CTNF 18/393,466 CTNF 85250 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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. Election/Restriction Restriction to one of the following inventions is required under 35 U.S.C. 121: 08-11 AIA l . Claim s 1-12 , drawn to a process for producing a hydrocarbon feed for converting into carbon fiber starting with a raw unhydrotreated feed , classified in USPC 208/40 08-11 AIA II . Claim s 13-14 , drawn to a process for producing a hydrocarbon feed for conversion into carbon fiber starting with a hydrotreated stream , classified in USPC 208/40 08-09 AIA III. Claim s 13-14 , drawn to a process for conversion into carbon fiber , classified in USPC 208/40 . 08-13 AIA The inventions are independent or distinct, each from the other because: 08-14-01 AIA Inventions I, II and III are directed to related distinct process . The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants . Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: Both searches would not be required. Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species , including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election. Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141. 08-21 Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention . The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention. If claims are added after the election, applicant must indicate which of these 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(a) of the other invention. During a telephone conversation with Mark Goldberg on 05/06/2026, a provisional election was made without traverse to Group I. Claims 13-16 are withdrawn from consideration as non-elected Groups a Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142 (b), as being drawn to non-elected inventions. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-12 are 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. The terms "lighter components" and "heavier hydrocarbon components” in claims 1, 5, 10 and 12 are relative terms which render the claims indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of these terms is impossible to determine because there is no indication of what are included/excluded. Clarifications and appropriated corrections are required. All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above. Claim 8 recites the limitation "said solvent" and “said hydrocarbon”. There is insufficient antecedent basis for this limitation in the claim. Appropriated corrections are required. The limitation of “ said solvent containing said hydrocarbons is sent to a hydrotreating reactor” is unclear and confused because the purpose of the use of a hydrotreating reactor is unclear. Clarifications and appropriated corrections are required. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-3 and 10-11 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Kershaw et al. (WO 92/05231, applicants submitted in IDS), as evidenced by Chen et al. (Carbon, 161, 2020, 456-465) . Regarding claim 1, Kershaw et al. teach a process for preparing refine pitch for converting into carbon fiber comprising providing a petroleum pitch or coal tar pitch, mixing with quinoline (the instant claimed first solvent), removing quinoline insoluble components such as solids, ash-forming material and coke, extracting the pitch with a supercritical fluid such as toluene (the instant claimed second solvent) to remove a low molecular weight fraction (the instant claimed lighter components) of the pitch dissolved in toluene, and leave refined pit (the instant claimed a stream comprising a heavier hydrocarbons components), heat treatment at 400 0 C the refined pitch for at least partially converting the refined pitch to mesophase, and further to produce the carbon fibers (page 2, lines 25-29; page 6, lines 14-26; page 7, lines 23-page 9, line 8). A petroleum pitch or coal tar pitch are rich in polycyclic aromatic hydrocarbons with unsaturated aromatic rings, as evidenced by Chen et al.. Therefore, they are considered as a raw unhydrotreated feed as the instant claim. Since the reference of Kershaw et al. teach all of the claimed reagents, composition and method of making mesophase and carbon fibers, the physical properties of the resulting composition (i.e., increasing the molecular weight of the heavier hydrocarbon components) would be inherited follow as set forth in MPEP 2112.01(II). [1] Regarding claim 2, as discussed above, the process taught by Kershaw et al. comprises the first solvent of quinoline as the instant claim. Regarding claim 3, as discussed above, the process taught by Kershaw et al. comprises the second solvent of toluene, and further evidenced by Polish Patent No. 127934, entirely incorporated by reference through Kershaw et al.