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 .
Election/Restrictions
Applicant argues that because no lack of unity was raised during the international phase, the USPTO must follow that determination. This argument is not persuasive. Unity eterminations made during the international phase are not binding on the national stage. Under 37 CFR 1.475 and PCT Rule 13, the USPTO is required to independently determine whether the claims comply with the requirement of unity of invention during national stage examination. Accordingly, the absence of a unity objection in the international phase does not preclude the present restriction requirement.
Applicant argues that the Office failed to clearly identify which portions of Van disclose the alleged common feature and improperly referenced “D2” and “D3”. This argument is also not persuasive. The restriction requirement relies on Van for the general teaching that:
hydrocarbon feedstreams may comprise hydrogen and light hydrocarbons including propane, and
such feedstreams are subjected to thermal treatment to produce olefins.
Relevant portions of Van include at least:
¶[0023] — combining hydrocarbon feedstream with hydrogen gas feedstream
¶[0026] — hydrocarbon feedstream includes ethane and propane
¶[0041] — thermal treatment to produce olefins
Any prior reference to “D2” or “D3” is not material to the present requirement, as the restriction is adequately supported by Van alone.
Applicant argues that Van does not disclose the claimed propane content or propane:H₂ ratio and therefore cannot negate the “special technical feature”. This argument misapprehends the standard for unity. Under PCT Rule 13.2, the relevant inquiry is not whether the prior art discloses the claimed invention in its entirety, but whether the alleged common feature: defines a contribution over the prior art. Van teaches: a) feeds comprising hydrogen and propane, and b) control of hydrogen addition in hydrocarbon cracking systems. The claimed numerical ranges (propane mol-% and propane:H₂ ratio) represent optimization of known variables, i.e., result-effective variables, which would have been routinely adjusted by one of ordinary skill in the art. Accordingly, these ranges do not constitute a “special technical feature” because they do not define a contribution over the prior art.
Applicant argues that Van does not disclose specific embodiments using propane feeds to produce ethylene. This argument is not persuasive. Unity analysis does not require that the prior art anticipate or render obvious each claim. Rather, the issue is whether the common feature linking the groups is itself novel and non-obvious. Van clearly teaches hydrogen-containing hydrocarbon feeds, and thermal conversion to olefins. Thus, the alleged linking feature (hydrogen + propane feed composition) is not a special technical feature, regardless of whether Van explicitly discloses the exact claimed ratios or specific downstream products.
Applicant argues that restriction is improper because the same art would be searched. This argument is not persuasive. The requirement for unity under 37 CFR 1.475 / PCT Rule 13 is independent of the search burden analysis under MPEP §803. Even if overlapping art exists, restriction is proper where:
the claims are directed to different categories of invention (method, composition, product), and
no common special technical feature links them.
Here:
Group I → method
Group II → composition (feed)
Group III → product (effluent)
Each group requires different search considerations, including:
process conditions and operation (Group I),
compositional structure (Group II), and
product property/composition art (Group III).
Thus, examination of all groups would impose a serious burden.
The requirement is still deemed proper and is therefore made FINAL.
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 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 25-36 are rejected under 35 U.S.C. §103 as being unpatentable over Malaty et al. (US 2012/0053383 A1) in view of Van Willigenburg (US 2020/0290939 A1).
Malaty discloses a refinery off-gas stream comprising hydrogen and light hydrocarbons including methane, ethane, propane, propylene, butanes, butenes, carbon monoxide, and carbon dioxide (¶[0034]). Malaty further teaches that such off-gas streams may be provided to a pyrolysis furnace (¶[0042]) and may be used alone or in combination with conventional hydrocarbon feeds such as ethane or propane (¶[0043]). Malaty additionally teaches that thermal cracking of such feeds produces olefins including ethylene and propylene (¶[0045]). Accordingly, Malaty teaches providing a thermal cracking feed containing hydrogen and propane and subjecting the feed to thermal cracking to obtain an effluent comprising ethylene.
Van Willigenburg discloses combining a hydrocarbon feedstream with a hydrogen gas feedstream (¶[0023]), wherein the hydrocarbon feedstream may comprise light hydrocarbons including ethane and propane (¶[0026]). Van Willigenburg further teaches subjecting the combined stream to thermal treatment at elevated temperatures, including reactor temperatures in the range of about 700°C to about 880°C, to produce olefin products (¶[0041]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty to include controlled addition of hydrogen gas as taught by Van Willigenburg in order to improve olefin selectivity and reduce coke formation during thermal cracking.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by optimizing the relative amounts of propane and hydrogen, including the claimed propane concentration and propane-to-hydrogen ratio, since Malaty teaches feeds containing propane and hydrogen (¶[0034]) and Van Willigenburg teaches controlling hydrogen addition (¶[0023]), and such parameters are result-effective variables that would have been routinely optimized to achieve desired olefin yield and reduced coking (In re Aller).
Claim 26
Malaty teaches propane-containing feeds (¶[0034], ¶[0043]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by adjusting propane concentration and propane-to-hydrogen ratio within narrower ranges (e.g., 15–50 mol% propane; ratio 0.10–2.2) as a matter of routine optimization.
Claim 27
Malaty teaches feeds comprising C2+ hydrocarbons including ethane, propane, and butane together with hydrogen (¶[0034]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by controlling the ratio of C2+ hydrocarbons to hydrogen within the claimed range as a result-effective variable.
Claim 28
Malaty teaches the presence of C4 hydrocarbons including butanes and butenes (¶[0034]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by adjusting the amount of C4 hydrocarbons to 1–8 mol% as part of routine feed composition optimization.
Claim 29
Malaty teaches feeds comprising ethane and propane (¶[0034], ¶[0043]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by including ethane in an amount of 0–10 mol% as a conventional steam cracking feed component.
Claim 30
Malaty teaches hydrogen-containing feeds (¶[0034]) and Van Willigenburg teaches hydrogen co-feeding (¶[0023]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by adjusting hydrogen concentration within the claimed range as a result-effective variable.
Claim 31
Malaty teaches refinery off-gas streams comprising methane, CO, CO₂, and other components (¶[0034]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by controlling impurity levels within the claimed range as part of routine process optimization.
Claim 32
Van Willigenburg teaches hydrogen integration with hydrocarbon processing (¶[0023]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty to employ renewable-derived hydrocarbon feeds having biogenic carbon content, as such feeds are known in the art.
Claim 33
Malaty teaches pyrolysis (steam cracking) (¶[0042]).
Claim 34
Van Willigenburg teaches reactor temperatures of about 700°C to about 880°C (¶[0041]) and Malaty teaches steam cracking furnace operation (¶[0042]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty to operate within the claimed temperature, pressure, and dilution ranges, as these are conventional steam cracking conditions.
Claim 35
Malaty teaches refinery off-gas streams (¶[0034]) and Van Willigenburg teaches hydrogen integration (¶[0023]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by deriving the cracking feed from hydrotreatment of renewable oxygen-containing hydrocarbons, as such processes are known to produce hydrogen and light hydrocarbons.
Claim 36
Malaty teaches production of ethylene and propylene (¶[0045]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Malaty by separating ethylene and propylene and subjecting them to polymerization, as such downstream processing is conventional in petrochemical systems.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771