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 .
This communication is in response to the amendment and reply filed 6/8/2026.
Claims 23-24 and 26-46 are pending.
Response to Arguments
Applicant's arguments filed 6/8/2026 with respect to 35 USC 103 over Zhan have been fully considered and are persuasive with respect to the amended claims. Applicant argues Zhan fails to disclose the use of a supported hydrocracking catalyst according to the claims as amended which require a catalyst “consisting of” a support and a metal. New rejection necessitated by the amendment is provided below.
Applicant's arguments filed 6/8/2026 with respect to the Double Patenting rejection over US Patent no. 10,196,575 to Zhan have been fully considered and are persuasive. Rejection is withdrawn.
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, 26-33, 39 and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olson (US 3,654,133).
With respect to claims 23 and 33, Olson teaches a process for making a base oil comprising catalytic hydrocracking and isomerization dewaxing within interstage separation. The feedstock includes “vacuum gas oils, . . . reduced crudes, mixtures thereof, etc.” Col. 4, lines 5+. A mixture of reduced crude (i.e. atmospheric resid) and vacuum gas oils is interpreted as combining an atmospheric resid feedstock and a base oil feedstock to form a feedstream. Exemplified topped VGO has an API of 22.3°, which falls within the claimed range of at least 17; a nitrogen content of 1630 ppm; 0.44% sulfur; an initial boiling point of 750C, 50% boiling point of 905F and end point of 1050F. Col. 4, lines 15+. The exemplified deasphalted oil (residual oil) has a sulfur content of 3.23%, which is less than 8000 ppm as claimed. Col. 4, line 13.
The feedstock is contacted with a hydrocracking catalyst comprising a catalytically active component selected from Group VIB and VIII metals on a carrier/support, col. 4, lines 23+, under hydrocracking conditions to form a hydrocracked product; separated into a gaseous fraction and a liquid fraction; and the liquid fraction contacted with a dewaxing catalyst under hydroisomerization conditions to produce a dewaxed product. Col. 5, lines 62+.
Olson teaches recovering liquid product from the dewaxing reactor and subjecting to fractionation. Col. 8, lines 25+. In one limited example, a 600F+ lube oil was produced in the amount of 78.7 vol. % (Table II). Olson recognizes that the total lubricating oil base stock produced includes a profile of low boiling lubricating oil having lower VI and heavier boiling material having greater VI. Col. 5, lines 40+. This is interpreted as producing a base oil comprising a heavy base oil portion and a light base oil portion.
Olson teaches substantially the same process as claimed. Thus, when treating a mixture of residual and VGO feeds, the same increase in yield of heavy base oil to light base oil and the same total base oil yield would be expected compared to the same process treating only VGO. This is true because treating the same feed with the same process is expected to produce the same results. Here the feeds taught include the same two compared feeds (VGO alone compared to mixture of VGO and residual), the process flow is the same, and the operating conditions and catalyst overlap.
Alternatively, before the filing date of the claimed invention, it would have been expected by or else obvious to one of ordinary skill in the art that adding a residual component to a lower boiling base oil feed in the process of Olson would result in an increase in total lubricating oil and an increase in heavier portion of lubricating oil compared to processing without because Olson recognizes heavier feed is required for production of heavier product. Specifically, Olson recognizes the total lubricating oil includes both heavy and light base oil portions. Olson teaches that when operating the process in mode designed for production of lubricating oil over naphtha/distillate fuel fractions, a heavier feed should be used having substantial portion boiling in the range of lubricating oils. Thus, when a heavier feed is utilized, such as residual feed blended with the lubricating oil range feed, the yield of lube oil products and yield of heavy portion of lube oil product are expected to increase.
With respect to claims 24 and 45, Olson teaches the cracking component support comprises “alumina, silica, titania, zirconia, magnesia, alumina-silica, silica- magnesia, alumina-silica-boron phosphate, silica-zirconia, etc.” or zeolites. Col. 4, lines 40-55.
With respect to claim 26, Olson teaches a mixed feedstream but does not expressly teach the percentage of each. However, given the feed may contain up to 100% resid and up to 100% VGO or other base oil feedstock, and a mixture of the two; the teaching encompasses the 10-60% and 40-90% claimed.
Additionally, in one example, Olson recites a fresh feed blend of 23,400 bpd of VGO (23.3 API, col. 4, line 17) and 3,750 bpd of propane deasphalted oil (18 API, col. 4, line 11), i.e. an atm residual derived stream. Col. When converted to volume percent, this example falls within the claimed ranges.
With respect to claim 27, Olson lists as feed reduced crude, col. 4, line 9, which is not whole crude oil, a vacuum residue, or a deasphalted oil.
