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 3, 5, 18, 19, and 21 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 3 is indefinite because M1, P1, M2 and P2 are defined as weight-percent concentrations in respective separate feedstocks, whereas the claimed ratio (M1+M2)/(P1+P2) does not account for the respective amounts of the feedstocks being blended, notwithstanding that the claim expressly requires selecting an “amount” of the further feedstock. It is therefore unclear whether M2/P2 designate concentrations in the further feedstock or quantities contributed by the selected amount thereof.
Regarding claim 5, the phrase “preferably a hydroxide or a fatty acid salt” renders the scope of the claim indefinite because it is unclear whether the metal-containing compound is required to be a hydroxide or fatty acid salt, or whether such compounds are merely optional examples. The use of “preferably” fails to clearly define whether the subsequently recited species constitutes a limitation of the claim.
Regarding claim 18, the phrase “preferably upstream of the main active catalyst” renders the scope of the claim indefinite because it is unclear whether the heated pre-processing zone is required to be upstream of the main active catalyst or whether the upstream arrangement is merely preferred and therefore not required.
Regarding claim 19, the phrase “such as a compound having no activity for hydrodeoxygenation” renders the scope of the claim indefinite because it is unclear whether a compound having no hydrodeoxygenation activity is required by the claim or is merely an exemplary species encompassed by the preceding limitation requiring a compound having less hydrodeoxygenation activity than the main active catalyst.
Regarding claim 21, the recitation that the elevated temperature is “from 240°C to 380°C, such as from 250°C to 370°C, or even from 260°C to 360°C” renders the scope of the claim indefinite because it is unclear which of the three recited temperature ranges defines the required scope of the claim. The phrases “such as” and “or even” present the narrower ranges as optional examples rather than clearly recited claim limitations.
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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12,312,542 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because that patent is directed to substantially the same method for reducing deactivation of a hydrotreatment catalyst by adjusting the M:P ratio, thermally forming a metal/phosphorus precipitate, and contacting the purified renewable feed with the active catalyst. There are minor differences between the two sets of claims, and such differences would have been obvious to one of skill in the art.
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.
Claims 1-3, 9, 12-18, and 21-23 are rejected under 35 U.S.C. § 103 as being unpatentable over Malm et al. (WO 2018/024728 A1) in view of Lindqvist et al. (WO 2020/136034 A1) and Marker et al. (US 2009/0321311 A1).
Regarding claim 1, Malm teaches purification of renewable feedstocks, including animal fats and vegetable oils containing oxygen-containing compounds, metals, and phosphorus impurities, by adding a substance capable of forming a separate phase with impurities, heating the admixture, and removing the impurity-containing phase to obtain a purified feedstock (Malm, pp. 2–10). Malm identifies Fe, Na, Ca, Mg, and phosphorus as feed impurities and teaches phosphoric-acid addition followed by heating at about 200-280°C and filtration. Malm's Examples 1-4 quantitatively determine the metal and phosphorus contents and vary the added phosphoric acid according to feed impurity loading. Particularly, Malm's animal-fat example reports approximately 4 mg/kg Fe, 160 mg/kg Na, 270 mg/kg Ca, 8.3 mg/kg Mg, and 180 mg/kg P and treats the feed with, inter alia, 1000 ppm phosphoric acid before heating at 220°C or 280°C (Malm, pp. 14-15, Tables 3-5). The disclosed metals total about 442.3 ppm, and 1000 ppm H₃PO₄ contributes about 316 ppm elemental P. Thus, the resulting adjusted feed has approximately 496 ppm total P and an elemental M:P ratio of about 0.89, within the claimed 0.70–1.26 range.
Lindqvist teaches treatment of renewable lipid material containing phosphorus and metal compounds and expressly explains that thermal disruption of phosphorus-containing impurities causes formation of solid metal phosphates and metal pyrophosphates. Lindqvist teaches heating at about 220-300°C, preferably about 260-280°C, followed by removal of impurities by settling, filtration, centrifugation, and/or bleaching (Lindqvist, pp. 7-11). Lindqvist further teaches hydrotreating the heat-treated lipid material in the presence of a hydrotreatment catalyst, including hydrodeoxygenation, and defines HDO as removal of oxygen by molecular hydrogen under the influence of an HDO catalyst (Lindqvist, p. 13).
Marker teaches producing renewable hydrocarbons from glycerides and free fatty acids derived from plant oils, animal oils, fats, and greases by hydrogenation/deoxygenation, including hydrodeoxygenation, in the presence of hydrogen, followed optionally by hydroisomerization (Marker, ¶¶ [0002], [0009], [0013]–[0020]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply Lindqvist's metal-phosphate precipitation and subsequent hydrotreatment teachings to Malm's impurity-adjusted renewable feed because both references seek to remove metal/phosphorus impurities before catalytic processing. Marker establishes that such purified renewable lipid feeds were conventionally hydrotreated in hydrogen to produce renewable hydrocarbons. One of ordinary skill would have been motivated to promote upstream formation and removal of insoluble metal-phosphate material to reduce plugging and deactivation of the downstream hydrotreatment catalyst.
