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 .
Response to Amendment
Examiner acknowledges Applicant’s response filed 29 June 2026 containing remarks and amendments to the claims.
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 and 25-26, are rejected under 35 U.S.C. 103 as being unpatentable over Shell (GB 935,725) in view of Schucker (US 2003/0019790).
Regarding claims 1-2 and 25-26, Shell teaches a method for precipitating and removing asphaltenes from crude oils (page1, lines 1-40). Shell teaches mixing crude oil with ethyl acetate in a ratio of 3-6 parts volume ethyl acetate per volume oil (page 3, lines1-125) and mixing at a temperature of 30-70°C in order to precipitate and asphaltenes (page 3, lines 55-65). Examiner considers the Shell ratio of 3 to read on the claimed “approximate ratio” of “2.9” or “2.8”. Further, Examiner notes MPEP 2144.05 regarding obviousness of ranges.
Examiner considers Shell temperatures of 30°C to read on, or be close enough to the claimed “ambient temperature” or “25°C”, that it is expected that the same or similar results would be achieved. Examiner additionally notes MPEP 2144.05 regarding obviousness of ranges. It is not seen where such a temperature range would result in any new or unexpected results. Further, Schucker teaches a similar process operating at temperatures of about 25°C [0029], which Examiner considers to touch the claimed range of “ambient temperature”. Therefore, it is expected that such a temperature range would be workable.
Shell teaches separating the precipitated oil from the oil dissolved in the precipitant (page 3, lines 100-130). Shell teaches recovering and recirculating the precipitant (ethyl acetate) (page 4, lines 1-34). Shell also teaches that the oil may be subject to filtration (page 3, line 55-75).
Shell does not explicitly disclose separation of the asphaltenes and DAO/ethyl acetate solvent are separated using a filter having a pore size of 5-10 nm.
However, Schucker teaches a similar process for solvent deasphalting of hydrocarbons using a precipitant, followed by a membrane filtration to separate the asphaltenes from the oil and solvent [0025]. Schucker teaches using ceramic membranes having an average pore size of 40-1000 angstroms (4-100 nm), and preferably less than 250 angstroms (25 nm) to perform the asphaltene separation [0025]. Schucker teaches that using smaller pore size will increase asphaltenes separation but reduce permeate flux [0025]. Examiner additionally notes that it would have been obvious to the person having ordinary skill in the art to have selected appropriate operating conditions for the membrane, in order to obtain the desired separation of components. Please see MPEP 2144.05. It is not seen where such a selection would result in any new or unexpected results. Following membrane separation, the solvent is recovered in flash column 26 and recycled to the deasphalting step [0027].
Therefore, it would have been obvious to the person having ordinary skill in the art to have performed the separation of asphaltenes using the Schucker ceramic membrane, having the claimed pore size, for the benefit of removing the asphaltenes from the deasphalted oil.
Regarding claim 5, Schucker teaches membrane separation temperatures of 212-392°F [0029]. Examiner further notes that it is expected that the ceramic membrane of Schucker [0025] would be able to handle the same pressures as claimed, since it is the same ceramic material, used for the same purpose of separating asphaltenes from dao.
Claims 6-12, 14-20, and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Shell (GB 935,725) in view of Schucker (US 2003/0019790) as applied to claims 1, 3, 5, and 25 above, and further in view of Clais (US 4,238,451).
Regarding claims 6-7, 10-11, 14-20, and 27-30, the previous combination does not explicitly disclose washing the filter.
However, Clais teaches solvent extraction of asphaltenes, followed by washing the filter with toluene to dissolve the asphaltenes and wash them away (column 3, line 60-column 4, line 15).
Therefore, it would have been obvious to the person having ordinary skill in the art to have performed the Clais toluene filter washing step, in order to wash away asphaltenes so the filter may be reused.
Regarding claims 8-9 and 12, Schucker teaches two stages of membrane separation including solvent recovery [0028], see figure.
Response to Arguments
Applicant's arguments have been considered and are addressed by the updated rejections as necessitated by amendments to the claims.
Examiner considers Applicant’s arguments to be:
Shell teaches away from filtration of asphaltenes. Shell teaches that asphaltenes would clog a filter.
Shell operates at different conditions.
Shucker does not cure Shell deficiencies. Shell does not disclose ambient temperatures.
The claimed integrated combination is neither disclosed or suggested.
Regarding Applicant’s first argument, Examiner notes that Shell references older filters clogging. However, Shucker explicitly teaches that ceramic membranes will increase asphaltene separation [0025-0028]. In this regard, Shucker positively recites use of ceramic membranes to separate asphaltenes after precipitation steps.
Regarding Applicant’s second argument, Examiner notes MPEP 2144.05 drawn to the obviousness of similar or overlapping ranges. It is not seen where Applicant has provided evidence of new or unexpected results.
Regarding Applicant’s third argument¸ the claims do not recite ambient temperatures in ceramic membrane step. The ambient temperatures in the claim are drawn to the solvent precipitation step, not the ceramic membrane step.
Regarding Applicant’s fourth argument, Schucker is an analogous in that it is drawn to further separation of asphaltenes from solvent deasphalting effluents. The rejections combine the solvent used in the solvent deasphalting of Shell, with the further ceramic membrane steps of Schucker, to further recover asphaltenes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sun (US 2021/0403815) - teaches using two membranes, one operating in solvent deasphalting mode and the other running in solvent washing regeneration mode (abstract).
Hocker (Continuous Deasphalting of Heavy Petroleum Residues with Ethyl Acetate) – teaches solvent deasphalting with ethyl acetate.
Corbett (US 3,563,778) – teaches solvent extraction of asphaltenes with ethyl acetated (example 5, column 3).
Coombs (US 4,298,456) - teaches solvent extraction, filtration, and toluene wash (see figure).
Feustel teaches extraction using ethyl acetate, pentane, and toluene [0042].
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 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 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
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