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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 January 2026 has been entered.
Claims 1-11 are pending.
The previous rejections have been updated as necessitated by amendments to the claims. The updated rejections follow.
The terminal disclaimer filed 28 January 2026 has been disapproved because the applicant name listed on the terminal disclaimer does not match the ADS.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 3,451,925) in view of Mead (US 5,171,426).
Regarding claims 1-6, Morris teaches contacting charge oil hydrocarbons with NMP solvent in liquid liquid extraction zone 20 to recover raffinate 2 (aliphatic hydrocarbons) and extract 3 (aromatic and heteroatom containing) (column 3, lines 35-75 and column 4, lines 1-45).
Morris mixes the extract stream 3 with water 9 in extraction zone 23 to separate extract product 8 from water and NMP mixture 10 (column 4, line 28-45). Examiner notes that Morris teaches NMP (solvent) and water (demixing solvent) which are the same as the solvent and demixing solvent identified in Applicant’s instant specification example 1. Thus, Examiner considers the NMP and water of Morris to read on the claim limitations regarding miscibility in heptane and solubility parameters.
Morris teaches separating NMP (solvent) from water (demixing solvent) in tower 22 (column 4, lines 45-60).
Morris recycles NMP 4 from column 22 to extraction step 20 (column 4, lines 45-60).
Morris recycles water 12/9 to extractor 23 (column 4, lines 45-60).
Morris does not disclose multiple repetitions or sub steps of step b.
However, Mead teaches that it is well known in solvent extraction to repeat extraction steps performed on the raffinate or extract phases in order to enhance a desired property (column 1, lines 35-38). The instant specification describes the “incremental” addition as feeding a portion of the solvent in step b1, and another portion of the solvent in step b2. It is not seen where this differs from the Mead staged solvent addition. It is not seen where the instant claims specify a different dosage of solvent in each stage, or throughout the process overall.
Therefore, it would have been obvious to the person having ordinary skill in the art to have performed repeated demixing steps of extract stream 3 with water 9 in multiple extraction zones, in order to improve the recovery of the solvent from the extract.
Regarding claims 7-8, Morris teaches that raffinate 2 (aliphatic hydrocarbons) can be contacted with water 6 (demixing solvent) to separate aliphatic raffinate 5 from water/solvent 7 (see figure, column 4, lines 10-30).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 3,451,925) in view of Mead (US 5,171,426) as applied to claim 1 above, and further in view of Derks (WO 2018/104443).
Regarding claims 9-11, the previous combination teaches the limitations of claim 1, as discussed above.
The previous combination does not explicitly disclose cracking waste plastics to form the feed of claim 1, or feeding the aliphatic (raffinate) recovered to steam cracking.
However, Derks teaches that pyrolysis oil from plastic waste feed may be subject to extraction with NMP to produce a more suitable feed for steam cracking (page 2, line 18-page 3, line 25).
Therefore, it would have been obvious to the person having ordinary skill in the art to have subject the waste plastic derived pyrolysis oil of Derks to the NMP solvent extraction steps of the previous combination, for the benefit of removing contaminants so a more suitable steam cracking feed may be formed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18247103 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to overlapping subject matter regarding solvent extraction and demixing of plastic derived hydrocarbons.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 28 January 2026 have been fully considered but they are not persuasive.
Examiner considers Applicant’s argument to be:
The claims have been amended to indicate “incremental” addition of solvent, which differs from the multiple stages described by Mead. The instant process results in improved results.
In response to Applicant’s argument, Examiner notes that each demixing step uses the same solvent, just repeated. The instant specification describes the “incremental” addition as feeding a portion of the solvent in step b1, and another portion of the solvent in step b2. It is not seen where this differs from the Mead staged solvent addition. It is not seen where the instant claims specify a different dosage of solvent in each stage, or throughout the process overall. In this regard, it is not seen where Applicant has distinguished from the prior art teaching demixing with water (Morris) and the teaching of multi step extraction to improve recovery (Mead). Examiner notes that the prior art teaches the same separation of aliphatic products from solvent and water.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dooley (US 2018/0355256) – subjects waste plastic derived pyrolysis oil to solvent extraction with nmp [0057-0062].
D’Alessandro (US 2007/0221538) -teaches solvent extraction to recover heteroatoms (abstract)>
Farkas (US 2009/0200208) – teaches solvent extraction of hydrocarbons (abstract)>
Sherman (US 4,390,418) – teaches solvent recovery in multiple stages (see figure).
Stover (US 4,271,009) – teaches that multiple batch solvent extraction steps yield improved results over single stage (column 7).
Karnofsky (US 4,239,617) – teaches multi stage solvent extraction
Related applications 18247138, 18246755, 18246997, 17441380, 18248904, 18248758 are similar, but differ because they do not require multiple demixing steps as claimed.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHELLE STEIN/Primary Examiner, Art Unit 1771