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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a method for producing hydrocarbons, classified in C07C1/20.
II. Claims 18-20, drawn to a composition comprising hydrocarbons, classified in C07C11/02.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, such as a process comprising cracking of hydrocarbons to olefins.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification; the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Richard Timmer on 15 July 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 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).
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. A reminder also that in nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56 (MPEP 609). Thus, if any of the references listed in the specification are material to patentability, they must be submitted on a proper IDS and a copy of each reference must be provided to the Office.
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.
Claims 14 and 15 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.
With regard to claims 14 and 15, the claims recite “wherein the at least one hydrocarbon compound comprises a C1-C4 alcohol” and “wherein the at least one hydrocarbon compound comprises a higher alcohol”, respectively. An alcohol is not a hydrocarbon compound as typically understood in the art, as hydrocarbons are generally considered to consist only of hydrogen and carbon atoms. Applicant is allowed to be their own lexicographer and use terms contrary to their accepted meaning, but only when a term is clearly re-defined in the instant specification (see MPEP 2173.05(a)III). While the instant specification recites “hydrocarbon compounds (e.g. olefins, alcohols, and fuels)” (paragraph [0003]), thus exemplifying alcohols as a hydrocarbon, the use of “e.g.” does not fully define the term “hydrocarbon”. One of ordinary skill in the art is not clear as to the extent of the term “hydrocarbon” as used by Applicant, as it is not clear if the term “hydrocarbon” only includes the listed compounds of alcohols, olefins, and fuels, if the term includes other conventional hydrocarbons such as paraffins as typically understood in the art, or if the term can further include other heteroatom containing compounds like esters. As such the term “hydrocarbon” has not been clearly redefined, and an indefinite rejection is appropriate.
For purposes of examination, the paragraph [0003] of the instant specification recites “hydrocarbon compounds (e.g. olefins, alcohols, and fuels)”, thus exemplifying alcohols as a hydrocarbon. Thus, the product in claim 14 is interpreted as only requiring at least one C1-C4 alcohol and the product in claim 15 is interpreted as only requiring at least one higher alcohol.
Claim Rejections - 35 USC § 103
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over O’Connor et al. (US 2014/0000157) in view of Marshall et al. (US 5,191,142).
With regard to claims 1 and 3-7, O’Connor teaches a method comprising the following steps:
a) concurrently flowing a gas stream comprising carbon dioxide and a gas stream comprising hydrogen over a catalyst composition (paragraphs [0013]-[0015] and [0039]).
O’Connor does not teach that the gas streams are mixed prior to the flowing. However, it would have been obvious to one of ordinary skill in the art at the time of the invention mix the streams prior to the flowing, as claimed, because each of O’Connor and the claimed process perform the same reaction of gaseous CO2 with gaseous H2 over a catalyst to produce methanol, absent any evidence of criticality of the mixing.
O’Connor further teaches that the catalyst composition comprises Cu/ZnO on an alumina support (paragraph [0034]), where the Cu and ZnO are preferably in nano-particulate form (claimed first metallic nanoparticle and second metallic nanoparticle) (paragraph [0035]).
b) supplying energy to the catalyst composition (paragraph [0016]), where energy is supplied by heating the catalyst to 200-750°C (claimed first target temperature) (paragraph [0043]) by microwave energy (paragraph [0044]). This temperature is within the range of greater than about 160°C of instant claim 5 and overlaps the ranges of about 160 to about 500°C and about 160 to about 400°C of instant claims 6 and 7, respectively, rendering the ranges prima facie obvious. O’Connor further teaches that the products of the reaction are gaseous and include methanol (paragraphs [0057]-[0058]). O’Connor additionally teaches the methanol can be converted to hydrocarbons for use as a fuel (paragraph [0019]).
O’Connor fails to teach converting the gaseous methanol to at least one hydrocarbon by reacting over a molecular sieve catalyst which has been heated to a second target temperature.
Marshall teaches a process for converting methanol to olefins or gasoline (Abstract) comprising the following steps:
a) contacting a gaseous reaction mixture comprising methanol with a solid acid catalyst in a reaction zone (Abstract) where the solid acid catalyst is ZSM-5 (claimed zeolitic molecular sieve which is ZSM-5 instant claims 1, 3 and 4) (column 12, claim 8).
b) heating the reaction zone comprising the catalyst to a temperature (claimed second target temperature) of about 600 to about 900°F (about 316 to about 482°C) (column 2, lines 33-34) to produce C3-C12 gasoline components (claimed at least one hydrocarbon) (column 5, lines 24-25).
Marshall further teaches that the presence of methanol throughout the reaction greatly enhances catalyst life and activity and increases catalyst selectivity for valuable olefin and gasoline products (column 1, lines 56-60).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the process of Marshall to produce the fuel from the methanol of O’Connor, because O’Connor teaches a process which produces gaseous methanol and teaches converting the methanol to a fuel but is silent regarding the specific process steps, Marshall teaches that gaseous methanol can be converted to a product including gasoline (fuel), and Marshall further teaches that the presence of methanol greatly enhances catalyst life and activity and increases catalyst selectivity for valuable olefin and gasoline products (column 1, lines 56-60).
With regard to claim 2, O’Connor teaches that the process is 5 to 200 bar (paragraph [0043]) and Marshall teaches that the pressure is atmospheric pressure (about 1.01 bar) (column 2, line 35). Both pressure ranges overlap the claimed range of about 1 bar to about 100 bar for the pressure of the whole method including both reaction steps, rendering the range prima facie obvious.
With regard to claims 8 and 9, the temperature of Marshall of about 600 to about 900°F (about 316 to about 482°C) (claimed second target temperature) (column 2, lines 33-34) overlaps the ranges of about 380 to about 500°C and about 400 to about 500°C of instant claims 8 and 9, respectively, rendering the ranges prima facie obvious.
With regard to claim 10, O’Connor does not specifically teach the volume ratio of CO2 to H2. However, the ratio of the CO2 to H2 at least partially determines the amount of methanol produced in the reaction, as both parts are reactants in the process. Thus, the ratio of CO2 to H2 is a result-effective variable, and can be optimized. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the ratio of CO2 to H2 to be about 1:10 to about 1:1, as claimed, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05(II)
With regard to claims 11 and 12, Marshall teaches the product further comprises C2-C3 olefins (claimed olefins which are light olefins) (column 5, line 17).
With regard to claims 13, 16, and 17, Marshall teaches the product comprising C3-C12 gasoline components above (column 5, lines 24-25). The C3-C12 gasoline components are equivalent to the claimed C5-C25 hydrocarbon of instant claim 13 and the claimed hydrocarbon fuel which is gasoline of instant claims 16 and 17.
With regard to claim 14, Marshall teaches that the reaction of methanol is not quite 100% conversion, only being 96.7% (Example 2, Table 4). Thus, the product of Marshall includes unreacted methanol (C1 alcohol), as claimed.
With regard to claim 15, Marshall does not specifically teach that the product includes any higher alcohols, which are defined as C5+ alcohols in the instant specification, paragraph [0046]). However, O’Connor in view of Marshall teaches the same step of conversion of a CO2 and H2 feed over the same nanoparticle containing catalyst at similar conditions followed by the same step of conversion of methanol over the same ZSM-5 catalyst at similar conditions (see above). Therefore, one of ordinary skill in the art would reasonably conclude that the product of O’Connor in view of Marshall would be similar to the claimed product, including a higher alcohol, as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA L CEPLUCH whose telephone number is (571)270-5752. The examiner can normally be reached M-F, 8:30 am-5 pm, 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, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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