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 .
This communication is in response to the application filed 10/22/2025.
Claims 1-14 are pending.
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 9 and 12 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 claims 9 and 12, 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).
Note a number of claims recite optional phrases. Optional language is not indefinite, but the optional limitation it is also not required by the claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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) 1-7 and 10-14 is/are rejected under 35 U.S.C. 102 as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wilfried (FR3107530A1) (previously cited in IDS).
With respect to claim 1, Wilfried (FR3107530A1) teaches a process for mild selective hydrogenation of pyrolysis oil from waste plastics (i.e. solid feedstock), par. 1-3, abstract, to remove unstable compounds, par. 0004, 0046. Wilfried teaches thermal decomposition of waste plastics to form a pyrolysis oil. “The charge of the process according to the invention comprises at least one plastic pyrolysis oil”. Wilfried does not expressly state the pyrolysis produces a fluid product and sold phase, however, such is well known in the pyrolysis of waste plastics. Wilfried teaches wherein “the oils resulting from the pyrolysis of plastic waste contain many impurities, in particular diolefins[ and other impurities that generate] problems of operability and in particular problems of corrosion, coking or catalytic deactivation, or even problems of incompatibility in the uses of the target polymers. The presence of diolefins can also lead to pyrolysis oil instability problems characterized by the formation of gums. This phenomenon is generally limited by appropriate storage of the charge.” Par. 0004. The pyrolysis liquid is passed to a process stage for selective hydrogenation at low temperature of 100-520 C and low hydrogen rate preferably between 5 and 20 Nm3/m3 to obtain a hydrogenated effluent. Par. 0036 The catalyst is selected to “hydrogenate the diolefins as selectively as possible” and is capable of converting at least 90% or at least 99% of the diolefins in the pyrolysis oil, making the effluent more stable. Par. 0046. A product with substantially no diolefins, i.e. a stabilized hydrocarbon product, is withdrawn. Figures 1-3. The process discloses sending to a downstream traditional, higher temperature hydrotreatment unit for further impurity removal, optional washing, and further conversion to products through, for example, steam cracking. Abstract; par. 0047, 0069, 0082. The same selectively hydrogenated process produces the same stabilized effluent; thus, the oil would be capable of storing before or transport to the next set of processing.
With respect to claim 2, Wilfried teaches herein the ratio of the total amount of added hydrogen to the amount of raw liquid feedstock is preferably from 5-20 Nm3/m3, par. 0036 which fits within the range of from 1 Nm3/m3 to 50 Nm3/m3.
With respect to claim 3, Wilfried teaches wherein the charge to the hydrogenation reactor “may consist solely of plastic pyrolysis oil(s). Preferably, said filler comprises at least 50% by weight, preferably between 75 and 100% by weight, of plastic pyrolysis oil wherein the solid feedstock comprises at least 50% waste polymer.” Par. 0025.
With respect to claim 4, Wilfried is silent regarding separating out aqueous phase from the product after the first selective hydrogenation step, but does teach optional separation of aqueous phase after the downstream hydrotreating step. Abstract. It is known that hydrogenation of the pyrolysis oil produces an aqueous phase. It would have been obvious and within the skill of one in the art at the time of filing to separate the hydrogenated stream into an aqueous and oil phase prior to further upgrading of the oil phase for production of fuels given such is common practice in the art and is shown in Wilfried with respect to the downstream hydrotreating stages.
With respect to claim 5, Wilfried teaches wherein the active hydrogenation conditions involving a pressure of 1-10 MPa. Par. 0036.
With respect to claim 6, Wilfried teaches wherein the selective hydrogenation conditions involving an inlet temperature from 100-250 C, which overlaps the range of 80 to 210 *C. Par. 0036.
With respect to claim 7, Wilfried teaches wherein said material catalytically active in hydrogenation comprising at least one of Ni, Co, Mo, W and Pd. Par. 0040
With respect to claim 10, Wilfried teaches wherein the selective hydrogenation reactor operates at an inlet temperature between 100-250C. Par. 0036. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to cool the pyrolysis effluent, which occurs at a higher temperature, to the desired inlet temperature prior to introduction to the reactor in order to ensure operation of the selective hydrogenation reactor at the required temperature.
With respect to claim 11, Wilfried does not expressly teach the amount of solid feedstock processed each day. However, the pyrolysis and subsequent hydroprocessing units can be sized to handle the desired capacity. For example, Wilfried teaches throughput of the reactor but also teaches using multiple reactors. Such sizing to achieve the desired capacity would have been obvious to one of ordinary skill in the art at the time of filing to achieve a unit capable of meeting the needs of the operator.
With respect to claims 12 and 14, Wilfried teaches processing the same feed in the same process to remove the same stabilizing diolefins, and thus producing the same stabilized product. It would have been obvious to one of ordinary skill in the art at the time of filing to transport the stabilized oil to the next upgrading process, or store until ready to process, by means known in the art. Given the same process feed, conditions, and upgraded oil result, the product is expected to remain stable through storage – which Wilfried recognizes as desirable when discussing the issue with pyrolysis oil, see par. 0004.
With respect to claim 13, Wilfried teaches the process of claim 1, which would necessarily include a plant for achieving each of the steps.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilfried (FR3107530A1) as applied to claims 1-7 and 10-14 above, and further in view of Odjo (US 2023/0348799, filing date 7/27/2021).
With respect to claims 8-9, Wilfried teaches the limitations of claim 1 as discussed above including thermal decomposition of waste plastic and using hydrogen in a selective hydrogenation process. Wilfried is silent regarding wherein said hydrogen is provided at least in part by reaction of an amount of the fluid product of thermal decomposition.
Odjo teaches a process for converting waste plastics into pyrolysis oil using thermal decomposition, followed by separation and hydro-upgrading in the presence of hydrogen. Abstract; par. [0011]-[0018]. Odjo teaches wherein process may comprise in-situ hydrogen generation by water electrolysis powered by solar photovoltaic energy. Abstract; see also [0038]. Therefore, before the filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Wilfried by producing at least a portion of the hydrogen needed in-situ by water electrolysis as taught in Odjo because both are directed to the conversion of waste plastic into valuable hydrocarbons using thermal decomposition and hydroprocessing in the presence of hydrogen and because the in-situ production of hydrogen by water electrolysis creates a more economic process using a waste stream to produce a reactant optionally using a renewable power source. Such combination would have been obvious given all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/595,382 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and claims in the reference application merely recite overlapping scope.
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 Brandi Doyle whose telephone number is (571)270-1141. The examiner can normally be reached Monday-Friday, 8:00 AM - 3:00 PM.
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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.
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/BRANDI M DOYLE/Examiner, Art Unit 1771
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