DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/617,309 application filed 26 March 2024, which is a continuation of U.S. Patent Application Serial No. 17/605,286, now U.S. Patent No. 11,939,537, filed 21 October 2021. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-28 are pending and have been fully considered.
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 1-14 and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 16-17 of U.S. Patent No. 11,939,537. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent recites the same limitations as claims 1 and 6 of the instant application and clearly anticipates the same. The remaining claims of each recite the same or substantially the same limitations.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 15-16 and 19-28 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 14-15 and 18-27 of prior U.S. Patent No. 11,939,537. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-4 and 17-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of the aforementioned claims recites all possible alternatives and, therefore, fails to further limit the claims from which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claim(s) 1-4, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nacamuli et al (US 6,051,128).
With respect to claims 1-4, Nacamuli et al discloses a process wherein a “hydrocarbon feed is separated into a C5-cut, a C6-C7-cut, and a C8+ cut…The C6-C7-cut is subjected to catalytic aromatization at elevated temperatures in a first reformer in the presence of hydrogen and using a non-acidic catalyst comprising at least one Group VIII metal and a non-acidic zeolite support to produce a first reformate stream; and the C8+ cut is subjected to catalytic aromatization at elevated temperatures in a second reformer in the presence of hydrogen and using an acidic catalyst comprising at least one Group VIII metal and a metallic oxide support to produce a second reformate stream” [abstract]. The reference further teaches that the “process is usually practiced on a straight run naphtha” [column 1, lines 13-14; see also column 3, lines 60-62: “From our experimental studies where we have investigated the aromatization of a wide-boiling range naphtha over a nonacidic zeolite such as Pt/K--Ba L zeolite or Pt/K L zeolite with F and Cl, we have found that…”]. The hydrocarbon feed of the application corresponds to the hydrocarbonaceous feed predominantly comprising naphtha of the instant application. The C8+ cut corresponds to the first feedstream and the catalyst in the second reformer corresponds to the first reforming catalyst. The C6-C7 cut corresponds to the second feedstream predominantly comprising C7- hydrocarbons of the instant application, and the catalyst in the first reformer corresponds to the second reforming catalyst. Nacamuli et al provides an exemplary embodiment wherein “a full boiling hydrocarbon feed 1 is fed to a depentanizer 10 to produce a C5- fraction stream 2 and a C6+ stream 3. The C6+ stream 3 is fed to splitter 15 to produce an overhead C6-C7 cut 4 with nil C8+, and a bottoms C8+ cut 5 with all the C8+ material… The overhead C6-C7 cut 4 is passed through a sulfur sorber 20 to protect against sulfur/H2S contamination, and is processed over a first reformer 22 which contains a non-acidic zeolite, such as Pt/K--Ba zeolite L, or Pt/K zeolite L with and without fluorine and/or chlorine. Operating conditions of the first reformer are 75 psig, [a LHSV of] 1.0 hr-1, a hydrogen/hydrocarbon (H2/HC) ratio of 5/1 mole/mole and a target C6 +C7 normal and iso-paraffin (n+i) paraffin conversion of 90-93%. The C6 and C7 naphthenes as cyclohexanes are fully converted while the cyclopentanes are not fully converted. The individual paraffin, iso-paraffin and naphthene conversion by carbon number in the first reformer is shown in Table II with the associated selectivity to the corresponding aromatic. The first reformate stream 24, from the first reformer 22, has a benzene yield of 21.0 wt. % of splitter feed and a toluene yield of 14.8 wt. % of splitter feed. The bottoms C8+ cut 5 is passed through a sulfur sorber 30 to protect against sulfur/H2S contamination, and is processed over a second reformer 32 which contains an acidic bi-functional aromatization catalyst which does not need to be sulfided, such as Pt/Sn/Cl on alumina. Operating conditions of the second reformer are 75 psig, [a LHSV of] 1.0 hr-
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1, H2/HC mole ratio of 5/1 and a C8 +C9 (n+i)paraffin conversion of 95-100%. The C8 and C9 naphthenes are also fully converted. The paraffin and naphthene conversion and selectivity used are shown in Table II” [Example 1]. Additionally, the teaching of Nacamuli et al that “[f]rom our experimental studies where we have investigated the aromatization of a wide-boiling range naphtha over a nonacidic zeolite such as Pt/K--Ba L zeolite or Pt/K L zeolite with F and Cl, we have found that these non-acidic catalysts are more efficient than the standard bi-functional catalysts at aromatizing C6’s and C7's to the corresponding aromatic. However, we have also found that the standard reforming bi-functional catalysts such as Pt/Sn/Cl on alumina are more efficient than the non-acidic zeolites at aromatizing C8's and C9's to the corresponding aromatic” corresponds to the requirement of instant claim 1 that the catalysts are “selective for reforming C8+ [or C7-] hydrocarbons to aromatic hydrocarbons.” Note that first reformer 22 and second reformer 32 are in parallel [see figure above].
