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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 has been entered.
Response to Amendment
The examiner acknowledges Applicant’s response filed on 12/01/2025 containing remarks and amendments to the claims.
The objection to claim 10 is withdrawn in view of the amendment.
Response to Arguments
Applicant's arguments (see Remarks) with respect to the rejection of claims 1-6, 10-12, and 14 under 35 USC 103 over Bauer (US 8,022,259 B2) have been fully considered but they are not persuasive.
On page 6, Applicant asserts that the examiner relies on Bauer as teaching operation-oil streams at temperatures that could be as low as 20°C, based solely on the absence of an explicit statement in Bauer that the temperature must exceed 100°C. Applicant points out that Example 1 in Bauer confirms that the temperature of a slurry being 150°C.
In response, the examiner does not find the argument persuasive. Example 1 of Bauer neither interferes with or teaches away from the limitations of claim 1. Claim 1 recites that “the pyrolysis oil is combined with the hydrocarbon feedstock and the hydrocracking catalyst, the pyrolysis oil being maintained at a temperature of less than 100 °C until the pyrolysis oil contacts both the hydrocarbon feedstock and the hydrocracking catalyst” (emphasis added). In Example 1 of Bauer, the feed ingredients, i.e., heavy vacuum residue and lignin (as a biorenewable feedstock), are slurried with a catalyst at 150°C. The temperature of “150°C” described in Example 1 is reasonably interpreted as the temperature at which the slurrying, i.e., contacting and mixing of the feedstocks, is conducted, rather than the temperature at which the lignin is supplied prior to contacting. Bauer discloses that suitable biorenewable feedstock materials include pyrolysis oil (col. 3, lines 44-45; col. 4, lines 1-4). Pyrolysis oil is typically liquid at ambient temperature. Thus, one skilled in the art would have had no motivation to provide a pyrolysis oil feedstock at a temperature of 100°C or higher, particularly where the material could be stored and transported at lower temperatures.
On page 6, Applicant argues that Bauer does not address polymerization issues or any measures to prevent polymerization. The instant specification characterizes such polymerization as an undesirable side reaction and, thus, a problem to be solved by the instant invention, e.g., by maintaining a biorenewable pyrolysis oil at a temperature of less than 100°C until the pyrolysis oil contacts the hydrocarbon feedstock and the hydrocracking catalyst (Spec., pg. 1, line 27 pg. 2, line 10; pg. 3, lines 1-18).
In response, the asserted advantage of reduced polymerization is not achieved solely by the claimed limitation of "maintaining the pyrolysis oil below 100°C," but it also requires at least an additional step of contacting the pyrolysis oil with a hydrocarbon feedstock and a catalyst at a temperature at which the primary cracking and deoxygenation reactions take place at a much higher rate than the secondary polymerization reactions, e.g., at a temperature of 300 to 600°C in a slurry hydrocracking reactor, or at least 300°C in a vessel upstream the slurry hydrocracking reactor (Spec., pg. 3, line 18 – pg. 4, line 3). Therefore, the asserted advantages requires features not positively recited in the pending claims.
On page 7, Applicant asserts “[o]perating both hydrocarbon feedstock and pyrolysis-oil streams at such a low temperature would impose unnecessary cooling loads on the reactor system-contrary to typical industrial practice and without any indication or benefit described in Bauer.” Applicant further states, “the skilled person would understand that maintaining elevated temperatures avoids excessive cooling requirements and supports stable processing conditions.”
In response, the examiner notes that claim 1, as presented, does not require a step of obtaining a pyrolysis oil directly from a pyrolysis reactor, which typically operates at an elevated temperature, without intervening cooling. One of ordinary skill in the art, following the teachings of Bauer, would find it obvious to provide a pyrolysis oil material that has been previously cooled for storage or transport. In addition, Bauer describes pyrolysis oil as “material extracted by destructive distillation from biomass and in particular dried biomass. The destructive distillation occurs in a reactor operating at a temperature of about 500°C with subsequent cooling” (col. 4, lines 1-6). As the claim is not limited to a continuous, high-temperature process, the examiner maintains that it would have been obvious for one skilled in the art to utilize a pyrolysis oil material which has been cooled, for example, to ambient temperature.
The following is a prior rejection based on the amendments made to the claims.