Regarding claim 2, Malm teaches use of numerous renewable oils and fats, including mixtures thereof, having different metal and phosphorus impurity contents, while Marker similarly teaches numerous renewable feedstocks and mixtures/co-feeds thereof. Marker demonstrates substantially different phosphorus contents among soybean oil, palm oil, canola oil, yellow grease, and beef tallow (Marker, ¶¶ [0009], [0034]–[0035]). It would have been obvious to blend a renewable feed with a further renewable feed having a compensating metal or phosphorus content to obtain the desired M:P composition because blending streams of known differing compositions is a predictable means of controlling feed composition.
Regarding claim 3, Malm quantitatively determines Fe, Na, Ca, Mg, and P contents of different renewable feeds and selects differing additive amounts depending upon impurity loading (Malm, Tables 1-5). Marker likewise determines elemental phosphorus concentrations for individual renewable feeds. Once blending according to claim 2 would have been obvious, determining M1/P1 and M2/P2 and selecting the amount of each feed required to achieve a desired total M:P ratio would have been a routine material-balance calculation yielding predictable results.
Regarding claim 9, Malm teaches that the lipid material can already have been preprocessed before the disclosed heat treatment, including by settling, degumming, bleaching, deodorizing, and/or distillation (Malm, p. 8), and Marker teaches pretreatment of renewable feeds before hydrotreatment. Thus, pretreatment before or after ratio adjustment would have been an obvious process-placement choice.
Regarding claim 12, Marker teaches renewable feeds comprising glycerides, particularly triglycerides, and free fatty acids (Marker, ¶ [0009]).
Regarding claim 13, Marker teaches canola, corn, soy, rapeseed, soybean, colza, tall, sunflower, hempseed, olive, linseed, coconut, castor, peanut, palm, mustard, cottonseed and jatropha oils, tallow, yellow and brown greases, lard, fish oil, algal oil, and related renewable feeds (Marker, ¶ [0009]; claim 10).
Regarding claim 14, Marker teaches hydrogenation/deoxygenation including HDO and further hydroisomerization (Marker, ¶¶ [0013]–[0020]).
Regarding claim 15, Marker teaches hydrotreating/deoxygenation catalysts suitable for carrying out HDO (Marker, ¶¶ [0013]–[0014]).
Regarding claims 16 and 17, Marker teaches hydrogenation/hydrotreating catalysts including Ni or NiMo on high-surface-area supports and expressly identifies Pt and/or Pd dispersed on gamma-alumina; thus, Marker expressly teaches a claimed metal, e.g., Pt or Pd, on a claimed alumina support (Marker, ¶ [0013]).
Regarding claim 18, Malm and Lindqvist teach directing the impurity-containing renewable lipid through a heated treatment zone before subsequent catalytic hydrotreatment. Lindqvist expressly teaches heat treatment followed by hydrotreatment of the purified lipid material (Lindqvist, pp. 7–13). Thus, the heated treatment zone is upstream of the main hydrotreatment catalyst.
Regarding claim 21, Lindqvist teaches heat treatment at about 220-300°C and preferably about 260-280°C, which overlaps the claimed 240-380°C range (Lindqvist, pp. 9–11).
Regarding claim 22, Malm's above-discussed animal-fat embodiment treated with 1000 ppm phosphoric acid produces a calculated elemental M:P ratio of approximately 0.89, falling within the claimed 0.73-1.25 range (Malm, pp. 14–15, Tables 3–5).
Regarding claim 23, Malm teaches adding water with the phosphoric acid and heating the resulting admixture; its examples expressly use phosphoric acid together with water during the thermal treatment. Thus, the thermal-treatment conditions comprise the claimed presence of water.
Claims 4-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Malm in view of Lindqvist and Marker, as applied to claim 1 above, and further in view of Toukonitty et al. (WO 2020/016400 A1).
Regarding claims 4 and 5, Lindqvist teaches that chemicals may be added during thermal treatment to improve phosphorus removal and expressly identifies sodium hydroxide as such an additive (Lindqvist, p. 11). Toukonitty likewise teaches adding an alkaline-metal hydroxide, preferably KOH, LiOH, NaOH, or mixtures thereof, to contaminated recycled/renewable organic material and specifies the concentration and relative amount of the alkaline-metal-hydroxide solution (Toukonitty, p. 10). Sodium hydroxide is an ionic metal-containing hydroxide as recited in claim 5. It would have been obvious to use the known metal-containing hydroxide to alter the relative metal/P composition and facilitate removal of phosphorus-containing solids.
Regarding claim 6, Malm determines metal and phosphorus impurity concentrations and varies reagent dosage according to feed composition, while Toukonitty teaches controlling the concentration and amount of metal hydroxide added. Once a desired M:P ratio is selected, determining M1 and P1 and calculating the amount M2′ of metal compound required to reach that ratio is a routine stoichiometric/material-balance calculation performed to provide the desired final composition without unnecessary excess reagent.
Claims 7 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Malm in view of Lindqvist and Marker, as applied to claim 1 above, and further in view of Ouni et al. (US 9,206,092 B2).
