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 38 is new. Claims 10-37 are cancelled.
Claims 1-9 and 38 are pending for examination below.
Response to Arguments
Applicant's arguments filed 07 May 2026 have been fully considered but they are not persuasive.
Applicant argues on page 6 of the Remarks that Kettunen is not directed to processing a renewable feedstock including free fatty acids and triglycerides because paragraph [0004] states that triglycerides are pretreated and because [0061] teaches that simultaneous hydrotreating means that some of the components are hydrotreated before ketonisation.
In response, the Examiner respectfully disagrees. As explained previously, paragraph [0004] is a background teaching, and has no application in the inventive process of Kettunen. While [0061] does acknowledge that some parts of the feed are hydrotreated before subsequent ketonisation, the feed to this zone, which contains both ketonisation and hydrotreatment simultaneously, has triglycerides and free fatty acids. Kettunen does not teach that all triglycerides and free fatty acids are hydrotreated before the ketonisation part of the simultaneous step, but merely that it is “partially” hydrotreated. Thus, the feed to the simultaneous ketonisation step clearly comprises triglycerides and free fatty acids, as explicitly taught by Kettunen, which thus meets the claimed step.
Applicant argues on pages 7-10 and 15 of the Remarks that Kettunen teaches simultaneous hydrotreatment and ketonisation as a fundamental principle, which it would not be obvious to modify because it is required.
In response, the Examiner has acknowledged many times that the process of Kettunen includes a simultaneous hydrotreatment and ketonisation step (see Non-Final Office Action 2/24/2026 page 3 for example). But the Examiner has also explained multiple times that Kettunen then teaches a second hydrodeoxygenation step, in an Example, which is equated to the claimed hydrotreatment step. Further, as noted above, the claim language is “comprising” and thus is open to other steps taking place. As such, the argument that one of ordinary skill in the art would not modify Kettunen is moot because no such modification is required or asserted by the Examiner.
Applicant argues on pages 9-10 of the Remarks that the Examiner is misreading paragraph [0075] out of context, and that Kettunen does not teach separate hydrodeoxygenation.
In response, the Examiner copy and pasted the language from the citations of paragraph [0075] and the Example of Kettunen in paragraphs [0134]-[0135] which clearly show a simultaneous ketonisation/hydrotreatment followed by a hydrodeoxygenation step (see Non-Final Office Action 2/24/2026 pages 5-6). Thus, the Examiner continues to maintain that Kettunen teaches the same steps, which include a separate, subsequent hydrodeoxygenation step.
Applicant argues on pages 10-11 of the Remarks that the separate hydrotreatment is not to “obtain a renewable paraffinic intermediate product” because the simultaneous ketonisation/hydrotreatment step already provides paraffins, and thus the hydrotreatment step is hydrotreating the paraffins.
In response, the Examiner respectfully disagrees. Kettunen teaches ketonisation/hydrotreatment includes partial hydrotreatment (paragraph [0061]) and specifically that ketones and hydrocarbons are obtained (Abstract and paragraph [0065]). Then the subsequent hydrotreatment produces paraffins (paragraph [0068]). Claim 1 requires subjecting a feed to ketonisation followed by subjecting the ketonised renewable feedstock to hydrotreatment to obtain paraffins. Claim 1 does not require that the hydrotreating convert only ketones to paraffins, only that the hydrotreating produces a paraffin product. As the product of the second hydrotreatment step of Kettunen is paraffins, the step of Kettunen does meet the claimed limitations.
Applicant argues on pages 11-13 of the Remarks that Kettunen does not suggest an electrotechnical fluid, only teaching base oils and diesel, and that diesel does not function as an electrotechnical fluid.
In response, the Examiner agreed with this argument in the previous Non-Final Office Action and no longer asserts that the diesel of Kettunen is equivalent to the claimed electrotechnical fluid (see pages 2-3). Thus, the argument is moot.
Applicant argues on pages 13-16 of the Remarks that the entire purpose of Kettunen is to produce a fuel and base oil and there is no suggestion in Wiklund that the principle operation of Kettunen should be modified so an electrotechnical fluid is provided instead of fuel and lubricants, which are the focus of Kettunen, thus there is no rational underpinning to the combination because Wiklund would be modifying contrary to the purpose of Kettunen.
