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
This is the response to amendment filed 03/09/2026 for application 18/692915.
Claims 1-17 are currently pending and have been fully considered.
Claims 16-17 have been added.
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.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over BENNETT et al. (USPGPUB 2016/0208177).
BENNETT et al. teach a method for conditioning synthetic crude oil.
BENNETT et al. teach in paragraphs 4-5 washing the synthetic crude oil with an aqueous, caustic process solution.
The caustic process solution is taught in paragraph 30 to include an embodiment in which it is an alkaline aqueous solution exhibiting a pH of 8 or higher.
BENNETT et al. teach in paragraph 48 that it may be desirable to subject the synthetic crude oil to two or more conditioning steps.
The two or more conditioning steps is taught in paragraphs 49-54 in an embodiment in which a primary process solution and a secondary process solution are used in sequence wherein the primary process solution is acidic and secondary process solution is basic.
BENNETT et al. teach in paragraph 58 that the method steps and/or actions may be interchanged from one another.
It would be well within one of ordinary skill in the art to interchange the order of steps with the primary process solution and the steps with the secondary process solution with a reasonable expectation of success.
Alternatively, it would be well within one of ordinary skill in the art to perform a conditioning step with a basic solution prior to the embodiment taught in paragraphs 49-54. BENNETT et al. teach in paragraphs 55-56 of controlling the initial caustic process solution to be between 8 and 10.
BENNETT et al. teach in paragraph 46 that the processing may be at an elevated temperature to ensure the synthetic crude oil is in a liquid state. Although BENNETT et al. teach in paragraph 46 example of ranges that are lower than 100 C, ranges of temperatures greater than 100 C would also be within consideration as one of ordinary skill in the art.
A temperature greater than the example of ranges presented in BENNETT et al. would also be expected to ensure the synthetic crude oil is in a liquid state.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The temperature in the first conditioning step with regard to the second conditioning step can be either higher, the same or lower.
It would be well within one of ordinary skill in the art to perform the second conditioning step with an acidic solution with a temperature lower than the first condition step as long as the synthetic crude oil to be treated remain in the liquid state.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, BENNETT et al. teach in paragraph 46 that the processing may be at an elevated temperature to ensure the synthetic crude oil is in a liquid state. Although BENNETT et al. teach in paragraph 46 example of ranges that are lower than 105°C, ranges of temperatures greater than 105°C would also be within consideration as one of ordinary skill in the art.
A temperature greater than the example of ranges presented in BENNETT et al. would also be expected to ensure the synthetic crude oil is in a liquid state.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, BENNETT et al. do not place limits on the residence time of the first conditioning step.
However, a range of greater than 30 seconds encompasses an incredibly large range and it appears that the process that BENNETT et al. teach would be performable with the first conditioning step of more than 30 seconds.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, BENNETT et al. teach in paragraph 42 that pressure sensors may be incorporated with the conditioning system.
BENNETT et al. further teach in paragraph 42 that the conditioning system may be such that the desired amount of synthetic crude and process solution are delivered and mixed.
Given that there are only 3 scenarios regarding the comparison of the pressure of the first conditioning step and the pressure of the second conditioning step (higher, lower, or the same), it would be well within the knowledge of one of ordinary skill in the art to optimize the process or find workable ranges with the pressure in the first conditioning step being higher than the pressure in the second conditioning step.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, BENNETT et al. teach in paragraphs 55-56 of controlling the initial caustic process solution to be between 8 and 10.
Regarding claim 6, BENNETT et al. teach in paragraph 50 an acidic process solution that is less than about 6.
Regarding claim 7, BENNETT et al. teach in paragraphs 57 the mixing ratio of the synthetic crude to the processing solution is from about 1:1 to about 1:200.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 8, BENNETT et al. teach in paragraphs 49-54 an embodiment with two conditionings steps is taught in which a primary process solution and a secondary process solution are used in sequence wherein the primary process solution is acidic and secondary process solution is basic.
BENNETT et al. teach in paragraph 58 that the method steps and/or actions may be interchanged from one another.
It would be well within one of ordinary skill in the art to interchange the order of the primary process solution and secondary process solution with a reasonable expectation of success.
