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 .
Responsive to correspondence
This office action is in response to correspondence filed on 10/16/2024.
Information Disclosure Statement
The information disclosure statement filed 10/16/2024 was filed before the first action on the merits. This submission is in compliance with the provisions of 37 CFR 1.97.
Accordingly, the IDS has been fully considered by the Office.
Abstract
The abstract filed 10/16/2024 appears to be acceptable.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “distributing generated hydrogen to a separate pipe” as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification fails to describe “a separate distribution pipe” and the connection of such pipe.
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.
Claim 1 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 pre-AIA the applicant regards as the invention.
Claims 1 recites the limitation " A system for generating electricity or hydrogen from natural gas". However, neither the specification nor the claim explains how and when system for generating electricity and when the system of generating hydrogen from natural gas will operate.
For this reasons, the metes and bounds of claim 1 cannot be ascertained and the claims appears to be indefinite.
The dependent claims as they inherent the defects of claim 1 are also rejected for similar reasons.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY).
Re: Claim 1:
ALSUBAITY discloses:
A system for generating electricity or hydrogen from natural gas, the system configured to be connected to a gas backbone pipe and a local gas distribution pipe (See Figs.1-2: ¶0037), comprising:
a thermal energy storage unit (See Figs.1-2: ¶0019-¶0024: heat storage unit 102) that contains a thermal energy storage material (See Figs.1-2: ¶0019-¶0024: a heat exchange medium is heated by a concentrated solar power system 101, stored in a thermal storage unit 102, as described in ¶0023), the thermal energy storage unit (See Figs.1-2: ¶0019-¶0024: heat storage unit 102) configured to receive energy from an energy source (See Figs.1-2: ¶0019-¶0024: solar power system 101) to heat the thermal energy storage material (See Figs.1-2: ¶0023);
a heat exchanger (See Figs.1-2: ¶0019-¶0024: heat exchanger 104) in fluid communication with the thermal energy storage unit (See Figs.1-2: ¶0019-¶0024: heat storage unit 102), the heat exchanger (See Figs.1-2: ¶0019-¶0024: heat exchanger 104) configured to receive a flow of natural gas (See Figs.1-2: ¶0019-¶0024: natural gas as described in ¶0037) from the gas backbone pipe (See Figs.1-2: ¶0019-¶0024: backbone pipe 106) and a heated fluid from the thermal energy storage unit (See Figs.1-2: ¶0019-¶0024: heat storage unit 102) that heats the flow of natural gas ((See Figs.1-2: ¶0019-¶0024: natural gas is heated in heat exchanger 104 within heat exchanger 104);
an expander (See Figs.1-2: ¶0019-¶0024: turboexpander 109) in fluid communication with the heat exchanger (See Figs.1-2: ¶0019-¶0024: heat exchanger 104), the expander (See Figs.1-2: ¶0019-¶0024: turboexpander 109) configured to receive a flow of heated natural gas (See Figs.1-2: ¶0019-¶0024: turboexpander 109 receives the natural gas via conduit 111) from the heat exchanger (See Figs.1-2: ¶0019-¶0024: heat exchanger 104) and configured to expand said flow of heated natural gas to cool it and reduce its pressure (See Figs.1-2: ¶0019-¶0024: these are implied functions of an expander in this instance expander 5); and
a generator (See Figs.1-2: ¶0019-¶0024: turboexpander generator 109 that uses the thermal energy of the heated produced gas 122 to produce electricity) connected to the expander (See Figs.1-2: ¶0019-¶0024: implied) and configured to generate electricity (See Figs.1-2: ¶0021: this is implied using the turboexpander generator 109 to generate electricity) from an expansion of the flow of heated natural gas by the expander.
Re: Claim 3:
ALSUBAITY discloses:
The system of Claim 1, wherein the energy source is a renewable energy source (See Figs.1-2: ¶0019-¶0024: renewable energy source being solar energy) .
Re: Claim 5:
ALSUBAITY discloses:
The system of any of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and wherein the energy source is a concentrated solar power plant (See Figs.1-2: ¶0019-¶0024: renewable energy source being solar energy power system 101).
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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Patent number 5715673 A to BEICHEL (BEICHEL).
Re: Claim 2:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, the recitations of claim 2 are merely an intended use of a power plant of claim 1 such that the discloses the thermal energy storage unit, heat exchanger, expander and generator are part of a standalone transportable unit, further as regards these recitations wherein the disclosed power plant system pertains merely as an intended use of the power plant as standalone transportable unit which is an art known subject matter, since it is well known in the art that power plants can be scaled to a portable applications as described by U.S Patent number 5715673 to BEICHEL (BEICHEL: abstract). 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. (See MPEP 2114 II).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Publication number 2014/0070544 A1 BRONICKI (BRONICKI).
Re: Claim 4:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and that wherein the energy source is a parabolic solar plant (See Figs.1-2: ¶0027-¶0030), although ALSUBAITY is silent regarding photovoltaic plant. However, it is well known in the art that that photovoltaic cells or panels are used in power plants for obtaining concentrated solar power, such a system is explicitly taught by U.S Publication number 2014/0070544 A1 BRONICKI (BRONICKI: ¶0026), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to employ photovoltaic solar panels since these produce a substantially uniform electrical output.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Publication number 2010/0252028 A1 to MIERISCH et al. (MIERISCH).
Re: Claim 7:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and thermal energy storage material , ALSUBAITY is silent regarding:
wherein the thermal energy storage material is water.