In response, the Examiner respectfully disagrees that the principle operation of Kettunen needs to be modified to obtain the electrotechnical fluid and that the modification with Wiklund is contrary to the purpose of Kettunen. Kettunen teaches producing hydrocarbons “useful as fuels and lubricants” (paragraph [0001]). However, this does not exclude obtaining other hydrocarbons useful for other purposes. Kettunen teaches that the “fuel range” hydrocarbons are C5-C23 (paragraph [0077]), and further teaches that multiple different fractions are present within the “fuel range” hydrocarbons such as naphtha, diesel, and kerosene (page 9, Table 13). Thus, Kettunen is open to obtaining multiple different fractions from the “fuel range hydrocarbons” wherein not all of them are necessarily fuels, as naphtha is not necessarily a fuel. Wiklund teaches obtaining the electrical insulating oil (electrotechnical fluid) by distilling a broader carbon range mixture of hydrocarbons to obtain the narrower carbon range of the electrical insulating oil (page 6, lines 17-23). Further, Wiklund provides motivation as to why one of ordinary skill in the art would want to obtain the electrical insulating oil fraction (electrotechnical fluid) from renewable hydrocarbons, which is that electrical insulating oils are overwhelmingly fossil based and it is of great ecological importance to instead of obtain biological based oils for the same applications (page 4, lines 15-17). Therefore, Kettunen does not teach away from obtaining multiple fractions from the “fuel range” hydrocarbons, Wiklund provides motivation to obtain the electrotechnical fluid fraction as one of the fractions, and the rejection is maintained.
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.
Claim 38 is 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 claim(s) contains 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 inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to claim 38, the claim recites that the ketonisation occurs “without any hydrotreatment of the renewable feedstock occurring”. This language is new matter. Applicant has not provided any specific recitation of support for this new limitation, but upon consideration of the entire application as filed, the Examiner does not find any support. The closest recitation is on page 9 of the specification, which states that the ketonisation is followed by hydrotreatment (line 13-14 and 22). However this does not exclude some amount of hydrotreatment taking place during the ketonisation as well. Further, the gas to the ketonisation can include H2 (page 9, line 8). Thus, it appears reasonable that some amount of hydrotreatment could take place during the ketonisation, and the recitation that the ketonisation takes place “without any hydrotreatment” occurring is new matter.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kettunen et al. (US 2015/0251168, cited on IDS of 05/11/2023) in view of Wiklund (WO 2018/139971, cited on IDS of 05/11/2023).
With regard to claims 1 and 3-8, Kettunen teaches a process for producing paraffins (paragraph [0016]) comprising the following:
a) contacting a feedstock comprising palm oil, which comprises triglycerides, and palm oil fatty acid (free fatty acids) with a catalyst for ketonisation at a temperature of 365°C, a pressure of 2 MPa, and a catalyst comprising TioO2 (paragraph [0134]). These are within the ranges of 100 to 500°C and 0.1 to 5 MPa of instant claim 4. While the ketonisation step is also recited as performing hydrotreating (paragraph [0134]), the claim language is a method “comprising”, thus the step of “ketonisation” is open to other reactions taking place simultaneously, such as the hydrotreating of Kettunen.
b) subjecting the product from the ketonisation step to hydrodeoxygenation (hydrotreatment) in the presence of hydrogen to obtain linear hydrocarbons (instant claims 1 and 6) at a temperature of 295°C, a pressure of 5 MPa, and a catalyst comprising NiMo (instant claims 5 and 7) (paragraph [0135]) on an active carbon, silica, or alumina support (instant claim 7) (paragraph [0094]). These are within the ranges of 1 to 15 MPa and 150-400°C of instant claim 6.
c) isomerizing the linear hydrocarbons to form branched hydrocarbons (instant claim 6) at a hydrogen pressure of 5 MPa, a temperature of 311°C and in the presence of a noble metal bifunctional catalyst (paragraph [0137]) where the noble metal is Pt on ZSM-5 (molecular sieve) (paragraph [0078]). These are within the ranges of 1 to 15 MPa and 200 to 400°C of instant claim 8.
d) distilling (fractionation by distillation instant claims 1 and 3) the hydrocarbons to obtain isoparaffin containing fractions (paragraphs [0078] and [0080]).
Kettunen does not explicitly teach distilling to obtain an electrotechnical fluid composition meeting the requirements of IEC 60296(2012) standard.
Wiklund teaches a process for obtaining a non-petroleum based electrical insulating oil (claimed electrotechnical fluid) comprising distillation of a mixture of isomerized straight chain hydrocarbons of non-petroleum origin to obtain the paraffinic base oil used as the electrical insulating oil (Abstract). Wiklund further teaches that the process comprises controlling the flash point and the kinematic viscosity of the oil to obtain a product meeting the strict requirements of IEC 60926-2012 (claimed IEC60296(2012) international standard) (page 4, lines 10-15). Wiklund additionally teaches that the process allows for obtaining an environmentally friendly insulating oil which complies with standards for cooling transformers, electronics, and the like (page 3, lines 10-13).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to fractionate the isoparaffin containing product of Kettunen to obtain an electrotechnical fluid meeting the requirements of IEC 60926-2012 as claimed, because each of Kettunen and Wiklund teach obtaining an isoparaffin containing fraction from processing of fatty acids, where the processing includes hydrotreatment and isomerization (Wiklund page 5, line 24 and page 6, lines 2-6 and Kettunen paragraphs [0134]-[0136]), Kettunen teaches fractionation to obtain isoparaffin containing fractions, and Wiklund teaches fractionation controlling the flash point and kinematic viscosity of the obtained oil to obtain an electrical insulting oil meeting the strict requirements of IEC 60925-2012 (page 4, lines 10-15).
