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 Interpretation
“Net elementary charge” is defined as the net elementary charge of phosphorus and the metal(s) contained in the feedstock, in mmol elementary charge/kg of feedstock (p. 3, lines 26-29 of the as-filed specification).
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 1-21 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 1 recites the limitation "the feedstock to be purified" in step b). There is insufficient antecedent basis for this limitation in the claim.
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, claim 11 recites the broad recitation “time of 1 minute to 3 hours”, and the claim also recites “preferably 15 minutes to 3 hours”, 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.
Claim 18 recites the limitation "the optional second feedstock" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-12 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Malm (US 2019/0203154).
Regarding claims 1-3 and 6-9, Malm discloses a method for producing renewable hydrocarbons from an oxygen containing renewable feedstock, the feedstock comprising dissolved impurities including phosphorus and metals, the feedstock further comprising free fatty acids (see [0001]; [0013]-[0015]; [0047]). The method comprises:
mixing the feedstock with a charge balancing component (substance capable of forming a separate phase, including acids such as phosphoric acid) to obtain a feedstock to be purified (see [0016]; [0031]; [0051]-[0053]);
subjecting the feedstock to be purified to heat treatment at a temperature of 200 to 280°C (within the claimed ranges), in order to precipitate compounds containing phosphorus and metal(s) (see [0015]-[0016]; [0033]; [0063]);
removing the formed precipitate compounds to obtain a purified feedstock (see [0017]; [0035]); and
subjecting the purified feedstock to hydrotreatment using a catalyst sensitive to at least one of the impurities (see [0037]; [0046]; [0072]).
The phosphorus impurities are in the form of soaps and salts (see [0047]). Thus, the addition of an acid necessarily amounts to mixing with “an elementary charge balancing component” as claimed.
The office notes that Malm does not explicitly disclose obtaining a net elementary charge in the feedstock nor the elementary charge of the feedstock to be purified being in the range of -5 to 15 mmol/kg of feedstock.
In this regard, however, the office is of the position that Malm’s process and approach are functionally the same as that claimed. The process adds an acid to react with the phosphorus salt/soap components and metals, such that the impurities will precipitate out of the mixture when subjected to heat treatment. The disclosed process adds the same type of compound (e.g., phosphoric acid) to the same type of feed and subjects it to heat treatment under identical or substantially similar conditions of temperature and duration (refer also to dependent claims below). Thus, there is at least a reasonable expectation that the resulting net elementary charge would be inherently as claimed. Furthermore, a person of ordinary skill in the art, armed with the teachings and suggestions of Malm, would optimize the mixing conditions of the feedstock with the “substance that is able to form a compound or react with the impurities such that the formed compound or reaction product forms a separate phase” ([0016]) consistent with the stated objective of ensuring separation of the impurities from the feedstock prior to downstream catalytic refining operations (see [0072]-[0073]). Absent a showing of new or unexpected results, the claimed net elementary charge is not considered to patentably distinguish the instant claims over the cited prior art.
Regarding claim 4, Malm discloses metals present in an amount of at least 1 ppm (see [0080]-[0081]).
Regarding claim 5, Malm discloses wherein the dissolved metals include sodium and iron (see [0080]-[0081]).
Regarding claim 10, Malm discloses wherein the purification heat treatment is carried out in the presence of water, in an amount of 0.05 to 10 wt.% (see [0062]), overlapping the claimed range.
Regarding claim 11, Malm discloses wherein the purification heat treatment is carried out for a period of time of 5 minutes to 60 minutes (see [0064]), within the claimed range.
Regarding claim 12, Malm discloses wherein the removal of the formed precipitate compounds is carried out by at least one method selected from filtration, settling (phase-phase separation), and centrifugation (see [0017]).
Regarding claim 18, Malm discloses wherein the feedstock comprises at least one of animal fat, animal oil, plant fat, plant oil, fish fat, fish oil, microbial oil, waste fat, waste oil, residue fat, residue oil, and a sludge originating from plant oil production (see [0013]).
