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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 January 2026 has been entered.
Claims 1-3, 5, 8, 16, 20, 23, 26-27, 29, 35-37, 39-45, 47-51, 54-56 are pending.
The previous rejections have been updated as necessitated by amendments to the claims. The updated rejections follow.
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.
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 1-2, 8, 16, 51 are rejected under 35 U.S.C. 103 as being unpatentable over Fan (US 2014/0072917) in view of Huber (US 2012/0203042).
Regarding claims 1-2, 8, and 51, Fan teaches feeding a hydrocarbon feed into a pyrolysis reaction zone [0068] , wherein the hydrocarbon feed comprises biomass [0043]; oxidizing and heating a plurality of particles in a combustion zone [0070]. Fan teaches the iron fed to the pyrolysis reactor has +3 state, and is reduced to 0-2+ state, and then is oxidized back to +3 state [0070]. Examiner notes that iron can have a valence state of up to 6+, and thus considers the Fan valence states/reduction/oxidation to read on the claimed state meeting the claimed limitations including favoring hydrogen oxidation over hydrocarbon oxidation. Fan teaches feeding the combustion produced oxidized oxygen carrying particles back to the pyrolysis zone [0070]-[0071], and contacting the particles in the pyrolysis zone to produce reduced state iron particles and pyrolysis effluents [0068-0069].
Fan does not disclose what type of pyrolysis reactor is used or what products are produced.
However, Huber teaches biomass of pyrolysis can be performed in upflow or downflow reactors to produce olefins and hydrogen [0042-0083].
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected an appropriate pyrolysis reactor, as is known in the art, and that conventional pyrolysis products would be obtained, including olefins and hydrogen.
Regarding claim 16, Fan teaches temperatures of 400-1200˚C [0045].
Claims 3, 8, 20, 23, 26-27, 29, 35-37, 39-45, 47-49, 54, 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Fan (US 2014/0072917) in view of Huber (US 2012/0203042) as applied to claim 1 above, and further in view of Seimandi (US 5,952,539).
Regarding claim 3, the previous combination teaches the limitations of claim 1, as discussed above.
The previous combination does not explicitly disclose the percent of transition metal element.
However, Seimandi teaches a similar pyrolysis process. Seimandi teaches 10-25% transition metal element (column 5, lines 45-65).
Therefore, it would have been obvious to the person having ordinary skill in the art to have incorporated conditions as disclosed by Seimandi into the pyrolysis process of the previous combination, for the benefit of obtaining the desired products.
Regarding claim 5, Seimandi teaches solids to feed ratio of 40:1 to 10:1 (column 6, lines 35-67), which is close to the claimed range of 45:1. Seimandi further teaches that the solid to feed ratio will primarily depend on the heat balance requirement and selection thereof is within the skill of those having ordinary skill in the art (column 6, lines 35-67).
Therefore, it would have been obvious to the person having ordinary skill in the art to have appropriately selected the solids to feed ratio, in order to achieve the desired heat balance. It is not seen where such a selection would result in any new or unexpected results. Further, Examiner notes that the instantly claimed range includes values outside the “preferred” range disclosed by the instant specification [0179].
Regarding claim 8, Seimandi teaches steam stripping the pyrolysis effluent to obtain stripped solids, sending stripped solids to combustion zone with oxidizing gas, and then returning oxidized and heated solids to the pyrolysis zone (column 7, lines 24-60).
Therefore, it would have been obvious to the person having ordinary skill in the art to have used the Seimandi separation steps to obtain the desired products.
Regarding claim 20, Seimandi teaches quenching the first hydrocarbon stream (column 7, lines 1-24). The quenched products are separated into lights and entrained solids, the solids back to reaction zone and then ultimately a portion of the solids are sent back to combustion zone (column 7, lines 1-65).
Therefore, it would have been obvious to the person having ordinary skill in the art to have performed quench and separation as disclosed by Seimandi, in order to obtain the desire products.
Regarding claims 23 and 54, the previous combination teaches the limitations as applied to claims 1-3 above. Seimandi teaches using mixtures of metal oxides (column 5, lines 1-45), which Examiner considers to read on the claimed 1st and 2nd transition metal oxides.
Regarding claim 26, Seimandi teaches quenching the first hydrocarbon stream with a medium such as naphtha or distillate oil (column 7, lines 4-25). It is expected that the same pyrolysis would occur, since the same steps are performed to the same feeds at the same conditions as applied above.
Regarding claim 27, Seimandi teaches temperatures of 670-870°C (column 6, lines 17-35) and iron oxide, titanium oxide, manganese oxide, vanadium oxide, etc (column 5, liens 1-45).
Regarding claims 29 and 35, Seimandi teaches a system comprising pyrolysis reactor 1, first separation vessel 4, combustion vessel 5, second separation vessel 5, channel 14 for sending heated solids from combustion zone to reaction zone 1, quenching section (11/12), separation cyclone 2, and sending bottoms from 2, back to reaction zone 1 and then through channel 15 into 4 (see figure, column 4, line 43- column 8, line 49). Examiner additionally notes that the newly amended limitations regarding “providing an amount of oxidizing agent. . “ are intended use. Please see MPEP 2114, II: Manner of operating the device does not differentiate apparatus claim from the prior art.
