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 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 5-9 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites, “The process of claim 1 further comprising cooling said hot regenerated catalyst stream by heat exchange with said spent catalyst stream to provide said cooled regenerated catalyst stream and a heated spent catalyst stream”, while claim 1 already recites, “cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream to produce a heated air stream”. While the Specification discloses, “An embodiment...further comprising cooling the hot regenerated catalyst by heat exchange with air... An embodiment of the disclosure is one, any or all of prior embodiments in this paragraph up through the first embodiment in this paragraph further comprising cooling the hot regenerated catalyst stream by heat exchange with the spent catalyst stream to provide the cooled regenerated catalyst stream and a heated spent catalyst stream" (Specification, p. 22, lines 4-15) (emphasis added), there is no support for cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream and further cooling said hot regenerated catalyst stream by heat exchange with said spent catalyst stream (claim 5).
While applicant points to Fig. 3 to show that cooling said hot regenerated catalyst stream by mixing it with a spent catalyst stream to provide cooled regenerated catalyst stream is an alternative embodiment to the cooling step in claim 1, the examiner is not stating that cooling the hot regenerated catalyst stream using a spent catalyst has no support, but rather further cooling the already cooled regenerated catalyst stream using a spent catalyst stream has no support. A dependent claim must further limit the independent claim, not provide an alternative embodiment that does not further limit the independent claim.
Additionally, nowhere in the originally filed disclosure states that Figure 3 discloses additional cooling occurs when the hot regenerated catalyst stream, which has already been cooled by air, is mixed with said spent catalyst stream. Therefore, the new matter rejection is maintained.
Regarding dependent claims 6-7, these claims do not remedy the deficiencies of parent claim 5 noted above, and are rejected for the same rationale.
Claim 8 recites, “The process of claim 1 further comprising cooling said hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide said cooled regenerated catalyst stream”, while claim 1 already recites, “cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream to produce a heated air stream”. While the Specification discloses, “An embodiment...further comprising cooling the hot regenerated catalyst by heat exchange with air... An embodiment of the disclosure is one, any or all of prior embodiments in this paragraph up through the first embodiment in this paragraph further comprising cooling the hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide the cooled regenerated catalyst stream" (Specification, p. 22, lines 4-9 and 22-25) (emphasis added), there is no support for cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream and further cooling said hot regenerated catalyst stream by mixing it with a cooled catalyst stream (claim 8).
While applicant points to Fig. 4 to show that cooling said hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide a cooled regenerated catalyst stream is an alternative embodiment to the cooling step in claim 1, the examiner is not stating that cooling the hot regenerated catalyst stream using a cooled catalyst has no support, but rather further cooling the already cooled regenerated catalyst stream using a spent catalyst stream has no support. A dependent claim must further limit the independent claim, not provide an alternative embodiment that does not further limit the independent claim.
Further, nowhere in the originally filed disclosure states that Figure 4 discloses additional cooling occurs when the hot regenerated catalyst stream, which has already been cooled by air, is mixed with a cooled catalyst stream. Therefore, the new matter rejection is maintained.
Regarding dependent claim 9, this claim does not remedy the deficiencies of parent claim 8 noted above, and is rejected for the same rationale.
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 5-9 are 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 5 recites, “The process of claim 1 further comprising cooling said hot regenerated catalyst stream by heat exchange with said spent catalyst stream to provide said cooled regenerated catalyst stream and a heated spent catalyst stream”, while claim 1 already recites, “cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream to produce a heated air stream”. In light of Specification p. 22, lines 4-15 disclosing, “An embodiment...further comprising cooling the hot regenerated catalyst by heat exchange with air... An embodiment of the disclosure is one, any or all of prior embodiments in this paragraph up through the first embodiment in this paragraph further comprising cooling the hot regenerated catalyst stream by heat exchange with the spent catalyst stream to provide the cooled regenerated catalyst stream and a heated spent catalyst stream” (emphasis added), it is unclear how the regenerated catalyst is cooled by heat exchange with air and with the spent catalyst stream as recited in claim 5. Clarification is requested.
