DETAILED ACTION
Applicant’s response of December 23, 2025 has been fully considered. Claims 1, 3, and 11 are amended. Claims 1-16 are pending.
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 .
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-10, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hovemann et al. (DE 2407158) in view of Moriizumi et al. (US 2016/0289589). The citations below for Hovemann et al. are taken from an English language machine translation included previously.
Regarding claims 1, 3, 6, 9, and 10, Hovemann et al. teaches a composition used as a pour point depressant for petroleum distillate fuels comprising a mixture of a copolymer of ethylene and fatty acid vinyl ester with a molecular weight of 500 to 8000; and a copolymer ethylene and acrylic acid alkyl esters with a molecular weight of 500 to 10,000 in a weight ratio of 1:10 to 10:1 (Page 2). Vinyl acetate is the preferred fatty acid vinyl ester (Page 3); and the preferred acrylic acid alkyl esters are those containing acrylic esters with alkanols of 2 to 20 carbon atoms (Page 3-4). The mixture of polymers is usually handled as 40 to 60% by weight solutions in hydrocarbons such as heavy aromatic naphtha (Page 4). For example, a mixture of a copolymer of ethylene and vinyl acetate and ethylene and 2-ethylhexyl acrylate in a weight ratio of 1:1 as a 60% by weight solution would contain 30% of the ethylene/vinyl acetate polymer, 30% of the ethylene/acrylate polymer, and 40% of the hydrocarbon solution (solvent) (Page 4). Additionally, the molecular weights are determined by the osmometric method, which produces number average molecular weights (Page 4). It is well known in the art that weight average molecular weights are typically higher than number average molecular weights.
Hovemann et al. does not teach that the ethylene vinyl acetate copolymer has a weight average molecular weight of about 45,000 to about 100,000 g/mol, more specifically of about 48,000 g/mol to about 100,000 g/mol. However, Moriizumi et al. teaches a composition which performs as a lubricating oil composition (¶1), that contains an ethylene-vinyl acetate copolymer pour point depressant with a weight average molecular weight of from about 1,000 to about 100,000 (¶58). Hovemann et al. and Moriizumi et al. are analogous art because they are both from the same field of endeavor as that of the instant invention, namely that of pour point depressants which are used in oil compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art, would have found it obvious to use an ethylene-vinyl acetate copolymer with a weight average molecular weight of about 45,000 to about 100,000 g/mol, more specifically of about 48,000 g/mol to about 100,000 g/mol, as taught by Moriizumi et al., in the pour point depressant composition, as taught by Hovemann et al., and would have been motivated to do so because Moriizumi et al. teaches that this range of molecular weight is suitable for ethylene-vinyl acetate copolymers used as pour point depressants.
Regarding claim 2, Hovemann et al. does not teach that the acrylate containing polymer comprises methyl acrylate. However, Hovemann et al. does teach that the acrylate preferably has from 2 to 20 carbon atoms (Page 3-4). Methyl acrylate and ethyl acrylate, which is encompassed by the teaching of Hovemann et al., only differ by one -CH2 group. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). MPEP 2144.09 II. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use methyl acrylate in the acrylate-containing copolymer, and would have been motivated to do so by a reasonable expectation of success in producing a copolymer with similar properties.
Regarding claim 4, Hovemann et al. teaches that the copolymer of ethylene and acrylic acid alkyl esters has a molecular weight of 500 to 10,000 (Page 2). The molecular weight is determined by the osmometric method, which produces number average molecular weight (Page 4). Further, it is well known in the art that weight average molecular weights are typically higher than number average molecular weights. Since the number average molecular weight range overlaps with the claimed weight average molecular weight range, and the weight average molecular weight would be higher than this range, there is overlap between the disclosed range and the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 5, Hovemann et al. does not specifically teach that the copolymer comprising ethylene and vinyl acetate is present in an amount of from about 1% to about 8% by weight. However, Hovemann et al. does teach that the ethylene/vinyl acetate copolymer and the ethylene/acrylate copolymer are present in a weight ratio of 1:10 to 10:1 (Page 2) and that the mixture of polymers is usually handled as 40 to 60% by weight solutions (Page 4). Therefore, if the mixture were present in 40% of the composition with a weight ratio of 1:9, the ethylene/vinyl acetate polymer would be present in about 4% by weight (calculated by Examiner). The calculated amount of 4% by weight lies inside the claimed range of 1% to 8% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 7, Hovemann et al. does not specifically teach that the copolymer comprising ethylene and acrylate is present in an amount of from about 1% to about 8% by weight. However, Hovemann et al. does teach that the ethylene/vinyl acetate copolymer and the ethylene/acrylate copolymer are present in a weight ratio of 1:10 to 10:1 (Page 2) and that the mixture of polymers is usually handled as 40 to 60% by weight solutions (Page 4). Therefore, if the mixture were present in 40% of the composition with a weight ratio of 9:1, the ethylene/acrylate polymer would be present in about 4% by weight (calculated by Examiner). The calculated amount of 4% by weight lies inside the claimed range of 1% to 8% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 8, Hovemann et al. does not teach that the solvent is present in 85 to 95% by weight. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the invention, a person of ordinary skill in the art would have found it obvious to optimize the amount of solvent in the composition through routine experimentation, and would have been motivated to do so in order to tailor the additive mixture to a particular end use or to balance the cost of the additive.
