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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-15 and 17-21, in the reply filed on 21 July 2026 is acknowledged.
Claims directed to the nonelected invention have been canceled.
Claim Objections
Claims 6, 8, 9, 12, 17 and 21 are objected to because of the following informalities:
Claims 6, 8, 9: recitations of “the liquid Product Heavy Marine Fuel Oil components” (plural, emphasis added) should be –the liquid Product Heavy Marine Fuel Oil component— (singular, as initially introduced in claim 6).
Claim 9: is an incomplete sentence. The office recommends amending to –wherein the receiving said Process Mixture comprises receiving in at least two separating vessels… –.
Claims 12 and 17: “ebulliated” is a misspelling of –ebullated— commonly used in the art.
Claim 21: “supplying said one first vessel” in line 7 should be –supplying said at least one first vessel—.
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 17-21 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.
Regarding claim 18, use of the term “preferred” in the claim (“preferred…catalyst carrier” and “preferred transition metal”) makes it unclear whether or not the limitations that follow are intended to limit the scope of the claim.
Claim 21 recites the limitation "the resulting mixture" in line 9. There is insufficient antecedent basis for this limitation in the claim. The office recommends amending the preceding step to introduce the mixture, i.e., by amending “supplying said at least one first vessel with a feedstock mixture comprising a predetermined quantity…” and thereafter referring the feedstock mixture instead of “the resulting mixture.”
Claims 17, 19 and 20 are rejected based on their dependency to claim 21.
Double Patenting
The nonstatutory double patenting (NSDP) 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 1-15 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,492,559.
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 reducing environmental contaminants in a feedstock marine fuel oil entailing mixing the feedstock with an activating gas and contacting the mixture with a catalyst under reactive conditions to form a process mixture containing a product heavy marine fuel oil liquid component, which is separated from the process mixture. Reactive conditions are selected to achieve a level of hydrocracking of less than 10% of the total mass balance. The claims of ‘559 specify the process mixture comprising gaseous components and by-product components, which are not recited in the instant claims. However, neither are they excluded and, therefore, this difference is not patentably distinguishing.
Claims 1-15 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,560,520.
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 reducing environmental contaminants in a feedstock marine fuel oil entailing mixing the feedstock with an activating gas and contacting the mixture with a catalyst under reactive conditions to form a process mixture containing a product heavy marine fuel oil liquid component, which is separated from the process mixture. The independent claims of ‘520 do not recite reactive conditions selected to achieve a level of hydrocracking of the feedstock of less than 10% of the total mass balance. However, claims 6, 7, 10, 13, 14, 17 and 18 all discuss the goal of minimizing hydrocracking, which is considered to be in line with and render obvious the claimed hydrocracking of less than 10%.
Claims 1-15 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,795,406.
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 reducing environmental contaminants in a feedstock marine fuel oil entailing mixing the feedstock with an activating gas and contacting the mixture with a catalyst under reactive conditions to form a process mixture containing a product heavy marine fuel oil liquid component, which is separated from the process mixture. The independent claims of ‘406 do not recite reactive conditions selected to achieve a level of hydrocracking of the feedstock of less than 10% of the total mass balance. However, claims 13-15 all discuss the goal of minimizing hydrocracking, which is considered to be in line with and render obvious the claimed hydrocracking of less than 10%.
Claims 1-15 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,528,998.
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 reducing environmental contaminants in a feedstock marine fuel oil entailing mixing the feedstock with an activating gas and contacting the mixture with a catalyst under reactive conditions to form a process mixture containing a product heavy marine fuel oil liquid component, which is separated from the process mixture. The independent claims of ‘998 do not recite reactive conditions selected to achieve a level of hydrocracking of the feedstock of less than 10% of the total mass balance. However, claims 12-14 all discuss the goal of minimizing hydrocracking, which is considered to be in line with and render obvious the claimed hydrocracking of less than 10%.
Allowable Subject Matter
Claims 1-15 and 17-21 are directed to allowable subject matter, but require overcoming the claim objections, rejections under 35 USC 112(b), and NSDP rejections.
The following is a statement of reasons for the indication of allowable subject matter: this application is a continuation of 18/052,665 (abandoned), which is a continuation of 16/484,978 (now US 11,492,559). The instant claims incorporate the same allowable feature(s) indicated in application ‘978.
Robinson et al (US 2016/0160139) remains the closest prior art. Robinson teaches a hydrocarbon fuel feedstock equivalent to a Feedstock Heavy Marine Fuel Oil (see [0010]). The feedstock has bulk properties complaint with ISO 8217 [(0025]). An environmental contaminant (sulfur) is noted at a value of at least about 1%, within the claimed range of 0.5% or greater ([0024]). Mixing the feedstock with hydrogen (equivalent to the activating gas) is implied by the step of hydrotreating the feed. [0060]). A separation step is implied by Fig. 1, in which fuel oil components are separated and sent (e.g. discharged) to blending to form a product Bunker fuel oil (e.g. a heavy marine fuel oil) (Fig. 1 and [0131]).
In ‘978, Applicant persuasively argued that the claimed invention distinguishes over Robinson (refer to Applicant’s Remarks filed 01 September 2022 and Notice of Allowance mailed 29 September 2022). In particular, Applicant argued that Robinson does not disclose or suggest reaction conditions which limit hydrocracking to less than 10% of the total mass balance, wherein "uncracked" refers to steps/stages whose primary or significant focus is cracking, referring to FCC processes, steam cracking processes, thermal cracking processing, but typically not hydrocracking (see [0016] of Robinson; p. 14 of Applicant's Remarks). In other words, as stated by Applicant, "Robinson expressly differentiates the use of the terms 'substantially uncracked' or 'without substantial cracking' from hydrocracking, further teaching that hydrocracked materials are distinct from those subjected to 'conventional cracking.’" (p. 14). Furthermore, the rather broad range of process conditions disclosed as suitable in Robinson would be understood by a person of ordinary skill in the art to include hydrocracking conditions (see p. 15 of Applicant's Remarks). The subject matter of the claimed invention is therefore considered patentable over the prior art.
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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