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 .
Claim Status
Claim 1 is amended.
Claims 1-8 are pending for examination below.
Response to Arguments
Applicant’s arguments and amendments filed 10 July 2025 have been fully considered. Some are persuasive, and some are not, as explained below.
Applicant’s argument and amendments with respect to the amendment of claim 1 to recite a temperature of 240°C in the first distillation step have been fully considered and are persuasive. MacDonald (US 2014/0257009) only teaches a temperature range of 260-390°C, which is much higher than the claimed temperature of 240°C. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art in view of the amendment.
Applicant argues on page 5 of the Remarks that the temperatures for the first and second distillations are controlled strictly, and have great impact on the quality of the refined oil, referencing Example 7 and Comparative Examples 2-3 in the instant specification as evidence.
In response, Example 7 and Comparative Examples 2-3 do not provide evidence commensurate with the claims. Instant claim 1 requires a first distillation at a temperature of 240°C and a second distillation at a temperature of 300-350°C. Example 7 is performed at a first distillation temperature of 260°C (see paragraphs [0074]-[0080] of the instant specification which state that Example 7 is the same as Example 6 except the refining conditions, Example 6 is the same as Example 5 except the activated clay, Example 5 is the same as Example 4 except the second distillation conditions, and in Example 4 the first distillation is performed at 260°C). Thus, any evidence that Example 7 provides unexpected results would not be commensurate with the claims because the temperature of the first distillation in Example 7 is not the same as the claimed temperature for the first distillation. Further, the Examiner has compiled the table below to compare the conditions in Example 7 with Comparative Examples 2 and 3 (data taken from specification pages 14-15 and collected with no changes):
First distillation temperature
Second distillation temperature
Second distillation pressure
Example 7
260°C
325°C
1 kPa
Comparative Example 2
310°C
400°C
1.5 kPa
Comparative Example 3
200°C
250°C
0.1 kPa
As the table shows, in Comparative Examples 2 and 3 all three conditions of first distillation temperature, second distillation temperature, and second distillation pressure are changed from Example 7. Thus, no conclusions can be drawn as to the criticality of any specific condition. As such, any reference which teaches overlapping ranges for the temperatures and pressure will continue to render obvious the claimed ranges, because there is no evidence any specific temperature or pressure is critical.
In order to provide evidence of unexpected results, Applicant must compare a “sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” (MPEP 716.02(d)(II)). In this application, to show the criticality of the first distillation temperature, the Comparative Examples should hold constant all other conditions, including the second distillation temperature and second distillation pressure, and then perform at least one test where the first distillation temperature is lower than the claimed temperature, a test where the first distillation temperature is the claimed distillation temperature, and at least one test where the first distillation temperature is higher than the claimed temperature. To show the criticality of the second distillation temperature range, the Comparative Examples should hold constant all other conditions, including the first distillation temperature and the second distillation pressure, and then perform at least one test where the second distillation temperature is lower than the claimed temperature range, at least one test where the first distillation temperature is the within claimed temperature range, and at least one test where the second distillation temperature is higher than the claimed temperature range.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over MacDonald (US 2009/0223862) as evidenced by Chen et al. (US 2017/0283711).
With regard to claim 1, MacDonald teaches a process for producing base lubricating oil from waste oil (waste engine oil) (Abstract) comprising the following steps (Figure 2 and corresponding paragraphs [0043], [0055]-[0059], and [0066]):
a) providing a waste oil to heater 44 and separator 52, where the waste oil is mixed with an alkaline solution (paragraph [0043]) and heated to 250-450°F (121-232°C) to obtain a waste oil outlet stream (raw material oil) (paragraph [0055]). While the temperature of 250-450°F (121-232°C) does not touch the range of 80-120°C of instant claim 1, the temperatures of 120 and 121°C are very close. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the claimed range of 80-120°C, because a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, such that one of ordinary skill in the art would expect them to have the same properties, absent any showing of unexpected results or criticality.
