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 .
Summary
This is the initial Office action based on application 19055548 filed 2/18/25.
Claims 1-20 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 2/18/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Drawings
The Drawings filed on 2/18/25 are acknowledged and accepted by the examiner.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
Claim Objection
The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
Therefore correction of claims 1-10 and 12-20, wherein the word “Claim” should be lower case “c”.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over CHISHIMA (US PG PUB 20210292667) in view of SEVERINSKY (WO2006099573A1; 9/21/2006), and KANEKO ET AL. (US PG PUB 20020087037) in their entirety. Hereby referred to as CHISHIMA, SEVERINSKY and KANEKO.
Regarding claims 1-20:
CHISHIMA teaches in para [0009] (1) A fuel production system (e.g., a fuel production system 1 described later) according to the present invention is for producing a liquid fuel from biomass feedstock and includes n gasification unit (e.g., a gasification unit 3 described later) including a gasification furnace (e.g., a gasification furnace 30 described later) that, gasifies biomass feedstock to produce a syngas including hydrogen and carbon monoxide; a liquid fuel production unit (e.g., a liquid fuel production unit 4 described later) that produces a liquid fuel from the syngas produced by the gasification unit
CHISHIMA teaches in para [0008] It is an object of the present invention to provide a fuel production system capable of continuously producing a liquid fuel with no significant increase in the carbon dioxide emission intensity of the liquid fuel oven when only a small amount of hydrogen remains in its hydrogen tank.
CHISHIMA teaches in para [0038] The liquid fuel production unit 4 may include a Fischer-Tropsch (FT) synthesis unit to produce a liquid fuel, such as methanol or gasoline, front the syngas with the H2/CO ratio adjusted to a predetermined ratio in the gasification unit 3.
CHISHIMA teaches in claim 1 a fuel production system for producing a liquid fuel from biomass feedstock, comprising: a gasification unit comprising a gasification furnace that gasifies biomass feedstock to produce a syngas comprising hydrogen and carbon monoxide; a liquid fuel production unit that produces a liquid fuel from the syngas produced by the gasification unit; an electrolysis unit that is connected to a first electric power source that supplies electric power generated using renewable energy and connected to a second electric power source that, supplies electric power with a carbon dioxide emission intensity higher than that of the electric power from the first electric power source and produces hydrogen from water using electric power; a hydrogen tank that stores the hydrogen produced by the electrolyte unit; a remaining hydrogen amount determining section that determines an amount of hydrogen remaining in the hydrogen tank; a hydrogen supply unit that supplies the hydrogen from the hydrogen tank to the gasification unit; a power index determining section that determines a power index that increases and decreases depending on the carbon dioxide emission intensity of the electric power supplied from the second electric power source; and a control unit, wherein when the remaining amount of hydrogen is smaller than a predetermined amount, the control unit causes the electric power to be supplied from the first and second electric power sources to the electrolysis unit for production of hydrogen and controls, based on the power index, the amount of hydrogen supplied by the hydrogen supply unit and the amount of second electric power supplied from the second electric power source to the electrolysis unit.
CHISHIMA does not teach .01-.03 ratio but it is within the scope of a skilled artisan to optimize/adjust the ratios as taught by SEVERINSKY.
SEVERINSKY teaches on pg 15 ln 14-19, another advantage is the degree of control available to plant operators to alter the ratio of hydrocarbon compounds produced by adjusting particular parameters of the methods and system, for example, the ratio of carbon monoxide and hydrogen fed to particular FT reactors. By varying the amounts of syngas fed to different types of FT reactors, it is possible to achieve different output ratios of diesel fuel, gasoline, jet fuel, and other fuels out of the total amount of syngas input.
CHISHIMA does not teach the gasification process temperatures but it is within the scope of CHISHIMA as taught by KANEKO.
KANEKO teaches in para [0011] accordingly, in a first aspect of the present invention, there is provided a method for producing methanol making use of biomass material comprising gasifying biomass to produce a gas; and supplying hydrogen gas to the produced gas, to thereby produce methanol. [0055] The temperature of gasifying the biomass 1 in the gasification furnace 14 is preferably 700-1400 C.
Therefore, from the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that adding duplicate / repeating process steps or recognizing additional instrumentation for analysis or additional analysis would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
Further, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Additionally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
Still, 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Additionally, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). In In re Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable
In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicants have recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
