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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 February 2026 has been entered.
Claims 1 and 34-36 are amended.
The amendments to claims 34-36 overcome the previous 112(a) rejections.
Claims 1-37 are pending for examination below.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11 February 2026, with respect to the rejection(s) of claim(s) 1-37 under USC 103 over Kettunen have been fully considered. Some are persuasive, and some are not, as addressed below. Therefore, the rejection has been withdrawn.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 arguments.
Applicant’s arguments on pages 16 and 20-24 with regard to Kettunen not acknowledging the diesel fraction as an electrotechnical fluid fraction are persuasive. Thus, the Examiner will no longer use the diesel fraction of Kettunen to address the claimed electrotechnical fluid composition in claims 1-37. A new secondary reference has been added below to teach the purposeful fractionation of a biobased isoparaffin composition to obtain an electrotechnical fluid meeting IEC60296(2012) standards and the use of the fluid as a transformer oil. Kettunen continues to be used to teach the steps of ketonisation and hydrotreatment, as explained below.
Applicant's arguments with regard to the steps of the process taught by Kettunen and the citations of the Examiner are not persuasive.
Applicant argues on pages 13-15 and 71-18 that the processing of Kettunen is different than the claimed processing, because Kettunen teaches a simultaneous ketonisation and hydrotreatment step and thus does not teach the claimed process which requires a ketonisation step and a hydrotreatment step which are separate from each other.
In response, the Examiner agrees that Kettunen teaches that the first step of Kettunen is simultaneous ketonisation and hydrotreatment. This is not excluded by the claim, which recites a processing “comprising” the claimed steps. What Applicant has failed to acknowledge in this argument is the fact that Kettunen explicitly, in an Example, teaches a second hydrodeoxygenation step. This second hydrodeoxygenation step is what the Examiner has been equating to the claimed hydrotreatment step. The hydrodeoxygenation (hydrotreatment) step takes place in the presence of hydrogen to obtain linear hydrocarbons at a temperature of 295°C, a pressure of 5 MPa, and a catalyst comprising NiMo (paragraph [0135]). These are equivalent to the claimed catalyst and within the ranges of the claimed conditions of 1 to 15 MPa and 150-400°C for the hydrotreatment. Thus, the hydrodeoxygenation of Kettunen continues to be equivalent to the claimed hydrotreating step, and Kettunen continues to teach the claimed ketonisation and hydrotreatment steps.
Applicant argues on pages 18-19 that the Examiner has cited paragraphs [0075], [0094], and [0135] in support of Kettunen teaching a second separate hydrotreating step, that the Examiner has misinterpreted paragraph [0075], that [0094] teaches simultaneous production of base oil components and fuel components including a dual catalyst, and that paragraph [0135] is a typographical error.
In response, the Examiner respectfully notes that it appears that Applicant and the Examiner are not looking at the same reference, based on Applicant’s arguments regarding paragraphs [0075], [0094], and [0135]. The Kettunen reference is US 2015/0251168, as cited on the IDS of 05/11/2023, in the Rejections previously, and again in the rejection below. The Examiner has provided screenshots herein of the cited paragraphs for clarity.
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As can be seen from the cited paragraphs, paragraph [0094] only deals with the support, and is moot regarding the presence of a second hydrotreating step. Further, Example 5 (paragraphs [0134]-[0135] as cited in the Rejection) and paragraph [0075] both explicitly state that after the “combined ketonisation/hydrotreatment” step, there is a further “final hydrodeoxygenation” step. The instant specification recites that hydrotreatment includes hydrodeoxygenation (page 6, lines 3-6 and instant claim 6) and thus the hydrodeoxygenation of Kettunen is a hydrotreatment step as claimed. As such, Kettunen continues to teach the process comprising two steps, a first ketonisation step and a second hydrotreating step, as claimed.
Claim Objections
Claim 10 is objected to because of the following informalities:
With regard to claim 10, the claim recites “more than 95 paraffins”. This appears to be a typographical error resulting from the accidental removal of the unit “wt-%” in the Amendment previously filed 29 August 2025. The phrase “wt-%” should be added back in.
