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 .
Terminal Disclaimer
The terminal disclaimer filed on November 14, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application 18/160,570 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-3 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Stigsson et al. (US 2015/0307810) in view of Sisson et al. (US Pat. 2,894,880).
Considering Claims 1 and 3: Stigsson et al. teaches a process comprising separating a light stream comprising water and turpentine from a feedstock (Figure 2; ¶0061); separating the turpentine from the other volatile components (Figure 2); separating a light and heavy fraction from the feedstock in a thin film evaporator (Figure 2; ¶0062-63), where the heavy fraction comprises tall oil pitch (¶0062) and the depitched fraction is treated in a distillation step (¶0064).
Stigsson et al. does not teach using the claimed fractionator for the removal of the light stream. However, Sisson et al. teaches removing the odorous volatile fraction/light stream comprising turpentine through the use of a fractionator (143-57) comprising a reboiler and a condenser to produce a distillate and a reflux liquid (Fig. 1; 5:5-29). Stigsson et al. and Sisson et al. are analogous art as they are concerned with the same field of endeavor, namely tall oil processing. It would have been obvious to a person of ordinary skill in the art to have used the fractionater of Sisson et al. in the process of Stigsson et al., and the motivation to do so would have been, as Sisson et al. suggests, it allows for the removal of the odorous components without degrading the other components of the tall oil (1:28-43).
Considering Claim 2: Stigsson et al. teaches the distillation of the depitched fraction results in a light phase comprising crude fatty acids, a gaseous phase comprising resin acids that is fed to a RA polishing tower, and a third phase comprising resin acids that goes to the thin film evaporator (Figure 2; ¶0110).
Considering Claim 7: Stigsson et al. teaches separating the turpentine after the separation apparatus (Figure 2).
Considering Claim 8: Sisson et al. is silent as to whether the reboiler and the tower are within the same shell. However, the rearrangement of parts has been found to be obvious absent a change in the operation of the apparatus. See MPEP § 2144.04. It would have been obvious to a person of ordinary skill in the art toa have placed the fractionator components within a single shell, and the motivation to do so would have been, a person of ordinary skill in the art would expect the apparatus to function in the same manner.
Considering Claim 9: Stigsson et al. teaches isolating the turpentine from the other components, but is silent towards the concentration of the turpentine in the composition. However, it would have been obvious to a person of ordinary skill in the art to have purified the turpentine product to allow for its use in the diesel composition later int eh process (¶0112).
Considering Claims 10 and 11: Sisson et al. teaches the fractionator as being operating at 225 ºC and 30 mmHg/4 kPa (4:14-32).
Considering Claim 12: Stigsson et al. teaches hydrogenating the crude fatty acids fraction (¶0091).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Stigsson et al. (US 2015/0307810) in view of Sisson et al. (US Pat. 2,894,880) as applied to claim 1 above, and further in view of Drew (US Pat. 3,607,617).
Considering Claims 4-6: Stigsson et al. and Sisson et al. collectively teach the process of claim 1 as shown above.
Stigsson et al. does not teach the use of a dephlegmator for the condensation. However, Drew teaches using a dephlegmator to isolate turpentine from a gas phase (2:59-3:3). Drew teaches the dephlegmator as comprising internal baffles/flow redistributors (2:59-3:3). Stigsson et al. and Drew are analogous art as they are concerned with a similar technical difficulty, namely turpentine isolation. It would have been obvious to a person of ordinary skill in the art to have used the dephlegmator of Drew in the process of Stigsson et al., and the motivation to do so would have been, as Drew suggests, to increase phase separation between the water and turpentine during separation (1:35-60).
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Stigsson et al. identifies a thin film evaporator as the preferred means of removing volatile compounds is not persuasive. While Stigsson et al. teaches the thin film evaporator as being the most preferred means of volatile removal, it does not teach away from other functionally equivalent means of volatile removal, such as the fractonator of Sisson et al. It would have been obvious to a person of ordinary skill in the art to have used the fractionater of Sisson et al. in the process of Stigsson et al., and the motivation to do so would have been, as Sisson et al. suggests, it allows for the removal of the odorous components without degrading the other components of the tall oil (1:28-43). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123.
B) In response to applicant's argument that Sisson et al. does not teach an arrangement for recovering turpentine and water and a reflux liquid, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The separation of the turpentine from the other components of the volatile component is taught in Stigsson et al.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767