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 .
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No.12,152,200 B2. in view of Horizoe et al. (US 6,011,187). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims drawn to for producing hydrocarbons from waste plastic utilizing steps of pretreating, pyrolysis, filtering, and recycling a liquid condensed back to the pyrolysis reactor.
The patented claimed set does not teach a dichlorination step as claimed.
Horizoe discloses pretreating chlorine-containing waste plastics by performing a dichlorination process before pyrolysis, wherein the waste plastics are heated to approximately 250–350°C to remove chlorine before entering the pyrolysis process.
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 the patent claimed set by utilizing a dichlorination step as suggested by Horizoe to remove chlorine before pyrolysis to reduce catalyst poisoning and minimizes corrosion of downstream equipment.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fareid et al. (KR 10-2021-0057722 A) in view of Kim et al. (KR 10-1916404 B1), and further in view of Horizoe et al. (US 6,011,187). Fareid discloses a method for producing hydrocarbons from waste plastics including providing waste plastics, subjecting the waste plastics to primary cracking (pyrolysis) to produce a gaseous hydrocarbon fluid, catalytically hydrotreating (hydrogenating) the gaseous hydrocarbon fluid to produce a second hydrocarbon fluid, and fractionally separating the hydrotreated hydrocarbon fluid to produce hydrocarbon products. Fareid further teaches optional condensation, separation, recycle of heavy fractions, and hydrocarbon recovery from waste plastics. Fareid, however, does not expressly disclose (1) producing the pyrolysis oil by introducing the pyrolysis gas into a hot filter, (2) pretreating the waste plastics by removing chlorine before introducing the plastics into the pyrolysis reactor, and (3) reintroducing a liquid condensed upstream of hydrotreating into the pyrolysis reactor.
Kim discloses a waste-plastic pyrolysis process employing a hot filter positioned downstream of the pyrolysis reactor for high-temperature filtration of pyrolysis gas and removal of chlorine-containing contaminants prior to condensation of the pyrolysis oil. Kim further teaches that the hot filter may be packed with particulate material, including silica and alumina particles, thereby producing a purified pyrolysis oil suitable for downstream upgrading. Horizoe discloses pretreating chlorine-containing waste plastics by performing a dechlorination process before pyrolysis, wherein the waste plastics are heated to approximately 250–350°C to remove chlorine before entering the pyrolysis process. Horizoe explains that chlorine should be removed before pyrolysis because chlorine degrades catalysts and corrodes processing equipment. Horizoe further discloses separating the pyrolysis products into a high-boiling liquid oil fraction and lower-boiling fractions, and recycling the high-boiling liquid oil back to the pyrolysis process, where the recycled oil undergoes additional cracking to increase the production of lower-boiling hydrocarbons and improve product quality. See col. 2, lines 46-67, col. 3, lines 1-20; col. 9, lines 42-67; and claims 1 and 4. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fareid's waste-plastic conversion process by incorporating the hot filtration system taught by Kim in order to remove particulate matter and chlorine-containing contaminants from the pyrolysis gas before downstream upgrading, thereby improving product quality and protecting downstream processing equipment. It would have been further obvious to incorporate the dechlorination pretreatment taught by Horizoe because Horizoe teaches that removal of chlorine before pyrolysis reduces catalyst poisoning, minimizes corrosion of downstream equipment, and improves the quality of the recovered hydrocarbons. It would have been further obvious to recycle condensed heavy liquid hydrocarbons back to the pyrolysis reactor as taught by Horizoe because repeated thermal cracking of heavy fractions predictably increases conversion to lower-boiling hydrocarbons and improves overall process efficiency and liquid product yield. Claim 2 Kim teaches that the hot filter is filled with particulate packing material (beads). Claim 3 Kim teaches that the packing material includes ceramic particles such as silica (SiO₂) and alumina (Al₂O₃). Claim 4 Kim teaches maintaining a temperature profile through the hot filter during high-temperature filtration. It would have been obvious to employ a temperature gradient within the hot filter to prevent premature condensation while maintaining filtration efficiency. Clam 5 Providing multiple heaters around the hot filter to establish the desired temperature profile represents a routine engineering implementation of Kim's heated filtration system. Claim 6 Horizoe teaches multiple sequential pyrolysis reactors and mechanical agitation devices operating in series to progressively pyrolyze waste plastics. It would have been obvious to employ at least two batch reactors to permit continuous or semi-continuous operation while one reactor undergoes charging or discharge. Claim 7 It would have been obvious to switch operation between the reactors of claim 6 to maintain continuous production and improve process throughput, which is a well-known operating technique for batch processing systems. Claim 8 Fareid teaches hydrotreating hydrocarbons recovered from waste plastics. Mixing pyrolysis oil with petroleum hydrocarbons before hydrotreating constitutes a predictable blending operation commonly employed to improve feed stability and facilitate refinery integration. Claim 9 Selecting the amount of pyrolysis oil in the mixed feed to be 90 wt.% or less constitutes optimization of a result-effective variable based upon feed composition and refinery operating requirements. Claim 10 Fareid teaches waste plastics including polyethylene, polypropylene and polystyrene. Selection of PET and PVC among conventional waste plastic feedstocks would have been obvious because these polymers were well known components of mixed municipal plastic waste. Claim 11 Fareid teaches fractional separation of the hydrotreated hydrocarbons into hydrocarbon products. Performing distillation after production of the pyrolysis oil to recover hydrocarbon fractions constitutes the same well-known separation technique and it would have been obvious by one of skill in the art. Claim 12 Fareid teaches supplying hydrocarbon fractions to downstream upgrading processes. Mixing distilled hydrocarbons with petroleum hydrocarbons before hydrotreating represents a conventional refinery co-processing operation for upgrading hydrocarbon feeds.
Response to Arguments
Applicant argues that Fareid does not disclose pretreating the waste plastics by removing chlorine before pyrolysis, that Kim removes chlorine during the pyrolysis process rather than before pyrolysis, and that the cited references fail to disclose reintroducing a liquid condensed in the hot filter into the pyrolysis reactor. These arguments are not persuasive. The rejection no longer relies upon Fareid alone for chlorine removal. Horizoe expressly teaches performing a dechlorination process before pyrolysis, wherein chlorine-containing waste plastics are heated to approximately 250–350°C to remove chlorine before the plastics enter the pyrolysis process. Horizoe further teaches that chlorine should be removed before pyrolysis because chlorine degrades catalysts and corrodes processing equipment. One of ordinary skill in the art would have found it obvious to incorporate this known pretreatment into Fareid's process to improve catalyst life, reduce corrosion, and improve product quality.
Applicant further argues that none of the references disclose reintroducing a liquid condensed in the hot filter into the pyrolysis reactor. The rejection does not rely on Horizoe as teaching condensation specifically within the hot filter. Rather, Kim teaches the use of the hot filter in the pyrolysis process, while Horizoe teaches separating a condensed high-boiling liquid fraction from the pyrolysis products and recycling that liquid fraction back to the pyrolysis process for further cracking, thereby increasing the production of lower-boiling hydrocarbons and improving product quality. Given Kim's placement of the hot filter upstream of downstream recovery operations, it would have been an obvious matter of process design to recycle the condensed heavy hydrocarbons associated with the hot-filter stage back to the pyrolysis reactor in accordance with Horizoe's teaching of recycling heavy liquid hydrocarbons for additional cracking.
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 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
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