DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Application Status
This office action is in response to amendments/arguments filed on December 11, 2025. Applicant has amended Claims 2 – 4, 9, 10, 12, and 13, and added Claim 18. Claims 2 – 18 are currently pending.
Response to Arguments
Applicant’s arguments have been fully considered.
Previous claim objections are withdrawn due to applicant’s amendment.
With regards to previous 112f interpretations, 112f interpretation of energy recovery system is withdrawn due to sufficient structure recited (i.e. expander, heat exchanger, organic Rankine cycle). 112f interpretation of fluid storage system stands. The standard in Williamson is the “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” The words fluid storage system do not have sufficiently definite meaning a the name for any structure.
Previous double patenting rejections stand. The amendments applicant made to independent claim 2 include language/elements that are already present in the claim language of the issued patents in the double patenting rejection. In the case of the double patenting rejection over US 12110812, the Kim reference is added as a teaching reference to teach newly added features of the independent claims.
Previous 112b rejections are withdrawn due to applicant’s amendment. New 112b rejections are presented below, necessitated by amendment.
With regards to prior art rejections, applicant amended the independent claim to recite an organic Rankine cycle, arguing that Westmeier teaches the use of a carbon dioxide working fluid in their Rankine cycle, and Westmeier teaches away from an ORC system using an organic fluid. Examiner respectfully disagrees with applicant’s conclusion on teaching away. As per MPEP 2145, something does not “become patentable simply because it has been described as somewhat inferior to some other product for the same use”. Furthermore, as per MPEP 2145, “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed”. While Westmeier expresses a preference for carbon dioxide and lists some advantages, Westmeier does not criticize, discredit or otherwise discourage investigation into use of an organic fluid via an ORC. One of ordinary skill in the art, recognizing that both carbon dioxide and organic fluids are known to be used in Rankine cycles, would investigate the use of both and reasonably use one or the other. Applicant further argues that the heat exchanger 12 of Westmeier uses a plurality of fluids and that prevents teaching of the feature that the generated electrical energy is based on a temperature differential between the waste heat and the received combustible fluid. Examiner respectfully disagrees. There is no requirement that the electrical energy is based solely on this temperature difference. Westmeier clearly teaches in Paragraph 39 that the heat exchanger 12 uses the natural gas after the pressure reduction in expanders 14 as one source of cooling. As such, the energy generated is at least partially based on the temperature differential recited. The previous art rejections are modified below to incorporate the Ouvry reference, which teaches an ORC.
Claim Interpretations Under 35 USC § 112
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
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.
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.
Similarly, an application may include 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.
The following Claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Claim 2: a fluid storage system – read as “a system (generic placeholder) for storing fluid (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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 of US 11643949. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the comparative table below:
Claim 2 of Instant Application
Claim 8 of US 11643949
An energy generation system comprising:
a fluid storage system configured to store a combustible fluid at a first pressure and first temperature; and
an energy recovery system configured to receive the combustible fluid via an expander and a heat exchanger, wherein the received combustible fluid is at a second pressure that is lower than the first pressure and a second temperature that is lower than the first temperature, the energy recovery system configured to generate energy from the received combustible fluid by causing the combustion of the received combustible fluid to generate a first electrical energy and waste heat, and by generating a second electrical energy using an organic Rankine cycle (ORC) based on a temperature differential between the waste heat and the received combustible fluid..
An energy generation system comprising: a pump configured to move a combustible fluid from a combustible fluid source to a fluid storage system; the fluid storage system including a compressor, a first set of one or more storage tanks, and a second set of one or more storage tanks, wherein the pump is configured to move the combustible fluid to the fluid storage system for storage in the first set of one or more storage tanks at a first pressure, and the compressor is configured to pressurize the combustible fluid from the combustible fluid source for storage in the second set of one or more storage tanks, wherein the compressor is configured to pressurize the combustible fluid from the first set of one or more storage tanks to at least one second pressure for storage in the second set of one or more storage tanks; and an energy recovery system configured to receive the combustible fluid from the second set of one or more storage tanks, the energy recovery system including: a turboexpander configured to depressurize the combustible fluid received from the second set of one or more storage tanks; a motor-generator configured to input the combustible fluid as depressurized by the turboexpander, and generate electrical energy from the combustible fluid; and an organic Rankine cycle (ORC) system configured to generate electrical energy based on a temperature differential between the combustible fluid input to the motor-generator and a waste heat produced by the motor-generator;
wherein the ORC system is configured to use a working fluid that cycles between different temperatures to produce electrical energy, and the energy generation system further includes a cold-side heat exchanger configured to transfer heat from the working fluid to the combustible fluid input to the motor-generator.
