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 .
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 4-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 4 and 10 recite the broad recitation “trim solvents”, and the claims also recite “(butane, fuel gases)” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 5-8, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, it is unclear what “sharing streams” entails in the context of the overall claimed process, i.e., how are the streams shared?
The term “optimal” in claim 9 is a relative term which renders the claim indefinite. The term “optimal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear from the context of the claim and corresponding specification what characteristics would deem a blend of output products “optimal” for the oil sands processing facility.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 sets forth providing hydrocarbon stream(s) from the integrated plastic pyrolysis plant to the oil sands processing facility. Claim 1 already requires such an embodiment by stating “providing hydrocarbon streams obtained from plastic pyrolysis to an oil sands processing facility.” Therefore, claim 3 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 1-3, 7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Narayanaswamy et al (US 2018/0216009)
Regarding claims 1-3, Narayanaswamy discloses an upgrading process, wherein a hydrogen lean carbon containing feed is hydropyrolyzed (i.e., upgraded in an upgrader) (see Abstract). Suitable hydrogen lean carbon containing feeds include oil sands, pyrolysis oils produced as a result of pyrolysis of plastics, and a combination thereof (see [0051]). This disclosure in Narayanaswamy is considered to read on the claimed integration process, where hydrocarbon streams obtained from plastic pyrolysis are provided to an upgrader of an oil sands processing facility.
The location at which the plastic pyrolysis occurs is not considered to provide a patentably distinguishing feature over the prior art. Selection of a suitable location to carry out the plastic pyrolysis, including integrated into an oil sands processing facility, would be achieved by routine experimentation for a person of ordinary skill in the art and associated with a reasonable expectation of success. Where the two individual processes are known in the art, integrating them in such a way that the processes are carried out in the same location would be obvious to a person of ordinary skill in the art.
Regarding claim 7, as noted above, integrating the processes into a single plant is not considered to provide a patentably distinguishing feature over the cited prior art. The need for utilities to carry out the processes is inherent. Furthermore, sharing of these utilities would result naturally from integrating the various processes into a single plant location. A person of ordinary skill in the art would implement a utility design that allows for operation of all system components by routine experimentation and with a reasonable expectation of success.
Regarding claim 9, tailoring the plastic pyrolysis conditions to achieve a desired product slate amounts to nothing more than routine optimization for a person of ordinary skill in the art. The claimed optimization of plant design, operating conditions, and feedstock choice to provide “the optimal blend of output products” is not considered to provide a patentably distinguishing feature over the cited prior art.
Regarding claim 11, the mere scaling up of a prior art process capable of being scaled up does not establish patentability over the prior art. MPEP 2144.04 IV, V.
Claims 4-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Narayanaswamy, as applied to the claims above, in view of Narayanaswamy et al (WO 2022/130052, hereinafter “Narayanaswamy ‘052”).
Regarding claims 4, 5 and 10, Narayanaswamy does not the specifics of plastic pyrolysis.
Narayanaswamy ‘052 is directed to a process for pyrolyzing waste plastics to produce feedstocks that are usable for a refinery unit (see [0002]; [0030]-[0031]). The product obtained is a synthetic crude oil (see [0060]).
It would have been obvious to a person of ordinary skill in the art at the time of filing the instant claimed invention to modify the process of Narayanaswamy to pyrolyze waste plastics according the process of Narayanaswamy ‘052 in order to produce a synthetic crude oil product which is deemed adequate for use in a refinery unit, i.e., the hydropyrolyzing of Narayanaswamy. The selection of a suitable starting material is prima facie obvious absent new or unexpected results.
Regarding claim 6, it is clear from Narayanaswamy and Narayanaswamy ‘052 that gaseous products are produced as a result of the upgrading and the plastic pyrolyzing, respectively (see Narayanaswamy: [0055]; Narayanaswamy ‘052: [0036]), where Narayanaswamy ‘052 discloses scrubbing the gas product and using it as a cracker feedstock or combusting (see [0036]). It would have been obvious to a person of ordinary skill in the art at the time of filing the instant claimed invention to coprocess the produced gas streams (i.e. “share”) in order to utilize available resources for refinery applications, e.g., scrubbing the resulting gaseous streams to provide a gas feed suitable for a cracking unit.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Narayanaswamy, as applied to the claims above, in view of Bertrand et al (US 2020/0165526).
Regarding claim 8, Narayanaswamy is silent with respect to safety systems of the processes.
In this regard, the office notes that it is commonplace for oil refining plants to implement safety systems. For example, Bertrand discloses use of a sweep gas to stabilize pressure in reactors in order to reduce the risk of fire in the event of a leak in the reactor or in downstream equipment (see [0134]-[0141]). Implementing safety systems into the process of Narayanaswamy would have been obvious to a person of ordinary skill in the art in order to reduce the risk or impact of fires, for example.
Furthermore, sharing of these safety systems would result naturally from integrating the various processes into a single plant location. A person of ordinary skill in the art would implement a safety system design for all necessary components by routine experimentation and with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENEE ROBINSON whose telephone number is (571)270-7371. The examiner can normally be reached Monday - Thursday 8:00a-5:00p and Friday 8:00a-2:00p.
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/Renee Robinson/Primary Examiner, Art Unit 1772