However, using water as thermal storage medium is well known in the art, such a system is explicitly taught by U.S Publication number 2010/0252028 A1 to MIERISCH et al. (MIERISCH: ¶ 0029: discloses water, oil, molten salt, sand etc. may be used as thermal storage medium), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to employ water as thermal storage medium as one of the design option depending on the system requirement which would have yielded predictable results.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Publication number 2022/0228271 A1 to ASHOK et al. (ASHOK).
Re: Claims 9-11:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and thermal energy storage material, ALSUBAITY is silent regarding:
wherein the thermal energy storage material comprises a solid material or wherein the thermal energy storage material comprises rocks (as claimed in claim 10), wherein the thermal energy storage material comprises packed gravel (as claimed in claim11).
However, using water as thermal storage medium is well known in the art, such a system is explicitly taught by U.S Publication number 2022/0228271 A1 to ASHOK et al. (ASHOK: ¶ 0024: ceramics, concrete, sinter, stone which is merely a part of rock and crushed stones is a gravel as claimed in claim 11, may be used as thermal storage medium), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to employ solid material as thermal storage medium as one of the design option depending which is one of the efficient heat storage medium to impart thermal energy proficiently.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Publication number 2022/0178278 A1 to HUNTINGTON et al. (HUNTINGTON).
Re: Claims 12:
ALSUBAITY discloses:
The system of any of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and wherein the expander comprises a first expander (See Figs.1-2: ¶0019-¶0024: turboexpander 109) ALSUBAITY is silent regarding: a second expander.
However, employing a second expander is well known in the art, such a system is explicitly taught by U.S Publication number 2022/0178278 A1 to HUNTINGTON et al. (HUNTINGTON: See Fig. 1: discloses second L.P expander), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to position a second low pressure natural gas expander to recover additional heat and additional power by using low-pressure turboexpander.
Re: Claims 13:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and wherein the heat exchanger comprises a first heat exchanger (ALSUBAITY: See Figs.1-2: heat exchanger 104) between the gas backbone pipe and a first expander (ALSUBAITY: See Figs.1-2: turboexpander 109) and ALSUBAITY is silent regarding:
a second heat exchanger between the first expander and a second expander.
However, employing a second heat exchanger between first expander and a second expander is well known in the art, such a system is explicitly taught by U.S Publication number 2022/0178278 A1 to HUNTINGTON et al. (HUNTINGTON: See Figs. 1-7: discloses second heat exchanger E107), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to position a second heat exchanger between low pressure expander and high pressure expander as one of the design options depending on the system requirement to optimize heating the working fluid to extract additional power from turboexpanders.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S Publication number 2023/0313784 A1 to ALSUBAITY (ALSUBAITY) as applied to claim 1 above, and further in view of U.S Publication number 2022/0090539 A1 to KRISHNAMURTHY et al. (KRISHNAMURTHY).
Re: Claims 14:
ALSUBAITY discloses:
The system of Claim 1, ALSUBAITY discloses all the limitations of claim 1, and generating electricity , ALSUBAITY is silent regarding:
further comprising an electrolyzer configured to receive the generated electricity from a generator to generate hydrogen.
However, using an electricity generated by a power plant in an electrolyzer is well known in the art, such a system is explicitly taught by U.S Publication number 2022/0090539 A1 to KRISHNAMURTHY et al. (KRISHNAMURTHY: See Fig. 2: ¶0027: discloses natural gas power plant 1, delivering electric power to electrolyzer 5 utilizes to generate hydrogen H2), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to employ electricity generated by power plant of ALSUBAITY for operating an electrolyzer as one of the options to utilize the generated electricity which would have yielded advantages of cost effectiveness.
Re: Claims 15:
ALSUBAITY modified by KRISHNAMURTHY discloses:
The system of Claim 14, modified ALSUBAITY discloses all the limitations of claim 14, and wherein the generated hydrogen is injected into the local gas distribution pipe (the local distribution pipe emerging vertically downward from electrolyzer 5 carrying H2), furthermore this is merely an intended use of generated hydrogen by injecting into a local gas pipe for distribution. 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. (See MPEP 2114 II).
Re: Claims 16:
ALSUBAITY modified by KRISHNAMURTHY discloses:
The system of Claim 14, modified ALSUBAITY discloses all the limitations of claim 14, wherein the generated hydrogen is injected into a pipe (the local distribution pipe extending horizontally from vertically downward pipe via compression unit 6 or upward via hydrogen storage tank 7 carrying H2) separate from the local gas distribution pipe (the local distribution pipe emerging vertically downward from electrolyzer 5 carrying H2), furthermore this is merely an intend use of generated hydrogen by injecting into a pipe separate from the local gas distribution pipe. 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. (See MPEP 2114 II).
The method claims 18-23 have been rejected as follows:
Regarding method claims 18-20 , ALSUBAITY discloses all the limitations of method claims 18-20 (See rejection of claim 1 above).
Regarding method claim 21 ALSUBAITY modified by HUNTINGTON discloses all the limitations of method claim 21 (ALSUBAITY: ¶0032).
Regarding method claim 22 ALSUBAITY modified by NOCCOINI combined with the reasons stated under rejection of claim 14 discloses all the limitations of method claim 22.
Regarding method claim 23 ALSUBAITY combined with the reasons stated under rejection of claim 15 discloses all the limitations of method claim 23.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAFIQ A MIAN whose telephone number is (571)272-4925. The examiner can normally be reached 8:30 am to 6:30 pm (Monday thru Thursday).
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/SHAFIQ MIAN/Primary Examiner, Art Unit 3746
September 29, 2025