DETAILED ACTION
This is the initial Office action for application SN 18/997,244 having an effective date of 21 January 2025 and a Foreign priority date of 22 July 2022. A preliminary amendment was filed on 07 October 2025. Claims 1-22 are pending. 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 1-22 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 independent claims 1 and 16, the terms “stabilization step” and “stabilization reactor” are indefinite because it is not clear what are the step(s) considered to be “stabilizing” (i.e., hydrogenation, removal of impurities, etc.), and what type reactors are considered to be “stabilizing reactors”. Independent claim 1 recites that the stabilization step produces “a stabilized bio-crude oil feed comprising less O” (oxygen content is assumed). Thus, less oxygen present in the bio-crude is considered to be “stabilizing”. However, it is not clear what the difference is between the “stabilization step” and the claimed hydrodeoxygenation or deoxygenation step which also reduces oxygen (considered to be a stabilizing step) in the bio-crude oil recited in the claims since no process features are set forth. The examiner is of the position that both steps only define the subject matter in terms of the result to be achieved, i.e., reducing the oxygen content, without reciting any process features which renders the claims to be indefinite.
Regarding claim 6, line 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/997,245. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application claims a process for producing a hydrocarbon feed comprising the steps of providing a bio-crude feed, providing a vegetable oil and/or fatty material feed, combining the bio-crude oil feed and the vegetable oil and/or fatty material feed, wherein the bio-crude feed is subject to a hydrodeoxygenation or deoxygenation step prior to mixing with the vegetable oil and/or fatty material feed (dependent claim 8) which is indistinguishable over the instantly claimed process for producing a hydrocarbon feed.
Further the co-pending application claims a plant for conducting the process for producing a hydrocarbon feed of claim 1 “comprising” a conduit providing a bio-crude oil feed, a conduit providing a vegetable oil and/or fatty material feed, a mixing point for combining the feeds, and a stabilizing reactor upstream of said mixing point which is indistinguishable over the instantly claimed plant for conducting the process of claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Gutierrez et al (WO 2014/001633 A1).
Gutierrez et al [“Guttierrez”] disclose a process of co-processing of pyrolysis oil (i.e., bio-crude) with crude tall oil (contains fatty materials) under hydroprocessing conditions to yield liquid fuels in addition to fine chemicals, solvents and building block materials.
Gutierrez discloses that in the hydroprocessing stage, feed comprising pyrolysis oil and crude tall oil is subjected to hydroprocessing in the presence of at least one hydroprocessing catalyst and hydrogen, whereby an effluent comprising one or more hydrocarbons boiling in the liquid fuel hydrocarbon range is obtained. Guiterrez discloses that said hydroprocessing may be carried out as hydrodewaxing (HDW), or a combination of hydrodeoxygenation (HDO) and hydrodewaxing (HDW) and/or hydroisomerization. Gutierrez discloses that in the combination HDO and HDW/hydroisomerization may be carried out simultaneously, or consecutively where the HDO and HDW/hydroisomerization are performed separately (Figure 6)
Gutierrez discloses that optionally pyrolysis oil (i.e., bio-oil) may be subject to one or more pretreatment steps prior to hydroprocessing together with crude tall oil. Gutierrez discloses that such pretreatment steps may be selected from treatment with an aqueous media, high temperature high pressure treatment (HTHP), filtering, and extraction, and combinations thereof. See page 15. Gutierrez discloses that the HTHP treatment may also be carried out under reducing conditions whereby a gaseous atmosphere is used. Gutierrez teaches that the use of carbon monoxide (CO) typically causes decarbonylation and decarboxylation and eventually some hydrogenation and thermal cracking. See pages 17-19.
Thus the examiner is of the position that Guiterrez discloses that the pyrolysis oil (i.e., bio-oil) may be pre-treated to at least partially deoxygenate the pyrolysis oil before combining with the crude tall oil for further hydroprocessing. Although Guiterrez does not disclose that the partially deoxygenated pyrolysis oil, which may be the product of one or more pretreatment steps, comprises a specific oxygen content as claimed, since the pyrolysis oil feed may be pretreated, the examiner is of the position that claimed oxygen content is implicitly disclosed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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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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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
September 10, 2026
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