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 .
DETAILED ACTION
This Office action is based on the 19/064357 application originally filed February 26, 2025.
Claims 1-20, filed February 26, 2025, are pending and have been fully considered.
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 application or 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,122,966. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application and U.S. Patent No. ‘966 overlap in invention of a process for converting naphtha comprising: contacting a naphtha stream with a catalyst to produce a light paraffin stream; and separating the light paraffin stream into an ethane stream and a propane stream. To further support the position of the Office as it relates to the double patenting rejection, applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970). Wherein, the specification of U.S. Patent No. ‘966 application discloses in column 3 lines 15-36, a process, including C3-C8+ hydrocarbon feed stock is first charged to a “Naphtha to Ethane and Propane” unit, to convert naphtha into desirable ethane and propane along with less desirable methane. The produced ethane is fed to an ethylene producing unit. These units provide over 75% yield of ethane to ethylene. The produced propane is fed to a propylene producing unit which provides over 85% yield of propane to propylene. The methane by-product from the naphtha conversion unit and the ethane and propane producing units can be used as a fuel including fuel needed to operate ethylene and propylene producing units which operate at elevated temperatures. Unconverted or under-converted C4+ components in the reactor outlet may be recycled to the reactor inlet for further processing to ethane and propane. Aromatics may also be recovered and further processed. Turning to FIG. 1 , a naphtha stream in line 10 may be combined with a hydrogen stream in line 22 and a heavy stream in line 12 to provide a charge stream in line 11, heated and charged to a naphtha to ethane and propane (NEP) reactor 16 to be contacted with an NEP catalyst. The specification of U.S. Patent No. ‘966 application further overlaps claims 1-5, 8 and 10-13 of the presently claimed invention.
Allowable Subject Matter
Claims 1-20 are allowed.
The prior art references made of record and references listed on PTO-892 fails to teach and/or suggest a process for converting naphtha, comprising: contacting a naphtha stream and a hydrogen stream with a catalyst in a reactor to produce a paraffinic stream; converting ethane in said paraffinic stream into ethylene in a steam cracking unit; separating an ethylene stream from a C3+ hydrocarbon stream; and recycling said C3+ hydrocarbon stream to the reactor, as claimed in independent claim 1 of the presently claimed invention; a process for converting naphtha comprising: contacting a naphtha stream with a zeolitic catalyst in a reactor to produce a paraffinic stream; converting ethane in said paraffinic stream into ethylene in a steam cracking unit; separating a steam cracked effluent stream into a hydrogen stream, an ethylene stream, and a C3+ hydrocarbon stream; and recycling said C3+ hydrocarbon stream to the reactor, as claimed in independent claim 14 of the presently claimed invention; a process for converting naphtha, comprising: contacting a naphtha stream and a hydrogen stream with a catalyst in a reactor to produce a paraffinic stream; converting ethane in said paraffinic stream into ethylene in a steam cracking unit; separating a steam cracked effluent stream into an ethylene stream and a C3-C6 non- aromatic hydrocarbons stream; and recycling said C3-C6 non-aromatic hydrocarbons stream from the steam cracking unit to the reactor, as claimed in independent claim 18 of the presently claimed invention.
The closest art to the presently claimed invention includes Thinon et al. (US 2021/0179515), Jan et al. (US 2023/0357107) and Nesterenko et al. (US 2020/0392418) which discloses a process for converting naphtha to hydrocarbons but fails to teach contacting a naphtha stream and a hydrogen stream with a catalyst in a reactor to produce a paraffinic stream; separating an ethylene stream from a C3+ hydrocarbon stream; and recycling said C3+ hydrocarbon stream to the reactor.
Accordingly, claim 1 is allowable and claims 2-13, are allowable by virtue of their
dependence on claim 1 and the additional limitations recited therein. Claim 14 is allowable and claims 15-17, allowable by virtue of their dependence on claim 14 and the additional limitations recited therein. Claim 18 is allowable and claims 19-20, allowable by virtue of their dependence on claim 18 and the additional limitations recited therein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 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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/Latosha Hines/Primary Examiner, Art Unit 1771
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