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 .
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation 1:9 to 6:4, and the claim also recites 2:8 to 5:5 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 13, line 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 14, line 2 and line 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 13-16 are objected to because the dependent claims at the outset should begin with - - The process - -.
Claims interpretations
Sunflower seed oil variants interpret as High-Linoleic (Conventional) Sunflower Oil: The traditional variant, containing a high percentage of polyunsaturated fat (around 70% linoleic acid). It has a lower smoke point and is best used for low-heat applications like salad dressings.
Mid-Oleic Sunflower Oil: This variant offers a balance, typically with about two-thirds monounsaturated fat (oleic acid) and a quarter polyunsaturated fat (linoleic acid). It is more stable than the linoleic variant and suitable for various cooking methods.
High-Oleic Sunflower Oil: This is a popular variant that is high in monounsaturated fat (typically 80% or more oleic acid). Its high oleic content makes it more stable when heated and gives it a longer shelf life, making it ideal for high-heat cooking like frying and baking, as well as for use in manufactured food products and cosmetics.
High-Stearic/High-Oleic Oil: A newer variant developed to function as a replacement for hydrogenated fats or tropical oils in products like margarines and baked goods, by having increased levels of stearic acid.
Claim Rejections - 35 USC § 103
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.
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 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Di Biase et al (US 2013/0281688 A1) in view of Bongardt et al (US 6,160,144).
Applicant’s claimed invention is directed to a process to produce an oleyl alcohol comprising the following steps: a) hydrogenation of a fatty acid, a fatty acid methyl ester or a combination thereof to provide a fatty alcohol; wherein the fatty acid, the fatty acid methyl ester oil or combination thereof contain oleyl chains obtained from a mixture of 1:9 to 6:4, preferably 2:8 to 5:5 oil (1) and oil (2), where oil (1) is selected from palm oil, cottonseed oil or mixtures thereof, oil (2) is selected from tall oil, olive oil, low erucic rapeseed oil, sunflower seed oil variants containing greater than 60 wt.% oleic acid or mixtures thereof; and wherein the process does not include distillation.
Regarding claims 12-13 and 16, Di Biase teaches a method for producing unsaturated alcohol by the selective hydrogenation of methyl oleate (methyl-9-octadecenoate) into oleyl alcohol (methyl-9-octadecen-1-ol). This hydrogenation can be carried out over bimetallic catalysts containing cobalt and tin, or ruthenium and tin. Other methods to produce unsaturated alcohols [0039].
Di Biase teaches that natural oils suitable for use as a feedstock to generate the hydrocarbyl unsaturated esters from self-metathesis or cross-metathesis with olefins are well known. Suitable natural oils include vegetable oils, algal oils, animal fats, tall oils, derivatives of the oils, and combinations thereof. Thus, suitable natural oils include, for example, soybean oil, palm oil, rapeseed oil, coconut oil, palm kernel oil, sunflower oil, safflower oil, sesame oil, corn oil, olive oil, peanut oil, cottonseed oil, canola oil, castor oil, linseed oil, tung oil, jatropha oil, mustard oil, pennycress oil, camellina oil, coriander oil, almond oil, wheat germ oil, bone oil, tallow, lard, poultry fat, fish oil, and the like. Soybean oil, palm oil, rapeseed oil, and mixtures thereof are preferred natural oils [0020].
Di Biase teaches a preferred natural oils have substantial unsaturation, as this provides a reaction site for the metathesis process for generating olefins. Particularly preferred are natural oils that have a high content of unsaturated fatty groups derived from oleic acid. Thus, particularly preferred natural oils include soybean oil, palm oil, algal oil, canola oil, and rapeseed oil.
Regarding claim 14, Di Biase teaches that alkyl glyceryl ethers are prepared by the alkylation of unsaturated fatty alcohols with glycidol, in the presence of an acidic or alkaline catalyst. The hydrophile-lipophile balance of this class of nonionic surfactant is readily modified by the number of glycidol moieties added to the fatty alcohol substrate. Alkyl glyceryl ether derivatives may be further transformed into anionic surfactants by sulfation using any of the conventional reagents (chlorosulfonic acid, oleum, sulfur trioxide, etc.).see paragraph 0043-0044.