Regarding claim 19, Malm discloses wherein the feedstock comprises at least one of used cooking oil, tall oil, palm oil, sunflower oil, soybean oil, hemp oil, olive oil, linseed oil, cottonseed oil, mustard oil, palm oil, castor oil, coconut oil, lard, tallow, etc. (see [0014]).
Regarding claim 20, Malm discloses wherein the renewable hydrocarbons are renewable fuels (see [0001]; [0037]).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Malm, as applied to the claims above, in view of Toukoniitty et al (WO 2020/016400).
Regarding claim 13, Malm discloses hydrotreatment, as discussed above, but does not explicitly disclose wherein the hydrotreatment comprises hydrodeoxygenation and isomerization.
Toukoniitty, like Malm, is directed to purifying a renewable hydrocarbon by removing impurities, including phosphorus (see Abstract). After purification, the feedstock is upgraded to fuels by hydrotreatment including hydrodeoxygenation and isomerization (see p. 16, lines 11-30; claim 41). Operating conditions include a temperature in the range of 270 to 380°C, a pressure in the range of 4 to 20 MPa, and a hydrogen flow in the range of 800 to 1400 nL/L (see p. 16, lines 21-34), all within the claimed ranges.
It would have been obvious to person of ordinary skill in the art at the time of filing the instant claimed invention to modify the process of Malm by operating hydrotreatment under hydrodeoxygenation and isomerization conditions, as suggested by Toukoniitty, in order to remove oxygen impurities and overall improve the properties of the feed material.
Regarding claims 14-16, Toukoniitty discloses a catalyst comprising NiW, NiMo, or CoMo and a support comprising alumina, silica, or zeolite (see p. 16, lines 1-6).
Claims 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Malm, as applied to the claims above, in view of Vilonen et al (US 2016/0177188).
Regarding claim 17, Malm discloses hydrotreating, as discussed above, but fails to mention the specifics of the catalyst employed.
Vilonen is directed to producing fuels from renewable hydrocarbon feedstocks by hydrotreating (see Abstract). Suitable catalysts include catalysts comprising nickel and a zeolite selected from ZSM-12 and ZSM-23, on a support of alumina and/or silica (see [0097]-[0098]).
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 Malm by using hydrotreating catalysts suggested by Vilonen, wherein Vilonen establishes that such catalysts are suitable for the purpose of upgrading renewable hydrocarbonaceous feedstock to valuable fuel products, in line with the objective of Malm.
Regarding claim 21, Malm is silent with respect to the specific fuels produced.
However, as demonstrated in Vilonen, production of fuels including gasoline, diesel, and aviation from the same type of renewable feedstocks by hydrotreatment processes is both known in the art and considered valuable (see [0001]; [0031]). It would therefore have been obvious to person of ordinary skill in the art at the time of filing the claimed invention to carry out the process of Malm in such a manner as to ensure production of the specifically claimed fuels, in order to provide valuable products.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,134,738.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to substantially similar processes for producing renewable hydrocarbons entailing mixing a feedstock with a charge balancing component, heat treatment, removal of the formed precipitate, and hydrotreating. All of the elements of the instant claims are fully taught and/or suggested by the claims of ‘738.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,134,747.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to substantially similar processes for purifying a renewable hydrocarbon entailing mixing with a charge balancing component, heat treatment, and removal of the formed precipitate. The main difference between the instant claims and those of ‘747 is that instant independent claim 1 sets forth a step of hydrotreatment of the purified feedstock. However, claim 22 of ‘747 includes an embodiment wherein the treated feedstock is hydrotreated. Accordingly, this difference is not patentably distinguishing.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/853,696 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to substantially similar processing for purifying a renewable hydrocarbon entailing mixing with a charge balancing component, heat treatment, and removal of the formed precipitate. The main difference between the instant claims and those of ‘696 is that instant independent claim 1 sets forth a step of hydrotreatment of the purified feedstock. However, claim 18 of ‘696 includes an embodiment wherein the treated feedstock is hydrotreated. Accordingly, this difference is not patentably distinguishing.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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
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