DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 15, 2026 has been entered.
Claims 1, 3, and 11 are amended, claims 2 and 12 are cancelled, and claims 17-22 are added. Claims 1, 3-11, and 13-22 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 Objections
Claims 1, 3-10, and 15-22 are objected to because of the following informalities:
Regarding claim 1, in lines 11-12, “comprises a weight average molecular weight” should be replaced with --has a weight average molecular weight-- as this is a property of the ethylene vinyl acetate copolymer and not a component of the composition.
Regarding claim 3, in line 2, “comprises a weight average molecular weight” should be replaced with --has a weight average molecular weight-- as this is a property of the ethylene vinyl acetate copolymer and not a component of the composition.
Regarding claim 4, in line 2, “comprises a weight average molecular weight” should be replaced with --has a weight average molecular weight-- as this is a property of the ethylene vinyl acetate copolymer and not a component of the composition.
Regarding claim 17, in lines 7-8, “comprises a weight average molecular weight” should be replaced with --has a weight average molecular weight-- as this is a property of the ethylene vinyl acetate copolymer and not a component of the composition.
Regarding claims 5-10, 15, 16, and 18-22, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
Regarding claim 17, claim 17 requires, in a single composition, about 50 ppm to about 150 ppm of the copolymer comprising ethylene and vinyl acetate and about 50 ppm to about 150 ppm of the acrylate-containing copolymer together with about 50 to about 98% by weight of a solvent comprising heavy aromatic naphtha. While each limitation finds isolated support in the specification (citations taken from instant US 2023/0138313) — an ethylene vinyl acetate copolymer weight average molecular weight of about 25,000 to about 85,000 g/mol (¶31); a heavy aromatic naphtha solvent (¶40–42); and polymer amounts of about 25–400 ppm (¶66; Tables 2–6) — the specification does not describe the claimed composition in which the two copolymers are present at ppm levels within a majority-solvent carrier. The disclosed solvent-borne formulations contain the copolymers at about 5 to 20% by weight each in about 80 to 90% by weight of solvent (¶42, 70–72; Formulations 1–3). This recited percentage amount is roughly two to three orders of magnitude above the recited ppm levels. Conversely, the disclosed ppm-level amounts are the amounts of active polymer dosed into the hydrocarbon or synthetic feedstock as a treatment (¶66; Tables 2–6), a composition in which the copolymers and solvent together constitute only about 0.001–5 wt. % (¶59) — not one containing 50 to 98% by weight of solvent. No disclosed embodiment corresponds to a dilute, majority-solvent composition containing about 50–150 ppm of each copolymer. Accordingly, the written description does not reasonably convey possession of the invention now claimed.
Regarding claims 18-22, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
Further, since it is unclear what applicant desires to claim – the solvent borne formulation or the treatment formulation, these claims are not being further treated on the merits.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 13, and 17-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, claim 6 recites a ratio of the ethylene vinyl acetate copolymer to the acrylate-containing copolymer. However, it is not clear on what the ratio is based, i.e., is it a weight ratio or a molar ratio. For the purpose of further examination, the ratio will be treated as a weight ratio since the amounts claimed in independent claim 1 are weight percentages.
Regarding claim 13, claim 13 recites that the ethylene vinyl acetate copolymer, the acrylate-containing copolymer, and the solvent comprise about 0.001 to about 5% by weight of the composition. However, it is not clear if each component is present in this amount or if this is the total amount of all three components in the composition. For the purpose of further examination, this will be treated as the total amount of all three components together in the composition.
Regarding claim 17, claim 17 recites the copolymer contents in parts per million while reciting the solvent content in weight percent. It is unclear whether the recited ppm values are on a weight, volume, or molar basis, and it is unclear relative to what total the ppm values are to be measured — the composition as a whole, the solvent, or a hydrocarbon into which the composition is dosed. The specification does not resolve the ambiguity as the only ppm usage in the disclosure expresses the amount of active polymer in a treated hydrocarbon or synthetic feedstock (¶66; Tables 2–6), whereas claim 17 is directed to a composition that recites no hydrocarbon. If the ppm values are measured against the recited composition itself, the claim recites a composition of a character nowhere described (see the rejection under 112(a) above); if they are measured against an unrecited treated hydrocarbon, the claim fails to recite the frame of reference necessary to determine its scope. Because the metes and bounds of the claim cannot be ascertained with reasonable certainty, the claim is indefinite. Further, as stated above in the 112(a) rejection, based on the uncertainty of the claim, it and its dependent claims are not further treated on the merits.