While applicant points to Fig. 3 to show that cooling said hot regenerated catalyst stream by mixing it with a spent catalyst stream to provide cooled regenerated catalyst stream is an alternative embodiment to the cooling step in claim 1, the examiner is not stating that cooling the hot regenerated catalyst stream using a spent catalyst has no support, but rather further cooling the already cooled regenerated catalyst stream using a spent catalyst stream has no support. A dependent claim must further limit the independent claim, not provide an alternative embodiment that does not further limit the independent claim.
As stated previously, further, in claim 5, “hot regenerated catalyst” has no antecedent basis as the regenerated catalyst has already been considered cooled in the process. Therefore, the 112b rejection is maintained.
Regarding dependent claims 6 and 7, these claims do not remedy the deficiencies of parent claim 5 noted above, and are rejected for the same rationale.
Claim 8 recites, “The process of claim 1 further comprising cooling said hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide said cooled regenerated catalyst stream”, while claim 1 already recites, “cooling said hot regenerated catalyst stream in a cooler by heat exchange with an air stream to produce a heated air stream”. In light of Specification p. 22, lines 4-9 and 22-25 disclosing, “An embodiment...further comprising cooling the hot regenerated catalyst by heat exchange with air... An embodiment of the disclosure is one, any or all of prior embodiments in this paragraph up through the first embodiment in this paragraph further comprising cooling the hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide the cooled regenerated catalyst stream” (emphasis added), it is unclear how the regenerated catalyst is cooled by both heat exchange with air and by mixing with a cooled catalyst stream as recited in claim 8. Clarification is requested.
While applicant points to Fig. 4 to show that cooling said hot regenerated catalyst stream by mixing it with a cooled catalyst stream to provide a cooled regenerated catalyst stream is an alternative embodiment to the cooling step in claim 1, the examiner is not stating that cooling the hot regenerated catalyst stream using a cooled catalyst has no support, but rather further cooling the already cooled regenerated catalyst stream using a spent catalyst stream has no support. A dependent claim must further limit the independent claim, not provide an alternative embodiment that does not further limit the independent claim.
It is the examiner’s position that based on the Specification (p. 22, lines 4-9 and 22-25), the hot regenerated catalyst stream becomes the cooled regenerated catalyst stream after heat exchange with air. Therefore, in claim 9, the recitation that the process further comprises “said hot regenerated catalyst stream” being cooled by mixing with a cooled catalyst stream is unclear as the “hot regenerated catalyst” no longer exists at this point in the process, as it is now the “cooled regenerated catalyst”. Therefore, the 112b rejection is maintained.
Regarding dependent claim 9, this claim does not remedy the deficiencies of parent claim 8 noted above, and is rejected for the same rationale.
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.
Claims 1 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sechrist et al. (US 6,123,833 A) (Sechrist).
Regarding claim 1, Sechrist teaches a catalyst regeneration process (Sechrist, Abstract), including regeneration of spent paraffin dehydrogenation catalysts (Sechrist, Col. 2, lines 39-43). Sechrist teaches the method comprises passing a hydrocarbon feedstock to a reaction zone and contacting said feedstock with catalyst particles and recovering a hydrocarbon product and removing the deactivated catalyst particles (Sechrist, claim 19, steps (a) and (b)), wherein the catalyst particles are cooled regenerated catalyst particles from the regenerator and cooling zone (Sechrist, claim 19, step (h); claim 21).
Sechrist teaches wherein the reaction zone is a dehydrogenation zone and the feed is paraffins (Sechrist, Col. 2, lines 39-43; claim 20) (i.e., charging a reactant stream to a paraffin dehydrogenation reactor; contacting said reactant stream with a cooled regenerated catalyst stream to produce a product gas stream and a spent catalyst; wherein said cooled regenerated catalyst and said spent catalyst comprise paraffin dehydrogenation catalyst).
Further, Sechrist teaches the deactivated catalyst is sent to a regeneration zone (Sechrist, claim 19, step (c)) (i.e., passing spent catalyst stream to a regenerator).
Sechrist teaches regenerating the catalyst in the regenerator to provide a regenerated catalyst stream and a flue stream (Sechrist, claim 19, steps (c) and (g)), and wherein the first section in the regeneration process is the combustion zone (Sechrist, Col. 19, lines 20-22). Following combustion, the regenerated catalyst is cooled before going back to the reaction zone (Sechrist, claim 21) (i.e., passing regenerated catalyst stream to the paraffin dehydrogenation reactor). Therefore, the products of the regeneration zone are hot regenerated catalyst and a flue gas stream.
