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 .
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.
Claim 1-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18535446 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘446 has all the claim limitations and additional claim limitations.
Applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed 1n the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Election/Restrictions
The examiner respectfully recognizes the selection of group 1 claims 1-10 without traverse in the response of 6/24/2026.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhan et al (US 2023/0140581 A1).
Zhan teaches a method of transporting hydrogen. A first processing facility hydrocracks a feed (p 24) thereby increasing the amount of hydrogen in the product relative to the feed. Also see p 31.
This is then transported via truck, ships railroad and other known methods to a second facility, see p 6, 40.
Regarding the distance of 100 km or more, this is not specifically stated. No range of transportation is provided. Use of a ship is also cited, clearly indicating a long journey. As such 100 km or more is an obvious variant of the invention of Zhan.
At the second destination dehydrogenation is performed to liberate the wanted hydrogen. See p 41-43. The hydrocarbons are then discharged by being sold as products, See p 46.
Regarding claim 3 and transportation to a different third facility, this is not specifically stated. However, the intension of the invention is the ability to transfer hydrogen wherever required. Such multiple destinations are an obvious variant of the process.
Claim(s) 2, 4-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhan et al (US 2023/0140581 A1) and Mukherjee (US 2019/0203130 A1).
Zhan does not teach the use of vacuum gas oil as feedstock.
Mukherjee teaches a process for hydrocracking vacuum gas oil (p 17, 20). This increases the amount of hydrogen in effluent.
The hydrocracked oil is separated into as many cuts as desired. This includes lights gases, light naphtha, and heavy naphtha. See specifically p 35, but also p 31-37 for a more complete description.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the process and products of Mukherjee to transport the hydrogen enhanced hydrocarbons as taught in Zhan. This has the advantage of being a cheap and effective way to transport hydrogen without loss of gas from hydrogen. See p 2-4 of Zhan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem 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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/FRANCIS C CAMPANELL/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
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