As seen above, the present Claim 2 is broader than Claim 8 of the US Patent and every limitation is anticipated and recited by Claim 8 of the US Patent (as underlined). The combustible fluid inherently comprises some first pressure and first temperature, and is cooled and expanded via the heat exchanger and expander to yield the recited second pressure and temperature.
Although no comparative table is shown, all other pending claims are also rejected over Claim 8 of the US Patent, or additionally over one of the prior art references relied on below.
Claims 2 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 of US 12110812 in view of Kim (KR 2020-0110719). Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the comparative table below:
Claim 2 of Instant Application
Claim 13 of US 12110812
An energy generation system comprising:
a fluid storage system configured to store a combustible fluid at a first pressure and first temperature; and
an energy recovery system configured to receive the combustible fluid via an expander and a heat exchanger, wherein the received combustible fluid is at a second pressure that is lower than the first pressure and a second temperature that is lower than the first temperature, the energy recovery system configured to generate energy from the received combustible fluid by causing the combustion of the received combustible fluid to generate a first electrical energy and waste heat, and by generating a second electrical energy using an organic Rankine cycle (ORC) based on a temperature differential between the waste heat and the received combustible fluid..
An energy generation system comprising: a pump configured to move a combustible fluid from a combustible fluid source to a fluid storage system; the fluid storage system comprising: a compressor, a first set of one or more storage tanks, wherein the first set of one or more storage tanks are configured to receive the combustible fluid from the pump and store the combustible fluid at a first pressure, and a second set of one or more storage tanks, wherein the compressor is configured to pressurize the combustible fluid from the first set of one or more storage tanks to at least one second pressure for storage in the second set of one or more storage tanks; and an energy recovery system configured to receive the combustible fluid from the second set of one or more storage tanks, the energy recovery system including: an expander configured to produce depressurized combustible fluid by depressurizing the combustible fluid received from the second set of one or more storage tanks, and a motor-generator configured to receive the depressurized combustible fluid and generate electrical energy from the depressurized combustible fluid;
wherein the energy recovery system further includes a heat exchanger configured to transfer heat between the combustible fluid and a working fluid;
wherein the heat exchanger is located downstream from the expander and the heat exchanger is configured to receive depressurized combustible fluid from the expander and transfer heat between the depressurized combustible fluid and the working fluid.
As seen above, the present Claim 2 is broader than Claim 12 of the US Patent and every limitation is anticipated and recited by Claim 12 of the US Patent (as underlined). The combustible fluid inherently comprises some first pressure and first temperature, and is cooled and expanded via the heat exchanger and expander to yield the recited second pressure and temperature.
While the US Patent does not recite an organic Rankine cycle, based on the language used in the US Patent, one of ordinary skill would have found it obvious to include an ORC and that the recited heat exchanger is part of an ORC. Kim (Figure 2) teaches a fluid storage (300) of a combustible fluid (LNG), and an energy recovery system (ORC comprising expander 103, condenser 501, pump 205, and evaporator 504) that generates electrical energy (via generator 101) based on a temperature differential between the combustible fluid (at condenser 501) and a waste heat generated by combusting the combustible fluid (exhaust from gas turbine 401). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, the US Patent already includes a heat exchanger receiving the combustible fluid and transferring heat between the fluid and a working fluid, and the addition of the other components of an ORC system would have been obvious in order to improve the efficiency of the overall system by utilizing additional waste heat and temperature differences to generate more electricity.
Although no comparative table is shown, all other pending claims are also rejected over Claim 13 of the US Patent in view of Kim, or additionally over one of the prior art references relied on below.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 9 recites a second temperature. The metes and bounds of the claim are unascertainable because a second temperature was already introduced in Claim 2, making it unclear whether Claim 9 refers to another temperature. The claim will be interpreted as reciting the second temperature.
Claim 10 recites the third temperature. The metes and bounds of the claim are unascertainable because the third temperature lacks antecedent basis and was not previously introduced, making it unclear which third temperature is being referred to. The claim will be interpreted as reciting a third temperature.
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 of this title, 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 2 – 4, 7 – 12, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Westmeier (US 2010/0101231) in view of Ouvry (US 2016/0248299).
With regards to Claim 2:
Westmeier discloses an energy generation system (Figure 1) comprising:
a fluid storage system (natural gas storage 1) configured to store a combustible fluid (natural gas, Paragraph 37) at a first pressure and first temperature (inherently at some pressure and temperature); and
an energy recovery system (Rankine cycle comprising expander 10, cooler/condenser 12, pump 13, evaporator 9, and gas turbine 7) configured to receive the combustible fluid via an expander (expander 14a) and a heat exchanger (cooler 12), wherein the received combustible fluid is at a second pressure that is lower than the first pressure and a second temperature that is lower than the first temperature (natural gas exiting storage 1 is immediately expanded in expander 14a, which lowers both the pressure and temperature of the fluid being received by cooler 12 – alternatively, expanders 14a, 14b both cool the combustible fluid upstream of a gas turbine 7), the energy recovery system configured to generate energy from the received combustible fluid by causing the combustion of the received combustible fluid (at gas turbine 7, see Paragraph 39) to generate a first electrical energy (see unlabeled generator connected to gas turbine 7) and waste heat (exhaust gas stream leaving gas turbine 7, see Paragraph 39), and by generating a second electrical energy (using generator 11) using an Rankine cycle ((Rankine cycle comprising expander 10, cooler 12, pump 13, evaporator 9) based on a temperature differential between the waste heat (at evaporator 9) and the received combustible fluid (at cooler/condenser 12).
