DETAILED ACTION
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 .
Response to Amendment
Examiner acknowledges Applicant’s response filed 04 December 2025 containing remarks and amendments to the claims.
The previous rejections have been updated as necessitated by amendments to the claims. The updated rejections follow.
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.
Claims 1-11 and 13-26 are rejected under 35 U.S.C. 103 as being unpatentable over Aldous (US 5,846,405) in view of Jois (EP 1260569), Kamai (US 6,248,929), and Jois ‘05 (US 2005/0272850).
Regarding claims 1-6, 9-11, 13-15, and 19-25, Aldous teaches blending naphthenic distillate with distilled aromatic extract, and feeding the blend to a hydrotreating step to produce an enhanced process oil (column 1, line 5-column 2, line 35, see table 1 and table 2). Aldous teaches hydrotreatment conditions of 275-375°C and 300-2500 psia (285.3-2485.3 psig) (column1 ,lines 35-50), overlapping with the claimed range, as well as the conditions identified in the Applicant’s instant specification [0055]. In this regard, Examiner considers the conditions to read on the claimed limitations regarding “sufficiently severe enough to provide an enhanced CA content naphthenic process oil”, since the same temperatures and pressures are used. Aldous teaches the ratio of the more aromatic feed to naphthenic distillate feed of 10:90 to 90:10 (column 2, lines 25-32), which overlaps with the claimed range.
Examiner considers the naphthenic distillate to be produced from vacuum or atmospheric distillation of a naphthenic crude oil. In this regard, Examiner notes Jois teaching a similar process for combining a vacuum distillate with an aromatic extract stream to create a mixture, and hydrotreating the mixture to create a high aromatic process oil [0001]. Jois teaches obtaining a gas oil range distillate from atmospheric and vacuum distillation [0013].
Aldous teaches an example with IP346 of 3.4 wt % (table 8, example 3), which is close to the claimed range of less than 3 w%. Examiner notes MPEP 2144.05, I: Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Examiner additionally notes MPEP 2123, II: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
The previous combination does not explicitly disclose the claimed CA content limitations or product properties, including newly amended limitations regarding PCA extract content as per IP 346 and PAH 8 markers.
However, it is expected that the previous combination would obtain the same CA content, IP 346, PAH 8, and product properties as claimed, since the same process steps are applied to the same feeds at the same conditions as claimed.
Further, Kaimai teaches that for the use of rubber process oils, it is desired to have a CA content of 20-50% (column 6, lines 32-42). Kaimai teaches that the aniline point can indicate the content of aromatic hydrocarbons and to have a high aniline point means a low content of aromatic hydrocarbons, (column 1, line 66-column 2, line 2). Kamai teaches that as the content of aromatic hydrocarbons is decreased, the affinity for rubber oil is decreased (column 2, lines 1-10). Kamai teaches that % CA in the range of 20-50% corresponds to aniline point of 80°C or less (column 2, lines 29-35). In this regard, Examiner notes that the aniline points of Aldous naphthenic feed, aromatic feed, and hydrotreated blend product (discussed above, see table 1), all appear to correspond to the Kamai aniline point of 80°C or less, which corresponds to % CA in the range of 20-50%. Kamai teaches IP346 content product of less than 3 wt% (column 2, lines 1-60).
Jois ‘05 similarly teaches blending oils in order to obtain compositions having high aromatic components, and thus high solvency to be used as rubber processing oils [0003-0004], [0028], [0045]. Jois additionally breaks down the distribution of Cn, Cp, and CA in the products, indicating that these variables impact suitability for use as a rubber process oil (see tables). Jois’05 additionally teaches selecting amounts of blending components in order to achieve a rubber oil having an aromatic content of at most 3 wt% as per IP346 (abstract), [0010-11].
In view of Kamai/Jois teachings, it would have been obvious to the person having ordinary skill in the art that the Aldous aniline points indicate the content of aromatic hydrocarbons, and such variable is important in forming rubber process oil with increased solvency. Selection of these properties including CA, CN, CP in the feedstock would be obvious to the person having ordinary skill in the art, for the benefit of obtaining a product that is suitable for use as a rubber process oil. Examiner additionally notes that it is expected that the same IP 346 and PAH 8 would be achieved, since Aldous teaches the same hydrotreating conditions as indicated in the instant specification, and is also drawn to producing a rubber oil, and such properties are desired for compositions to be suitable as process oils. It is not seen where Applicant has distinguished the process steps in this regard.