b) passing the waste oil outlet stream from the separator 52 to a distillation 70 at a temperature of 400-600°F (204-316°C) (paragraph [0055]) to obtain a bottom stream 82 (intermediate oil) (paragraph [0056]). This range of 204 to 316°C encompasses the claimed amount of 240°C, rendering the amount prima facie obvious.
c) passing the bottom stream 82 through distillations 90 and 112 to produce a distillate stream 118 (evaporated intermediate oil) and a bottoms stream 120 (unevaporated intermediate residual oil product), where the temperature of distillation 112 is 550-700°F (288-371°C) and the pressure is 2 to 30 mm Hg (0.27 to 4 kPa) (paragraph [0059]). These ranges overlap the claimed ranges of 0 to 3 kPa and 300-350°C, rendering the ranges prima facie obvious. Thus, distillation 112 is equivalent to the second distillation as claimed.
d) fractionating the base oil distillate 118 (evaporated intermediate oil) into at least 2 cuts to produce different viscosity grades (paragraph [0066]), where the base oil distillate stream 118 (evaporated intermediate oil) has a boiling point range of about 650-1050°F (paragraph [0059]).
e) refining each cut from the fractionation individually to produce refined base oil (paragraphs [0030], [0031], and [0066]).
MacDonald does not specifically teach obtaining 3 cuts from the fractionation of stream 118. However, the phrase of “at least two” encompasses the claimed 3 fractions, rendering the concept of 3 fractions prima facie obvious. Further, Chen teaches that any convenient number of lubricant base stock fractions can be obtained from a lubricant base feed having a boiling point range of 650-1050°F (paragraph [0016]) during fractionation, including at least one bright fraction, at least one heavy fraction, at least one medium fraction, and/or at least one light fraction, each have different viscosities (paragraph [0035]).
Thus, one of ordinary skill in the art would find it obvious to choose a fractionation column which provides at least the desired three fractions of a first base oil component, a second base oil component, and a third base oil component, because MacDonald teaches fractionation of the base oil stream having the boiling point range of 650-1050°F into at least 2 different viscosity grades (paragraph [0066]) and Chen teaches that up to 4 different viscosity fractions are known to be able to be obtained by fractionation of a lubricant base oil stream having the boiling point range of 650-1050°F (paragraph [0035]).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over MacDonald (US 2009/0223862) as evidenced by Chen et al. (US 2017/0283711) as applied to claim 1 above, and further in view of Chambers et al. (US 3,625,881).
With regard to claims 2 and 3, MacDonald teaches the process above, where the alkaline solution is sodium hydroxide or potassium hydroxide (instant claim 3) (paragraph [0043])
MacDonald does not teach the amount of alkaline solution in the process. Thus, one of ordinary skill in the art would look to related art to find a suitable amount.
Chambers teaches a process for reclaiming lubricating oils (Abstract) comprising adding the alkali hydroxide to the used oil in an amount of 0.2 to 2 wt% hydroxide based on the used oil (column 2, lines 5-6), which overlaps the claimed range of 0.5 to 1% by mass of instant claim 2, rendering the range prima facie obvious.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to perform the treating of MacDonald with an amount of 0.2 to 2 wt% alkali hydroxide as taught by Chambers, because each of MacDonald and Chambers teaches treating used lubricating oils with an alkali hydroxide, and Chambers teaches that about 0.2 to 2 wt% alkali hydroxide is a known and suitable amount for the treating.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over MacDonald (US 2009/0223862) as evidenced by Chen et al. (US 2017/0283711) as applied to claim 1 above, and further in view of Moore et al. (US 1,989,330).
With regard to claims 4-6, MacDonald teaches that the stage 2 refining can be done individually on each fraction (paragraph [0066]), and that stage 2 can comprise adsorption (paragraph [0030]).
MacDonald fails to teach adding an activated clay adsorbent to each component, stirring, and filtering to obtain the first, second, and third refined oil.
