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 .
Information Disclosure Statement
The information disclosure statement filed 20 May 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the non-patent literature document identified therein as “Speight, Synthetic Fuels Handbook” could not be found in the file. It has been placed in the application file, but the noted reference has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-4, 7, 8, 17, and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 1-4, the claims are indefinite inasmuch as it is not at all clear how it is possible for a person of ordinary skill in the art to readily discern the distinction between the recited “base oil feedstock” and “base oil feedstream.”
With respect to claims 7, 8, 17, and 21, the following limitations are lacking antecedent basis: “the atmospheric resid feedstock” (claims 7 and 8); “the vacuum gas oil” (claim 17); and “the total waxy base oil yield” (claim 21).
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 1, 4, 5, 9, 16, and 28-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krishna (US 2011/0315598).
With respect to claims 1, 4, 5, 9, 16, and 28-31, Krishna discloses a process for making a base oil having a viscosity in excess of 13 comprising: (a) contacting a base oil feed with a hydrocracking catalyst to form a hydrocracked product; (b) separating the hydrocracked product into a gas and liquid fraction; (c) contacting the liquid fraction with a dewaxing catalyst to product a dewaxed product (see Krishna, pages 6 and 7). The feed may be a vacuum gas oil or atmospheric resid (see Krishna, paragraph [0070]). The wax content of the feed may be in excess of 70 wt% wax (see Krishna, paragraph [0075]). The base oil product may include viscosity in the range of 3 to 30 cSt and viscosity index in the range of 95 to 170 (see Krishna, paragraph [0096]).
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.
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 2, 3, 6-8, 10-15, and 17-27 are rejected under 35 U.S.C. 103 as being unpatentable over Krishna (US 2011/0315598).
With respect to claims 2, 3, 6-8, 10-15, and 17-27, see discussion supra at paragraph 9. In view of the fact that Krishna discloses a base oil product with a wide viscosity range, the person having ordinary skill in the art would readily know how to and, moreover, be motivated to separate such product into more targeted saleable products having narrower ranges of viscosity intended for specific and possibly different purposes. The person of ordinary skill is a person of ordinary creativity, not an automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, inasmuch as Krishna discloses the same class of feedstocks as specified, it follows that such feedstocks would reasonably be expected to contain the same or similar characteristics as those specified including asphaltene, nitrogen, and metal content. “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Randy Boyer/
Primary Examiner, Art Unit 1771
Prosecution Insights