Regarding claims 18-22, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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, 3-9, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia Castro et al. (US 2017/0009067) (hereinafter “Garcia Castro”) in view of Xu et al. (US 2022/0403271) (hereinafter “Xu”) and Mariani et al. (US 2017/0029732) (hereinafter “Mariani”).
Regarding claims 1, 3, 5, 7, and 8, Garcia Castro discloses concentrated polymer compositions (X) for use as pour point depressants, wax inhibitors, and rheology modifiers for crude oil (Abstract; ¶30–33, 61, 73–83). Garcia Castro discloses a polymer composition (X) comprising 5 to 35% by weight (¶71) of at least one copolymer (A), and the balance (65 to 95% by weight) of at least one organic solvent (B) (¶30, 61-66, 71). Copolymer (A) comprises 83.5–96.5 mol% ethylene and 3–11.5 mol% of a vinyl ester (M2) of the formula H₂C=CH–O–(O)C–R¹, wherein R¹ is most preferably methyl, i.e., the vinyl ester is vinyl acetate (¶23–29, 36–37). Copolymer (A) is therefore a copolymer comprising ethylene and vinyl acetate under the open language of this limitation. Garcia Castro further discloses that copolymer (A) has a weight average molecular weight of 35,000–150,000 g/mol (¶46). Garcia Castro teaches that composition (X) may comprise further polymeric components in addition to copolymer (A), specifically including poly(meth)acrylates and copolymers of maleic acid anhydride and (meth)acrylates (¶68-70).
Garcia Castro does not expressly disclose that the composition contains about 1 to 49% by weight of an acrylate-containing copolymer comprising ethylene and methyl acrylate as a distinct second polymer. However, Xu is directed to paraffin inhibitor/pour point depressant (PI/PPD) product formulations for petroleum fluids, including crude oil, and teaches formulations in an organic solvent combining a wax-crystal-modifying acrylate-based copolymer with an ethylene-based copolymer, wherein the ethylene-based copolymer is a copolymer of ethylene with at least one co-monomer selected from the group consisting of vinyl acetate, vinyl butyrate, methyl acrylate, ethyl acrylate (¶10–12, 17). The ethylene-based copolymer of Xu comprising ethylene and methyl acrylate reads on the claimed acrylate-containing copolymer. Xu teaches that the ethylene-based copolymer is present at about 0.25–20% by weight of the product formulation, with total polymer content of about 2–70% by weight (¶21), the balance being organic solvent such as xylene at approximately 70–75% by weight (¶46–50).
Further, Mariani, directed to pour point depressant compositions for paraffinic crude oils, teaches synergic polymer mixtures comprising ethylene–vinyl acetate copolymers having a Mᴡ of 25,000–100,000 (¶33) in combination with an alkyl (meth)acrylate polymer present at 1–50% by weight of the mixture (¶29, 39–40). The polymers are dissolved in an organic solvent (e.g., xylene, toluene, “naphtha 100 solvent,” “naphtha 150 solvent”) (¶41). Mariani teaches that combining wax-interactive polymers of differing structure enlarges the distribution of polymer segments able to co-crystallize with a wider range of n-paraffins in the crude oil, thereby lowering the pour point more effectively than any single polymer, and reports the best results for mixtures of EVA copolymers with polyalkyl(meth)acrylates (¶26–27, 32, 55; Tables 1–2).
Garcia Castro, Xu, and Mariani are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polymers containing monomers of ethylene, vinyl acetate, and alkyl acrylates useful as pour point depressants. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add 0.25–20% by weight of the copolymer comprising ethylene and methyl acrylate, as taught by Xu, to the composition comprising ethylene vinyl acetate copolymer, as taught by Garcia Castro, and would have been motivated to do so because:
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06 I;
Garcia Castro expressly invites the addition of further polymeric wax-control components, including poly(meth)acrylate-type polymers, to composition (X) (¶68–70);
Xu teaches that optimal pour point depressant performance is often obtained by combining polymer chemistry classes, and expressly identifies ethylene–methyl acrylate copolymers as suitable ethylene-based PI/PPD components (¶9, 12, 17); and
Mariani demonstrates that mixtures of EVA-type copolymers with (meth)acrylate-based polymers act synergistically to depress the pour point of waxy crude oils more effectively than either class of polymer alone (¶27, 55).