Westmeier does not explicitly disclose the Rankine cycle is an organic Rankine cycle using an organic fluid, instead teaching the use of carbon dioxide as a working fluid. However, both organic fluids and carbon dioxide are known to be used in Rankine cycles. Ouvry teaches a Rankine cycle (circuit 4, Figure 1) that can use fluids such as “hydrofluorocarbons (HFC), perfluorocarbons (PFC) or perfluorated hydrocarbons, hydrocarbons or organic compounds which are not part of the previously cited categories, inorganic compounds such as ammonia or CO.sub.2, or mixtures thereof” (Paragraph 15) and that “[t]he working fluid used in the circuit 4, as well as in the circuit connecting the hot source 2 and the element 7, is a refrigerant fluid, for example R410A or CO.sub.2, without these two examples being limitative” (Paragraph 76 – with R410A being a known organic fluid). In other words, organic working fluids and carbon dioxide are known substitutes for each other as working fluids in Rankine cycles. One known advantage of organic working fluids over carbon dioxide is that CO2 requires supercritical pressure ranges and components in the Rankine cycle to accommodate these high pressures. As such, there is greater parasitic loss in operating the pump in a carbon dioxide based Rankine cycle, leading to organic working fluids have higher net power output then CO2 counterparts, and increased costs in materials of other components to accommodate the high pressures. MPEP 2143B teaches it is obvious to substitute known elements for one another in order to yield predictable results. Given the above, one of ordinary skill in the art would have found it obvious to modify Westmeier to use an organic working fluid in order to yield the predictable result/benefits described above.
With regards to Claim 3:
The Westmeier modification of Claim 2 teaches the expander is a turboexpander (expander 14a, Figure 1 of Westmeier, depicted as a turbine) configured to: receive the combustible fluid from the fluid storage system (as shown in Figure 1 of Westmeier); and depressurize the received combustible fluid and generate a third electrical energy from depressurization of the combustible fluid (see unlabeled generator attached to expanders 14a, 14b in Figure 1 of Westmeier).
With regards to Claim 4:
The Westmeier modification of Claim 2 teaches the turboexpander comprises an expansion turbine (expanders 14a, 14b, Figure 1 of Westmeier) configured to utilize the combustible fluid received from the fluid storage system to rotate a turbine shaft (see unlabeled shaft in Figure 1 of Westmeier, upon which expanders 14a, 14b rotate), the turbine shaft coupled to an electrical generator operable to convert a rotational motion of the turbine shaft to electrical energy. (expander 14a is connected to an unlabeled generator, as shown in Figure 1).
With regards to Claim 7:
The Westmeier modification of Claim 2 teaches the heat exchanger is downstream from the expander (Figure 1 of Westmeier, cooler 12 is downstream of expander 14a).
With regards to Claim 8:
The Westmeier modification of Claim 2 teaches the heat exchanger is further configured to transfer heat between the combustible fluid and a working fluid (working fluid of Rankine cycle comprising expander 10, cooler 12, pump 13, evaporator 9, see Figure 1 of Westmeier and Paragraph 39).
With regards to Claim 9:
The Westmeier modification of Claim 2 teaches the expander is configured to cool the combustible fluid to the second temperature (see Figure 1 of Westmeier, expander 14a is upstream of cooler 12 and expands and cools the combustible fluid to the second temperature as per Paragraph 39).
With regards to Claim 10:
The Westmeier modification of Claim 2 teaches the heat exchanger is configured to receive the combustible fluid having the second temperature from the expander and heat the combustible fluid to a third temperature (see Figure 1 of Westmeier and Paragraph 39, cooler 12 receives cooled, expanded fluid from expander 14a and heats the combustible fluid by transferring heat from the working fluid of the Rankine cycle to the combustible fluid).
With regards to Claim 11:
The Westmeier modification of Claim 2 teaches the energy recovery system includes a motor-generator (gas turbine 7, with unlabeled generator, Figure 1 of Westmeier, Paragraph 39) that is configured to use the received combustible fluid to generate the energy.