Regarding claim 15, Di Biase teaches When the natural oil is cross-metathesized with an .alpha.-olefin and the product mixture is transesterified, the resulting hydrocarbyl unsaturated ester mixture includes a C10 unsaturated alkyl ester and one or more C11 to C17 unsaturated alkyl ester coproducts in addition to the glycerin (glycerol) by-product. The terminally unsaturated C10 product is accompanied by different coproducts depending upon which .alpha.-olefin(s) is used as the cross-metathesis reactant. Thus, 1-butene gives a C12 unsaturated alkyl ester, 1-hexene gives a C14 unsaturated alkyl ester, and so on. The unsaturated alkyl esters are readily separated from each other and easily purified by fractional distillation.
Di Biase is silent with respect to the ratio of oil (1) to oil (2). Secondly, the instant claim 12 requires sunflower seed oil containing greater than 60 wt. % oleic acid, whereas, Di Biase discloses a high content of unsaturated fatty groups derived from oleic acid. However, Bongardt in a process for producing esters of alcohols and fatty acid mixture of vegetable oil high in oleic acid teaches a fatty acid mixtures with an oleic acid content of 85 wt % and a stearic acid content of 0.5 to 2.5 wt %, both relative to the mixture, b) alcohols and c) as desired, polyfunctional carboxylic acids. See abstract and col. 3, line 50. Accordingly, Bongardt also relates to hydraulic oils containing synthetic esters of fatty acid mixtures containing at least 85% by weight of oleic acid and 0.5 to 2.5% by weight of stearic acid, based on the mixture, and alcohols and, if desired, polybasic carboxylic acids. See Table 2.
A person of ordinary skill in the art (PHOSITA), before the effective filing date of the claimed invention would have found the claimed invention obvious because the combined teachings of Di Biase and Bongardt provide all the necessary elements and a clear motivation to arrive at the claimed composition. Di Biase provides a hydraulic oil composition utilizing high unsaturated fatty group content, which inherently includes oleic acid as a primary component of many common vegetable oils like sunflower oil, as widely known in the art. While Di Biase is silent on a specific ratio or exact percentage of oleic acid, Bongardt explicitly teaches a specific fatty acid mixture for hydraulic oils with a high oleic acid content of at least 85 wt.% and a stearic acid content of 0.5 to 2.5 wt.%, derived from vegetable oils high in oleic acid, such as high-oleic sunflower oil. The PHOSITA, seeking to optimize the performance or stability of the bio-lubricant disclosed by Di Biase, would have been motivated to look to other relevant prior art, such as Bongardt, for guidance on specific, advantageous fatty acid profiles. The selection of a high-oleic sunflower oil containing greater than 60 wt.% oleic acid, as required by the instant claim, is merely a range encompassed and made obvious by Bongardt’ s teaching of an 85 wt.% minimum.
The PHOSITA could have arrived at the present invention by applying routine optimization and conventional knowledge in the field of bio-lubricants and vegetable oil compositions. The general desire in the art to improve product quality, stability, and performance of oils by modifying their fatty acid profiles is well-documented. A PHOSITA would recognize that Di Biase's general teaching could be improved by incorporating the specific, optimized fatty acid content disclosed in Bongardt. The process of blending different sources of vegetable oils, or selecting specific high-oleic varieties, to achieve a desired fatty acid composition is a standard practice in oil processing. Therefore, a PHOSITA would have a reasonable expectation of success in combining the known applications of Di Biase with the specific compositional ranges taught by Bongardt to create a hydraulic fluid with predictable characteristics, rendering the specific claimed range of greater than 60 wt.% oleic acid in sunflower oil an obvious variation of the prior art.
The instant claims relate to a process that cleverly bypasses a costly and energy-intensive distillation step by strategically selecting the starting material. This avoidance of distillation is achieved by demanding a high concentration of oleic acid in the source oil from the outset. By utilizing a source oil, such as a specific variety of high-oleic sunflower seed oil (90 % oleic acid Table 2), and rapeseed oil that inherently contains high content of oleic acid, the resulting product of the subsequent reaction (e.g., hydrogenation or transesterification) achieves a sufficient level of purity without requiring further refinement.
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/JAFAR F PARSA/ Primary Examiner, Art Unit 1692