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 .
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.
3. Claims 1, 5, 15-16, 24 have been amended, claims 4, 7-10, 13, 18, 22 have been withdrawn, and claims 1-24 are pending as amended on 02/27/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 02/27/26. In particular, claims 1, 16 have been amended to include feature “concurrently in a single reactor.” Now, the scope of independent claims 1, 16 and the claims depends from claims 1, 16 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a 371 of PCT/US2021/072276 11/08/2021 PCT/US2021/ 072276 has PRO 63/114,714 11/17/2020.
Response to Amendment
8. Applicant's amendment filed on 02/27/26, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 1-3, 5-6, 11-12, 16, 19-21 under 35 U.S.C. 103 as being unpatentable over Wu (US 2014/0323665) in view of Fu (CN 111363580) and claims 14-15, 17, 23-24 under 35 U.S.C. 103 as being unpatentable over Wu in view of Fu and Wu (US 2009/0036725; hereinafter called “Wu-1”) filed on 02/27/26, have been fully considered but are moot in view of amendment. Applicants arguments of the isomerization and hydrogenation concurrently in a single reactor has been respectfully considered but are not persuasive. The claims 1, 16 rejections are based on Wu (US 2014/0323665) in view of Fu (CN 111363580) only. Accordingly, applicants arguments related to Wu-1 for claims 1, 16 rejections have not been considered. Applicants arguments for claims 1, 16 rejections based on Wu (US 2014/0323665) in view of Fu (CN 111363580) have been respectfully considered but are not persuasive. Applicants have argued: “The Office Action admits that Wu does not disclose any examples that "isomeriz[e] and hydrogenat[e] the at least one unsaturated polyalphaolefin concurrently in a single reactor." Wu instead discloses a two-step process that uses a first catalyst (e.g., PtZSM-23 or PtZSM-48) for isomerization in a first reactor and a second catalyst (e.g., nickel on kieselguhr or palladium on activated carbon) for hydrogenation in a second reactor. Wu, [0025] and Examples 1-4.
Fu is directed to hydroisomerization of hydrocracked waste plastics, not polyalphaolefins. Fu also fails to disclose a catalyst with an alpha value of from about 10 to about 1,000, as required by claim 1” and “The person of ordinary skill in the art, contemplating improvements to the process of Wu, would set Fu aside because Fu's teachings relate to hydrocracked waste plastics, not PAO.” (remarks page 8). This is not persuasive because applicants missed the types of the waste plastics used in Fu. In examples (example 1) Fu expressly discloses waste plastic is polyethylene. Hence, Wu and Fu are pertinent to the isomerization and hydrogenation of the polyethylene. Accordingly, the previous rejections are maintained.
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.
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.
Claims 1-3, 5-6, 11-12, 16, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2014/0323665) in view of Fu (CN 111363580).
Regarding claims 1, 12, 16, 21, Wu discloses a process for making saturated isomerized polyalphaolefin (claim 1), the process comprising contacting at least one unsaturated polyalphaolefin with a catalyst for simultaneously achieve both isomerization and hydrogenation to form saturated isomerized polyalphaolefin, wherein the catalyst comprise a zeolite such as ZSM-11, ZSM-12, ZSM-23, ZSM-35, or ZSM-48, and a metal such as Pt, Pd, Ni, Co, W, or Mo is incorporated in the catalyst (para [0016]-[0020], [0050], [0053]), wherein zeolite having silica to alumina mole ratios of at least about 30 (para [0045]), overlapping claim 1 range of from about 5 to about 100 or claim 16 range of from about 20 to about 100, and alpha value of at least about 1 (para [0043]), encompassing claim 1 range of from about 10 to about 1000 or claim 16 range of from about 50 to about 600.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses zeolite having silica to alumina mole ratios of at least about 30 and alpha value of at least about 1, overlapping or encompassing the requirement of claims 1, 16. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Even though Wu teaches contacting at least one unsaturated polyalphaolefin with a catalyst for simultaneously achieve both isomerization and hydrogenation to form saturated isomerized polyalphaolefin, none of examples in Wu discloses the feature required in claims 1, 16, e.g. isomerize and hydrogenate concurrently in a single reactor. In fact, the examples in Wu discloses two step process, first isomerization with ptZSM-23 or PtZSM-48 catalyst and then hydrogenation using Nickel on Kieselguhr or Pd on activated carbon catalyst (example 2, 6, 10). Further, Wu does not disclose the metal is incorporated in the catalyst at a concentration of from about 0.01 wt% to about 60 wt% (for claims 1, 16) or from about 0.01 wt% to about 10 wt% (for claims 12, 21), based on a total weight of the catalyst.
However, Fu discloses the hydrogenation isomerization (hydroisomerization) of the composition containing polyolefin in presence of PtZSM-23 containing mass percentage of Pt is 0.3-0.44% (example 1, page 3, para 3), fall into instant claims range of from about 0.01 wt% to about 60 wt% or from about 0.01 wt% to about 10 wt%. hydrogenation isomerization (hydroisomerization) implicitly teaches concurrently in single rector hydrogenation and isomerization. Wu and Fu are pertinent to the isomerization and hydrogenation of the polyethylene.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Wu with PtZSM-23 containing mass percentage of Pt is 0.3-0.44%, as taught by Fu. The rationale to do so would have been motivation provided by of Fu that to do so would help to get one step process of hydrogenation isomerization.