(pages 2-3). Regarding claim 10, as discussed above, the refines pitch taught by Kershaw et al. comprises high in toluene insoluble as the instant claim (page 5). Regarding claim 10, as discussed above, although Kershaw et al. do not specifically disclose the carbon fiber having a Young’s Modulus of at least 20 GPa as per applicant claim 11 , since the reference of Kershaw et al. teach all of the claimed reagents, composition and method of making mesophase and carbon fibers, the physical properties of the resulting composition (i.e., carbon fiber having a Young’s Modulus of at least 20 GPa) would be inherited follow as set forth in MPEP 2112.01(II 07-21-aia AIA Claim s 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kershaw et al. as applied to claim 1 above . Regarding claim 4, as discussed above, the heat treatment taught by Kershaw et al. is at a temperature of 400 0 C for 6 hours (pages 8-10). Although Kershaw et al. do not specifically teach the thermal treatment is above about 425 0 C as per applicant claim 4 , a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. The temperature at which a chemical reaction is performed is considered to be a result effective variable because, it is well known in the art that reaction temperature controls reaction kinetics, and one of ordinary skill in the art would be expected to be able to adjust the temperature to arrive at an optimal temperature or range, given the general conditions taught by Kershaw et al. Regarding claims 5-6, since the reference of Kershaw et al. teach all of the claimed reagents, composition and method of making mesophase and carbon fibers, the physical properties of the resulting composition (i.e., increasing a proportion of the heavier hydrocarbon components being converted to a mesophase while reducing a proportion of coke to produce a product stream comprising said mesophase and producing carbon fibers having a Young modulus of at least 200 GPa) would necessarily follow as set forth in MPEP 2112.01(II) . 07-21-aia AIA Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kershaw et al. as applied to claim 1 above, and evidenced by Wikipedia . Regarding claim 7, although Kershaw et al. do not specifically disclose raw unhydrotreated feed comprises thermally produced pyrolysis oils selected from steam crackers or pyrolysis units or bio derived oils derived from plants, animals, waste greases, algal or microbial sources as per applicant claim 7 , it is known unhydrotreated pyrolysis feed refers to the raw bio-oil produced directly from fast pyrolysis of biomass such as wood without undergoing hydrotreating, as evidenced by Wikipedia . 07-21-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kershaw et al. as applied to claim 1 above . Regarding claim 8, although Kershaw et al. do not specifically disclose sending the hydrocarbons to a hydrotreatment reactor as per applicant claim 8 , it would have been prima facie obvious to one of ordinary skill in the art at the time of invention was filed to modify the teachings of Kershaw et al., by using the hydrotreatment reactor, with a reasonable expectation of success . 07-21-aia AIA Claim s 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kershaw et al. as applied to claim 1 above . Regarding claim 9, as discussed above, the thermal treatment taught by Kershaw et al. comprises heat-soaking treatment (page 7). Heat-soaking and soaker visbreaker are both thermal processes that involves holding material ta elevated temperatures for a period of time. Although Kershaw et al. do not septically disclose the use soaker visbreaker as per applicant claim 9 , it is known in oil refining, a visbreaker is a unit that thermally cracks large hydrocarbon molecular in heavy oil to lower viscosity. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use soaker visbreaker process in the thermal treatment process to obtain the invention as specified in the claim 9, motivated by the fact it is well known that soaker visbreaker method allows more complete cracking at lower furnace temperatures Since both of heat-soaking and soaker visbreaker are thermal processes that involves holding material ta elevated temperatures for a period of time, one would have a reasonable expectation of success. Regarding claim 12, the carbon fiber taught by Kershaw et al. procures form anisotropic pitch as the instant claim (page 2, line 1-10). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm. 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, Sally A Merkling can be reached at 571-272-6297. 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. /YUN QIAN/Primary Examiner, Art Unit 1738 Application/Control Number: 18/393,466 Page 2 Art Unit: 1738 Application/Control Number: 18/393,466 Page 3 Art Unit: 1738 Application/Control Number: 18/393,466 Page 4 Art Unit: 1738 Application/Control Number: 18/393,466 Page 5 Art Unit: 1738 Application/Control Number: 18/393,466 Page 6 Art Unit: 1738 Application/Control Number: 18/393,466 Page 7 Art Unit: 1738 Application/Control Number: 18/393,466 Page 8 Art Unit: 1738 Application/Control Number: 18/393,466 Page 9 Art Unit: 1738 Application/Control Number: 18/393,466 Page 10 Art Unit: 1738 Application/Control Number: 18/393,466 Page 11 Art Unit: 1738 Application/Control Number: 18/393,466 Page 12 Art Unit: 1738 [1] [1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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