Also with regard to claim 10, the claim recites “fulfils a requirements according to IEC60296(2012).” This phrase appears unnecessary and could be deleted, as claim 1 already requires that the electrotechnical fluid composition fulfils requirements according to IEC20926(2012). Alternatively, if there are reasons to keep the phrase, the word “a” should be deleted for grammatical purposes.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-15, 17, 31, and 32 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With regard to claims 11-15, 17, 31, and 32, the claims recite the requirements of IEC 60296(2012) with regard to pour point, kinematic viscosity, flash point, acidity, and water content. However, claims 1 and 10 already require that the electrotechnical fluid composition meets the requirements of IEC 60296(2012), which is understood to mean meeting all the requirements. Thus, claims 11-15, 17, 31, and 32 do not further limit claims 1 and 10, because the requirements are already implicitly recited as being met in claims 1 and 10.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-18, 20, 25-27, 29-34 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wiklund (WO 2018/139971).
With regard to claims 10-17, 31, and 32, Wiklund teaches an electrical insulating oil (electrotechnical fluid) comprising 100 wt% C15-C29 paraffins (page 10, Table 1). This is within the range of at least 95 wt% C15-C29 of instant claim 10. Wiklund further teaches that the electrical insulating fluid is distilled such that it fulfills the strict requirements of IEC 60296-2012 (page 4, lines 12-16). The requirements of claims 11-17, 31, and 32 are merely specific recitations of individual requirements of IEC 60296(2012). Thus, the fluid of Wiklund meets all the limitations of claims 11-17, 31, and 32 by meeting the requirements of IEC 60296(2012).
Wiklund does not specifically teach the electrical insulating oil is obtained by the process of claim 1. However, the phrasing “obtained by the method as claimed in claim 1” is product-by-process language. The product will determine patentability. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (see MPEP 2113(I)). The claimed process produces an electrotechnical fluid composition meeting the specifications of IEC 20926(2012) comprising greater than 95 wt% paraffins. Wiklund teaches the same electrical insulating oil (electrotechnical fluid) comprising the same amount of paraffins (Table 1). They are considered to be equivalent fluids, absent any evidence that the process is critical to the obtaining of the fluid meeting the requirements of IEC 60296(2012).
With regard to claims 18, 20, and 25-27, Wiklund teaches 0.1 wt% C15 paraffin, 12.4 wt% C17 paraffin, 0.2 wt% C22 paraffin, 0.2 wt% C23 paraffin, and 0.2 wt% C24 paraffin (Table 1, page 10). These are within the ranges of 0.01 to 4 wt% C15 paraffins, 5 to 24 wt% C17 paraffins, 0.1 to 12 wt% C22 paraffins, 0.05 to 14 wt% C23 paraffins, and less than 8 wt% C24 paraffins of instant claims 18, 20, and 25-27, respectively.
With regard to claims 29 and 30, Wiklund teaches 79.3 wt% C18 isoparaffins and 2.6 wt% C18 n-paraffins (page 10, Table 1), which is a ratio of 30.5, which a ratio of an amount of isoparaffins to an amount of n-paraffins within the ranges of more than 20 and less than 32 of instant claims 29 and 30, respectively.
With regard to claims 33 and 34, Wiklund teaches the electrical insulating oil is used in a transformer (instant claim 33) where the electrotechnical fluid is a transformer oil (instant claim 34) (page 1, lines 9-11 and page 15, claim 12).
With regard to claim 37, Wiklund teaches an electrical insulating fluid comprising 100 wt% C15-C29 paraffins (page 10, Table 1). This is within the range of at least 95 wt% C15-C29 of instant claim 37. Wiklund further teaches that the electrical insulating fluid is distilled such that the obtained product fulfills the strict requirements of IEC 60296-2012 (page 4, lines 12-16).
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 1-32 and 37 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.
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 (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 (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 of the same feedstock comprising triglycerides and free fatty acids 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.
With regard to claims 10-17, 31, 32, and 37, Kettunen in view of Wiklund teaches the method above, which produces the electrotechnical fluid meeting the requirements of IEC60296(2012), as claimed. The requirements of claims 11-17, 31, and 32 are merely specific recitations of individual requirements of IEC 60296(2012). Thus, the fluid of Wiklund meets all the limitations of claims 11-17, 31, and 32 by meeting the requirements of IEC 60296(2012).