Regarding claims 2, 20, Wu discloses zeolite containing silica to alumina mole ratios of at least about 30 (para [0045]), encompassing claim range of from about 30 to about 60.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses zeolite containing silica to alumina mole ratios of at least about 30, encompassing the requirement of claims 2, 20. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Regarding claim 3, Wu discloses unsaturated polyalphaolefin comprises
low viscosity polyalphaolefin having a kinematic viscosity of from 3 cSt to 10 cSt at 100°C (para [0083]), fall into claimed range of about 2 cSt to about 10 cSt.
Regarding claim 5, Wu discloses catalyst comprise a zeolite such as ZSM-23, and a metal such as Pt, is incorporated in the catalyst (para [0016]-[0020], [0050], [0053]), wherein zeolite having silica to alumina mole ratios of at least about 30 (para [0045]), encompassing claim 5 range of from about 40 to about 60, and alpha value of at least about 1 (para [0043]), encompassing claim 5 range of from about 50 to about 600.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses zeolite having silica to alumina mole ratios of at least about 30 and alpha value of at least about 1, encompassing the requirement of claim 5. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Regarding claim 6, Wu discloses zeolite comprises alpha value of at least about 1 (para [0043]), encompassing claimed range of from about 20 to about 600.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses zeolite comprises alpha value of at least about 1, encompassing the requirement of claim 6. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Regarding claim 11, Wu discloses catalyst comprises biner combined with zeolite, wherein the binder comprises clay, silica, alumina, silica-alumina, zirconia, or titania, wherein the binder content in the catalyst is from about 20 to about 98 wt% (para [0062]-[0064]; acid catalyst about 2 to 80 wt%; in composition of acid catalyst and binder), overlapping claimed range of from about 10 to about 80 wt%.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses the binder content in the catalyst is from about 20 to about 98 wt%, overlapping the requirement of claim 11. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Regarding claim 19, Wu discloses zeolite comprises pore size of from about 5 to about 8 Angstroms (para [0046]), overlapping instant claim range of from about 4.5 to about 5.5 Angstroms.
A prima facie case of obviousness exists for the process for making saturated isomerized polyalphaolefin, wherein Wu discloses zeolite pore size of from about 5 to about 8 Angstroms, overlapping the requirement of claim 19. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05.
Claims 14-15, 17, 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Fu as applied to claims 1, 16 above, and further in view of Wu (US 2009/0036725; hereinafter called “Wu-1”).
Wu in view of Fu includes the feature of claims 1, 16 above.
Regarding claims 14-15, 23-24, Wu discloses temperature 260 0C, and pressure 5.52 Mpa (5520 kPa) (table 4, para [0101]), fall into claims 14, 23 range of temperature from about 150 0C to about 500 0C and pressure from about 345 kPa to about 6895 kPa or claims 15, 24 range of temperature from about 220 0C to about 300 0C and pressure from about 1034 kPa to about 6895 kPa. Wu does not disclose H2 concentration from about 0.1 to about 3 wt%.
However, Wu-1 discloses a process for making polyalphaolefin, wherein the process comprises contacting polyalphaolefin with hydrogen under hydrogenation condition to give mostly saturated paraffinic polyalphaolefin (para [0139]), wherein the H2 concentration is 1 to 30,000 ppm (0.0001 to 3 wt%; para [0225]), encompassing claimed range of about 0.1 to about 3 wt%, to provide low bromine number for the higher oxidative stability (para [0088], [0250]-[0253]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Wu with H2 concentration is 1 to 30,000 ppm, as taught by Wu-1. The rationale to do so would have been motivation provided by of Wu-1 that to do so would provide low bromine number for the higher oxidative stability of polyalphaolefin .
Regarding claim 17, Wu discloses unsaturated polyalphaolefin comprises
low viscosity polyalphaolefin having a kinematic viscosity of from 3 cSt to 10 cSt at 100°C (para [0083]), fall into claimed range of about 2 cSt to about 10 cSt. Wu further discloses pour point -46 0C (table 4, ex 11), fall into claimed range of greater than about -99 0C and less than about -44 0C. Wu does not disclose the bromine number of less than 0.5 Br/100 g of the saturated polyalphaolefin.
However, Wu-1 discloses a process for making polyalphaolefin, wherein the process comprises contacting polyalphaolefin with hydrogen under hydrogenation condition to give mostly saturated paraffinic polyalphaolefin (para [0139]), wherein the bromine number of less than 0.5 Br/100 g (para [0051]; read on claimed number) for the higher oxidative stability (para [0088], [0250]-[0253]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Wu bromine number of less than 0.5 Br/100 g, as taught by Wu-1. The rationale to do so would have been motivation provided by of Wu-1 that to do so would provide the higher oxidative stability of polyalphaolefin .
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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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