DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a response to Applicant's amendment filed on September 25, 2025.
Election/Restrictions
Applicant's election with traverse of invention comprising Subspecies Ia (claims 1-4, 6-12, 14 and 22) and Subspecies IIa: ether alcohol (claims 1-4, 6-12, 14 and 23) in the reply filed on September 25, 2025 is acknowledged. Claims 24-27 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Status of Claims
Claims 1 and 6 have been amended. Claims 5, 13 and 15-20 have been cancelled. Claims 1-4, 6-12, 14 and 21-27 are pending. Claims 1-4, 6-12, 14 and 21-23 are examined herein.
Response to Arguments
Applicant's Remarks/Arguments and Amendments to the Claims both filed 09/25/2025 and Applicant's Remarks/Arguments filed 08/07/2024 have been fully considered. It is noted that the claim 1, an independent claim from which all of the claims ultimately depend, has been amended to recite “adding an extraction solvent to the synthetic feedstock composition derived from plastic pyrolysis to provide an extract phase and a raffinate phase, solvent immiscible in the synthetic feedstock, further wherein the extraction solvent comprises an ether alcohol, acetone, diethylene triamine, and any combination thereof;”.
(a) Applicant argues that the claim 1 as amended and its dependent claims, are not anticipated or prima facie obvious over cited prior arts, Zhang et al (WO 2020/178599 A1) and/or Van Der Reed et al (2018/0010050 A1). Applicant argues that claim 1 is currently amended to specify that the extraction solvent comprises an ether alcohol, acetone, diethylene triamine, and any combination thereof. Various ether alcohols are recited in claims 23, 24, and 27. Claims 25 and 26 recite additional extraction solvents. The cited prior art does not teach or suggest any of the claimed extraction solvents. For example, while the cited prior art may generically refer to alcohols, the prior art does not teach or suggest ether alcohols or any of the specifically claimed ether alcohols. The same applies to the claimed acetone and diethylene triamine. See Remarks filed 08/07/2024, page 6.
In response, the arguments are directed to the amended claim limitations. Therefore, the arguments are considered moot.
Upon further consideration and search, a modified/new ground of rejections to claims 1-4, 6-12, 14 and 22-23 are presented in view of the previously found references as presented in the instant Office action.
(b) Applicant argues that: with respect to claim 21, the cited prior art does not teach or suggest a plastic-derived synthetic feedstock composition comprising a pour point depressant. While Chen may disclose adding a pour point depressant to "waste biomass," it does not teach or suggest adding a pour point depressant to a plastic-derived synthetic feedstock composition (e.g., pyrolysis oil). Page 5 of Chen explains that "biomass" covers mixtures of various degradation products of cellulose, hemicellulose, and lignin derived from, for example, trees. This reference is completely silent regarding plastic-derived synthetic feedstocks. See Remarks filed 08/07/2024, page 6.
In response, the examiner respectfully disagrees.
As discussions presented in the Office action dated 05/07/2024 (see pages 5-6), Zhang does not discloses adding a pour point depressant to pyrolysis product.
In order to cure the shortfall of the Zhang, the Chen reference was introduced.
Chen discloses adding pour point depressant to the waste biomass oil (see the translation). It is noted herein that the pour point depressant was added to organic phase containing long chain alkane rich in hydrocarbon, not to the biomass (see claim 1-step (6) in English translation document).
Consequently, in light of teachings from Zhang and Chen, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process to add pour point depressant to pyrolysis oil to upgrade the pyrolysis oil as taught by Chen to arrive at the applicants’ claimed process.
The applicants’ arguments are not considered persuasive.
Upon further consideration and search, a modified/new ground of rejections to claims 1-4, 6-12, 14 and 21-23 are presented in view of the previously found references as presented in the instant Office action.
MODIFIED OBJECTIONS/REJECTIONS
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “wherein the extraction solvent comprises an ether alcohol, acetone, diethylene triamine, and any combination thereof;” in lines 8-9 which appears to be misspelling of “wherein the extraction solvent comprises an ether alcohol, acetone, diethylene triamine, or
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4, 6-12, 14 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the recitation “the extraction solvent comprises an ether alcohol” in lines 7-8 is not supported by the specification or previously presented claims.
It is noted herein that an “ether alcohol” is a compound that exhibits properties of both ethers (R-O-R') and alcohols (R-OH), meaning it has both an ether linkage (oxygen bonded to two carbons) and a hydroxyl group (–OH) within the same molecule.
A thorough review for the specification or previously presented claims did not locate any relevant information that discloses or suggests the limitation “the extraction solvent comprises an ether alcohol” recited in claim 1. In the Applicant’s specification, it is noted that the specification discloses: the extraction solvent is diethylene glycol, triethylene glycol, diethylene glycol monobutyl ether, ethylene glycol monobutyl ether, acetone, N-methyl pyrrolidone (NMP), isopropyl alcohol, diethylene triamine, tetraethylene glycol, glycol heavies and combinations thereof (Specification, paragraph [0052]).
The solvent such as diethylene glycol, or diethylene glycol monobutyl ether is “species” (an individual name), and ether alcohol is “genus” (a family name).
