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 .
Claim Status
Claims 1-20 were filed on 6/11/2024 and are pending.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “139” has been used to designate both an impurity stream [0038, 0040] and a methanol stream [0039] in Figure 1.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “313” and “315” in Figure 3. Presumably these characters should refer to “309” and “311” mentioned in [0055] but not shown in Figure 3.
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. 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a flow control system configured to perform operations” in claim 11 and “a hydrogen selective membrane configured to produce the respective permeate streams from the M-SMR and M-WGSR” in claim 20.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112(b)
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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The term “retentate stream” in lines 5, 6, and 9 in claim 1 is used by the claim to mean “any input stream,” while the accepted meaning is “sample left over in membrane separations after initial contact with the membrane”, as evidenced by Retentate Stream (downloaded from https://goldbook.iupac.org/terms/view/10289 on 9/21/2026). According to Figures 1 and 3 and the discussion thereof in the specification as filed, the ATR (104 in Fig. 1 and 304 in Fig. 3) does not contain a membrane to produce “a retentate stream”. Nor are any of the streams fed to the first M-SMR (106 in Fig. 1 and 306 in Fig. 3) produced by separation from a membrane such that the person of ordinary skill would understand them to be a “retentate stream”. Further complicating matters is that the claims also refer to “permeate streams”, which are the complements to “retentate streams”, with their accepted meaning of “stream containing penetrants that leaves a membrane module” as evidenced by Permeate Stream (downloaded from https://goldbook.iupac.org/terms/view/PT06880 on 9/21/2026). For example, see lines 6 and 10 in claim 1, which refer to a “permeate” stream as that produced from the membrane water gas shift reactor (M-WGSR) or the membrane steam methane reformer (M-SMR).
The term is indefinite because the specification does not clearly redefine the term. The indefinite term also appears in claims 2, 3, and 11-13.
Subject Matter Free from the Prior Art
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to the claimed invention are Dahl (US 2016/0083260, published on 3/24/2016) and Harale (US 2021/0395083, published on 12/23/2021).
Dahl teaches a process for the co-production of ammonia, urea, and methanol. See abstract and claims. Dahl teaches the process is according to Figure 1:
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. Thus the process comprises (a) producing a synthesis gas by simultaneous feeding natural gas (NG) to an autothermal reformer (ATR) and to a steam methane reformer (SMR), the two reformers running in parallel, (b) feeding air to an air separation unit (ASU), where the air is split into oxygen (1), which is fed to the ATR, and nitrogen, (c) subjecting the synthesis gas from the SMR to a water gas shift (WGS; “SHIFT”), (d) removing the carbon dioxide (6) from the synthesis gas (5) from step (c) and leading it to a urea synthesis in a urea synthesis unit, (e) combining the hydrogen-rich gas from step (d) with the nitrogen from step (b) (3), removing catalyst poisons from the gases (H2/N2 CLEANUP) and leading the gas mixture (4) to ammonia synthesis in an ammonia synthesis unit, (f) optionally removing part of the carbon dioxide from the synthesis gas from the ATR in step (a) (CO2 REMOVAL) and leading it to urea synthesis in a urea synthesis unit and (g) leading the syngas from step (f) to the methanol synthesis unit, wherein synthesis gas from step (a) may be led either from the ATR outlet to the SMR outlet upstream from the shift stage or the other way. See claims, abstract, and [0016-0033].
Dahl further teaches that the ATR feed comprises oxygen, methane (hydrocarbon), and water (steam) and that the product stream from the SMR comprises carbon dioxide and hydrogen (part of syngas). See [0002-0006 and 0029-0033]. Dahl teaches that the hydrogen from the syngas produced in the SMR is combined with nitrogen obtained from the ASU to prepare a mixed H2/N2 stream which is fed to the ammonia synthesis unit.
Dahl does not explicitly teach the use of a M-WGSR or a M-SMR to produce a permeate stream comprising hydrogen and nitrogen and a retentate stream comprising carbon oxides. Dahl teaches that a separate step is required after the WGSR and SMR to separate carbon dioxide from hydrogen, and that nitrogen is separately added to the hydrogen before being fed to the ammonia synthesis unit.
Harale teaches hydrogen production with membrane reformer including converting hydrocarbon to methane via steam and pre-reforming catalyst in a pre-reformer, converting the methane to hydrogen and carbon dioxide by steam reforming via a reforming catalyst in a membrane reformer, diffusing through hydrogen through a tubular membrane in the membrane reformer. See abstract. Harale teaches the membrane reformer is that of Figure 1:
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. The membrane reformer (100) includes a vessel (102) and a hydrogen-selective tubular membrane (104). Hydrocarbon (106) and steam (108) are fed to the vessel (102) and subjected to steam reforming and/or WGS in region (110) to generate synthesis gas (H2 and CO). The produced hydrogen is diffused (permeates) through the tubular membrane into the bore of the membrane. Permeate (112) rich in hydrogen discharges from the bore of the tubular reactor and a retentate (114) rich in carbon dioxide discharges from region (110). See [0029-0039]. Harale further teaches that nitrogen may be used as a sweep gas such that a mixture of hydrogen and nitrogen will be obtained from the bore of the reactor, which can be fed to an ammonia synthesis unit. See [0040-0041].
Thus, Harale teaches the claimed M-WGSR and M-SMR reformers. However, there does not appear to be motivation to combine the teachings of Harale and Dahl to arrive at the claimed inventions. If the reformers of Harale were included in the process of Dahl, it would require significant modification of Dahl to accommodate a mixture of H2/N2 produced from the SMR/WGSR. Dahl teaches an optimized integrated process wherein the H2 and N2 are kept separate and combined before being fed to the ammonia synthesis unit. It is not clear that the skilled artisan would be motivated to modify the teachings of Dahl with those of Harale to arrive at the claimed inventions. Further, Dahl is also silent regarding “fully utilizing the first and second flows of carbon dioxide” through the use of a control system , which can be achieved by the instantly claimed process and apparatus. Also see [0030] and Fig. 4-5 of the specification as filed. Therefore, the claimed inventions appear to be free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
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