Moore teaches a process for clarifying and improving the color of hydrocarbon oils which are lubricating oils (page 1, first column, lines 1-7) comprising the following steps:
a) adding a hydrocarbon oil such as a lubricating oil and a decolorizing agent to a mixing tank (page 2, second column, lines 25-28 and 48-51), where the decolorizing agent is acid treated (activated) clay (instant claim 5) (page 3, first column, lines 35-36).
b) mixing (stirring) the tank while heating the tank (page 2, second column, lines 57-60) at a temperature of 230°F (110°C) or higher (page 1, second column, lines 43-45), a pressure of less than atmospheric (101.325 kPa) (page 2, second column, lines 73-75), and a time of 1 hour or less (page 3, first column, lines 42-46). These overlap the ranges of 110-120°C, 10-30 kPa, and 30-60 minutes of instant claim 6, rendering the ranges prima facie obvious.
c) filtering the product to separating the purified (refined) oil (page 3, first column, lines 27-32).
Moore further teaches that this process simplifies the purification of the oils with a solid adsorbent which uses a minimum amount of adsorbent and minimum time (page 1, first column, lines 8-22).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the process of Moore as the refining of MacDonald, because each of MacDonald and Moore teach a method comprising refining lubricating oils by contact with an adsorbent, MacDonald teaches performing each adsorption separately for each fraction, and Moore teaches that the process of contacting with a clay adsorbent at similar temperatures, pressures, and time provides the benefits of simplifying the purification of the oils using a minimum amount of adsorbent and minimum time (page 1, first column, lines 8-22).
Claims 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over MacDonald (US 2009/0223862) as evidenced by Chen et al. (US 2017/0283711) applied to claim 1 above, and further in view of Prutzman et al. (US 1,598,255) and Tierney et al. (US 2,793,982).
With regard to claims 4, 7, and 8, MacDonald teaches that the stage 2 can be done individually on each fraction (paragraph [0066]), and that the stage 2 comprises adsorption (paragraph [0030]).
MacDonald fails to teach i) adding the adsorbent to each component, stirring, and filtering to obtain the first, second, and third refined oil as in instant claim 4, ii) wherein the adsorbent is a decolorizing sand as in instant claim 7, or iii) wherein the stirring is 40-60 min as in instant claim 8.
With regard to i) adding the adsorbent, Prutzman teaches that it is a known technique to add an adsorbent to the lubricating oil, mixing (stirring) it, and filtering to obtain the purified oil (page 2, first column, lines 31-44).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the technique of Prutzman as the adsorbing technique of MacDonald for each fraction, because each of MacDonald and Prutzman teach purifying lubricating oils by adding an adsorbent, MacDonald does not specify the process of adsorbing, and Prutzman teaches that the steps of adding the adsorbent, mixing (stirring), and filtering are well known (page 2, first column, lines 31-44).
With regard to ii) the adsorbent being decolorizing sand, Tierney teaches refining lubricating oils (column 1, lines 4-6) by contacting in a column of silica gel (decolorizing sand), where the silica gel is a suitable adsorbent for removing impurities from multiple fractions of lubricating oils (column 5, lines 40-45) at ambient temperature (column 12, lines 34-35).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use silica gel (decolorizing sand) as the adsorbent in the process of MacDonald in view of Prutzman, because Prutzman teaches adsorbing impurities where the temperature depends on the adsorbent, and Tierney teaches that silica gel is a suitable adsorbent for lubricating oils to remove impurities and that it should be used at ambient temperature.
With regard to iii) the stirring time, Tierney teaches that the silica gel is used at ambient temperatures (column 12, lines 34-35) which is the “room temperature” in instant claim 8. Prutzman in view of Tierney is silent regarding the length of the stirring. However, the stirring is a process parameter which affects the amount of impurities removed by the adsorbent, and thus can be optimized. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to select a time of 40-60 minutes, as in instant claim 8, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05(II).
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 ALYSSA L CEPLUCH whose telephone number is (571)270-5752. The examiner can normally be reached M-F, 8:30 am-5 pm, EST.
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772