Regarding claims 36-37, 39-45, and 47-49, the previous combination teaches the limitations of claim1 as discussed above. Further, , Seimandi teaches feeding hydrocarbon containing feed 10 into a pyrolysis reaction zone 1; feeding a plurality of fluidized particles 14 having a first temperature into the pyrolysis reaction zone, wherein the first temperature is sufficiently high enough to enable pyrolysis of the hydrocarbon feed and the particles comprise iron oxide, titanium oxide, and manganese oxide (see figure, column 5, lines 5-45 and column 6, lines 17-column 7, line 65). Seimandi teaches steam stripping the pyrolysis effluent to obtain stripped solids, sending stripped solids to combustion zone with oxidizing gas, and then returning oxidized and heated solids to the pyrolysis zone (column 7, lines 24-60).
Seimandi teaches separation of flue gas 40 from oxidized (combusted) solids 14 (see figure, column 7, lines45-65).
Since Seimandi teaches the same transition metal oxides of claim 2, it is expected that the transition metals of Seimandi are also “capable of oxidizing molecular hydrogen at the first temperature” and “favors the oxidation of hydrogen over the oxidation of hydrocarbons”. It is not seen where Applicant has distinguished the transition metal oxide or process steps claimed in this regard.
Further, Seimandi teaches the same introduction of oxidation gas into the combustion zone as claimed (column 7, lines 24-45). In this regard, it is expected that the same oxidation state would be achieved, since the same metal oxides and oxidizing gas in combustion zone are selected. It is not seen where Applicant has distinguished the process steps in this regard. Examiner additionally notes that Applicant’s instant specification notes that the use of “oxide of the transition metal” is what achieves the oxidation state. Seimandi positively recites transition metal oxide catalysts (column 5, lines 1-45).
Seimandi teaches contacting at least a portion of the hydrocarbon containing feed with the particles in the pyrolysis reaction zone to produce pyrolysis effluent comprising olefins, hydrogen, and particles (column 4, lines 43-47). Seimandi teaches the heat transfer particles have carbonaceous materials deposited on them (column 7, lines 24-30), which Examiner considers to read on the claimed “reduced state”.
Therefore, it would have been obvious to the person having ordinary skill int eh art to have used Seimandi heat transfer/and pyrolysis conditions, in the process of the previous combination, in order to obtain the desired products.
Regarding claims 55-56, Fan teaches the same oxidation of the oxygen carrier between oxidation state as claimed [0067-0070]. Examiner notes that it would have been obvious to the person having ordinary skill in the art to have appropriately adjusted the amount of oxidizing agent, in order to achieve the desired oxidation state. The person having ordinary skill in the art would be familiar with performing mass balance type calculations, and would be capable of determining the appropriate rate, in order to obtain the desired transition metal state.
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Fan (US 2014/0072917) in view of Huber (US 2012/0203042) as applied to claim 1 above, and further in view of Miyoshi (US 2006/0194990).
Regarding claim 50, the previous combination teaches the limitations of claim 1, as discussed above.
The previous combination does not explicitly disclose bio or rubber based feedstocks.
However, Miyoshi teaches a similar process for pyrolysis to produce more valuable products. Miyoshi teaches that suitable feeds include petroleum resids in mixture with plastic and biomass feeds [0066]. Miyoshi further teaches that products from the decomposition unit may be fed, which Examiner considers to include decomposed biomass, or biobased oils [0066].
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected any suitable feed or mixture thereof, including biomass, plastic, biobased oils, as disclosed by Miyoshi, since it is a known feed for pyrolysis to produce more valuable products.
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 1-3,5,8,16,20,23,26-27,29,35-37,39-45,47-51 and 54-56 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 17778202 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘202 is drawn to overlapping subject matter regarding pyrolysis and oxidation state of transition metal catalyst (see in particular, claims 1 and 16).
Claims 1-3,5,8,16,20,23,26-27,29,35-37,39-45,47-51 and 54-56 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 18253543 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘543 is drawn to overlapping subject matter regarding pyrolysis and oxidation state of transition metal catalyst and favoring of oxidation of hydrogen over hydrocarbons (see in particular, claims 1 and 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments have been fully considered and are addressed by the updated rejections as necessitated by amendments to the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Related applications 18254260 and 18254039 – teach similar processes comprising pyrolysis and oxidation steps. The related applications currently do not claim selecting the amount of oxidant to favor oxidation of hydrogen over hydrocarbons.
Hossain (US 2018/0044262) – relied on in previous rejections, teaches pyrolysis of hydrocarbons to produce olefin products [0001]. Hossain teaches that metal oxide particles can be used in various oxidative states [0011-0013]. Hossain teaches that transition metal oxide (vanadium oxide) particles may include various oxidation states, including one or more oxidation state [0050-0052].
Purvis (US 5,981,818) – relied on in previous rejections, teaches that common hydrocarbon cracking reactors include upflow, downflow, and horizontal (column 5, lines 50-65).
Coburn (US 4,948,495) – relied on in previous rejections, Coburn teaches that suitable feeds include petroleum resids, bitumen, and rubber wastes (column 6, lines 1-15).
McKinney (US 4,061,562) – relied on in previous rejections, teaches introduction of steam 70 into the zone 66 to recover flue gases 72 (see figure).
Tanaka (US 2004/0232046) – relied on in previous rejections, teaches distillation bottoms as combustion fuel [0134], [0286]
Busch (US 4,427,539) – previously relied upon, teaches a similar combustion process for regenerating solids. Busch teaches that the oxidizing gas flow rate can be adjusted in order to achieve the desired flue gas composition having the desired amounts of carbon monoxide (column 11, lines 1-20).
Mori (US 4,420,332) – teaches thermal cracking with fluidized medium (abstract).
Fan (US 2016/0002034) – teaches fuel conversion with metal oxides (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE STEIN whose telephone number is (571)270-1680. The examiner can normally be reached Monday-Friday 8:30 AM-5:00 PM.
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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 phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE STEIN/Primary Examiner, Art Unit 1771