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 .
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.
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Claim 1-6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17-22 of U.S. Patent No. 12287144. Although the claims at issue are not identical, they are not patentably distinct from each other because the allowed claims entirely encompass the present claims.
The claims are rejected as follows:
Allowed Claims Present Claim
17-22 1
17 2
18 3
19 4
20 5
22 6
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 1-6 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 1, lines 16 and 26 both recite “said cooling passage” which is considered indefinite as it is unclear if it referring to the “cooling passage” from line 3 or the “intermediate cooling passage” that is 2 lines before the first recitation above. For the purpose of examination, “said cooling passage” is understood to refer to the “cooling passage” referred to in line 3.
Claim 2 recites “that has been further cooled” which is considered indefinite as it is unclear what the second portion of primary refrigerant is further cooled with respect to. For the purpose of examination, this limitation is understood that the primary feed expansion device receives the second portion of the primary refrigerant downstream of where the first portion of the primary refrigerant is configured to be passed to the warm expander with respect to the primary refrigerant feed passage.
Claim 4 recites “that has been further cooled” which is considered indefinite as it is unclear what the second portion of primary refrigerant is further cooled with respect to. For the purpose of examination, this limitation is understood that the primary feed expansion device receives the second portion of the primary refrigerant downstream of where the first portion of the primary refrigerant is configured to be passed to the warm expander with respect to the primary refrigerant feed passage.
Claim 5 recites “that has been further cooled” which is considered indefinite as it is unclear what the second portion of primary refrigerant is further cooled with respect to. For the purpose of examination, this limitation is understood that the primary feed expansion device receives the third portion of the primary refrigerant downstream of where the first portion of the primary refrigerant is configured to be passed to the warm expander with respect to the primary refrigerant feed passage.
Claim 6, lines 19 and 29 both recite “said cooling passage” which is considered indefinite as it is unclear if it referring to the “cooling passage” from line 3 or the “intermediate cooling passage” that is 6 lines before the first recitation above. For the purpose of examination, “said cooling passage” is understood to refer to the “cooling passage” referred to in line 3.
Claim 3 is rejected as being dependent upon a rejected claim.
Claim Interpretation
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.
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.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited 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.
This application includes 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. Such claim limitation(s) is/are:
heat exchanger system in claims 1 and 6 understood to refer to one or more heat exchangers,
primary refrigerant compression system in claims 1 and 6 understood to refer to at least one compressor,
pre-cooling refrigerant compression system in claims 1 and 6 understood to refer to at least one compressor,
expansion device in claims 2-6 understood to refer to a valve or a turbine,
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.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardella et al. (US PG Pub 20180347897), hereinafter referred to as Cardella and further in view of Ishimaru et al. (US PG Pub 20140053598), hereinafter referred to as Ishimaru.
With respect to claim 1, Cardella (Figure 1) teaches a system for liquefying hydrogen gas feed comprising:
a. a heat exchanger system having a feed gas inlet configured to receive the hydrogen gas feed stream (heat exchangers 81-91, paragraphs 110, 160, where feed gas 11 feeds into heat exchanger 81, paragraph 102 would be the feed gas inlet) a product outlet (where liquid hydrogen 15, paragraph 140 is removed from 91 is a product outlet), a cooling passage in fluid communication with the feed gas inlet and the product outlet (the passageway through the heat exchangers from where 11 enters 81 through heat exchangers 81-91 to where 15 leaves 91), a primary refrigerant feed passage (from where high pressure hydrogen stream, paragraph 126 is seen entering 81 through where it leaves at 22), a primary refrigeration passage (from where 27/28 mix and enter 91 and pass through the heat exchange as stream 26 which acts as a warming stream in the heat exchangers, paragraphs 126 and 135 which passage for 26 is the primary refrigeration passage) and a pre-cooling refrigeration passage (where refrigerant from 64 that has expanded is passed into 81 to provide cooling, paragraph 114);
b. a primary refrigerant compression system configured to direct a conditioned primary refrigerant to the primary refrigerant feed passage (61/62, paragraph 131);
c. a warm expander in fluid communication with the primary refrigerant feed passage (turbine 57 receives refrigerant from 21, paragraph 121), said warm expander having a warm expander outlet in fluid communication with the heat exchanger system and the primary refrigerant compression system (refrigerant from 57 is ultimately added to 33 where it is used for providing cooling, paragraph 127);
d. a cold expander in fluid communication with the primary refrigerant feed passage (56 is colder than 57 and thus can be considered a cold expander and receives refrigerant from 21 via 57, paragraph 127), said cold expander having a cold expander outlet in fluid communication with the primary refrigeration passage (refrigerant from the outlet of 56 is ultimately mixed with refrigerant from 26 as stream 33, paragraph 131, putting it in communication with the primary refrigeration passage);
f. said cooling passage configured so that hydrogen therein is cooled and liquefied by countercurrent heat exchange with primary refrigerant in the primary refrigeration passage (this is the configuration shown in Figure 1 and discussed above producing liquid hydrogen 15);
h. said primary refrigerant compression system configured to receive, compress and cool vaporized primary refrigerant from the primary refrigeration passage so that a conditioned primary refrigerant is provided (refrigerant from 26 is compressed in 61 and intercooled and compressed again, paragraph 131 to produce refrigerant stream 21 which would be an intercooled refrigerant);
h. a pre-cooling refrigerant compression system configured to receive, compress and cool a pre-cooling refrigerant vapor from an outlet of the pre-cooling refrigerant passage so that a conditioned pre-cooling refrigerant is provided to an inlet of the pre-cooling refrigerant passage (compressor 63a and intercooler produce the refrigerant that is ultimately passed from 64 into 81, paragraph 113);
i. said cooling passage configured so that hydrogen therein is cooled by countercurrent heat exchange with pre-cooling refrigerant in the pre-cooling refrigeration passage (hydrogen is initially cooled in 81 is against the stream of refrigerant from 64 that has been provided via 63a, which is in countercurrent flow as seen in the figure).