Regarding claims 15 and 16, Hovemann et al. teaches adding the pour point depressant discussed in the rejection of claim 1 above to a hydrocarbon such as gas oils, diesel oils, or light heating oils (Page 3). Also, since Hovemann et al. teaches that the pour point depressant of claim 1 is used to reduce the pour point of the hydrocarbon oils such as gas oil, diesel oils, or light heating oils, the pour point of those hydrocarbon oils should decrease by an amount which falls within the claimed range of about 10 °F to about 50 °F.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hovemann et al. (DE 2407158) in view of Moriizumi et al. (US 2016/0289589). The citations below for Hovemann et al. are taken from an English language machine translation included previously.
Regarding claims 11-13, Hovemann et al. teaches a composition used a pour point depressant for petroleum distillate fuels comprising a mixture of a copolymer of ethylene and fatty acid vinyl ester with a molecular weight of 500 to 8000; and a copolymer ethylene and acrylic acid alkyl esters with a molecular weight of 500 to 10,000 in a weight ratio of 1:10 to 10:1 (Page 2). Vinyl acetate is the preferred fatty acid vinyl ester (Page 3); and the preferred acrylic acid alkyl esters are those containing acrylic esters with alkanols of 2 to 20 carbon atoms (Page 3-4). The mixture of polymers is usually handled as 40 to 60% by weight solutions in hydrocarbons such as heavy aromatic naphtha (Page 4). For example, a mixture of a copolymer of ethylene and vinyl acetate and ethylene and 2-ethylhexyl acrylate in a weight ratio of 1:1 as a 60% by weight solution would contain 30% of the ethylene/vinyl acetate polymer, 30% of the ethylene/acrylate polymer, and 40% of the hydrocarbon solution (solvent) (Page 4). Additionally, the molecular weights are determined by the osmometric method, which produces number average molecular weights (Page 4). It is well known in the art that weight average molecular weights are typically higher than number average molecular weights. Hovemann et al. additionally teaches that the pour point depressant is added to a crude oil such as gas oils, diesel oils, or light heating oils (hydrocarbon) in an amount of 0.001 to 0.1% by weight (Page 3).
Hovemann et al. does not teach that the ethylene vinyl acetate copolymer has a weight average molecular weight of about 45,000 to about 100,000 g/mol, more specifically of about 48,000 g/mol to about 100,000 g/mol. However, Moriizumi et al. teaches a composition which performs as a lubricating oil composition (¶1), that contains an ethylene-vinyl acetate copolymer pour point depressant with a weight average molecular weight of from about 1,000 to about 100,000 (¶58). Hovemann et al. and Moriizumi et al. are analogous art because they are both from the same field of endeavor as that of the instant invention, namely that of pour point depressants which are used in oil compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art, would have found it obvious to use an ethylene-vinyl acetate copolymer with a weight average molecular weight of about 45,000 to about 100,000 g/mol, more specifically of about 48,000 g/mol to about 100,000 g/mol, as taught by Moriizumi et al., in the pour point depressant composition, as taught by Hovemann et al., and would have been motivated to do so because Moriizumi et al. teaches that this range of molecular weight is suitable for ethylene-vinyl acetate copolymers used as pour point depressants.
Regarding claim 14, since Hovemann et al. teaches hydrocarbon oils listed in claim 12, those oils should have an API gravity of about 15 to about 70. Further, a quick google search shows gas oil to have an API gravity of about 20 to 50, diesel oil to have an API gravity of about 30 to 40, and light heating oils to have an API gravity of about 22 or higher. All of these amounts fall within the claimed range.
Response to Arguments
Applicant’s arguments, see pages 5 and 6, filed December 23, 2025, with respect to the rejections of claims 1-16 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made under 35 U.S.C. 103 over in view of Hovemann et al. (DE 2407158) in view of Moriizumi et al. (US 2016/0289589).
Applicant also argues that the instant invention provides evidence of non-obviousness through the showing of unexpected results based on the examples provided in the instant specification. This argument is unpersuasive. In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Additionally, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, the results provided are not commensurate in scope with the claims, and even assuming arguendo that they were, evidence of unexpected results is not provided. The rejection above is based on the modification of the weight average molecular weight of ethylene/vinyl acetate copolymer being from about 45,000 g/mol to about 100,000 g/mol. In Table 5 of the instant specification, there are six copolymer shown with varying molecular weights. First, there is not a molecular weight of about 100,000 g/mol provided, which means that these examples are not commensurate in scope with the claims. However, even assuming that the results were commensurate in scope, the results do not show evidence of unexpected results. EVA 1 and EVA 2 in Table 6 have molecular weights which lie outside the claimed range and EVA 3 through EVA 6 have molecular weights which are inside the claimed range. In table 6, for example, the samples which use 25% Formulation 3 with 5% EVA 2, 25% Formulation 3 with 5% EVA 1, and 25% Formulation 3 with 5% EVA 3 all with 25 ppm of EMA and EVA each provide a pour point of 50 °F. Therefore, the molecular weight range cannot be shown to produce an unexpected results since a molecular weight both inside and outside the claimed range produce the same result. This argument is unpersuasive.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767