Sechrist teaches the regenerated catalyst is cooled in a cooler using an air stream flowing countercurrently to the catalyst (Sechrist, Col. 21, lines 23-29 and 42-50), and wherein the air stream ultimately becomes the make-up gas for the combustion bed (i.e., regeneration zone), after entering the process through the cooling zone (Sechrist, Col. 24, lines 4-10) (i.e., cooling said hot regenerated catalyst in a cooler by heat exchange with an air stream to produce a heated air stream; returning said heated air stream from said cooler to said regenerator).
Given that Sechrist discloses the process for regenerating catalyst that overlaps the presently claimed process for contacting a reactant stream with regenerated catalyst, including paraffin dehydrogenation reaction and paraffin dehydrogenation catalyst regeneration, it therefore would be obvious to one of ordinary skill in the art, to use the process for paraffin dehydrogenation reaction and paraffin dehydrogenation catalyst regeneration, which is both disclosed by Sechrist and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 10, Sechrist teaches the method of claim 1, wherein the reaction is a paraffin dehydrogenation reaction (Sechrist, Col. 2, lines 39-43), which, although is not explicitly stated by Sechrist, is an endothermic reaction, and as the reaction is the same as the claimed reaction, the contacting of the hydrocarbon reactant stream and cooled regenerated catalyst would inherently produce an endothermic reaction.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sechrist, as applied to claim 1 above, and further in view of Imai et al. (US 4,430,517 A) (Imai).
Regarding claim 11, Sechrist teaches the process of claim 1, but does not explicitly teach said catalyst includes gallium.
With respect to the difference, Imai teaches a dehydrogenation process and catalytic composition (Imai, Title; Abstract). Imai specifically teaches the catalyst comprise gallium (Imai, Col. 9, lines 30-36).
Imai is analogous art as it is drawn to dehydrogenation and dehydrogenation catalysts (Imai, Abstract).
In light of the disclosure of Imai, which is taught by Sechrist to be fully incorporated herein by reference (Sechrist, Col. 7, lines 22-31), it would be obvious to one of ordinary skill in the art to use the dehydrogenation catalyst of Imai including gallium in the process of Sechrist.
Response to Arguments
While applicant argues the 112(a) and 112(b) rejections are unpersuasive as set forth on pages 3-7 above, the examiner respectfully disagrees and maintains the rejections as set forth above.
Applicant primarily argues:
“Sechrist relates to a method for removing water from a catalytic contacting process. Sechrist describes cooling regenerated catalyst using an air stream. Sechrist mentions that the air stream ultimately becomes the make-up gas for the combustion bed after entering the process through the cooling zone. The cited reference further teaches that one portion passes through the cooling bed (cooling the catalyst) and is then exhausted from the regenerator vessel. The other portion bypasses the cooler, is recombined with the first portion, heated, and then sent to the reconditioning zone (Column 20, lines 18-26 and Column 24, lines 4-29 of Sechrist).
Sechrist neither explicitly teaches nor suggests the step of returning the heated air stream from the cooler to the regenerator, as specified in claim 1. In Sechrist, the air stream that cools the catalyst is not recycled back to the regenerator (combustion zone) for use as combustion air; rather, after cooling, this air is vented or directed elsewhere. Only the bypassed and recombined air is used in the reconditioning zone. Sechrist provides no disclosure, suggestion, or rationale for directly recycling the heated air from the catalyst cooler back to the regenerator for combustion purposes.
On the contrary, claim 1 recites returning said heated air stream from said cooler to said regenerator. The claimed process achieves improved heat integration and energy efficiency by directly recycling the heated air stream as combustion air, a feature not taught or suggested by Sechrist. This integration is particularly advantageous for paraffin dehydrogenation, where precise heat management is critical. Applicant therefore submits that the process of Sechrist does not render claim 1 obvious, nor does it provide any reason for one of ordinary skill in the art to modify the teachings of Sechrist to arrive at the claimed process.”
Remarks, p. 3
The examiner respectfully traverses as follows:
It is the examiner’s position that Sechrist’s teaching of the air stream ultimately becoming the make-up gas for the combustion bed (i.e., regeneration zone), after entering the process through the cooling zone (Sechrist, Col. 24, lines 4-10) is an explicit teaching that the heated air stream from the cooler is returned to the regenerator.
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732