Regarding claim 9, BENNETT et al. teach in paragraphs 55-56 of controlling the initial caustic process solution to be between 8 and 10.
It would be well within one of ordinary skill in the art to perform a conditioning step with a basic solution prior to the embodiment taught in paragraphs 49-54.
Regarding claim 10, when an additional washing step is performed with a basic caustic process solution prior to the embodiment taught in paragraphs 49 to 54, the third washing step would be considered to have a pH of between 8 and 10.
Regarding claim 11, the temperature in the first conditioning step with regard to the third conditioning step can be either higher, the same or lower.
It would be well within one of ordinary skill in the art to perform the third conditioning step with an acidic solution with a temperature lower than the first condition step as long as the synthetic crude oil to be treated remain in the liquid state.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, BENNETT et al. teach in paragraph 42 that pressure sensors may be incorporated with the conditioning system.
BENNETT et al. further teach in paragraph 42 that the conditioning system may be such that the desired amount of synthetic crude and process solution are delivered and mixed.
Given that there are only 3 scenarios regarding the pressure of the first conditioning step with respect to the pressure of the third conditioning step (higher, lower, or the same), it would be well within the knowledge of one of ordinary skill in the art to optimize the process or find workable ranges with the pressure in the first conditioning step being higher than the pressure in the third conditioning step.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 13, BENNETT et al. teach in paragraphs 57 the mixing ratio of the synthetic crude to the processing solution is from about 1:1 to about 1:200.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 14, BENNETT et al. teach in paragraphs 8 and 23 that the synthetic crude oil may be produced from the pyrolysis that is taught to depolymerize the plastic. DEWHITT (US 8193403) is incorporated within BENNETT et al. and DEWHITT explicitly teaches depolymerization of plastic.
Regarding claim 15, applicant has listed a variety of known plastics and BENNETT et al. teach a process that may be used with synthetic crude oil form depolymerization of plastic feedstock and it appears that the invention taught in BENNETT et al. can be used with known plastics such as polyethylene with a reasonable expectation of success.
Regarding claim 16, BENNETT et al. teach in paragraph 30 that the process solution may be an alkaline aqueous solution exhibiting a pH of about 8 to about 10. About 10 allows for slightly above 10.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)
Regarding claim 17, BENNETT et al. teach in paragraph 30 that the process solution may be an alkaline aqueous solution exhibiting a pH of about 8 to about 10. About 10 would be close to greater than 11.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that BENNETT et al. do no teach a first basic wash followed by a second acidic wash. Applicant argues that BENNETT et al. teach a first acidic wash followed by a second basic wash. Applicant further argues that although BENNETT et al. teach that the steps “may be interchanged”, that there are unexpected results from a first basic wash followed by a second acidic wash that are not recognized in BENNETT et al. and that BENNETT et al. do not consider interchanging the two washing steps. Applicant further argues that interchanging the two washing steps is a matter of hindsight reasoning.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
BENNETT et al. explicitly teach a first acidic wash followed by a second basic wash and that the steps may be interchanged. Reversing the order of 2 steps would only allow 1 only alternative.
In response to applicant's argument that BENNETT et al. do not recognize the precipitation problem, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that BENNETT et al. do not teach a first basic washing step at a temperature of more than 100°C. Applicant argues that although BENNETT et al. teach that BENNETT et al. teach heating to keep the synthetic crude oil at a liquid state, applicant argues that BENNETT et al. teach heating for a different reason that what is presently claimed. Applicant argues that one of ordinary skill in the art would not have been led to optimize or employ workable ranges for the temperatures because the motivation for heating is different from what is presently claimed.
This is not persuasive as BENNETT et al. teach an exemplary range of about 100°F to about 200°F. This does not exclude other temperature ranges. BENNETT et al. explicitly teach heating to keep the synthetic crude oil at a liquid state. Temperatures of greater than about 200°F would be considered by ordinary skill in the art.
In response to applicant's argument that BENNETT et al. do not explicitly state faster reaction at higher temperatures, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that BENNETT et al. do not recognize performing the second (acidic) washing step at a lower temperature than that of the first (basic) washing step.
