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 07 April 2026 containing remarks and amendments to the claims.
Claims 1-18 and 19-21 are pending.
The previous rejections have been updated as necessitated by amendments to the claims. 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, 4-5, and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Schoessow (US 2020/0399547) in view of McGehee (US 2010/0326887).
Regarding claims 1, 4, and 10, Schoessow teaches slurry hydrocracking of a feedstock and activated carbon additive [0004-0006] followed by separation into a light fraction sent to gas phase hydrocracking [0008] and a heavier slurry phase sent to further separation by contact with heavy vacuum gas oil solvent [0017-0019]. Slurry mixture of spent additive solids and residual hydrocarbons is sent to a separation stage [0020] to separate off solvent from residual feed [0020]. Schoessow teaches the separation is performed in a vacuum separator [0018]. Recovered gas oil range solvent is recirculated to separation stage [0020].
Schoessow teaches using toluene as the solvent [0019], which reads on the claimed “aromatic solvent”.
Examiner considers Schoessow vacuum distillation to include the claimed “evaporation step”.
Further, McGehee teaches a similar process for slurry hydrocracking, followed by vacuum distillation. After vacuum distillation, McGehee performs an additional round of distillation using a thin film or wiped film evaporator, in order to more effectively recover pitch materials [0029-0034].
Therefore, it would have been obvious to the person having ordinary skill in the art to have used McGehee thin film evaporator equipment, in order to effectively separate the pitch material from the SHC HVGO.
Regarding claim 5, Schoessow teaches various petroleum resid, bitumen, and coal feedstocks [0005]. Further, McGehee teaches that suitable hydrocracking feedstocks include resid boiling above 510˚C [0013], which Examiner considers to read on the claimed feeds.
Regarding claims 11-17, McGehee teaches various thin film evaporation reactors are well known in the art to perform the separation, and can include various blades, distributors, film thicknesses, condensers, temperatures, pressures, etc [0029-0034].
Therefore, it would have been obvious to the person having ordinary skill in the art to have appropriately selected thin film evaporation apparatus conditions and processing conditions, for the benefit of effectively separating the HVGO from the pitch material. It is expected that the same or similar pitch materials having the same or similar product properties would result, since the prior art teaches the same process steps applied to the same feeds as claimed. It is not seen where such modifications would result in any new or unexpected results.
Regarding claim 18, the prior art teaches the same process steps applied to the same feeds at the same conditions as claimed.
Therefore, it is expected that the same product having the same properties would result.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schoessow (US 2020/0399547) in view of McGehee (US 2010/0326887) as applied to claim 1 above, and further in view of Schleiffer (US 2016/0032198).
Regarding claims 6-8, the previous combination teaches the limitations of claim 1, as discussed above.
The previous combination does not explicitly disclose the combination of coarse and fine fraction as claimed.
However, Schleiffer teaches a similar process for slurry hydroconversion, in which the process is optimized by use of a coarse fraction and a fine fraction of additive having surface area of 100-800 m2/g [0008]-[0023].
Therefore, it would have been obvious to the person having ordinary skill in the art to have appropriately selected a combination of coarse and fine coal additive, as disclosed by Schleiffer, for the benefit of achieving the desired slurry hydroconversion improvements. It is not seen where such a selection would result in any new or unexpected results.
Claims 2-3, 9, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Schoessow (US 2020/0399547) in view of McGehee (US 2010/0326887) as applied to claim 1 above, and further in view of Chen (US 4,944,862).
Regarding claims 2-3, 9, and 21, the previous combination teaches the limitations of claim 1, as discussed above.
Schoessow teaches that the solvent can be vacuum gas oil, or FCC light or heavy cycle oil [0019]. It is expected that the FCC light gas oil would have the same or similar properties as claimed, since it is obtained from the same FCC steps as claimed.
Therefore, it would have been obvious to the person having ordinary skill in the art to have sent the gas oil recovered by Schoessow to catalytic cracking, for the benefit of obtaining FCC heavy vgo to be used as solvent.
Further, Chen teaches that mixtures of VGO and fuel oil may be used as feedstocks to FCC operations (column 10, lines 65-69 and column 11, lines 1-35). Chen teaches selecting appropriate amounts of conventional gas oil feedstock and heavy fuel oil component (see examples).
Therefore, it would have been obvious to the person having ordinary skill in the art to have performed the Chen catalytic cracking in order to obtain the solvent desired by Schoessow. Further, it would have been obvious to the person having ordinary skill in the art to have selected appropriate ratios of conventional to fuel oil range feedstock, as disclosed by Chen, for the benefit of obtaining the desired products.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Schoessow (US 2020/0399547) in view of McGehee (US 2010/0326887) as applied to claim 5 above, and further in view of Porter (US 5,622,616).
Regarding claim 22, the previous combination teaches the limitations of claim 5, as discussed above. Schoessow teaches slurry hydrocracking of various petroleum residue and coal feeds [0005].
The previous combination does not explicitly disclose treatment of tar feeds.
However, Porter teaches a similar process for slurry hydrocracking residual hydrocarbon feeds (column 3, lines 25-column 4, line 65). Porter teaches that in addition to petroleum resid feeds, tars are also suitable for treatment by slurry hydrocracking (column 3, lines 20-65).
Therefore, it would have been obvious to the person having ordinary skill in the art to have treated tar by the process of the previous combination, since it is also known for the same purpose of feeding to slurry hydrocracking. It is not seen where such a modification would result in any new or unexpected results.
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 1-18 and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18618605 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn to overlapping material regarding slurry hydroconversion, vacuum distillation, and separation to recover a sintering aid (see in particular method of claim 9).
Claims 1-18 and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18618257 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn to overlapping material regarding slurry hydroconversion, vacuum distillation, and separation to recover a sintering aid (see in particular method of claim 9).
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 have been fully considered and are addressed by the updated rejections as necessitated by amendments to the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Borremans (US 2013/0150637) - teaches that vacuum fractionation can be performed using any well known equipment, including vacuum distillation columns or thin film evaporator technologies.
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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