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 .
Response to Amendment
Examiner acknowledges Applicant’s response filed 10 December 2025 containing remarks and amendments to the claims.
Claims 1-6, 8-18, and 20-22 are pending.
The previous rejections have been updated as necessitated by amendments to the claims.
The previous obvious type double patenting rejections for application 18543724 have been withdrawn in view of the terminal disclaimer approved 10 December 2025. Examiner notes that no terminal disclaimer has been submitted for application 18517939, and thus these rejections are maintained.
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.
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 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, 3, 5-7, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Groten (US 2005/0082201) in view of Peterson (US 2,373,501).
Regarding claims 1 and 5-6, Groten teaches introducing naphtha feed comprising benzene and naphtha and hydrogen gas into a hydrotreatment zone to form a hydrotreated effluent comprising cyclohexane [0018]. Groten teaches that the naphtha comprises benzene [0018]. Examiner considers “benzene” to read on the claimed hydrogen diminished liquid, and “cyclohexane” to read on the claimed hydrotreated effluent and hydrogen carrier.
Groten does not explicitly disclose (1) additional hydrotreater feed comprising a hydrogen diminished liquid organic hydrogen carriers (2) separation of products.
Regarding (1) and (2), Peterson teaches a similar process for hydrotreatment of benzene to produce cyclohexane (page 2, column 1, lines 45-75). After hydrotreatment, Petersen separates the cyclohexane (hydrogen carrier) from the unconverted hydrogen and benzene/other hydrotreated liquid material (page 2, column 2, lines 1-10).
Therefore, it would have been obvious to the person having ordinary skill in the art to have fed a mixture of benzene and naphtha to the hydrotreatment zone of Groten, since both feeds are known for the production of cyclohexane. Further, it would have been obvious to the person having ordinary skill in the art to have separated the hydrotreated material, unreacted hydrogen, and cyclohexane (hydrogen donor), as disclosed by Peterson, for the benefit of obtaining the desired cyclohexane fraction.
Regarding claim 3, Groten teaches the naphtha has a boiling point around 176°F (80°C) and higher boiling material as well [0056].
Regarding claim 7, Peterson teaches separating and recycling the hydrogen (page 2, column 2, lines 1-24).
Regarding claim 16, Groten teaches the presence of hydrogenation catalyst [0058].
Regarding claim 20, Groten teaches that the hydrogenation zone also desulfurizes the naphtha feed [0058].
Claims 2, 4, 8-15, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Groten (US 2005/0082201) in view of Peterson (US 2,373,501), as applied to claim 1 above, and further in view of Klaasen (US 2022/0285714).
Regarding claims 2, 4, and 21-22, Groten/Petersen combination teaches benzene/cyclohexane hydrogen carriers.
The previous combination does not explicitly disclose benzyl toluene/perhydrobenzyl toluene.
However, Klaasen teaches hydrogenation to form various LOHC including benzene/cyclohexane, or benzyl toluene/perhydrobenzyl toluene [0017]. Examiner additionally notes that Klassen teaches the hydrogenated streams serve as liquid organic hydrogen carriers and then after transport can be dehydrogenated to obtain the hydrogen [0115-0118].
Therefore, it would have been obvious to the person having ordinary skill in the art to have used the Klaasen feeds in combination with those of the previous combination, since they are all known for the same purpose of hydrotreatment. Examiner additionally notes that Klaasen teaches an alternate treatment path for the hydrogenated streams, and that the person having ordinary skill in the art may select to either send the hydrogenated stream to further treatment for gasoline production or to Klaasen transport and dehydrogenation, for use as hydrogen, depending on the product desired at the time. It is not seen where such a selection would result in any new or unexpected results.
Regarding claims 8-15, the previous combination does not explicitly disclose the details of the hydrogen source.
However, Klaasen teaches modifying hydrogenation processes, by utilizing various carbon neutral sources of hydrogen that do not have emissions, use renewable electricity, carbon dioxide sequestration [0015-0024], [0048-0058].
Therefore, it would have been obvious to the person having ordinary skill in the art to have used the hydrogen sources as disclosed by Klaasen, in order to obtain the desirable carbon neutral benefits.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Groten (US 2005/0082201) in view of Peterson (US 2,373,501) as applied to claim 1 above, and further in view of Keller (US 2002/0134706).
Regarding claims 17-19, the previous combination does not explicitly disclose how the feedstocks are preheated.
However, Keller teaches that conventional petroleum hydrotreaters operate using feed/effluent heat exchanger in combination with a charge heater [0065].
Therefore, it would have been obvious to the person having ordinary skill in the art to have utilized the Keller feed/effluent heat exchanger and furnace, for the benefit of obtaining the desired hydrotreatment temperatures.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18517939 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are drawn to overlapping subject matter regarding hydrotreatment steps to produce hydrogen carriers.
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 10 December 2025 have been fully considered but they are not persuasive.
Examiner considers Applicant’s argument to be:
The person having ordinary skill in the art would not use cylcohexane as a hydrogen carrier, since Groten teaches sending cyclohexane to isomerization to produce a gasoline product.
Applicant’s process offers strong evidence of non-obviousness by way of synergy.
Regarding Applicant’s first argument, Examiner notes that claim 1 does not specify a positive step for actually sending the hydrogen rich liquid organic carrier to further treatment. In this regard, Examiner considers the cyclohexane of Groten/Petersen to read on the claimed “hydrogen rich liquid organic carrier”. Further, in the dependent claims, Klaasen is referenced to provide further treatment steps. Klaasen teaches an alternate treatment path for the hydrogenated streams, and that the person having ordinary skill in the art may select to either send the hydrogenated stream to further treatment for gasoline production or to Klaasen transport and dehydrogenation, for use as hydrogen, depending on the product desired at the time. It is not seen where such a selection would result in any new or unexpected results.
Regarding Applicant’s second argument, it is not seen where Applicant has provided evidence of new or unexpected results. Examiner suggests providing data showing such synergy so that it may be considered.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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