Cardella does not explicitly teach e. an intermediate cooling passage within the heat exchanger system in fluid communication with the warm expander and the cold expander.
Ishimura teaches that in a refrigeration cycle that between two expanders (14H/14L) a refrigerant stream that can be cooled to provide further cooing to the cooling medium (paragraph 40).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have between the expanders (57/56) of Cardella to have cooled the refrigerant stream in one of the heat exchangers stream based on the teaching of Ishimura since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing cooling between the expansion steps would provide the predictable result of an increase in refrigeration capability of the stream.
With respect to claim 2, Cardella as modified teaches wherein the warm expander is configured to receive a first portion of primary refrigerant from the primary refrigerant feed passage (this is what the feed for 57 is) and the cold expander are turbines (all of the turbines are turbine-expanders) that power generators (all of the turbines of the process are coupled to turbo-generators to produce electricity, paragraph 126) and further comprising:
j. said intermediate cooling passage within the heat exchanger system configured to receive and cool fluid from the warm expander and to direct fluid to the cold expander (this is the configuration as modified), wherein said cold expander outlet is configured to direct an expanded first portion of primary refrigerant to the primary refrigeration passage (the expander 56 sends the fluid back into the cycle which means a portion of it would circulate and eventually end up at in 26 after it is warm and recompressed as it is a closed cycle where the fluid mixes and separately continually, which means the turbine directs it downstream in that direction);
k. a primary feed expansion device configured to receive and expand a second portion of primary refrigerant that has been further cooled in the primary refrigerant feed passage and direct an expanded second portion of the primary refrigerant to the heat exchanger system (turbo-expander 53 which cools a further expanded portion of 2 and returns it back to the heat exchanger, paragraph 129).
With respect to claim 3, Cardella teaches a supplemental cold expansion device configured to direct fluid to the primary refrigeration passage (turbo-expander 51 which cools a further expanded portion of 21 and returns it back to the heat exchanger for cooling, paragraph 135);
m. a supplemental intermediate cooling passage within the heat exchanger system configured to receive and cool fluid from the cold expander and to direct fluid to the supplemental cold expansion device (the cooling passage in 90 for refrigerant can be considered a supplemental intermediate cooling passage, which as the system is in a closed cycle, refrigerant is eventually passed in part from the cold expander 53, after being warmed is cooled ultimately in 90 before being passed to 51).
With respect to claim 5, Cardella teaches wherein the heat exchanger system includes a first primary refrigeration passage (the passageway from 30 to 33) and the primary refrigeration passage is a second primary refrigeration passage and the warm expander is configured to receive a first portion of primary refrigerant from the primary refrigerant feed passage (this is the configuration as shown) and further comprising:
j. an intermediate expander configured to receive a second portion of primary refrigerant from the primary refrigerant feed passage and to direct an expanded second portion of primary refrigerant to the first primary refrigeration passage (expander 55 which is intermediate the system and receives a portion of refrigerant from 21, sends the expanded refrigerant into the passageway form 30 to 32, paragraph 128);
k. said intermediate cooling passage within the heat exchanger system configured to receive and cool fluid from the warm expander and to direct fluid to the cold expander (this is the configuration as modifeid), wherein said cold expander outlet is configured to direct an expanded first portion of primary refrigerant to the second primary refrigeration passage (the expander 56 sends the fluid back into the cycle which means a portion of it would circulate and eventually end up at in 26 after it is warm and recompressed as it is a closed cycle where the fluid mixes and separately continually, which means the turbine directs it downstream in that direction);
l. a primary feed expansion device configured to receive and expand a third portion of primary refrigerant that has been further cooled in the primary refrigerant feed passage and direct an expanded third portion of the primary refrigerant to the heat exchanger system (turbo-expander 53 which cools a further expanded portion of 2 and returns it back to the heat exchanger, paragraph 129).