With respect to claim 28, Olson teaches wherein a high viscosity index bright stock may be recovered or another embodiment where it may be recycled where desired to produce lower boiling products. Col. 7, lines 30+.
With respect to claim 29, the feed may comprise vacuum gas oil. Col. 4, line 8.
With respect to claim 30, the feed may comprise a topped vacuum gas oil such as a topped vacuum gas oil with an initial boiling point of e.g. 750F and an end boiling point of about 1050 F. Col. 4, lines 15+.
With respect to claims 31-32, the one exemplified lube oil produced has a viscosity at 210°F of about 6 cSt (48.8 SUS). Table III. The art does not expressly state the nominal viscosity of the light and heavy portions of the base oil. However, given the same feed is processed in the same process to produce the same product, Olson teaches the lube has a range of heavy and light base oils with increasing viscosity, and the one exemplified product has a total viscosity of about 6 cSt (Table III), it is expected that the light base oil product has a nominal viscosity in the range of 4-8 cSt at 100°C and/or the heavy base oil product has a nominal viscosity in the range of 10-14 cSt at 100°C.
With respect to claim 39, Olson teaches sending to the hydrocracking reactor a topped vacuum gas oil, atmospheric residue, or deasphalted residue, among other feeds. The topped vacuum gas oil (i.e. vacuum gas oil with light product removed) may have an initial boiling point of about 750 F, which falls within the range of 700F or greater, and a 50% of about 905F, and end point of about 1050F. Col. 4, lines 15+. Thus, the 1050 portion is removed to obtain the vacuum gas oil claimed. Olson also teaches wherein the exemplified propane deasphalted oil (crude residue after deasphalting) has an initial boiling point of about 1013 F. Thus, before effective filing date of the claimed invention it would have been obvious to produce the 1050F fraction, the residual stream either for hydrocracking or for deasphalting before hydrocracking, by separating the 750-1050F topped vacuum gas oil (MVGO) from the remainder (HHVGO).
Claim(s) 40-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olson (US 3,654,133) as applied to claims 23-24, 26-33, 39 and 45 above, further in view of Chen (US 4,851,109).
With respect to claims 40-41, Olson is silent regarding wherein the sources of the disclosed feeds is tight oil or atmospheric resid or other fraction of tight oil.
Chen discloses a process for production of premium lubricant oil having high VI. Col. 5. Like Olson, the process includes in series hydrocracking, separating, and dewaxing the feedstock. Figure. Chen teaches that suitable feedstocks generally are high boiling point feeds of petroleum including the same VGO and residual streams. Col. 6. These same fractions from unconventional sources such as shale oil may also be processed through the disclosed process for producing the lube oil. Col. 6. Therefore, before the filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to process as the feed of Olson a corresponding stream from a shale oil (tight oil) as taught in Chen because both are directed to producing high viscosity index lubricant oils from heavy hydrocarbons such as VGO and reside, both utilize hydrocracking and hydrodewaxing to achieve the desired product, and Chen teaches where VGO and residual streams from traditional petroleum sources or from other sources such as shale oil may be used. The elements claimed were known in the prior art and one skilled in the art could have combined the elements, using a feed derived from shale in the process, as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Claim(s) 34-38, 42 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao (US 5,993,644).
With respect to claim 34, 35, and 37, Xiao teaches a process for making base oils having high viscosity. Abstract. The process feedstocks may be VGO having a viscosity index of greater than 75 or even greater than 110 or 130. Col. 4, line 61- col. 5, line 8. These ranges fall within or overlap the claimed range of a base oil feedstock having a viscosity index of about 100 or greater. The feedstock has a nominal point of at least 600° F to at most 1250 or 1100° F, which includes a cut point of greater than 600° F and an end cut point less than 1250° F, encompassing the claimed range of about 700° F or greater and a back end cut point of about 900° F or less. Col. 4, lines 30-42. The base oil feedstock is contacted with a hydrotreating catalyst under mild hydrotreating conditions, which includes mild hydrocracking. Col. 7, lines 21+. The hydrotreating catalyst (claimed hydrocracking catalyst) comprises a hydrogenation metal of group VIA or VIIIA, col. 6, line 26+, on an oxide support, col. 7, lines 16+. The hydrocracked product is separated into a gaseous fraction and a liquid fraction and the liquid fraction contacted with a dewaxing catalyst under hydroisomerization conditions, to produce a dewaxed product. Col. 8, line 63 – col. 9, line 10. The dewaxed oil is subject to hydrofinishing with a hydrofinishing catalyst under hydrofinishing conditions to produce a hydrofinished dewaxed product. Col. 3, lines 30+. The final lubricant base oil may have a viscosity index higher than 120 or even higher than 130, which overlaps or falls within the ranges of 120 or greater, 130 or greater, or at least about 135. Col. 5, lines 1+.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05.