With regards to Claim 12:
The Westmeier modification of Claim 2 teaches the motor-generator includes a combustion engine (gas turbine 7 of Westmeier) configured to generate mechanical energy from combustion of the received combustible fluid and an electrical generator (unlabeled generator attached to gas turbine 7, see Figure 1 of Westmeier) configured to convert the mechanical energy to electrical energy.
With regards to Claim 18:
The Westmeier modification of Claim 2 teaches the energy recovery system includes an organic Rankine cycle (ORC) system (Rankine cycle comprising expander 10, cooler/condenser 12, pump 13, evaporator 9, operating on an organic fluid as per Ouvry) operable to generate electrical energy based on a temperature differential between the waste heat produced by the motor- generator during combustion (at evaporator 9 of Westmeier) and the received combustible fluid that is input to the motor-generator (at cooler/condenser 12 of Westmeier).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Westmeier (US 2010/0101231) in view of Ouvry (US 2016/0248299), further in view of Lissianski et al. (hereafter “Lissianski” – US 2015/0033792).
With regards to Claims 5 and 6:
The Westmeier modification of Claim 2 does not explicitly teach the expander is configured to remove impurities. Lissianski (Figure 1) teaches a natural gas expander (30) that cools the natural gas stream (32), thereby condensing it and allowing for impurities, such as CO2 and moisture (Paragraph 29) to be removed via a separator (50) prior to delivering the product natural gas. MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, it would have been obvious to one of ordinary skill in the art to modify the system of Westmeier by adding a separator downstream of turboexpander (14a) of Westmeier that further separates out any impurities prior to delivering the natural gas to the gas turbine for combustion.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Westmeier (US 2010/0101231) in view of Ouvry (US 2016/0248299), further in view of Sloan et al. (hereafter “Sloan” – US 2017/0130901).
With regards to Claim 13:
The Westmeier modification of Claim 2 does not explicitly teach the fluid storage system includes a plurality of storage tanks and the plurality of storage tanks store the combustible fluid at the first pressure and a third pressure and the third pressure is lower than the first pressure. Sloan (Figure 7) teaches a compressed natural gas storage system including plurality of storage tanks (326) and the plurality of storage tanks store the combustible fluid at the first pressure and a third pressure and the third pressure is lower than the first pressure (Paragraph 82). Storing the fluid in a plurality of tanks at different pressures allows for minimizing pressure adjustments to the natural gas before directing the gas to its end user, thereby allowing for better matching pressures to the end users specified requirements (Paragraph 4). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, it would have been obvious to one of ordinary skill in the art to modify the system of Westmeier by adding a plurality of natural gas storage tanks at different pressures in order to yield the predictable benefits described above.
Claims 14 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Westmeier (US 2010/0101231) in view of Ouvry (US 2016/0248299), further in view of Coney (US 2014/0096523).
With regards to Claim 14:
The Westmeier modification of Claim 2 does not explicitly teach control circuitry configured to control the energy recovery system in generation of the electrical energy when the energy price is above a threshold value. Coney teaches an energy storage system integrated with a gas turbine. Coney goes on to teach a controller (Figure 27A) that is configured to control the energy recovery system in generation of the electrical energy when the energy price is above a threshold value (Paragraph 104: “On the other hand, the power obtained from expansion is delivered at such times when the electricity demand is high and power prices are also high”). Although Coney teaches this using compressed air energy storage, one of ordinary skill in the art would have found it obvious to employ this same strategy in natural gas storage. It would have been obvious to one of ordinary skill in the art to modify the system of Westmeier by operating plant to run the energy recovery system with the gas turbine when the price and demand for electric is high, in order to support the grid and to maximize profit.
With regards to Claim 15:
The Westmeier modification of Claim 14 teaches the energy price is a price of electricity or natural gas (price of electricity, see Paragraphs 239, 104 of Coney).
With regards to Claim 16:
The Westmeier modification of Claim 14 teaches the threshold value is above the average energy price (Paragraph 239 and Paragraph 104 of Coney describe a “low” vs “high” price of electricity – since low and high are relative terms, they are relative to some other value, which one of ordinary skill would describe as an average).
With regards to Claim 17:
The Westmeier modification of Claim 14 teaches the control circuitry receives the energy price from a network connection that regularly publishes energy pricing information (Paragraph 232, 233 of Coney: “This control may be based upon data received from various sensors in the system, values calculated from that data, and/or information received by the controller or processor from sources such as a co-situated end user or external sources…Examples of such external information which may be received include but are not limited to, a current price of electricity, a future expected price of electricity, a current state of demand for electricity, a future state of demand for electricity, meteorological conditions, and information regarding the state of the power grid, including the existence of congestion and possible outages” – see also Paragraph 230: “For example, serial port 2777 can be used to connect the computer system to a modem 2781, which in turn connects to a wide area network such as the Internet”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Laert Dounis/
Primary Examiner, Art Unit 3746
Friday, January 16, 2026