. The only disclosure in the specification merely repeats the claim language verbatim, without any additional detail, explanation, or example. Mere recitation of claim language without supporting disclosure does not satisfy the written description requirement (see Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010)). Further, the specification fails to enable the claimed invention because it does not teach one of ordinary skill in the art how to make and use: the claimed hard pipe, the flexible pipe, their physical connection to the vacuum pump and reliquefaction apparatus, or their functional cooperation as claimed, without undue experimentation, in violation of 35 U.S.C. §112(a).
Claim 4 recites “a checking step in which a dew point in the pipes and devices is checked” in line 7. However, the specification fails to provide adequate written description and enabling disclosure for the claimed “checking step in which a dew point in the pipes and devices is checked.” Specifically, the specification does not disclose: any sensor, detector, analyzer, hygrometer, dew-point meter, or other structure configured to measure or check a dew point; any location within the pipes or devices where the dew point is measured; any method or process steps describing how the dew point is checked and any control logic, threshold, or evaluation criteria associated with the dew point checking. As such, the specification does not reasonably convey to one of ordinary skill in the art that the inventor had possession of the claimed dew point checking step at the time of filing, nor does it enable one of ordinary skill in the art to perform the claimed checking step without undue experimentation.
Claims 5-6 are also rejected under 35 U.S.C. 112(a) for being dependent upon a rejected claim.
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 1-6 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 the limitation "the compressed gas" in line 6 lacks proper antecedent basis. The limitation should read –the compressed boil-off gas--. Appropriate correction required throughout the claims.
Claim 1 recites the limitation "the purging system comprising: a storage tank…a compressor, …a heat exchanger… and refrigerant circulation line" in line 1-9 renders the claim indefinite because according to applicant’s invention it appears the boil-off gas reliquefication apparatus is the one that comprises all the above specified structures (storage tank, compressor, heat exchanger and a refrigerant circulation line), not the purging system.
Claim 1 recites the limitation "wherein, upon N2 purging of the reliquefication apparatus, the purging system supplies N2 after suctioning and venting a gas from the refrigerant circulation line using a vacuum pump provided to maintain an internal vacuum state of the vacuum insulation layer of the storage tank” in line 10-13 renders the claim indefinite because it is unclear what functional role the supplied nitrogen performs relative to the vacuum insulation layer, and how the recited elements are functionally related. Specifically, the claim language is ambiguous as to whether: the vacuum pump alone maintains the internal vacuum state of the vacuum insulation layer, and the nitrogen is supplied only for purging the refrigerant line, or the nitrogen supply contributes to or affects the maintenance of the internal vacuum state of the vacuum insulation layer. The claim fails to clarify whether nitrogen is supplied into the refrigerant line, into the vacuum insulation layer, or elsewhere; whether the nitrogen supply is isolated from, fluidly coupled to, or operationally independent of the vacuum insulation layer; how supplying nitrogen is compatible with maintaining a vacuum state, particularly given that introducing gas into a vacuum insulation layer would undermine the vacuum condition. As a result, one of ordinary skill in the art cannot determine with reasonable certainty the scope of the claimed purging system, including: the relationship between the nitrogen supply and the vacuum insulation layer, and whether the claim requires nitrogen to be used merely for purging or additionally for vacuum maintenance. For examination purposes, the claimed purging system is interpreted as using a vacuum pump to evacuate a refrigerant line, followed by supplying nitrogen for purging after evacuation, and maintain a vacuum-insulation for the storage tank. The nitrogen is not used to maintain the vacuum insulation layer.
Claim 3 recites the limitation "a hard pipe extending from the vacuum pump to the reliquefication apparatus; and a flexible pipe connecting the hard pipe to pipes and each device of the reliquefication apparatus” renders the claim indefinite because the applicant disclosure show none of the vacuum pump, hard pipe, flexible pipe, pipes and each device and how it interacts to each other in the reliquefication apparatus (see applicant’s fig. 1). Furthermore, the claim language is indefinite because: The terms “hard pipe” and “flexible pipe” are not defined in the specification, nor is any objective boundary provided to distinguish: what constitutes a “hard” pipe versus a “flexible” pipe, acceptable materials, dimensions, or configurations. The phrase “connecting the hard pipe to pipes and each device of the reliquefaction apparatus” is unclear and ambiguous, as it is not apparent: whether the flexible pipe connects to all devices simultaneously or selectively, which specific pipes or devices are included, how such connections are implemented. Because the drawings and specification fail to illustrate or describe these components, one of ordinary skill in the art cannot ascertain the scope of the claim with reasonable certainty (see Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). Accordingly, the claim language fails to distinctly define the metes and bounds of the claimed invention. For examination purposes, as long as a prior art teaches a vacuum pump extended with a pipe to a refrigerant circulation line of the reliquefication apparatus, then it meets the claimed language.
Claim 4 recites the limitation "3) a checking step in which a dew point in the pipes and devices is checked” renders the claim indefinite because the claim is unclear and ambiguous because it fails to specify: what structure or component performs the checking, how the dew point is checked, where within the “pipes and devices” of the apparatus the checking occurs and whether the checking is manual or automatic.
Claim 5 recites the limitation "a dew point” in line 2 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “a dew point” in claim 4. For examination purposes, examiner read the limitation as –the dew point--.
Claims 2 and 6 are also rejected under 35 U.S.C. 112(b) for being dependent upon a rejected claim.
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard (WO 2019/145643 A1) in view of Boll et al. (US 20200018307 A1) and further in view of Epstein et al. (US 2015/0330575 A1).