With respect to claim 10, concerning the non-acidic catalyst comprising at least one Group VIII metal, Nacamuli et al discloses “[t]he preferred percentage of platinum in the dehydrocyclization catalyst is between 0.1% and 5%, the lower limit corresponding to minimum catalyst activity and the upper limit to maximum activity” [column 6, lines 16-19].
With respect to claim 12, the aforementioned Pt/Sn/Cl on alumina corresponds to the alumina supported non-zeolitic catalyst comprising a Group VIIIB metal.
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.
Claim(s) 1-5 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ash et al (US6,004,452).
With respect to claims 1-5, Ash et al discloses “the present invention is directed to an improved split feed process for reforming or aromatizing hydrocarbons, preferably a raw naphtha feed stream having a variable or fluctuating composition. In a more particular aspect, the invention includes the step of splitting a naphtha feed stream to provide a C7- light fraction and a C8+ heavy fraction. Preferably, the process includes the step of removing both the light ends and the heavy ends of the raw naphtha prior to splitting the naphtha into the C7- light fraction and C8+ heavy fraction. Preferably, the C8+ fraction includes most and preferably substantially all of the C8 and C9 paraffins, naphthenes and aromatics in the naphtha feedstock…the process involves fractionating the two reformate streams separately. One reformate stream results from monofunctional reforming of the light C7- fraction, the other results from bifunctional reforming of the heavy C8+ fraction…An alternate embodiment of the invention is a process for making high purity benzene and high purity paraxylene, which includes the step of splitting a naphtha feed stream into a C7- light fraction and a C8+ heavy fraction, then reforming each fraction separately. The light fraction may be reformed (aromatized) in the presence of a non-acidic monofunctional catalyst, and the heavy fraction may be reformed (aromatized) in the presence of an acidic bifunctional catalyst…In accordance with the invention, the conversion to aromatics of C8, C9 and C10 paraffins in the heavy fraction bifunctional reformer should be maintained at high levels, preferably at least about 90% or 95% and more preferably close to 100% conversion, that is, at least about 98% conversion. In accordance with this invention, when the C6 and C7 hydrocarbons are removed from the naphtha feed to the bifunctional reformer, the result is a surprisingly high selectivity to aromatics for the C8, C9 and C10 hydrocarbons that are present in the bifunctional reformer feed. In addition, these high aromatics selectivities are achieved at lower reformer catalyst average temperatures, than if the C6 and C7 hydrocarbons had been present in the feed, e.g., less than about 1000o F., and preferably less than 900o F. Furthermore, by aromatizing the C6 and C7 paraffins over a non-acidic catalyst such as Pt/K-Ba L Zeolite, the C6 and C7 paraffin conversion and selectivities are surprisingly higher than they are in acidic bifunctional reformers, resulting in higher yields of C6 and C7 aromatics, i.e., benzene and toluene” [column 6, lines 18-30; column 8, lines 28-32; column 8, lines 59-67], wherein “nonacidic catalysts will include any zeolite based catalyst having a silica/aluminum ratio greater than 500” [column 2, lines 27-30]. The acidic bifunctional catalytic reformer corresponds to the first reforming catalyst in a first reformer under first reforming conditions effective to form a first reformate of the instant application. The non-acidic monofunctional catalytic reforming corresponds to the second refoming catalyst in a second reformer under second reforming conditions effective to form a second reformate. The discussion of C6 and C7 aromatic and xylene products renders obvious the first and second reforming conditions.
With respect to claims 10 and 11, Ash et al discloses “[t]he zeolitic catalysts according to the invention are, e.g., nickel, ruthenium, rhodium, palladium, iridium or platinum. The preferred Group VIII metals are iridium and platinum…The preferred percentage of platinum in the monofunctional or dehydrocyclization catalyst is between 0.1% and 5%, the lower limit corresponding to minimum catalyst activity and the upper limit to maximum activity” [column 19, lines 36-46].
