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 .
Claims 9-11 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.
Claim 9 recites line 11 “separating said streams” which is considered indefinite as it is unclear which streams are being referred to. For the purpose of examination, this limitation is understood to be referring to the expanded first and second cold refrigerant streams.
Claim 11 repeats the entirety of claim 9 almost exactly except for the presence of “the second expanded refrigerant stream” which renders the claim indefinite as it is unclear as the repeated limitations in the claim make it unclear what is required of the claim. Further, cooling the first portion of the refrigerant and second portion are already claimed to be against these streams and claim 10 recites that the first portion of the compressed refrigerant is cooled against both expanded stream which makes it further unclear what is required. For the purpose of examination, this limitation is understood to only add that the cooling in step (e) is also done to the second portion of the compressed refrigerant by the second expanded refrigerant stream.
Claim 11 recites line 11 “separating said streams” which is considered indefinite as it is unclear which streams are being referred to. For the purpose of examination, this limitation is understood to be referring to the expanded first and second cold refrigerant streams.
Claims 10 and 12 are rejected as being dependent upon a rejected claim.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12366408. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are entirely encompassed by the allowed claims as follows which can be shown below where the present claim is rejected in view of the corresponding allowed claim:
Present Claim Allowed Claim
1
2
3
4
5
6
7
8
1
9
9
13 11
14 12
15 13
16 14
17 15
18 16
19 17
20 18
Claim 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12366408 and further in view of Baudat (US PG Pub 20050217314).
Baudat teaches that a compressor (132, paragraph 45) can be driven by an expander (141, paragraph 72) later in the system which is used to produce a stream that is used for refrigeration (paragraph 77).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed in the allowed claim to have had the expander used to expand the second cold refrigerant stream be used to provide energy for driving the compressor for natural gas vapor (thus forming a compander) since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge in the art that a reduction in power required for a liquefaction can be achieved by driving a compressor within the system using an expander also within the system.
Allowable Subject Matter
Claims 1-20 would be allowable if the rejections for double patenting and 35 USC 112(b) to claims 9-12 were resolved.
The following is a statement of reasons for the indication of allowable subject matter: the claims are considered to contain allowable subject matter as they contain the same subject matter as the allowed patent from which the double patenting is drawn. The specific reasons can be seen below:
the combination of “compressing the resulting warmed streams, and combining said streams” as along with “cooling at least a first portion of the compressed refrigerant”, “expanding the first cold refrigerant stream and separating the resulting expanded first cold refrigerant stream to form a first liquefied natural gas stream for the liquid phase and the first expanded refrigerant stream from the vapor phase” in claim 1 is considered novel and non-obvious in view of the closest prior art. Mak et al. (US PG Pub 20200141639) Figure 2 teaches recompression (80) and separating the produced warmed natural gas stream (11 as 62) and then using the liquid portion as reflux (65) where the overhead portion is combined with an expanded stream (61) but it is not the same expanded stream as in the claims. Anguiano (US PG Pub 20200292230) provides substantially the same limitations (Figure 3) and lacks the same teaching as above. Mak et al. (US PG pub 20210095921) Figure 1 also teaches using a recycle step of a portion of a vapor phase and teaches mixing a portion of a recycle stream (29) with non-recycle stream (4) but it is not the same streams as in the claimed invention. Mak (US PG Pub 20190154333) provides substantially the same limitations as the above prior art but lacks the same teaching. As such, the claims are considered to contain allowable subject matter that is non-obvious and novel in view of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M KING whose telephone number is (571)272-2816. The examiner can normally be reached Monday - Friday, 0800-1700.
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/BRIAN M KING/Primary Examiner, Art Unit 3763
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