With respect to claim 6, Cardella (Figure 1) teaches a system for liquefying hydrogen gas feed comprising:
a. a heat exchanger system having a feed gas inlet configured to receive the hydrogen gas feed stream (heat exchanger 81-91, paragraphs 110, 160, where feed gas 11 feeds into heat exchanger 81, paragraph 102 would be the feed gas inlet) a product outlet (where liquid hydrogen 15, paragraph 140 is removed from 91 is a product outlet), a cooling passage in fluid communication with the feed gas inlet and the product outlet (the passageway through the heat exchangers from where 11 enters 81 through heat exchangers 81-91 to where 15 leaves 91), a primary refrigerant feed passage (from where high pressure hydrogen stream, paragraph 126 is seen entering 81 through where it leaves at 22), a first primary refrigeration passage (form 30 to 33, paragraph 130), a second primary refrigeration passage (from where 27/28 mix and enter 91 and pass through the heat exchange as stream 26 which acts as a warming stream in the heat exchangers, paragraphs 126 and 135 which passage for 26 is the primary refrigeration passage), and a pre-cooling refrigeration passage (where refrigerant from 64 that has expanded is passed into 81 to provide cooling, paragraph 114);
b. a primary refrigerant compression system configured to direct a conditioned primary refrigerant to the primary refrigerant feed passage (61/62, paragraph 131);
c. a first warm expander configured to receive a first portion of primary refrigerant form the primary refrigerant feed passage (turbine 57 receives refrigerant from 21, paragraph 121);
d. a second warm expander configured to direct fluid to the first primary refrigeration passage (turbine 56 which receives refrigerant from 57, paragraph 127),
f. a cold expander to receive a second portion of primary refrigerant form the primary refrigerant feed passage and direct an expanded portion of the primary refrigerant to the second primary refrigeration passage (53 which expands partial stream 53 and sends it back through 33, paragraph 129, which as it is a closed cycle, would ultimately direct part of the expanded portion to the second passage as it goes back through the cycle),
g. said cooling passage configured so that hydrogen therein is cooled and liquefied by countercurrent heat exchange with primary refrigerant in the first and second primary refrigeration passage (this is the configuration shown in Figure 1 and discussed above producing liquid hydrogen 15);
h. said primary refrigerant compression system configured to receive, compress and cool vaporized primary refrigerant from the first and second primary refrigeration passage so that a conditioned primary refrigerant is provided (refrigerant from 26 is compressed in 61 and intercooled and compressed again in 62 with refrigerant form 33, paragraph 131 to produce refrigerant stream 21 which would be an intercooled refrigerant);
i. a pre-cooling refrigerant compression system configured to receive, compress and cool a pre-cooling refrigerant vapor from an outlet of the pre-cooling refrigerant passage so that a conditioned pre-cooling refrigerant is provided to an inlet of the pre-cooling refrigerant passage (compressor 63a and intercooler produce the refrigerant that is ultimately passed from 64 into 81, paragraph 113);
j. said cooling passage configured so that hydrogen therein is cooled by countercurrent heat exchange with pre-cooling refrigerant in the pre-cooling refrigeration passage (hydrogen is initially cooled in 81 is against the stream of refrigerant from 64 that has been provided via 63a, which is in countercurrent flow as seen in the figure,
l. a primary feed expansion device configured to receive and expand a third portion of primary refrigerant that has been further cooled in the primary refrigerant feed passage and direct an expanded third portion of the primary refrigerant to the heat exchanger system (turbo-expander 53 which cools a further expanded portion of 2 and returns it back to the heat exchanger, paragraph 129).
Cardella does not explicitly teach e. an intermediate cooling passage within the heat exchanger system in configured to receive and cool fluid form the first warm expander and to direct fluid to the second warm expander.
Ishimura teaches that in a refrigeration cycle that between two expanders (14H/14L) a refrigerant stream that can be cooled to provide further cooing to the cooling medium (paragraph 40).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have between the expanders (57/56) of Cardella to have cooled the refrigerant stream in one of the heat exchangers stream based on the teaching of Ishimura since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing cooling between the expansion steps would provide the predictable result of an increase in refrigeration capability of the stream.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and if the rejection for double patenting were resolved.
The closest prior art to claim 4 is that provided above in Cardella as well as Howard (US PG Pub 20220333856) and Cardella et al. (US PG Pub 20180320957), hereinafter referred to as Cardella. Claim 4 differs from the prior art in that a first portion of the refrigerant from the first warm expander is passed to the second warm expander and a second portion is passed to the intermediate cooling passage before it is passed to the cold expander. This requires a splitting of the outlet stream of the warm expander into two separate locations, both of which are expanders, which is not taught by the prior art, although the prior art does have all the expanders as claimed, just not in the configuration as claimed.
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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