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 .
Summary
This is the initial Office action based on application 18693100 filed 3/18/24.
Claims 1-25 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 3/18/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
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 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 of this title, 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.
Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over KANDEL ET AL. (WO2018111572; 6/21/2018) in their entirety. Hereby referred to as KANDEL.
Regarding claims 1-25:
KANDEL teaches a gas oil feed (20% SCT + 80% utility fluid mixture - see par [76]) comprising a gas oil and an olefin, wherein at least 70 wt% of the gas oil feed based on the total weight of the gas oil feed, has a normal boing point of at least 200°C and no more than 10 wt% of the gas oil feed, based on the total weight of the gas oil feed, has a normal boiling point of at least 275°C; See par [75]-[77].
KANDEL teaches determining a reactivity R(go) of the gas oil feed, see par [43]-[53]; comparing R(go) to a predetermined reference reactivity R(ref), see par [54]-[56]; if R(go) > R(ref), heating the gas oil feed to a temperature in a range of from 200°C to 400°C for a residence time in a range of from 1 minute to 45 minutes to produce a heat-treated gas oil feed having a reactivity R(ht-go), until R(ht-go) < R(ref); and see par [66]-[72] feeding a hydroprocessor feed comprising (i) the gas oil feed if R(go) <=R(ref) or (ii) the heat-treated gas oil feed produced to a hydroprocessor; and hydroprocessing the hydroprocessor feed in the hydroprocessor to produce a hydroprocessor effluent comprising a hydroprocessed gas oil, see par [79]-[101 ].
KANDEL teaches a process, comprising providing a raw hydroprocessor feed comprising a mixture of steam cracker gas oil and steam cracker tar, see par [76]
wherein: the raw hydroprocessor feed has a reactivity R(raw) in terms of bromine number, where R(raw) > 28, see par [102], Figure 2 and also par [55].
KANDEL teaches that the raw hydroprocessor feed comprises olefins, at least 70 wt% of the steam cracker gas oil has a normal boing point of at least 200°c, at most 10 wt% of the steam cracker gas oil has a normal boiling point of at least 275°C, see par [75].
KANDEL teaches the steam cracker tar contains free radicals, has a density at 15°C of at least 1.10 g/cm3 , as measured according to ASTM D70 / D70M-21, and has a viscosity at 50°C of at least 1,000 cSt, as measured according to ASTM D445-21, and at least 70 wt% of the steam cracker tar has a normal boiling point of at least 290°C, see par [36]-[42].
KANDEL teaches heating the raw hydroprocessor feed to a temperature in a range of from 200°c to 400°C for a residence time in a range of from at least 1 minute to 45 minutes to produce a heat-treated raw hydroprocessor feed comprising heat-treated steam cracker gas oil and heat-treated steam cracker tar, wherein the heat-treated raw hydroprocessor feed has a reactivity in terms of bromine number R(ht-raw), where R(ht-raw) < 28, see par [102], Figure 2 and par [66]-[72].
KANDEL teaches feeding a hydroprocessor feed comprising the heat-treated raw hydroprocessor feed into a hydroprocessor; and hydroprocessing the hydroprocessor feed in the hydroprocessor to produce a hydroprocessor effluent comprising hydroprocessed steam cracker gas oil and hydroprocessed steam cracker tar, see par [79]-[101].
Thus, it would have been obvious to one of ordinary skill in the art to modify the process by varying the claimed ranges; however, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary. Especially, 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).
From the teachings of the reference it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Moreover, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
Still, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Additionally, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). In In re Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable
Nevertheless, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant 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. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
If it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 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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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771