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 .
Drawings
The drawings are objected to because the sole figure should not be labeled “Figure 1.” 37 CFR 1.84(u)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: “wherein it comprises the following steps” should be amended to –comprising the following steps—or something similar (avoid use of “it”).
Appropriate correction is required.
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 1-15 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.
Regarding claim 1, the following limitations are unclear: “wherein the medium oil is a distillate oil of 220-320°C”, “the liquefied heavy oil is a distillate oil of more than 320°C”, “the medium temperature solvent oil is a distillate oil of 220-350°C”, and “the high temperature solvent oil is a distillate oil of more than 350°C” because, in each of the limitations, it is unclear to what the temperature range is referring, e.g., whether it is specifying the physical temperature of the stream or the boiling range thereof. The office believes the latter is intended and has interpreted the claim(s) accordingly.
Claim 10 recites the limitation "the recycling hydrogen-donating solvent" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Additionally, claim 10 is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. MPEP 2173.05(q).
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 9 and 10 are rejected under 35 U.S.C. 103 as obvious over Shan et al (CN 106479564).
Shan is cited from the English machine translation, provided herewith.
Regarding claim 9, Shan discloses a recycling hydrogen-donating solvent comprising a mixture of a medium temperature solvent oil (boiling point of 200-300°C) and a high temperature solvent oil (boiling point 300-480°C) (see p. 4, penultimate paragraph – p. 5, first paragraph). The boiling point ranges of the medium temperature and high temperature solvent oils, respectively, overlap the claimed ranges.
Claim 9 is directed to a product-by-process, where Shan is considered to teach all of the claimed characteristics of the product. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 10, Shan discloses a method for direct coal liquefaction comprising recycling the hydrogen-donating solvent described above for use as a solvent in the direct coal liquefaction (see Abstract).
Allowable Subject Matter
Claims 1-8 and 11-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Shan, cited above, is considered to be the closest prior art.
Shan discloses a method for preparing a recycling hydrogen-donating solvent for direct coal liquefaction comprising (see Fig. 1; Embodiment 1):
carrying out first fractionation on a direct coal liquefaction oil to obtain a liquefied medium oil (BP 200-300°C) and a liquefied heavy oil (BP 300°C+);
feeding the liquefied medium oil into a first hydrogenation reactor and carrying out a first-stage hydrogenation reaction;
feeding the liquefied heavy oil into a second hydrogenation reactor and carrying out a second-stage hydrogenation reaction;
performing second fractionation on effluents from the first and second stage hydrogenation reactions to obtain a medium-temperature solvent oil (BP 200-300°C) and a high-temperature solvent oil (BP 300-480°C); and
mixing the medium-temperature solvent oil and the high-temperature solvent oil to prepare the recycling hydrogen-donating solvent.
Shan discloses separate hydrogenation reactions for the medium and heavy oil fractions. This differs from the instant claimed embodiment, which entails performing hydrogenation on the liquefied heavy oil and hydrogenation on the liquefied medium oil together with the hydrogenated liquefied heavy oil (claim step 3). There lacks sufficient teachings and/or suggestions in the prior art which would lead a person of ordinary skill to modify Shan in such a way as to arrive at the claimed embodiment.
Other relevant prior art references include:
Quignard et al (US 2013/0146508): directed to coal liquefaction followed by hydrocracking.
MacArthur et al (US 2011/0042272): directed to direct coal liquefaction with integrated product hydrotreating.
However, neither Quignard nor MacAurthur cure the deficiencies of Shan.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Renee Robinson/Primary Examiner, Art Unit 1772
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