DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/7/2025 has been entered.
Claims 23-24, 26-44, and 45-46 (new) are pending.
Previous rejections of the claims under 35 USC 103 are modified to address the amendments to the claims, but maintained and recited below.
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive. Applicant argues (1) the art fails to teach a hydrocracking catalyst comprising an active cracking component support. Applicant argues (2) the art fails to teach an atmospheric resid feedstock which yields a heavy base oil product fraction instead of light base oil fraction.
Applicants’ arguments have been considered but are not persuasive. In response, (1) Zhan teaches wherein a novel unsupported metal sulfide hydrocracking catalyst may be layered with a traditional supported catalyst. Further, (2) Zhan teaches wherein the feedstock may include petroleum, after distillation processing, including reduced crude.
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.
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) 23, 24, 26-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhan (US 2015/0136646).
With respect to claims 23 and 33, Zhan teaches a process for the production of a heavy lubricating base oil from a base oil feedstream (abstract). The feedstock may include petroleum crude oil or products from processing (0041), including atmospheric residue. Specifically, the processing of crude oil to produce a feedstock may include a distillation process and the product feedstock may include reduced crude from said distillation (0041), i.e. atmospheric residue. The feedstream may also include a second base oil feedstock. See (0041). Zhan specifically teaches wherein more than one of said products may be used as feed. Additional products include distillate fractions, hydroprocessed products, deasphalted products, coking products, among others which all may be considered a base oil feedstock. With respect to the properties of the individual atomposheric resid and second feedstock, Zhan is silent. However, Zhan teaches wherein “[t]he lubricating oil feedstock has a nitrogen content of greater than 300 ppm and a sulfur content of greater than 0.1 wt. %” (0007), which falls within the claimed range for both atmospheric resid feed (claimed as nitrogen less than 2500 ppm and/or sulfur less than 8000 ppm) and second base oil feedstock (claimed as nitrogen content of less than 2500 ppm; sulfur content of less than 8000 ppm). Properties of the atmospheric resid is dependent on the crude oil and will have a wide variety of sulfur and nitrogen, including in the ranges claimed. With respect to the base oil feedstock, Zhan teaches wherein the distillate fraction of the feedstock may have a nitrogen content in a range from 500 ppm to 3000 ppm, a sulfur content in a range from 0.05% to 4% (0044), overlapping or falling in the claimed range. Given Zhan teaches the same feeds including atmospheric resid, the base oil feedstocks having nitrogen and sulfur in the claimed range, and the blend feedstream falls within the range claimed, it is expected that the atmospheric resid and base oil feedstocks both comprise at least sulfur and nitrogen in overlapping ranges.
Zhan teaches “hydrocracking a lubricating oil feedstock with a self-supported mixed metal sulfide catalyst” (0048) layered in one or more reactors with standard supported hydroprocessing catalyst, including having an active support comprising zeolite, molecular sieve (0052), alumina, silica and others (0077-0079). The hydrocracked product is separated into a gaseous fraction and liquid fraction (0068-0070).
Zhan teaches contacting the liquid fraction with a dewaxing catalyst under hydroisomerization conditions, to produce a dewaxed product (0080). The dewaxed product may be optionally hydrofinished with a hydrofinishing catalyst under hydrofinishing conditions (0092). The product is distilled or separated and comprises a light base oil fraction and a heavy base oil fraction (0091).
Zhan is silent regarding wherein the yield of the heavy base oil fraction relative to the light base oil fraction in the dewaxed product and/or the hydrofinished dewaxed product is increased by about 2 vol.% or greater compared with the same process that does not include the atmospheric resid feedstock in the base oil feedstream, and/or wherein the total waxy base oil yield is increased by about 2 Lvol.% or greater compared with the same process that does not include the atmospheric resid feedstock in the base oil feedstream. However, a feedstream comprising atmospheric resid in combination with a straight or processed petroleum fraction is treated in substantially the same process using overlapping catalyst and conditions to produce the same base oil product. Therefore, it is expected that in the process of Zhan a heavy base oil portion of the product would be increased relative to exclusively treating a light feed in the same process as claimed.
With respect to claims 24, 45, and 46, Zhan teaches wherein the supported catalyst may include a alumina or siliceous matrix support (0076) or other known hydrotreating or hydrocracking catalyst. Zhan teaches wherein the catalysts of US 3,852,207 may be used (0076). US 3,852,207 teaches supported hydrocracking catalyst, wherein the catalysts have “hydrogenation-dehydrogenation activity, together with an active cracking component support. Exemplary cracking component supports include silica-alumina, silica-alumina-zirconia composites, acid-treated clays, crystalline aluminosilicate zeolitic molecular sieves such as zeolite A, faujasite, zeolite X, and zeolite Y, and combinations of the above.”