Finally, the transitional phrase “consisting essentially of” is construed as “comprising” and does not exclude the additional components of the applied art absent a showing that such components would materially change the basic and novel characteristics of the claimed composition. MPEP 2111.03 III.
Regarding claim 4, Xu does not teach the molecular weight of its copolymer comprising ethylene and methyl acrylate. However, Garcia Castro teaches that the molecular weight of a pour point depressant polymer is a result-effective variable controlling depressant, wax-inhibition, and rheology performance (¶114–115). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to select or to optimize the molecular weight of the ethylene–methyl acrylate copolymer within the broadly claimed range through routine experimentation and would have had reasonable expectation of success in doing so. In re Aller, 220 F.2d 454 (CCPA 1955); In re Boesch, 617 F.2d 272 (CCPA 1980); MPEP § 2144.05(II).
Regarding claim 6, Garcia Castro teaches using the ethylene vinyl acetate copolymer in an amount of 5 to 35% by weight (¶71); and Xu teaches using the copolymer comprising ethylene and methyl acrylate in an amount of about 0.25–20% by weight (¶21). These amounts provide a ratio of 0.25 to 140 (calculated by Examiner). The claimed ratio of about 0.1:2 to about 2:0.1 can be rewritten as 0.05 to 20. Once this is done, it is clear that the range of the disclosed ratio overlaps with the range of the claimed ratio. 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 9, Garcia Castro teaches that the organic solvent (B) may be toluene or a solvent mixture comprising toluene (¶66).
Regarding claim 15, Garcia Castro teaches that the copolymers (A), preferably as formulations comprising an organic solvent (including composition (X)), are added to crude oil as pour point depressants (¶73–83), for example by injection into a crude oil pipeline or production well (¶84–86), at 50–3000 ppm of polymer based on the oil (¶83).
Regarding claim 16, Garcia Castro’s untreated test crude (Landau oilfield) has a pour point of 27° C (¶106), and treatment with the inventive copolymers at 100–1500 ppm lowers the pour point to 6 to 19.5° C (Table 3, Nos. 1–12). This is a decrease of approximately 7.5–21° C, which is about 13.5–38 °F. Moreover, because the composition of the proposed combination is the same as or substantially identical to the claimed composition, the same degree of pour point depression would naturally flow from its use. MPEP §2145 II.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Garcia Castro (US 2017/0009067) in view of Xu (US 2022/0403271) and Mariani (US 2017/0029732) as applied to claim 1 above, and further in view of Becker et al. (US 6,309,431) (hereinafter “Becker”).
Regarding claim 10, Garcia Castro, Xu, and Mariani teach the composition of claim 1 above. Garcia Castro teaches high-boiling aromatic hydrocarbon technical mixtures as the solvent, exemplified by Solvesso 150 (aromatics content >99% by volume, initial boiling point 184° C, flashpoint >61° C) (¶66, 100). The Examiner takes the position that Solvesso 150 is a heavy aromatic naphtha (a C9+ heavy aromatic solvent naphtha fraction), such that the limitation is met by Garcia Castro. In the alternative, to the extent Applicant disputes that characterization, Becker establishes that heavy aromatic naphtha was a conventional, art-recognized solvent for polymeric wax crystal modifiers of exactly this type. Becker teaches that pour point depressant/wax crystal modifier polymers, including ethylene vinyl acetate copolymers and acrylate polymers, are slightly soluble in highly aromatic solvents such as toluene, xylene and heavy aromatic naphtha and are added therein to the petroleum fuel or crude oil to be treated (Col. 1, lines 36–44; Col. 2, lines 36–47). Garcia Castro and Becker are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of pour point depressant 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 heavy aromatic naphtha, as taught by Becker, as the solvent of the combined formulation, as taught by Garcia Castro, Xu, and Mariani, and would have been motivated to do so because toluene, xylene, and heavy aromatic naphtha are art recognized equivalents used for the same purpose in pour point depressant compositions and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
Claims 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia Castro (US 2017/0009067) in view of Xu (US 2022/0403271), Mariani (US 2017/0029732), and Timken (US 2021/0189252).