With respect t claims 12, Ash et al discloses “[t]he acidic catalyst can comprise a metallic oxide support having disposed therein a Group VIII metal. Suitable metallic oxide supports include alumina and silica. Preferably, the acidic catalyst comprises a metallic oxide support having disposed therein in intimate admixture a Group VIII metal (preferably platinum) and a Group VIII metal promoter, such as rhenium, tin, germanium, cobalt, nickel, iridium, rhodium, ruthenium and combinations thereof. More preferably, the acidic catalyst comprises an alumina support, platinum, and rhenium. A preferred acidic catalyst comprises platinum and tin on an alumina support. A preferred acidic catalyst comprises platinum, tin and chlorine on an alumina support. The typical chlorine content of such a catalyst is about 1 wt %. Preferably, the acidic catalyst has not been presulfided before use. On the other hand, if one can [e]nsure no sulfur contamination of the non-acidic catalyst from the reformate produced by the acidic catalyst, then one might be able to use a presulfided catalyst, such as Pt/Re on alumina” [column 20 lines 22-40].
With respect to claims 13 and 14, Ash et al discloses “[t]he reforming in both reformers is carried out in the presence of hydrogen at a pressure adjusted to favor the dehydrocyclization reaction thermodynamically and to limit undesirable hydrocracking reactions. The pressures used preferably vary from 1 atmosphere to 500 psig, more preferably from 50 to 300 psig, the molar ratio of hydrogen to hydrocarbons preferably being from 1:1 to 10:1, more preferably from 2:1 to 6:1. In the temperature range of from 400o C. [752o F.] to 600o C. [1112o F.], the dehydrocyclization reaction occurs with acceptable speed and selectivity. If the operating temperature is below 400o C., the reaction speed is insufficient and consequently the yield is too low for industrial purposes. When the operating temperature of dehydrocyclization is above 600o C., interfering secondary reactions such as hydrocracking and coking occur, and substantially reduce the yield…The preferred temperature range (430o C. to 550o C.) of dehydrocyclization is that in which the process is optimum with regard to activity, selectivity and the stability of the catalyst. The liquid hourly space velocity of the hydrocarbons in the dehydrocyclization reaction is preferably between 0.3 and 5 [hr-1]” [column 20, lines 41-63].
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nacamuli et al (US 6,051,128).
With respect to claim 13, see first reformer conditions discussed previously and note that Nacamuli et al further discloses a reaction temperature ranging from 400 to 600o C [column 7, lines 30-43].
With respect to claim 14, see “Reforming Conditions” in column 7.
Examiner’s Comment
Reference is made to the discussion in the Notice of Allowance for U.S. Patent Application Serial No. 17/605,286, dated 24 November 2023:
“Nacamuli et al discloses “[t]his invention is based upon the realization that a non-acidic catalyst has an adverse effect on production of para-xylenes. It is thought that the catalyst actually dealkylates those xylenes. Thus the C8+ fraction should not be subjected to a non-acidic catalyst if one is trying to recover xylenes” [column 3, lines 28-33]. Consequently, Nacamuli et al teaches separating a C6-C7 cut from a C8+ cut and subjecting the former to a non-acidic catalyst while the latter is subjected an acidic bifunctional catalyst. Additionally, Nacamuli et al discloses “we have found that these non-acidic catalysts are more efficient than the standard bi-functional catalysts [acidic catalysts—see column 2, lines 56-57—Examiner’s insertion] at aromatizing C6 's and C7 's to the corresponding aromatic” [column 3, lines 60-66]. Therefore, if ZSM-5 is more acidic than zeolite L (or X or Y), it would seem contrary to the teaching of Nacamuli et al to include or replace zeolites L, X, or Y with ZSM-5. A plot of the temperature-programmed desorption of zeolite L may be evidenced by Nenoff et al (US 7,041,616) [figure 3B], which is shown below.
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Similarly, a plot of the temperature-programmed desorption of ZSM-5 may be evidenced by Mullens et al (US 2018/0272323) [figure 3B], which is shown below.
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The higher desorption temperature for ZSM-5 at about 500o C is indicative of stronger acid sites. Therefore, one may infer that ZSM-5 is more acidic or has stronger acid sites than zeolite L and the addition and/or replacement of the former for the latter is contrary to the teaching of Nacamuli et al.”
Conclusion
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772 12 December 2025