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 .
DETAILED ACTION
This Office action is based on the 18/849301 application originally filed September 20, 2024.
Amended claims 1-11, filed September 03, 2025, are pending and have been fully considered. Claim 11 is new.
In view of the appeal brief filed on June 09, 2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
Claim Rejections - 35 USC § 112
Claims 1-11 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.
Claim 1 is unclear to the phrase “commercial transportation fuel specification” making the claim indefinite. It is unclear to what defines “specification” for the types of “commercial transportation fuel” due to the “specification” of fuels has numerous interpretations. The present application defines in the current specification “the commercial transportation fuel specification of relevance may mainly be for diesel and marine fuels, since jet and naphtha specifications may require other processes to be fulfilled” (see paragraph 0033) which fails to distinctly define any metrics for “specifications”. Additionally, the claim should further define “commercial transportation fuel” due to the current specification (paragraph 0033) fails to distinctly define specific fuels but rather suggest fuels that are “mainly” known which aids to numerous interpretations that are outside of the disclosed fuels. In view of this, the phrase should be further defined or canceled from the claimed invention.
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.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalnes (US 2012/0151828) in view of Barry et al. (US 6,004,361) hereinafter “Barry” and Guillevic et al. (US 2019/0194557) hereinafter “Guillevic”.
Regarding Claims 1-9 and 11
Kalnes discloses in the abstract, methods for making a fuel composition comprising contacting one or more components of a hydroprocessing feedstock, for example both a fatty acid- or triglyceride-containing component and a paraffin-rich component, with hydrogen under catalytic hydroprocessing conditions are disclosed. The methods are effective to upgrade the component(s) and provide a hydroprocessed biofuel. A representative method utilizes a single-stage process in which hydrogen-containing recycle gas is circulated through both a hydrodeoxygenation zone and a hydrocracking zone in series.
Kalnes discloses in paragraph 0029, further components may be included in the hydroprocessing feedstock, in addition to, or in place of, either the fatty acid- or triglyceride-containing component or the paraffin-rich component described above. For example, an “aromatic-rich” component may be used to provide a hydroprocessed biofuel having a significant quantity of aromatic hydrocarbons. A representative aromatic-rich component is derived from biomass and comprises a significant quantity, for example generally from about 5% to about 85%, and often from about 10% to about 75%, by weight of cyclic compounds, including cyclic organic oxygenates. The term “cyclic organic oxygenates” is meant to include compounds in which oxygen is incorporated into a ring structure (e.g., a pyran ring), as well as compounds (e.g., phenol) having a ring structure with oxygen being incorporated outside the ring structure. In either case, the ring structure may have from 3 to 8 ring members, be fused to other ring structures, and may be completely saturated (e.g., naphthenic), completely unsaturated (e.g., aromatic), or partially unsaturated.
Kalnes discloses in paragraph 0038, hydroprocessing which includes hydrotreating (e.g., hydrodeoxygenation) and optionally hydrocracking reactions, involves contacting the combined, aromatic-rich and aromatic-lean components with hydrogen and in the presence of a suitable hydroprocessing catalyst, generally under conditions sufficient to convert a large proportion of the organic oxygenates in the combined hydroprocessing feedstock to CO, CO2 and water that are easily separated from the hydroprocessed product. The hydrogen may be present in one or more streams, as discussed in greater detail below. The hydrogen may be substantially pure (e.g., as makeup or fresh hydrogen) or relatively impure (e.g., as recycle hydrogen), as long as sufficient hydrogen partial pressure is maintained in the reaction environment to achieve the desired performance (e.g., conversion, catalyst stability, and product aromatic content).
Kalnes discloses in paragraph 0045, after hydroprocessing, the resulting hydroprocessed biofuel has an oxygen content that is generally reduced from about 90% to about 100% (i.e., complete or substantially complete oxygen removal), relative to the total oxygen present in the hydroprocessing feedstock. Fractionation or other separation methods may be used to separate various fractions of the hydroprocessed product (or total hydroprocessing effluent), which includes the hydroprocessed biofuel such as a hydroprocessed aviation biofuel. These fractions or hydroprocessed biofuels, in addition to having been fractionated may also be obtained after other treatments including catalytic reaction (e.g., for further oxygen removal) and/or adsorption. The separated, hydroprocessed biofuel fraction may then, be blended with comparable petroleum derived fractions and possibly other suitable additives.