However, the specification does not teach the extraction solvent comprises an ether alcohol (“genus”). Appropriate correction is required.
Claims 2-4, 6-12, 14 and 21-23 are also rejected under 35 U.S. §112 by virtue of its dependence on claim 1.
The Examiner notes that no prior art rejection is provided for dependent claim 23 due to the various objection and/or rejections under 35 U.S.C. 112(a) set forth above.
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, 2, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al (WO 2020/178599 A1, hereinafter “Zhang”).
In regard to claim 1, Zhang discloses a process of upgrading a pyrolysis oil derived from the pyrolysis of plastic comprising adding a polar organic upgrading solvent immiscible in the pyrolysis oil to product an extract phase and a raffinate phase. These immiscible phases are separated to yield an upgraded pyrolysis oil product (the abstract, paragraphs 0058, 0075, 0079, 0096).
Zhang discloses the polar organic upgrading solvent comprises acetone (paragraph 00140), and/or diethylenetriamine (paragraph 00146).
In regard to claim 2, Zhang discloses the synthetic feedstock composition comprises a pyrolysis oil (paragraph 0057).
Regarding claim 6, Zhang discloses the upgrading solvent comprising about 90% NMP and about 10% water (paragraph 0172).
Regarding claim 7, Zhang discloses the mass ratio of synthetic feedstock to extraction solvent is about 95:5 to about 10:90. (paragraph 0078).
Zhang discloses every limitation recited in claims 1, 2, 6 and 7.
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.
Claim(s) 3, 4, 8-12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (WO 2020/178599 A1).
In regard to claims 3 and 14, Zhang discloses the pyrolysis oil is a derived from the pyrolysis of plastic or rubber, or a combination thereof (paragraph 0057).
Zhang does not disclose the synthetic feedstock comprising components as recited in claim 3 or the process of obtaining the synthetic feedstock as recited in claim 14. However, it is known that the components in the produce plastic-derived pyrolysis oil depends on the conditions of the pyrolysis condition (0052 of the specification of the application), and Zhang discloses the pyrolysis oil is a derived from the pyrolysis of plastic or rubber, or a combination thereof (paragraph 0057).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process by selecting appropriate conditions of the pyrolysis to produce a pyrolysis oil having components as recited in claims 3 and 14 to arrive at the applicants’ claimed process except the criticality can be shown by applicants.
Regarding claim 4, Zhang discloses upgrading solution comprising dipole moment of greater or equal to about 1.5 (paragraphs 00112, 00113). Zhang discloses the upgrading solvent comprising about 90% NMP and about 10% water (paragraph 0172). NMP has a boiling point from 202 to 204°C, a density of 1.028 g/cm3. Zhang further discloses various organic solvents (paragraphs 00110-00172). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process by selecting appropriate extraction solvent as recited in claim 4 to arrive at the applicants’ claimed process except the criticality can be shown by applicants.
Regarding claim 8 and 9, Zhang does not disclose specifically where or when the upgrading solvent is added to the pyrolysis oil.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process to add the solvent to where and/or when the upgrading process is needed to arrive at the applicants’ process except the criticality can be shown by applicants.
Regarding claim 10, Zhang discloses the upgrading solvent is added in ppm as recited in the claim.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process by adding appropriate ppm of solvent to the pyrolysis oil to arrive at the applicants’ claimed process except the criticality can be shown by applicants.
Regarding claims 11 and 12, Zhang discloses the pyrolysis oil contains unwanted substances which are removed during upgrading step. One of them is olefins (paragraphs 0061, 0062, 0081, 0111).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (WO 2020/178599 A1) in view of Chen (Translation of CN 106118706 A).
Zhang discloses a process a discussed above.
Zhang does not discloses adding a pour point depressant to pyrolysis product. However, Chen discloses adding pour point depressant to the waste biomass oil. It is noted herein that the pour point depressant was added to organic phase containing long chain alkane rich in hydrocarbon, not to the biomass (see claim 1-step (6) in English translation document).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process to add pour point depressant to pyrolysis oil to upgrade the pyrolysis oil as taught by Chen to arrive at the applicants’ claimed process.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (WO 2020/178599 A1) in view of Van Der Reed et al (US 2018/0010050 A1).
Zhang discloses a process of upgrading a pyrolysis oil derived from the pyrolysis of plastic comprising adding a polar organic upgrading solvent immiscible in the pyrolysis oil to produce an extract phase and a raffinate phase. These immiscible phases are separated to yield an upgraded pyrolysis oil product (the abstract, 0058, 0075, 0079, 0096).
Zhang does not disclose adding an antioxidant or pour point depressant to the pyrolysis oil. However, Van Der Ree discloses adding a radical inhibitor to product of pyrolysis of plastic (paragraphs 0078; 0119) to prevent formation of long chain paraffins as reflux via stream 17 (0116 to 0119; see the figure). Note that the hydrocarbons in the column 13, 14, 15, and 16 are pyrolysis oils. The stream “Oil Product” from the column is the pyrolysis oil.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Zhang process to add antioxidants to the pyrolysis oil to prevent the formation of long chain paraffins as taught by Van Der Ree to arrive at the applicants’ claimed process.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772