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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 December 2025 has been entered.
Election/Restrictions
Newly submitted claims 21-24 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The apparatus as claimed could be used for another and materially different purpose, such as purification of pharmaceutical compostions.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-24 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-2, 5-12, 14-20 and 25-31 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. The instant specification does not support the claim limitations regarding “unfractionated crude oil” feed to ethyl acetate mixing chamber or “regenerating ethyl acetate from permeate to yield deasphalted oil, wherein the regenerating is performed using a second ceramic membrane filter distinct from the filter used in the separating step”. Examiner note that Applicant’s instant specification teaches fractionation to recover crude oil bottoms prior to treatment with ethyl acetate (see instant spec [0020], [0024], see figure 1 fractionation unit 24 prior to mixing vessel 38 and membrane 48). The instant specification also teaches separation of ethyl acetate from permeate using a flash separation step, and only uses the ceramic membrane for the separation of precipitants from permeate [0018], [0020], [0025], see figures.
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.
Claim 2 is 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.
Regarding claim 2, it is unclear if the heating step is referring to the mixing step, or some other step. Further, it is not clear how the temperature is “heated to a temperature in the range of 80°F to 130°F” if the temperature is maintained at “ambient temperature without heating” as required by independent claim.
Regarding claim 31, it is unclear how the “maintaining the solution” step is related to the membrane step. Further, the temperature range does not further limit the temperature described in claim 25.
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, 25-26, and 31 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, 25-26, and 31, 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.
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.
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 (Continous 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) 0 teaches solvent extraction, filtration, and toluene wash (see figure).
Feustel teaches extraction using ethyl acetate, pentane, and toluene [0042].
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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