Regarding claim 11, Garcia Castro in view of Xu and Mariani render obvious a treated hydrocarbon composition comprising each recited component except the pyrolysis effluent. Garcia Castro teaches adding its copolymer (A)/organic solvent (B) formulation to crude oil at 50–3000 ppm of polymer based on the oil (¶73–83); the resulting treated crude oil is a composition comprising a hydrocarbon, a copolymer comprising ethylene and vinyl acetate having a weight average molecular weight within the claimed range of about 45,000–85,000 g/mol (¶46; Table 2, Nos. 1–2), and a solvent. Inclusion of an acrylate-containing copolymer comprising ethylene and methyl acrylate is obvious over Xu and Mariani for the reasons set forth above with respect to claim 1, which are incorporated herein. Xu, moreover, expressly claims a “treated petroleum fluid” comprising the petroleum fluid, the acrylate-based first copolymer, and the ethylene-based (e.g., ethylene–methyl acrylate) copolymer (Xu, claim 14; ¶12, 24–25).
The combination of Garcia Castro, Xu, and Mariani does not teach that the hydrocarbon comprises a pyrolysis effluent. However, Timken teaches pyrolyzing sorted waste plastics comprising predominantly polyethylene and polypropylene (recycle classification types 2, 4, and 5, i.e., high density polyethylene, low density polyethylene, and polypropylene) (¶29) at pyrolysis conditions of about 400° C to about 700° C, thus forming a pyrolysis zone effluent comprising 1-olefins and n-paraffins (¶33, 49). Timken further teaches that the resulting pyrolysis oil has a heavy fraction that is rich in ling chain, linear hydrocarbons, and is very waxy, i.e., forms paraffinic wax upon cooling to ambient temperature (¶21); the pyrolysis products contain paraffinic content ranging from the mid-20s to the mid-50s in volume percent (¶52; Table 1); and the diesel-range cut (Sample H) contains a substantial amount of normal hydrocarbons, such that cold flow properties such as pour point and cloud points were considered as the most critical tests with blends of 10 and 20% by volume pyrolysis oil in refinery diesel failed the target pour point of less than −17.8° C (¶64-67; Table 5). Timken further teaches that the pyrolysis oil is transferred to the refinery by truck, barge, rail car or pipeline (¶28) and is co-processed with refinery hydrocarbon streams at up to about 20–50% by volume of the total flow (¶11, 35).
The references are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of pour point depressant compositions and their uses. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to apply the pour point depressant treatment, as taught by the combination of Garcia Castro, Xu, and Mariani, to hydrocarbon streams comprising waste-plastic pyrolysis effluent, e.g., the pyrolysis oil itself during the storage and truck, barge, rail, or pipeline transfer, or the refinery hydrocarbon blends comprising up to about 20–50% by volume pyrolysis oil, thereby arriving at a composition wherein the hydrocarbon comprises a pyrolysis effluent, as taught by Timken, and would have been motivated to do so because Timken identifies in the pyrolysis effluent precisely the problem that the applied pour point depressants are taught to solve: n-paraffins that crystallize as wax upon cooling and produce unacceptable pour points. Garcia Castro, Xu, and Mariani teach that their EVA- and acrylate-based polymers depress the pour point and inhibit wax deposition of hydrocarbon fluids by interacting and co-crystallizing with the n-paraffins of the treated fluid (Garcia Castro, ¶3–5, 73–74; Mariani, ¶31–32; Xu, ¶5), and Xu’s treated petroleum fluids expressly include diesel and fuel oil (¶25) — the very streams into which Timken blends its pyrolysis oil. The rejection is therefore supported by the rationales of use of a known technique to improve similar products in the same way, and application of a known technique to a known product ready for improvement, with predictable results. MPEP 2143(I)(C)–(D).
Regarding claim 13, Garcia Castro teaches copolymer treat rates of 50–3000 ppm i.e., 0.005–0.3% by weight, delivered as a formulation of approximately 10% by weight polymer in solvent, such that the copolymers and solvent together constitute approximately 0.05–3% by weight of the treated oil composition (¶83, 100).
Regarding claim 14, Timken teaches pyrolysis oil specific gravities of 0.7 to 0.9 (¶49, 51, Table 1), which correspond to API gravities of roughly 26-70 (calculated by Examiner)1.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-11, and 13-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
1 (141.5/0.7)-131.5 = 70.6; (141.5/.9)-131.5 = 25.7
Prosecution Insights