In regard to claim 1, Bernard teaches a boil-off gas reliquefication apparatus for ships, comprising:
a storage tank (LNG storage tank 24) disposed in a ship to store a low-temperature liquefied gas (see the annotated figure 29 below);
a compressor (48) compressing boil-off gas generated from the storage tank (see the annotated figure 29 below);
a heat exchanger (E2) in which the compressed gas compressed in the compressor is cooled (see the annotated figure 29 below); and
a refrigerant circulation line (circuits 16, 18, 20, 22) in which a refrigerant to be subjected to heat exchange with the compressed gas (compressed BOG in circuit 50, 52) in the heat exchanger (E2) circulates (see the annotated figure 29 below).
Bernard teaches a boil-off gas liquefaction apparatus, but does not explicitly teach the storage tank provided with an insulating portion including a vacuum insulation layer, and further fails to teach a purging system comprising: upon N2 purging of the reliquefication apparatus, the purging system supplies N2 after suctioning and venting a gas from the refrigerant circulation line using a vacuum pump provided to maintain an internal vacuum state of the vacuum insulation layer of the storage tank.
However, Boll teaches a refrigerant circuit (10) a purging system supplies N2 after suctioning and venting a gas from the refrigerant circulation line using a vacuum pump (45) (see ¶ 0042-0045; fig. 1).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the apparatus of Bernard by including a purging system that comprises a vacuum pump to evacuate a refrigerant line, followed by supplying nitrogen for purging after evacuation, in view of the teachings of Boll, in order to more effectively remove residual moisture, air and non-condensable gases that are not reliably eliminated by vacuum evacuation alone.
However, Epstein teaches a method for managing LNG boil-off and LNG boil-off management assembly comprising a cryogenic fuel tank (22) comprises a second wall (25) that substantially encloses a first wall (23) a gap (26) between the first wall (23) and the second wall (25) in order to thermally insulate the tank, wherein a vacuum in the gap (26) between the first wall (23) and the second wall (25) is created and maintained by a vacuum pump (28) (see ¶ 0047; fig. 3).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the storage tank of Bernard by including a vacuum insulation layer, in view of the teachings of Epstein, in order to provide thermal insulation and reduce a boil-off rate of an LNG storage tank.
PNG
media_image1.png
878
680
media_image1.png
Greyscale
In regard to claim 2, the modified Bernard teaches the modified Bernard teaches purging system according to claim 1, wherein the refrigerant circulation line comprises:
a refrigerant expander (expander 14) expanding and cooling a refrigerant to be supplied to the heat exchanger (E2) (see the annotated figure 29 above); and
a refrigerant compressor (12) compressing the refrigerant discharged after heat exchange in the heat exchanger (E2) (see the annotated figure 29 above),
the refrigerant circulating in the refrigerant circulation line (circuits 16, 18, 20, 22) is nitrogen (see the translation of Bernard, page 5, last 3 paragraph, page 16, last paragraph), and
Bernard does not explicitly teach the refrigerant compressor (12) is driven by receiving expansion energy of the refrigerant in the refrigerant expander (14). However, Official Notice is taken that, at the time of the invention, it was well known in the cryogenic refrigeration and liquefaction arts to recover expansion work from an expander (e.g., turboexpander) and to use that recovered energy to drive or assist in driving a compressor in the same refrigerant circuit, in order to improve overall system efficiency and reduce external power consumption. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the reliquefication apparatus of Bernard, by configuring the compressor to be driven, at least in part, by expansion energy recovered from the refrigerant expander as a matter of routine engineering expedient, yielding predictable results.
In regard to claim 3, the modified Bernard in view of Boll teaches purging system according to claim 2, wherein Boll further teaches a hard pipe (35) extending from the vacuum pump (45) to the reliquefication apparatus (see fig. 1 of Boll and claim 1 rejection); and a flexible pipe connecting the hard pipe to pipes and each device of the reliquefication apparatus (see the drawing objection, 112(a), 112(b) rejections and examiner’s interpretation above).
In regard to claim 4, the modified Bernard teaches purging system according to claim 3, wherein N2 purging of the reliquefication apparatus comprises: wherein regarding limitations which are directed to a manner of operating disclosed purging system that comprise vacuum pump “1) a vacuuming step in which a gas in the pipes and devices of the reliquefication apparatus is suctioned and vented by the vacuum pump; 2) a purging step in which nitrogen is supplied to and vented from the pipes and devices; and 3) a checking step in which a dew point in the pipes and devices is checked”, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
In regard to claim 5, the modified Bernard teaches purging system according to claim 4, wherein regarding limitations which are directed to a manner of operating disclosed purging system that comprise vacuum pump “wherein step 3) is performed after step 1) and step 2) are sequentially performed twice or more, and when a dew point has not dropped to a preset value in step 3), N2 purging is returned to step 1), followed by sequentially performing steps 1) to 3)”, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
In regard to claim 6, the modified Bernard teaches purging system according to claim 4, wherein regarding limitations which are directed to a manner of operating disclosed vacuum pump “wherein step 1) is carried out for 1 hour by operating the vacuum pump at a vacuum pressure of about 7 mbara, and in step 2), the pipes and devices are purged by supplying and venting nitrogen until an internal pressure reaches about 5 barg”, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WEBESHET MENGESHA whose telephone number is (571)270-1793. The examiner can normally be reached Mon-Thurs 7-4, alternate Fridays, EST. 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, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/W.M/Examiner, Art Unit 3763 /FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763