With respect to claim 36, the process may produce a Group III base oil product. Col. 5, line 7-8.
With respect to claim 38, Xiao is silent regarding the waxy product yield of the process treating a feed that includes a portion of atmospheric residue (MVGO) relative to treating a feed that does not include the MVGO portion of residue, including wherein the waxy product yield at a viscosity of 4cSt 100*C after treating MVGO feed is about 3 vol.% more or greater than the same process that does not include MVGO as the base oil feedstock as claimed. Xiao teaches substantially the same process as claimed. Thus, when using as the feedstock a mixture of residue hydrocarbon or portion of residual hydrocarbon (MVGO) with VGO, the same increase in total yield of base oil product and the yield of heavy base oil to light base oil would be expected compared to the same process treating only VGO. This is true because treating the same feed with the same process is expected to produce the same results. Here the feeds taught include the same two compared feeds (VGO alone compared to mixture of VGO and a portion of residual), the process flow is the same, and the operating conditions and catalyst overlap.
Alternatively, before the filing date of the claimed invention, it would have been expected by or else obvious to one of ordinary skill in the art that adding a residual component to a lower boiling base oil feed in the process of Xiao would result in an increase in total lubricating oil and an increase in heavier portion of lubricating oil compared to processing without because the heavier feed has a higher percentage of components in the boiling range of the desired product.
With respect to claim 42, Xiao teaches wherein the feed may be atmospheric residue, vacuum gas oil, or vacuum residue, among others. Col. 4. It is known that vacuum gas oil may be produced by providing an atmospheric residue, separating a VGO (here MVGO) from a heavy stream (HHVGO). Xiao teaches preferred streams having a normal boiling point (85%) of at least 600 F and preferably at most 1100F. Col. 4. Thus, before effective filing date of the claimed invention it would have been obvious to produce the 1050F fraction, the residual stream either for hydrocracking or for deasphalting before hydrocracking, by separating the 750-1050F topped vacuum gas oil (MVGO) from the remainder (HHVGO).
With respect to claim 46, the hydrotreating catalyst (i.e. having cracking component) support comprises e.g. silica, alumina, magnesia, zirconia, silica-alumina, or combinations thereof. Col. 7, lines 16+.
Claim(s) 43-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao (US 5,993,644) as applied to claims 34-38, 42 and 46 above, further in view of Chen (US 4,851,109).
With respect to claims 43-44, Xiao is silent regarding wherein the sources of the disclosed feeds is tight oil or atmospheric resid or other fraction of tight oil.
Chen discloses a process for production of premium lubricant oil having high VI. Col. 5. The process also includes a series of hydrocracking, separating, and dewaxing. Figure. Chen teaches that suitable feedstocks generally are high boiling point feeds of petroleum. Col. 6. Fractions from unconventional sources such as shale oil may also be processed through the disclosed process for producing the lube oil from poor crudes. Col. 6. Therefore, before the filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to process as the feed of Xiao a corresponding stream from a shale oil (tight oil) as taught in Chen because both are directed to producing high viscosity index lubricant oils from heavy hydrocarbons such as VGO and reside, both utilize hydrocracking and hydrodewaxing to achieve the desired product, and Chen teaches where VGO from traditional petroleum sources as well as other sources such as shale oil may be used. The elements claimed were known in the prior art and one skilled in the art could have combined the elements, using a feed derived from shale in the process, as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Additional Art of Record
Mears (US 5,358,627) teaches a process combining a residual fraction obtained by deasphalting a residual portion of crude oil with vacuum gas oil, subjecting the combined feedstream to hydrocracking, separating a light and heavy fraction, hydrodewaxing and hydrofinishing the heavy fraction, and obtaining a lubricant base oil having a high VI between about 100-140. If applied, Mears would render obvious at least the independent claims. Mears teaches away from current claim 27, which requires no deasphalted oil in the feedstream.
Takito (US 5,462,650) discloses a process for production of high viscosity index, low viscosity lubricating oil having a VI of 120 or more from a feedstock which use both a heavy gas oil fraction and a light gas oil fraction. Abstract. The mixed feedstock is subject to hydrocracking in the presence of an amorphous silica alumina catalyst, the cracked product separated into a fuel oil fraction and a lubricating oil fraction by atmospheric distillation, and subsequently the lubricating oil fraction subject to dewaxing, and optionally further solvent refining and/or hydrofinishing. Abstract.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Brandi Doyle whose telephone number is (571)270-1141. The examiner can normally be reached Monday-Friday, 8:00 AM - 3:00 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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/BRANDI M DOYLE/ Examiner, Art Unit 1771
/PREM C SINGH/ Supervisory Patent Examiner, Art Unit 1771
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