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 Rejections - 35 USC § 102
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 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.
Claims 1- are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo ( Seo, D., Lee, S., Moon, S., Lee, Y., Park, Y., “Investigating two synthetic routes for gas hydrate formation to control the trapping of methane from natural gas”, Chemical Engineering Journal, 2023, 467, 143512).
The Seo reference was available online on 5/16/23, and appears to have inventors in common with the current application. The current application claims priority to a Korean application filed 1/18/24, but applicant has not perfected priority by filing an English translation. The current application is therefore accorded a filing date of 6/25/24, and the Seo reference qualifies as prior art under 35 USC 102(a)(1) outside the grace period specified in 35 USC 102(b)(1). Even if applicant were to perfect priority, the Seo reference would still qualify as prior art under 35 USC 102(a)(1) unless applicant were to establish that the disclosure relied upon in the Seo reference was subject to the 35 USC 102(b)(1)(A) exception, noting that the Seo reference has additional authors not listed as inventors in the current application.
In sections 2.2 and 2.3 of the reference, Seo discloses a method of preparing a solid THF, TMO, or DIOX hydrate, as recited in the first step of claim 1, and supplying a mixture of 90% methane, 7% ethane, and 3% propane to the solid hydrate, where the gas mixture meets the limitations of the natural gas of the second step of claim 1, in accordance with the disclosure on page 5 lines 23-25 of the current specification. In section 3.3 Seo discloses that all the sII-L sites are occupied by the liquid promoters (THF, TMO, or DIOX), while all the sII-S sites contain methane. The solid hydrates of Seo therefore selectively capture methane in the sII-S cavities, as recited in the third step of claim 1. Claim 1 is therefore anticipated by Seo.
In section 2.3 Seo discloses that the solid hydrate is prepared by freezing a solution of thermodynamic promoter (THF, TMO, or DIOX) and grinding the frozen solutions, meeting the method limitations of claim 2. The solutions have a promoter concentration of 5.6 mol% of promoter, within the range recited in claim 3. The solvent used in the solutions is water (implied by Seo’s characterization of the hydrates as “ice-borne”), as recited in claim 4. THF, TMO, and DIOX are all recited in claim 5. The natural gas of Seo comprises methane, ethane, and propane, as recited in claim 6.
As noted above, Seo discloses in section 3.3 of the reference that the sII-S sites contain only methane and that the ethane and propane molecules do not serve as guest molecules when the promoters are present, indicating a captured methane purity meeting the limitations of claim 7. In Figure 2 on page 5 of the reference Seo further indicates that the methane purity is greater than 99%, since no ethane or propane is reported in the sII-S sites of the hydrate, and Seo also o discloses that the occupancy of methane in sII-S of the TMO hydrate is 0.681, or 68.1%, within the range recited in claim 8.
In light of the above, claims 1-8 are anticipated by Seo.
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over K Nagai (Nagai, Y., Yoshioka, H., Ota, M., Sato, Y., Inomata, H., Smith, R.L., Peters, C.J., ”Binary Hydrogen-Tetrahydrofuran Clathrate Hydrate Formation Kinetics and Models”, AIChE Journal, 2008, 54(11), 3007-3016) in view of Kezirian (U.S. PG Pub. No. 2021/0214626).
In the “Experimental procedure” section (page 3009), Nagai discloses preparing solid THF hydrates by freezing a 5.6 mol% THF solution and crushing the frozen mixture, meeting the limitations of the first step of claim 1, the method limitations of claims 2-4, and the limitations of the thermodynamic promoter of claim 5. Nagai further discloses throughout the reference that the solid THF hydrates can be used to capture hydrogen, but does not disclose the use of the hydrates for selectively capturing methane from natural gas.
In paragraph 1 Kezirian discloses a method of extracting and processing natural gas. At the bottom of paragraph 12 as well as paragraph 13 Kezirian discloses steps of supplying the natural gas to a gas/clathrate processing facility to form natural gas clathrate hydrate. Kezirian discloses in paragraph 13 that the hydrate can be an sII hydrate. In paragraphs 137-138 Kezirian discloses that the hydrate can comprise a thermodynamic promoter, as recited in claim 1, where the promoter can be THF, as disclosed by Nagai, as well as cyclopentane, or methylcyclohexane, also as recited in claim 5. In the abstract and paragraphs 79, 107, 131, 152, and 155 Kezirian indicates that methane clathrate hydrates can be formed selectively. Natural gas comprises methane, ethane, and propane, all as recited in claim 6.
Using the solid THF hydrates of Nagai to selectively capture methane from natural gas meets the limitations of claim 6. Since the solid THF hydrates of Nagai meet the compositional limitations of the solid hydrates used in the claimed method, and since Kezirian teaches that higher molecular weight hydrocarbons can be isolated and formed into clathrate hydrates separately, the purity of the methane captured in the small cavities of the solid THF hydrate of Kezirian will also meet the limitations of claim 7.
It would have been obvious to one of ordinary skill in the art to use the solid THF hydrates of Nagai to selectively capture methane from natural gas, since Kezirian in paragraphs 136-141 that promoters such as THF promote the formation of sII structures, which are favorable for the storage and transportation of methane.
Conclusion
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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