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 1-3, 5, 6, 10-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al. (US 8,022,259 B2, which is a US equivalent to WO 2009/146225 A1, cited in IDS dated 07/11/2022).
Regarding claim 1, Bauer discloses a process comprising:
providing a biorenewable feedstock stream 14 (Fig. 1), a petroleum derived hydrocarbon feed 12, and a hydrocracking 24’ (col. 2, lines 53-59; col. 4, lines 39-40);
combining the biorenewable feedstock stream 14 with the hydrocarbon feed 12 and the hydrocracking catalyst 24’ (col. 2, line 56 - col.3, line 1; col. 4, lines 40-45); and
hydrocracking the mixture 18 of the hydrocarbon feed and the biorenewable feedstock in a slurry hydrocracking reactor 22 in the presence of the hydrocracking catalyst and hydrogen gas (col. 6, lines 45-61; “slurry bed of catalyst”).
Bauer discloses that useful biorenewable feedstocks include pyrolysis oil (col. 3, lines 44-45).
Bauer discloses that the biorenewable feedstock and the petroleum hydrocarbon feed may be combined in a pre-feed reaction vessel to form a combined feed, the combined feed subsequently being introduced to the reactor (col. 2, line 63 - col. 3, line 1).
Bauer does not explicitly disclose that the pyrolysis oil is maintained at a temperature of less than 100 °C until the pyrolysis oil contacts both the hydrocarbon feedstock and the hydrocracking catalyst.
However, Bauer describes pyrolysis oil as “material extracted by destructive distillation from biomass and in particular dried biomass. The destructive distillation occurs in a reactor operating at a temperature of about 500°C with subsequent cooling” (col. 4, lines 1-6). As the claim is not limited to a continuous, high-temperature process, it would have been obvious for one skilled in the art to utilize a pyrolysis oil material which has been cooled at least to a temperature of “less than 100 °C,” e.g., to ambient temperature. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the temperature of the biorenewable feedstock stream and arrive at a temperature that at least overlaps with the claimed range, i.e., less than 100 °C, because where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP 2144.05 II.
Regarding claim 2, Bauer discloses that the biorenewable feedstock and the petroleum hydrocarbon feed may be combined within the reactor (col. 2, lines 59-63). It is noted that Bauer is silent on changing the temperature of the biorenewable feedstock prior to the reaction. Since the hydrocracking catalyst and hydrogen gas may be added to the reactor (col. 6, lines 45-47), Bauer is considered to suggest that the temperature of the biorenewable feedstock is unchanged until it makes contact with the hydrocarbon feed and the catalyst in the presence of hydrogen gas in the reactor.
Regarding claim 3, Bauer discloses that the biorenewable feedstock and the petroleum hydrocarbon feed may be formed within the reactor (col. 2, lines 59-63), which suggests that the feeds are introduced to the reactor through separate feed lines.
Regarding claims 5 and 6, Bauer does not explicitly teach that the hydrocracking catalyst is present in the hydrocarbon feed (claim 5) or in the biorenewable feedstock (pyrolysis oil) (claim 6). However, Bauer discloses that the hydrocarbon feed, the biorenewable feedstock, and the catalyst are combined in a pre-feed vessel, in a feed conduit, or in the hydrocracking reactor (col. 2, line 56 - col. 3, line 1). The hydrocracking catalyst being present in (pre-mixed with) the hydrocarbon feed or the biorenewable feedstock is considered obvious because selection of an order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Regarding claim 10, Bauer does not explicitly disclose that the pyrolysis oil is maintained at a temperature of 10-90 °C until the pyrolysis oil contacts both the hydrocarbon feedstock and the hydrocracking catalyst. However, the examiner notes that Bauer is silent on the temperature of the biorenewable feedstock stream prior to being mixed with the hydrocarbon feed. Thus, it would be obvious to consider the temperature of the biorenewable feedstock to be near the ambient temperature, which falls within the claimed range of “10-90 °C.” Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the temperature of the biorenewable feedstock stream and arrive at a temperature that at least overlaps with the claimed range, i.e., 10-90 °C, because where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Regarding claim 11, Bauer teaches using a petroleum derived hydrocarbon feed (col. 2, lines 55-59).
