DETAILED ACTION
Claims 1, 4, 6-14, 16 and 29-34 are pending as amended on 21 January 2026, claims 17-18, 20 and 22 are withdrawn from consideration
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment does not distinguish from Drake.
Applicant’s arguments in light of the amendment have been fully considered but are not persuasive.
Applicant argues that Drake does no teach a composition comprises an anti-fouling composition and a hydrocarbon fluid as amended . The examiner disagrees. Drake expressly discloses that the composition comprises a base oil , which includes paraffins ([0007] and [0070]), which meets the claimed hydrocarbon fluid.
Applicant argues that the instant composition exhibited significantly improved anti-coke deposition performance. The examiner disagrees. As discussed in Applicant-initiated interview on 13 November 2025, instant Fig. 1 compares the result from Test Complex A with that from component 1 for Test Matrix A, and component 2 for Test Matrix A . Applicant has not shown on record that Test complex A has exactly the same component 1 and 2 as Test Matrix A. Thus instant Fig. 1 is insufficient to show that the combination of component 1 and 2 exhibit better results as compared to the individual components.
The examiner acknowledges that instant Fig. 3 shows that Test Matrix A exhibits better result than that of the individual components, however, the blank sample in Fig. 3 shows lower coke amount, i.e., better result than that of individual component 1. Applicant argues that component 1 and component 2 showed lower coke deposit mass (Remarks, p10-11). The examiner disagrees. Fig. 3 shows total coke mass is less than 0.4 for blank and component 2, and about 0.6 for component 1, i.e., the blank has lower coke amount thus better than that of component 1. Therefore Fig 3. is insufficient to demonstrate improved performance from the combination of component 1 and 2.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal
evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Rejections - 35 USC § 103
Claims 1, 4, 6-14, 16 and 29 stand, and new claims 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Drake.
Drake teaches a composition comprises a base oil such as paraffin ([0007] and [0070]-[0073]), which meets the claimed hydrocarbon fluid and petrochemical fluid, and an amount of an anti-wear agent and a dispersant ([0020]-[0022]), wherein the dispersant includes the reaction product of polyisobutylene succinic anhydride with pentaerythritol ([0130]), which meets the claimed polyalkylene ester.
Drake teaches that the anti-wear agent includes organic phosphate exemplified as mono/di octylphosphate, mono/di (2-ethylhexyl) phosphate and the like ([0146]), which meets the claimed phosphate esters, respectively.
Drake does not expressly discloses a mixture of mono and dioctyl phosphate, or a mixture of mono and di (2-ethylhexyl) phosphate, however, at the time of the invention it would have been obvious to a person of ordinary skill in the art to combine mono and dioctyl phosphate, or mono and di (2-ethylhexyl) phosphate, since it has been held that it is prima facie obviousness to combine two components each of which is taught by the prior art to be useful for the same purpose, in the instant case, an anti-wear agent, in order to form a third composition to be used for the same purpose. See MPEP 2144.06(I), In re Kerkhoven, 626 F2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), In re Crockett, 279 F2d 274, 126 USPQ 186 (CCPA 1960) and Ex parte Quadranti, 25 USPQ2d 1071 (Bd Pat App & Inter 1992).
Drake further teaches that the dispersant or the anti-wear agent is present in an amount of about 0.001 wt.% to 2 wt.%, i.e., 10ppm to 20000ppm, of the total composition ([0020]-[0022]), thus a combined amount of 20ppm to 40000 ppm, which meets the claimed amount of 1 ppm to 50,000 ppm, and overlaps the claimed amount of 1 ppm to 500 ppm, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I ; Therefore the phosphate ester anti-wear agent or the polyisobutylene succinic anhydride ester dispersant is present in about 0.04 wt.% to about 99.9 wt.% of the total weight of the dispersant and the anti-wear agent, calculated by the examiner (i.e., 0.001/(2+0.001) to 2/(2+0.001)), which encompasses the claimed amount of phosphate ester or polyalkylene ester, respectively.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the polyisobutylene succinic anhydride ester and the phosphate ester at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
The recitation “for inhibiting fouling of a structural part in a petroleum -refining system ” is interpreted as an intended use since there is no apparent structural difference required by the composition other than that recited in the body of the claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (see MPEP2111.02, II). Drake teaches the same composition with the same components in the same amount thus capable of effectively performing the intended anti-fouling use.
Allowable Subject Matter
Claim 30 is allowed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766