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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 26 and 29-32, in the reply filed on 4/10/2026 is acknowledged.
Claims 17 and 20-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/10/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26 and 29-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 recites the limitation "the mixture obtained" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the aromatics-enriched solvent" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the aromatics-depleted solvent" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the removal of impurities comprising aliphatic compounds and/or compounds with aliphatic moieties from the substream" in lines 15-16. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the purification apparatus" in line 22. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the addition of water to form an aqueous phase and a hydrophobic phase" in lines 24-25. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the removal of water by distillation" in line 28. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the addition of water to form a water circuit" in lines 32-33. There is insufficient antecedent basis for this limitation in the claim.
Claims 28-30 are rejected due to their dependency on indefinite claim 26.
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) 26 and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US 2012/0037542), hereafter referred to as Wu.
With regard to claim 26: Wu teaches an apparatus for separating a hydrocarbon-containing feedstock stream 41 by extractive distillation into at least one aliphatics product stream 42 and one aromatics product stream 50 (Figure 1, paragraphs [0045]-[0050]), the apparatus comprising:
A device, i.e. extractive distillation column EDC, for contacting in countercurrent the feedstock stream with a water-soluble solvent for aromatics (Figure 1, paragraphs [0045]-[0050]).
A device, i.e. the extractive distillation column EDC, for distillatively removing an aliphatics fraction from a mixture obtained to leave behind an aromatics-enriched solvent, with a discharge for the aliphatics fraction as aliphatics product stream (Figure 1, paragraphs [0045]-[0050]).
A device, i.e. solvent recovery column SRC, for stripping the aromatics from the aromatics-enriched solvent with a discharge for the aromatics as aromatics product stream (Figure 1, paragraphs [0045]-[0050]).
A recycle line/solvent circuit 55, 57, 59 and 71 for the aromatics-depleted solvent to the device EDC for contacting in countercurrent the feedstock stream with solvent (Figure 1, paragraphs [0045]-[0050]).
A purification device for the solvent, solvent clean-up column SCC, which is arranged in the solvent circuit and through which at least temporarily at least a substream of the aromatics-depleted solvent passes during operation, for the removal of impurities comprising at least aliphatic compounds (non-aromatic) from the substream, wherein the purification device contains a feed 66 for an extractant (raffinate from EDC/“displacement agent”) for aliphatics and at least one mixing chamber and one separating chamber, e.g. chambers of “multi-stage mixers/settlers” making up the SCC, for a liquid/liquid extraction between the substream and the extractant for aliphatics, and the purification device includes a recycle line 67 for a raffinate of the liquid/liquid extraction into the solvent circuit (Figure 1, paragraphs [0043], [0045]-[0050]).
Wherein the purification apparatus (device) includes a discharge for an extract 68 of the liquid/liquid extraction, which is connected to a solvent recovery device in which at least one mixing apparatus, i.e. water washing column WWC, for the addition of water to form an aqueous phase and a hydrophobic phase and at least one separating apparatus, i.e. the water washing column WWC, for separating the aqueous phase from the hydrophobic phase are arranged, wherein the solvent recovery device includes a discharge 69 for the aqueous phase which is connected to a distillation column, i.e. the solvent recovery column SRC, for the removal of the water by distillation and the distillation column includes a discharge for a bottom product of the distillation column, via which the bottom product is recyclable into the solvent circuit 55, 57, 59 and 71 (Figure 1, paragraphs [0045]-[0050]).
And wherein the distillation column SRC includes a top discharge for the water removed by distillation, which is connected to the mixing apparatus WWC for the addition of water to form a water circuit (Figure 1, paragraphs [0045]-[0050]).
Regarding the removal of aliphatic compounds in by the purification device (SCC), it is understood that said purification device removes aliphatic compounds from the substream because the extract 68 of the purification device is fed to WWC where it is separated into a stream 72 comprising aliphatic (non-aromatic) hydrocarbons 72 and an aqueous stream 69 (Figure 1, paragraphs [0046] and [0047]).
In the unlikely alternative, it is noted that the mixtures separated in the various system components, including the impurities in said mixtures, are all materials worked upon by the claimed system. Thus, the claim language regarding the purification device separating aliphatic compounds is merely a statement of the intended use and/or manner of operating the claimed apparatus (i.e. the purification device thereof), said statement of intended use/manner of operating being framed in terms of the material worked upon. Statements regarding intended use/manner of operating do not distinguish a claimed device from a prior art device capable of use/operation in the claimed manner (MPEP 2114). Furthermore, it is well established that apparatus claims are not limited by inclusion of material worked upon (MPEP 2115). The system of Wu is structurally identical to the claimed system. Thus, the system of Wu is at least capable of operating such that the purification device (SCC) removes impurities comprising aliphatic (non-aromatic hydrocarbons) from the substream, thereby satisfying the corresponding claim language. See MPEP 2114 for guidance.
With regard to claim 30: The distillation column SCR is connected to a vacuum generation device (“vacuum source”) via overhead receiver D2 (Figure 1, paragraphs [0045]-[0050]). Said vacuum generation device, being a “vacuum source” is necessarily capable of generating a negative pressure of less than 100 mbar in a top region of the distillation column SCR.
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) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu.
With regard to claim 29: Wu teaches all of the limitations of claim 26 as described in the 102 rejections above.
The substream is cooled in a heat exchanger C1 prior to carrying out the thermal separation process (Figure 1, paragraphs [0045]-[0050]).
The distillation process in SRC is heated using a reboiler R2 (Figure 1, paragraphs [0045]-[0050]).
Wu is silent to the reboiler R2 using heat energy from the heat exchanger C1.
However, a person having ordinary skill in the art would well understand that it is advantageous to integrate process heaters and process coolers where possible, as doing so reduces or eliminates the need for externally supplied heating and cooling, thereby increasing the efficiency of the process. It is well within the level of ordinary skill in the art to integrate process heaters and coolers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Wu by integrating the heat exchanger C1 and the reboiler R2, such that the reboiler uses heat energy from the heat exchanger, in order to increase the efficiency of the process. Integration of other heaters and coolers in the process of Wu would also be obvious for the same reason.
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 16 and 29-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 18-24, and 26-30 of copending Application No. 18/709,396 (reference application), in view of Wu et al. (US 2012/0037542), hereafter referred to as Wu.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a similar process for separating aliphatics and aromatics by extractive distillation.
The principle difference between the two applications is that the claims of the ‘396 Application recite a thermal separation device where the present claims recite an extraction device.
However, the “thermal separation” device recited in the ‘396 Application is broad in scope, and can reasonably be interpreted as encompassing an extraction device. Furthermore, it is evident from the disclosure of Wu that it is known in the art to use extraction devices to carry out a separation substantially identical to that carried out in the thermal separation device of the ‘396 Application. On this basis, it is understood that an extraction device is an obvious variation on the thermal separation device recited in the ‘396 Application.
Thus, the present claims are obvious over the claims of the ‘396 Application, at least when they are considered in view of Wu.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JONATHAN LUKE PILCHER/Examiner, Art Unit 1772
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