Regarding claim 12, Bauer teaches using a biomass derived pyrolysis oil (col. 4, lines 1-4).
Regarding claim 14, Bauer discloses that the reactor may include up to about 10 weight percent of a hydrocracking catalyst based on the weight of all feed materials in the reactor (col. 5, line 63 – col. 6, line 4).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al. (US 8,022,259 B2), as applied to claim 1, and further in view of Chen et al. (US 2009/0050526 A1).
Regarding claims 7-9, Bauer teaches or renders obvious the process of claim 1, as discussed above.
Bauer does not explicitly teach that the pyrolysis oil is combined with the hydrocarbon feed under agitation. It is noted that Bauer teaches a use of a slurry bed of catalyst (col. 6, lines 58-61).
Chen, drawn to a process for upgrading heavy oil via hydrocracking with slurry catalyst compositions, teaches that continuous stirred tank reactors can be used to operate the hydrocracking step ([0023], [0030], [0040]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Bauer by employing a stirred tank reactor to operate the slurry hydrocracking step, as taught by Chen, because (i) Bauer teaches a use of a slurry bed of catalyst (col. 6, lines 58-61), (ii) Chen teaches that a continuous stirred tank reactor is a reactor type useful for carrying out slurry hydrocracking ([0040]), and (iii) this involves application of a known reactor to yield predictable results. The examiner notes that a continuous stirred tank reactor is ordinarily understood to be equipped with a stirrer generating constant agitation.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al. (US 8,022,259 B2), as applied to claim 1, and further in view of Carson (US 3,442,793).
Regarding claim 13, Bauer teaches obtaining an off-gas stream 25 containing light hydrocarbons (C1-C3) and hydrogen (col. 7, line 50 – col. 8, line 2). Bauer suggests that the off-gas stream can be processed in traditional refinery processes to convert and/or recover high value materials such as light hydrocarbon and hydrogen.
Bauer does not teach further processing light hydrocarbons to form hydrogen gas and recirculating the hydrogen gas to the slurry hydrocracking reactor.
However, Carbon, drawn to a process for hydrocracking, teaches a method of obtaining hydrogen from a gaseous light hydrocarbon fraction separated from the effluent of the hydrocracking, wherein said hydrogen is recovered and sent to the hydrocracking step (col. 2, lines 6-17). Specifically, Carbon teaches subjecting a light hydrocarbon fraction containing paraffinic hydrocarbons (18 in Fig. 1) to steam reforming (21) to produce a gaseous product stream comprising hydrogen (12) and passing said gaseous product stream into the hydrocracking zone (14) (col. 2, lines 30-65).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Bauer by upgrading C1-C3 hydrocarbons generated from the hydrocracking to form hydrogen gas and recirculating said hydrogen gas to the slurry hydrocracking reactor, as taught by Carbon, because the modification allows for production of hydrogen, which is a required reactant for the hydrocracking step, and this merely involves application of a known technique to improve a known process by producing a reactant from by-products.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al. (US 8,022,259 B2), as applied to claim 1, and further in view of McGehee et al. (US 2010/0326887 A1).
Regarding claim 15, Bauer teaches or renders obvious the process of claim 1, as discussed above.
Bauer is silent on liquid hourly space velocity conditions with respect to the slurry hydrocracking reactor and does not teach a LHSV range of 0.25 to 5 h-1.
However, McGehee teaches a method for slurry hydrocracking heavy hydrocarbon feedstocks, wherein the reaction conditions include a LHSV below about 4 h-1, preferably about 0.1 to 3 h-1 ([0020]). The reaction conditions also include a temperature of about 350-600°C and a pressure of 3.5-24 MPa (500-3481 psig), which closely overlap with the temperature and pressure conditions taught by Bauer (col. 7, lines 43-49).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Bauer by operating the slurry hydrocracking reactor at a LHSV of 0.1 to 3 h-1, as taught by McGehee, because this involves application of a known reaction condition from a similar process to yield predictable results. The claimed range of 0.25 to 5 h-1overlaps a range of 0.1 to 3 h-1 and is considered prima facie obvious. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the LHSV condition of the slurry hydrocracking reactor in Bauer using the LHSV of McGehee as a starting point and arrive at the claimed range by routine experimentation, because where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON Y CHONG whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772