With regard to claims 18, 20, and 25-27, Wiklund teaches 0.1 wt% C15 paraffin, 12.4 wt% C17 paraffin, 0.2 wt% C22 paraffin, 0.2 wt% C23 paraffin, and 0.2 wt% C24 paraffin (Table 1, page 10). These are within the ranges of 0.01 to 4 wt% C15 paraffins, 5 to 24 wt% C17 paraffins, 0.1 to 12 wt% C22 paraffins, 0.05 to 14 wt% C23 paraffins, and less than 8 wt% C24 paraffins of instant claims 18, 20, and 25-27, respectively.
With regard to claims 21-24, Kettunen in view of Wiklund does not explicitly teach 5 to 23 wt% C18 paraffins, 5 to 23 wt% C19 paraffins, 5 to 19 wt% C20 paraffins, or 1 to 12 wt% C21 paraffins as in instant claims 21-24, respectively. However, Kettunen in view of Wiklund teaches the same process of ketonisation, hydrodeoxygenation, and isomerization with the same catalysts at the same conditions to produce the isoparaffin mixture, and Wiklund teaches fractionation of the mixture to obtain the electrotechnical fluid. Therefore, one of ordinary skill in the art would reasonably find it obvious to perform the distillation and obtain the amounts of C18-C21 paraffins claimed, as the product of Kettunen would be expected to contain sufficient amounts of the C18-21 paraffins to produce a product containing the desired amounts of each component, as claimed.
With regard to claim 28, Wiklund teaches the electrotechnical fluid comprises more than 70 wt% isoparaffins by mass (page 7, lines 11-12), which overlaps the range of more than 93 to less than 99 wt% of instant claim 28, rendering the range prima facie obvious.
With regard to claims 29 and 30, Wiklund teaches 79.3 wt% C18 isoparaffins and 2.6 wt% C18 n-paraffins (page 10, Table 1), which is a ratio of 30.5, which a ratio of an amount of isoparaffins to an amount of n-paraffins within the ranges of more than 20 and less than 32 of instant claims 29 and 30, respectively.
With regard to claims 33 and 34, Wiklund teaches the electrical insulating oil is used in a transformer (instant claim 33) where the electrotechnical fluid is a transformer oil (instant claim 34) (page 1, lines 9-11 and page 15, claim 12).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Kettunen et al. (US 2015/0251168) in view of Wiklund (WO 2018/139971) and further in view of Dyer et al. (US 2014/0062397).
With regard to claim 35, Kettunen in view of Wiklund teaches the method above, where Wiklund teaches the use of the electrical insulating oil in transformers, electronics, and the like (page 3, lines 12-13).
Kettunen in view of Wiklund does not specifically teach the use of the electrotechnical fluid as an electric vehicle battery coolant.
Dyer teaches an electric vehicle battery (Abstract) which is cooled by the use of an electrically insulating liquid which comprises paraffinic hydrocarbons (page 8, claim 16). Thus, Dyer teaches that it is known to use paraffinic electrical insulating fluids as electric vehicle batter coolants.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the fluid of Kettunen in view of Wiklund as an electric vehicle battery coolant as claimed, because Kettunen in view of Wiklund teaches producing the renewable electrical insulating oil which comprises paraffins and use in electronics, Dyer teaches that it is known to use paraffinic electrical insulating fluids as electric vehicle battery coolants, and one of ordinary skill in the art would be motivated to use the renewably sourced fluid of Kettunen in view of Wiklund because Wiklund teaches the desire to make more environmentally friendly electrical insulating fluids (page 3, lines 10-13).
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Kettunen et al. (US 2015/0251168) in view of Wiklund (WO 2018/139971) and further in view of Shell (Immersion Cooling Fluids).
With regard to claim 36, Kettunen in view of Wiklund teaches the method above, where Wiklund teaches the use of the electrical insulating oil in transformers, electronics, and the like (page 3, lines 12-13).
Kettunen in view of Wiklund does not specifically teach the use of the electrotechnical fluid as a server farm.
Shell teaches the use of paraffinic immersion cooling fluids in data centers (server farms) (page 1, second paragraph and page 7, fifth paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the fluid of Kettunen in view of Wiklund as a server farm coolant as claimed, because Kettunen in view of Wiklund teaches producing the renewable electrical insulating oil which comprises isoparaffins and use in electronics, and Shell teaches it is known to use isoparaffinic fluids as server farm coolants.
Conclusion
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772