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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 January 2026 has been entered.
Claims 1-4 are pending.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Patron (WO 2021/224949).
Regarding claims 1-2, Patron teaches an upflow slurry hydroconversion process (page 5). The reactor is fed with hydrogen containing gas introduced into the reaction liquid with orifice density of 64-2500 m2 (page 12), overlapping with the claimed range. The hydroconversion products are removed and sent to downstream vacuum distillation and the residue is recycled to the reactor (page 14). Patron teaches surface velocity is expanded to values of up to 2.5 cm/s (pages 14-15), which includes values overlapping with the claimed range.
Patron teaches that the orifice density results in an increased hydrogenation rate, and reduces the volumetric flow rate of hydrogen per single entry point (page 5, lines 28-32). Patron teaches that it is conventional in the prior art to only operate up to gas holdup values of 0.33 (page 5). Conventional hydrotreaters have no benefit to operating beyond gas holdup of 0.33, however, when using a reactor with higher orifice density, higher gas holdup may be achieved (pages 5-6).
As discussed in Applicant’s arguments, the surface velocity claimed corresponds to a gas holdup value of 0.33 or less. Examiner considers Patron teaching of being able to increase the gas holdup to exceed 0.33 to be close enough/touch the claimed range of 0.33 or less. See MPEP 2144.05 regarding obviousness of ranges. Further, Patron teaches it is conventional to run at lower gas holdup, and that suitable surface velocities may be selected in order to achieve the desired gas holdup and hydrogenation activity.
Therefore, it would have been obvious to the person having ordinary skill in the art to have appropriately selected the surface velocity as known in the art in order to achieve the desired hydrogenation activity level. Patron teaches that the benefits of the invention are drawn to the orifice density, and that the orifice density improves hydrogenation activity and enables higher gas holdup (page 5-6). However, it is not seen where such disclosure teaches that one must use the higher surface velocity/gas holdup. It is simply a benefit available due to the increased orifice density.
Further, Examiner notes that the prior art teaches that orifice density, gas holdup, and surface velocity are result effective variables. Therefore, it would have been obvious the person having ordinary skill in the art to have selected appropriate orifice density, gas holdup, and surface velocity in order to achieve improved conversion. It is not seen where Applicant has provided data supporting the allegations of unexpected results.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Patron (WO 2021/224949) as applied to claims 1-2 above, and further in view of Patron ‘15 (US 2015/0353848)
Regarding claims 3-4, Patron teaches recycling resid to be combined with the charge (page 14).
Further, Patron ’15 teaches selecting the flowrates of the feed and recycle streams [0025].
Therefore, it would have been obvious to the person having ordinary skill in the art to have appropriately selected flow rates in order to maintain operation of the process. It is not seen where such a selection would result in any new or unexpected results.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,319,879. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn to overlapping subject matter including hydroconversion using overlapping ranges of orifice density. Examiner notes that the instant claims have 112 rejections regarding the surface velocity range, however it appears that the surface velocity of the instant claims may overlap with the surface velocity of ‘879.
Response to Arguments
Applicant's arguments filed 20 January 2026 have been fully considered but they are not persuasive.
Examiner considers Applicant’s arguments to be:
The prior art teaches gas holdup above 0.33 for orifice density above 100 per m2, while the instant process teaches gas holdup below 0.33 for orifice density above 100 per m2. The instant process limited gas holdup results in unexpected results.
In response to Applicant’s arguments, Examiner notes that the range of the prior art touches that claimed. Further, Examiner notes that the prior art teaches that orifice density, gas holdup, and surface velocity are result effective variables. Therefore, it would have been obvious the person having ordinary skill in the art to have selected appropriate orifice density, gas holdup, and surface velocity in order to achieve improved conversion. It is not seen where Applicant has provided data supporting the allegations of unexpected results. Examiner called Applicant’s representative inquiring if there is data showing the unexpected results, including data points within the claimed range, outside the claimed range, and at the endpoint of the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Boyer (US 2007/0144352) – teaches orifice density of 100-3000 orifices/m2 [0037]. Boyer does not teache superficial velocity or gas holdup
Boyer (US 2005/0051915) – teaches a reactor with a density of 150 tubes/m2 [146], fed with a specific velocity [0036]. Boyer feeds hydrogen and hydrocarbon together, while the instant claims feed the “hydrogen, into said reaction liquid”.
Gauthier (US 2011/0036752) – teaches hydroconversion with a distributor phase and surface velocity [0065].
Patron (WO 2018/025282) – teaches hydroconversion with resid recycle (abstract)
Pruden (US 6,517,706) – teaches hydroconversion in a slurry reactor with a feed injector (abstract)
Buttke (US 5,308,476) – teaches reduced gas holdup in ebullated bed reactor (abstract)
Schuman (US 3,183,180) – teaches hydroconversion with a specific gas velocity (see examples)
Song (US 2012/0315202) – teaches hydroconversion with a grid plate distributor (abstract)
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