This is not persuasive as the temperature of the second washing step relative to the first washing step could only 1 of 3 options: higher, lower or the same. It would be well within one of ordinary skill in the art to discover the optimal relative temperature relationship between the first washing step and the second washing step with no undue experimentation.
BENNETT et al. teach that the washing steps are adapted to provide a conditioned synthetic crude product having a desired TAN and may be targeted to remove or reduce contaminants that may not be affected by a caustic wash or do not contribute to the TAN of the synthetic crude.
Applicant argues that BENNETT et al. do not teach a first washing temperature of greater than 105°C.
This is not persuasive as BENNETT et al. teach an exemplary range of about 100°F to about 200°F. This does not exclude other temperature ranges. BENNETT et al. explicitly teach heating to keep the synthetic crude oil at a liquid state. Temperatures of greater than about 200°F would be considered by ordinary skill in the art.
Applicant argues that BENNETT et al. do not teach an average washing duration of at least 0.5 minutes.
This is not persuasive as “at least 0.5 minutes” covers a large range and applicant has not demonstrated criticality of such a range and BENNETT et al. teach a first conditioning step that is not taught with limitations on time.
Applicant argues that BENNETT et al. do not teach the relationship between the pressure of the first washing step relative to the second washing step
This is not persuasive as the pressure of the second washing step relative to the first washing step could only 1 of 3 options: higher, lower or the same. It would be well within one of ordinary skill in the art to discover the optimal relative pressure relationship between the first washing step and the second washing step with no undue experimentation.
Applicant argues that BENNETT et al. do not teach not having a further washing step between the first washing step and the second washing step.
This is not persuasive as BENNETT et al. teach that the steps “may be interchanged.” Applicant has not provided persuasive reasoning or evidence that the steps in BENNETT et al. could not be interchanged.
Applicant argues that BENNETT et al. do not teach a third aqueous step.
This is not persuasive as BENNETT et al. teach in paragraphs 55-56 of controlling the initial caustic process solution to be between 8 and 10.
It would be well within one of ordinary skill in the art to perform a conditioning step with a basic solution prior to the embodiment taught in paragraphs 49-54.
Applicant argues that BENNETT et al. do not teach that the third temperature is lower than the first temperature. Applicant argues impermissible hindsight and that the benefit is efficiency and economics.
This is not persuasive as the temperature of the third washing step relative to the first washing step could only 1 of 3 options: higher, lower or the same. It would be well within one of ordinary skill in the art to discover the optimal relative temperature relationship between the first washing step and the third washing step with no undue experimentation.
Applicant argues that BENNETT et al. do not teach that the third pressure is lower than the first pressure. Applicant argues cost savings.
This is not persuasive as the pressure of the third washing step relative to the first washing step could only 1 of 3 options: higher, lower or the same. It would be well within one of ordinary skill in the art to discover the optimal relative pressure relationship between the first washing step and the third washing step with no undue experimentation.
Applicant argues that BENNETT et al. do not teach a volumetric mixing ratio between a second purified crude oil stream and a third aqueous washing solution. Applicant appears to argue that BENNETT et al. do not teach a claimed ratio of 10:1 to 1:5 because applicant argues that BENNETT et al. do not teach a third washing step.
This is not persuasive as BENNETT et al. teach in paragraphs 55-56 of controlling the initial caustic process solution to be between 8 and 10. Adding an initial caustic process solution would move the other process solutions to be second and third. BENNETT et al. teach in paragraphs 57 the mixing ratio of the synthetic crude to the processing solution is from about 1:1 to about 1:200.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LUPTON (US 9045698) teaches method for removing contaminants from oils using a series with a basic aqueous wash followed by an acidic aqueous wash.
JAMES Jr, et al. (US 6060631) teach a process for the production of synthetic crude oil from conversion of plastic. JAMES Jr, et al. teach in column 3 plastics that may be used include polyethylene, polystyrene, polyvinyl chloride and PET.
POUND (GB590635) teaches refining of oils in which washing with a caustic alkali is performed for a determined minimum period.
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 MING CHEUNG PO whose telephone number is (571)270-5552. The examiner can normally be reached M-F 10-6.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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