With regard to claim 2, Wiklund teaches that the obtained oil from the distillation (fractionation) has a boiling point within the range of 280-315°C (page 6, lines 19-20), which is within the range of 280-400°C of instant claim 2.
With regard to claim 9, Kettunen further teaches fractionating a base oil fraction having a VI of 156 (paragraph [0138], Table 15), which is within the range of > 120 of instant claim 9. Kettunen does not specifically teach that the base oil meets API Group III base oil specification including greater than 90 wt% saturated hydrocarbons or less than 0.03 wt% sulfur. However, because Kettunen teaches the same process of ketonisation, hydrodeoxygenation, isomerization, and fractionation, where the feedstock comprises triglycerides and free fatty acids as claimed, at the same pressures and temperatures, and with the same catalyst to produce a base oil fraction having the same VI, one of ordinary skill in the art would reasonably expect that the base oil of Kettunen also has the claimed greater than 90 wt% saturated hydrocarbons and less than 0.03 wt% sulfur, absent any evidence to the contrary.
Claims 1 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Myllyoja et al. (WO 2007/068795) in view of Wiklund (WO 2018/139971, cited on IDS of 05/11/2023).
With regard to claims 1 and 38, Myllyoja teaches a process for producing saturated hydrocarbons from biological feeds (page 1, lines 7-10) comprising the following steps:
a) providing a feed 31 to a ketonisation reactor 50 and reacting (subjecting to claimed ketonisation conditions) to produce a product stream 51 comprising ketones (page 14, lines 5-15 and Figure 1). The feedstock comprises a mixture of triglycerides and free fatty acids (page 18, line 13 and page 19, lines 10-13 and 32).
b) passing the product stream 51 to a hydrodeoxygenation rector 60 (claimed hydrotreatment under hydrotreatment conditions) to produce a paraffin product 71 which is isomerized to obtain branched paraffins 91 (page 14, lines 15-19 and Figure 1).
c) fractionation of branched paraffins 91 in fractionation unit 100 (page 14, lines 19-25).
Myllyoja further teaches that the steps are preferably carried out in the order (sequentially) of ketonisation, hydrodeoxygenation, and isomerization (page 17, lines 26-27), and Figure 1 clearly shows that the hydrodeoxygenation (claimed hydrotreatment) reactor 60 is separate and distinct from ketonisation reactor 50. Thus, one of ordinary skill in the art would reasonably conclude that the ketonisation occurs without any hydrotreatment, as claimed in instant claim 38.
Myllyoja additionally teaches that the process produces base oils, diesel range branched paraffins and solvent or gasoline range hydrocarbons (page 28, lines 1-8).
Myllyoja does not specifically teach that the fractionation produces an electrotechnical fluid composition.
Wiklund teaches a process for obtaining a non-petroleum based electrical insulating oil (claimed electrotechnical fluid) comprising distillation of a mixture of isomerized straight chain hydrocarbons of non-petroleum origin to obtain the paraffinic base oil used as the electrical insulating oil (Abstract). Wiklund further teaches that the process comprises controlling the flash point and the kinematic viscosity of the oil to obtain a product meeting the strict requirements of IEC 60926-2012 (claimed IEC60296(2012) international standard) (page 4, lines 10-15). Wiklund additionally teaches that obtaining insulating oils (electrotechnical fluids) of biological origin is of great ecological importance as most current insulating oils are of fossil origin (page 4, lines 15-17).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to fractionate the isoparaffin containing product of Myllyoja to obtain an electrotechnical fluid meeting the requirements of IEC 60926-2012 as claimed, because each of Myllyoja and Wiklund teach obtaining an isoparaffin containing fraction from processing of fatty acids, where the processing includes hydrotreatment, isomerization, and fractionation (Wiklund page 5, line 24 and page 6, lines 2-6 and Myllyoja page 14, lines 15-25), and Wiklund teaches that fractionation of the paraffins by controlling the flash point and kinematic viscosity of the obtained oil to obtain an electrical insulting oil meeting the strict requirements of IEC 60925-2012 is desirable because biologically derived insulating oils (electrotechnical fluid) are of great ecological importance (page 4, lines 10-15).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/Renee Robinson/Primary Examiner, Art Unit 1772
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