Kalnes discloses in paragraph 0047, a hydroprocessed aviation biofuel may therefore be separated from the hydrocarbon-containing products of hydroprocessing, based on boiling point or relative volatility, in a distillation column capable of carrying out a suitable number of theoretical stages of equilibrium contacting between rising vapor and falling liquid. According to a representative embodiment, a hydroprocessed aviation biofuel may have an initial boiling point (or “front-end”) temperature characteristic of C5 hydrocarbons, for example from about 30° C (86° F) to about 40° C (104° F) and a distillation end point temperature generally from about 138° C (280° F) to about 300° C (572° F), and typically from about 145° C (293° F) to about 288° C (550° F). These initial boiling point temperature ranges are also characteristic of hydroprocessed naphtha biofuel, but the distillation end point temperature range for this hydroprocessed biofuel fraction are generally less, for example in the range from about from about 110° C (230° F) to about 149° C (300° F), and typically from about 121° C (250° F) to about 143° C (290° F). A hydroprocessed diesel biofuel (i.e., “green diesel”) may have an initial boiling point (or “front-end”) temperature of at least about 260° C (500° F), typically at least about 274° C (525° F) (e.g., in the range from about 274° C (525° F) to about 343° C (650° F). These boiling point temperatures, which are also characteristic of respective petroleum derived diesel fuel and aviation fuel fractions, are measured according to ASTM D86.
Kalnes discloses in paragraph 0048, a hydroprocessed aviation biofuel component or other hydroprocessed biofuel fraction, therefore, may be separated by fractionation from lower boiling hydrocarbons contained in a more volatile component (e.g., a hydroprocessed analogue of LPG) and/or higher boiling hydrocarbons contained in a less volatile component (e.g., a hydroprocessed kerosene biofuel and/or a hydroprocessed diesel biofuel). According to preferred embodiments, the separated, lower boiling hydrocarbons comprise C4 hydrocarbons (e.g., butanes and butenes) as well as lower boiling compounds, such that these lower boiling hydrocarbons may be referred to a C4 hydrocarbons.
Kalnes discloses in paragraph 0051, in the case of hydroprocessed aviation biofuel, the total oxygen content remaining after hydroprocessing, fractionation, and optionally additional treatments as described above, is generally less than 0.5% by weight to meet ASTM thermal stability test specifications for aviation fuel. The hydrocarbon content of such aviation biofuels is therefore generally at least about 99.5% by weight, and the aromatic hydrocarbon content is as discussed above.
Kalnes discloses in paragraph 0055, the combined hydroprocessing liquid feed 6 is then subjected to hydroprocessing in at least two reaction zones to effectively upgrade hydroprocessing feedstock. In particular, hydroprocessing feedstock, now combined with recycled bottoms portion, is contacted, in a first reaction zone, with hydrogen contained in first recycled hydrogen portion.
It is to be noted, Kalnes discloses hydrotreatment and hydroconversion by fractionation to produce diesel fuel.
However, Kalnes fails to further provide the specific gravity of the final fuel product from fractionation.
It is known in the art to complete fractionation in order to produce a diesel fuel product with a specific gravity, as taught by Barry.
Barry discloses in column 1 lines 10-13, diesel fuels and more particularly to diesel fuels which produce lower levels of vehicle emissions and which are suitable for use in underground mining engines.
Barry discloses in column 4 lines 1-6, fuels may be prepared by conventional refinery processing of suitable crudes. Being straight run products, the fuels may be produced directly by suitable fractionation after removal of contaminants in the desalter. Hydrotreating may be used if desired to reduce the sulfur level.
Barry further discloses in column 2 lines 31-45, the distillation of the fuel is controlled so as to limit the density of the fuel since high densities have been found to contribute significantly to the emission of particulates. When the density is controlled in an appropriate manner, the aromatics content may extend up to about 30 weight percent or more; it has been found that the aromatics present in the controlled density, low emission fuels, mainly alkyl benzenes, naphthene benzenes and naphthalenes, are not harmful, either in terms of their effects on combustion quality or on engine emissions. The final boiling point of the fuels is therefore held below about 315° C. (600° F.) and preferably below 300 C. (572° F.). Provided that this limitation is observed, bicyclic and polycyclic aromatics will be substantially excluded. The T90 of the fuels is typically in the range of 255° to 270° C. (about 490° F. to 525° F.).