With respect to claim 26, Zhan teaches wherein one stream may be a hydroprocessed stream and a distillate at a ratio of 20:80 to 1:99 (0045). Where hydrotreated resid and vacuum gas oil are selected, this overlaps the claimed range of 10-60 wt.% atmospheric resid feedstock and 40-90 wt.% base oil feedstock.
With respect to claim 27, Zhan teaches each of deasphalted oil and atmospheric resid as alternative feeds, that may be selected or not. Zhan does not teach processing using whole crude in the process but fractions thereof (0041).
With respect to claim 28, Zhan teaches a process without recycle of the liquid feedstock.
With respect to claim 29, Zhan teaches treating vacuum gas oil.
With respect to claim 30, Zhan teaches distilling the feed prior to treatment and teaches wherein the overall VGO boils in a range encompassing that claimed.
With respect to claims 31, Zhan teaches wherein the product base oil viscosity is greater than 2 or between 3 and 30 (Zhan, claim 8) and the heavy base oil viscosity is greater than 10 cSt (Zhan, claim 21 or 0010).
With respect to claim 32, Zhan teaches wherein the dewaxed product has a viscosity of greater than 3, greater than 3.5 or greater than 10 (0089).
With respect to claims 34-37, Zhan teaches wherein the product has a viscosity index of greater than 95 (0089), which encompasses the claimed ranges, including a Group III base oil having a VI greater than 120 (0098).
With respect to claim 38, Zhan does not teach the yield of waxy product relative to the same process without combined feed having VGO. However, where the same process is conducted on the same or similar feed, the same or overlapping results are expected.
With respect to claims 39 and 42, Zhan teaches a process for making a base oil (abstract). The process treats one or more of the disclosed feeds, including vacuum gas oil and reduced crudes (0041). The feedstock would be combined upstream of the reactor. The feedstream is contacted with a hydrocracking catalyst under hydrocracking conditions (0056). The hydrocracked effluent may be fractionated to obtain at least ga and liquid (0068-0070). The liquid fraction is contacted with a dewaxing catalyst under hydroisomerization conditions, to produce a dewaxed product (0080). Zhan teaches optionally hydrofinishing the dewaxed product with a catalyst under hydrofinishing conditions to produce a hydrofinished dewaxed product (0092). Zhan teaches separating the base oil to produce a heavy base oil and lighter base oil (0091). With respect to the feedstream comprising a base oil and a heavy gas oil fraction of the base oil, Zhan teaches treating one or more of crude oil, vacuum gas oils (which includes HVGO), reduced crude, among others (0041). Thus, this includes a mixture of crude oil and a heavy VGO fraction together. It would have been obvious and within the skill of one in the art at the time of fling to treat more than one of the disclosed feeds without obtaining without obtaining new or unexpected results.
Zhan is silent regarding the yield of total product and the yield of heavy base oil to light relative to the same process steps operated without the addition of resid to the process feedstock. However, the same process is taught using the same feeds, thus, it is expected that the same relative increase in product would result.
With respect to claims 40, 41, 43, and 44, Zhan teaches treating a feedstock “from one of a variety of sources, including, but not limited to, petroleum crude oil, shale oil, liquefied coal or products from processing one or more of these sources” which would include tight crude oil.
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 23, 24, 26-46 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,196,575. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued patent claims an overlapping process, including treating a mixed feed having an atmospheric resid component (claim 3). With respect to a supported catalyst, the issued patent claims a layered catalyst system having an unsupported catalyst and a separate catalyst. Using a separate supported catalyst would have been obvious in view of the published patent, which is prior art. The issued patent fails to claim wherein the yield of the heavy base oil fraction relative to the light base oil fraction in the dewaxed product and/or the hydrofinished dewaxed product is increased by about 2 Lvol.% or greater compared with the same process that does not include the atmospheric resid feedstock in the base oil feedstream, and/or wherein the total waxy base oil yield is increased by about 2 vol.% or greater compared with the same process that does not include the atmospheric resid feedstock in the base oil feedstream, however, given the same or overlapping feedstream maybe treated in substantially the same process to produce a heavy lubricating base oil, the same or overlapping result of increased waxy or heavy base oil fraction is expected. The remaining limitations are claimed or rendered obvious in the same manner as discussed above.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRANDI M DOYLE/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771