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 .
Claim Interpretation
Claims directed to an apparatus must be distinguished from the prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) (emphasis in original). Likewise, the “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937 (CCPA 1963).
It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). 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).
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 6-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harale (US 2021/0163832).
With respect to claims 1-4 and 6-15, Harale discloses a method comprising: collecting a hydrogen-rich gas stream generated as a byproduct of a petrochemical operation at a petrochemical plant; purifying the hydrogen-rich gas stream to produce a purified hydrogen gas stream; supplying the purified hydrogen gas stream to a hydrotreatment or hydrocracking unit at a refinery; collecting an ethane-rich gas stream generated as a byproduct of a refinery operation at a refinery; and supplying the ethane-rich gas stream to an ethane steam cracker at the petrochemical plant to produce ethylene (see Harale, Fig. 1; and paragraphs [0025], [0030], [0034], and [0046]). Harale necessarily discloses all of the apparatus components necessary to carry out the disclosed method as just described (see Harale, Fig. 1 and accompanying text). Moreover, with respect to claims 10, 12, 14, and 15, the claims do not structurally distinguish the claimed apparatus from that of Harale (see discussion supra at paragraphs 2 and 3). Finally, inasmuch as Harale discloses the same method carried out by the same apparatus components as claimed, then it follows that carrying out of such method by such apparatus components would necessarily (inherently) result in the same recited functional limitations of reduced hydrogen demand load, reduced natural gas consumption, and reduced carbon dioxide emission.
Claims 1-4 and 6-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oprins (EP 3110926 B1).
With respect to claims 1-4 and 6-15, Oprins discloses a method comprising: collecting a hydrogen-rich gas stream generated as a byproduct of a petrochemical operation at a petrochemical plant; purifying the hydrogen-rich gas stream to produce a purified hydrogen gas stream; supplying the purified hydrogen gas stream to a hydrotreatment or hydrocracking unit at a refinery; collecting an ethane-rich gas stream generated as a byproduct of a refinery operation at a refinery; and supplying the ethane-rich gas stream to an ethane steam cracker at the petrochemical plant to produce ethylene (see Oprins, Fig. 1; and paragraphs [0034]-[0041]). Oprins necessarily discloses all of the apparatus components necessary to carry out the disclosed method as just described (see Oprins, Fig. 1 and accompanying text). Moreover, with respect to claims 10, 12, 14, and 15, the claims do not structurally distinguish the claimed apparatus from that of Oprins (see discussion supra at paragraphs 2 and 3). Finally, inasmuch as Oprins discloses the same method carried out by the same apparatus components as claimed, then it follows that carrying out of such method by such apparatus components would necessarily (inherently) result in the same recited functional limitations of reduced hydrogen demand load, reduced natural gas consumption, and reduced carbon dioxide emission.
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.
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.
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.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Harale (US 2021/0163832).
With respect to claims 3 and 5, see discussion supra at paragraph 6. Harale discloses wherein the hydrogen stream may be a combined hydrogen stream with a purity of 95 vol % or higher (see Harale, paragraphs [0025] and [0026]).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Oprins (EP 3110926 B1).
With respect to claims 3 and 5, see discussion supra at paragraph 6. Oprins suggests wherein the hydrogen stream may be a combined hydrogen stream with a purity of 99.9% or higher (see Oprins, paragraph [0041]) (noting that a “major portion” of the required hydrogen may be a recycle constituent).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Randy Boyer/
Primary Examiner, Art Unit 1771