Barry discloses in column 2 lines 46-67, the initial boiling points of the fuels is lower than conventional, typically in the range of 170° to 190° C (about 340° to 374° F). Ten percent points (T10) are typically in the range from about 200° to 220° C (about 390° to 430° F). The use of the lower initial points insures that a significant amount of paraffins is present which contributes to the high cetane numbers characteristic of the present fuels. They also contribute to the characteristic high API gravity (ASTM D1298-3) of the fuels which is at least 38 and is typically in the range of 38 to 42, usually about 40. This contrasts with the lower API gravities of conventional fuels, normally in the range of 30 to 37. The specific gravity of the fuels (ASTM D 4052-9) are consistent with the low boiling range, lower than that of conventional fuels, typically in the range of 0.82 to 0.83, contrasting with values of about 0.84 to 0.88 for conventional fuels. Also consistent with the presence of the lower boiling materials in the fuels is a relatively low viscosity, typically from 1.7 to 1.9 cS at 40° C (ASTM D445-3) and from about 2.4 to 2.8 at 20° C (ASTM D445-9). Again, this is in contrast to the higher viscosity characteristics of conventional automotive diesel fuels, which are typically about 3 to 4 cS at 400° C.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to complete the fractionation of Kalnes in order to produce a diesel fuel product with a specific gravity, as taught by Barry. The motivation to do so, is to produce a diesel fuel that the specific gravity is consistent with the low boiling range of the fuel, as taught by Barry.
It is to be noted, Kalnes discloses hydrotreatment and hydroconversion by fractionation of a pyrolysis oil feedstock to produce diesel fuel but fails to further disclose the claimed treatment conditions of hydroconversion of a hydrocarbon feedstock to produce diesel.
However, it is known in the art various treatment conditions for hydroconversion by fractionation of a hydrocarbon feedstock to produce diesel fuel, as taught by Guillevic.
Guillevic discloses in paragraph 0005, improve the hydroconversion or hydrotreatment devices and processes, especially in terms of energy efficiency and operating cost.
Guillevic discloses in paragraph 0047-0052, the hydrotreatment or hydroconversion of the hydrocarbon feedstock is carried out under hydrotreatment or hydroconversion conditions, such as at least one of the following operating conditions: the temperature is between around 200°C and around 460°C; the total pressure is between around 1 MPa and around 20 MPa; the overall hourly space velocity of liquid feedstock is between around 0.05 h−1 and around 12 h−1; the hydrogen stream comprises between around 50 vol % and around 100 vol % of hydrogen relative to the volume of the hydrogen stream; the amount of hydrogen relative to the liquid hydrocarbon feedstock is between around 50 Nm3/m3 and around 2500 Nm3/m3. Guillevic further discloses in paragraph 0015, the hydrotreatment or hydroconversion reaction section comprises at least one reactor comprising at least one catalyst comprising at least one element chosen from elements from Group VIII of the Periodic Table.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to place the hydroconversion of Kalnes under the treatment conditions of Guillevic. The motivation to do so is to apply elevated temperatures and pressures during the operating conditions of hydroconversion in order to aid in separating a heavy fraction including naphtha, diesel and/or kerosene fuel product.
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).
Regarding Claim 10
THE FOLLOWING CLAIM INTERPRETATION IS HEREBY INCORPORATED INTO EACH AND EVERY REJECTION BELOW SET FORTH AS THOUGH FULLY SET FORTH THEREIN:
The examiner notes the claims are set forth as product by process claims. The product will determine patentability. The references as more fully below cited disclose the claimed product. The examiner notes that hydrotreatment and hydroconversion of a hydrocarbon feedstock is known in the art and results in a transportation fuel.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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) (citations omitted) Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). [Emphasis added by examiner]
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dandekar et al. (US 2017/0335207) discloses in the abstract, systems and methods are provided for processing of challenged feedstocks to produce distillate fuel products, such as jet boiling range products and/or diesel boiling range products. The challenged feedstocks can have a high aromatics content, a low API gravity, and/or a low cetane index/cetane number.
Pupat et al. (US 2018/0171246) discloses in the abstract, an installation for the hydrotreatment and hydroconversion of hydrocarbon-containing feedstocks, with a common fractionation section, for the production of at least one of the following products: naphtha (light and/or heavy), diesel, kerosene, distillate and residue
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Latosha Hines/Primary Examiner, Art Unit 1771
Prosecution Insights