It is further expected that the same moderation of heat would occur, since the same process steps are disclosed by the prior art, as discussed above.
Regarding claims 7-8 and 16-18, Aldous teaches the naphthenic feedstock has a viscosity at 100°F (38°C) of 2875 SUS and the enhanced blend of extract and distillate having viscosity of 103.3 (see table 1, table 2), which reads on the claimed range.
Regarding claim 26, it is expected that the same reduced exotherm would result, since the prior art teaches the same process steps as applied to the claims above. It is not seen where Applicant has distinguished the process steps in this regard.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Aldous (US 5,846,405) in view of Jois (EP 1260569), Kamai (US 6,248,929), and Jois ‘05 (US 2005/0272850) as applied to claim 1 above, and further in view of Kim (US 2011/0089080).
Regarding claim 12, the previous combination teaches the limitations of claim 1 above. The previous combination does not explicitly disclose additional processing steps.
However, Kim teaches solvent deasphalting the feed to remove impurities [0021-23].
Therefore, it would have been obvious to the person having ordinary skill in the art to have combined the Kim deasphalting with the steps of the previous combination, to remove undesirable asphaltenes.
Response to Arguments
Applicant's arguments filed 04 December 2025 have been fully considered but they are not persuasive.
Examiner considers Applicant’s arguments to be:
Aldous does not disclose IP 346 PCA extract content or PAH 8 markers as claimed. The instant claims require a pressure of 1200-4000 psig.
The Osborne review shows that 1800 psig hydrotreated samples had a much better ip 346 markers than 1000 psig.
Aldous teaches extract to distillate ratios of 10:90 to 90:10, while the claims have been amended to a more narrow range.
Regarding Applicant’s first argument, Aldous teaches hydrotreatment conditions of 275-375°C and 300-2500 psia (285.3-2485.3 psig) (column1 ,lines 35-50), overlapping with those identified in the Applicant’s instant specification [0055]. In this regard, Examiner considers the conditions to read on the claimed limitations regarding “sufficiently severe enough to provide an enhanced CA content naphthenic process oil”, since the same temperatures and pressures are used. Examiner notes MPEP 2144.05 drawn to overlapping ranges being prima facie obvious in the absence of new or unexpected results. It is not seen where Applicant has distinguished the process steps in this regard. Aldous teaches an example with IP346 of 3.4 wt % (table 8, example 3), which is close to the claimed range of less than 3 w%. Examiner notes MPEP 2144.05, I: Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Examiner additionally notes MPEP 2123, II: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Regarding Applicant’s second argument, it is not clear what temperatures, pressures, or other conditions are utilized. Further, the affidavit mentions hydrotreated naphthenic vgo, while the instant claims are drawn to a blended oil. In this regard, it is not seen where Applicant’s alleged improvements are commensurate in scope with the claim language. Additionally, the claims are drawn to a pressure range of 1200-4000 psig, while the affidavit only discusses 1800 psig and 1200 psig. In this regard, it is not seen where Applicant’s data is commensurate in scope with the entirety of the claimed range.
Regarding Applicant’s third argument, Examiner notes that the range disclosed by Aldous encompasses the claimed range. Please see MPEP 2144 regarding obviousness of ranges.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zang (CN 104212488, of record on ids) – teaches hydrogenation of petroleum fractions to produce rubber process oils having PCA content of less than 3% and 8 markers less than 10 mg/kg (abstract).
Hatanaka (WO 2013/176277, of record on ids) – teaches rubber oil having 0 ppm PAH 8 markers [0014].
Hansen (US 2012/0205589) – teaches production of process oils having specific CA, CN, CP values
Mills (US 3,904,507) – teaches producing rubber process oils having specific VGC and viscosities
Suzuki (US 2008/0085970) – teaches that VGC is indicative of whether the petroleum fraction is aromatic, paraffinic, or naphthenic [0017], as well as using CA, CN, and CP as similar measures to indicate aromatic, paraffinic, and naphthenic components in process oils [0013].
Surrena (US 3,425,932) - teaches that different boil ranges of lubricating oils correspond to different viscosity ranges for different uses (column 1, lines 49-55).
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 MICHELLE STEIN whose telephone number is (571)270-1680. The examiner can normally be reached Monday-Friday 8:30 AM-5:00 PM.
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/MICHELLE STEIN/Primary Examiner, Art Unit 1771