Regarding claim 7, Ouni teaches that phosphorus and metal impurities in renewable oils deactivate HDO catalysts and teaches reducing those impurities by degumming and bleaching. Ouni explains that bleaching removes phosphoric compounds and metals remaining after degumming (Ouni, col. 2). It would have been obvious to control the degree of such conventional impurity-removal pretreatment so that the resulting feed has the desired M:P ratio, because metal and phosphorus contents were known measurable feed variables affecting catalyst performance.
Regarding claim 11, Ouni expressly teaches degumming and bleaching as renewable-oil impurity-removal pretreatments. Thus, at least the claimed degumming and bleaching alternatives are expressly taught.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Malm in view of Lindqvist and Marker, and further in view of Toukonitty and Ouni.
The references collectively teach the claimed compatible alternatives for adjusting feed impurity composition: Malm and Marker teach blending/mixtures of renewable feeds having different impurity compositions; Lindqvist and Toukonitty teach adding a metal-containing hydroxide such as NaOH; and Ouni teaches reducing phosphorus/metal impurities by degumming or bleaching. Employing two or more of these known compatible adjustment techniques would have been obvious where necessary to obtain the desired M:P composition from a particular renewable feed.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Malm in view of Lindqvist and Marker, as applied to claim 1 above, and further in view of Yao et al. (US 8,017,819 B2).
Yao expressly recognizes metal and phosphorus compounds in triglyceride feeds as causing catalyst deactivation and plugging and thermally treats such feeds before hydrotreatment. In Example 1, heating undegummed vegetable oil at 348°C reduces K from 18.9 to 1.6 ppm, Ca from 7.6 to 1.0 ppm, Mg from 7.4 to about 0.9-1.1 ppm, and phosphorus from 47.6 to about 10.5-13.6 ppm; Yao reports approximately 80% total metal/P removal (Yao, Example 1, Table I). Accordingly, Yao expressly demonstrates purified renewable feed having both the recited metals and phosphorus below 20 ppm.
It would have been obvious to one of ordinary skill in the art to employ Yao's disclosed thermal-purification conditions in the process of Malm, Lindqvist, and Marker because Yao teaches that those conditions substantially remove the same phosphorus and metal contaminants from the same type of renewable triglyceride feed before hydrotreatment. The skilled artisan would have had reason to use Yao's demonstrated treatment conditions to obtain the expressly demonstrated low-contaminant feed and thereby prevent the phosphorus- and metal-containing impurities from reaching and adversely affecting the downstream hydrotreatment catalyst. Such modification would have predictably yielded a purified renewable feed having the metal and phosphorus concentrations recited in claim 10.
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Malm in view of Lindqvist and Marker, as applied to claim 18 above, and further in view of Dandeu et al. (FR 2,953,854 A1).
Regarding claim 19, Dandeu teaches an upstream heated pretreatment reactor containing a fixed bed of porous refractory oxide adsorbent devoid of catalytic metals, preferably alumina, operated at about 130-320°C before the principal hydrotreatment reactor (Dandeu, pp. 4-9). The guard-bed material therefore has substantially less HDO activity than the downstream active hydrotreatment catalyst.
It would have been obvious to one of ordinary skill in the art to employ Dandeu's low- or non-hydrodeoxygenation-active preprocessing material in the heated preprocessing zone of the Malm/Lindqvist/Marker process because Dandeu teaches that separating the contaminant-removal function from the active hydrotreatment catalyst permits the phosphorus/metal contaminants to be transformed and captured upstream, thereby protecting the downstream active hydrotreatment catalyst from deposition, plugging, and deactivation. Since Lindqvist likewise identifies thermally generated metal-phosphate solids as the contaminants to be removed before hydrotreatment, one of ordinary skill would have had reason to use Dandeu's upstream substantially catalytically inactive material to accomplish that contaminant-removal function without prematurely carrying out the principal HDO reaction in the preprocessing zone, leaving the main active catalyst to perform the intended hydrotreatment.
Regarding claim 20, Dandeu teaches that heating the renewable oil causes phosphorus, calcium, magnesium, iron, and/or zinc impurities to precipitate and that the resulting solid impurities are deposited and retained on the fixed guard bed, preventing those solids from reaching the downstream hydrotreatment catalyst (Dandeu, pp. 9-10). Thus, Dandeu expressly teaches retaining the solid precipitate in the heated preprocessing zone.
It would have been obvious to one of ordinary skill in the art to configure the preprocessing zone of Malm/Lindqvist/Marker to retain the precipitated solids therein as taught by Dandeu, rather than allowing those solids to pass to the main active catalyst, because Dandeu expressly teaches that retention of the phosphorus/metal-containing solids in the upstream bed prevents their deposition in and plugging/deactivation of the downstream hydrotreatment catalyst. This modification would have been particularly applicable to Lindqvist's process because Lindqvist expressly teaches that thermal treatment generates solid metal phosphates and metal pyrophosphates that should be removed before subsequent hydrotreatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/ Primary Examiner, Art Unit 1771
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