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 .
Election/Restrictions
Applicant’s election of Invention II (e.g., claims 18-20) and Species II (e.g., an oil) in the reply filed on 12/09/2025 are acknowledged. Invention I (e.g., claims 1-17) are cancelled. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Further, the examiner notes that applicant states that Species I (e.g., an ester of an fatty acid) and species II (e.g., an oil) are overlapping since some esters are oils. Such an argument is found persuasive thus the requirement for election of species issued 10/21/2025 is withdrawn.
Claim status
The examiner acknowledged the amendment made to the claims on 12/09/2025.
Claims 18-19 and 21-35 are pending in the application. Claims 1-17 and 20 are currently cancelled. Claims 18-19 are currently amended. Claims 21-35 are newly presented. Claims 18-19 and 21-35 are hereby examined on the merits.
Claim Objections
Claim 18 is objected to because of the following informalities: second line below the Formula (I) structure, “-OH, alkyl, aryl, alkyl aryl and aryl alkyl, and -NR8R9” should read “-OH, alkyl, aryl, alkyl aryl, aryl alkyl, and -NR8R9”; third line below the Formula (I) structure, “and R6/R7 as described herein” should read “and R6 and R7 together”; fourth line below the Formula (I) structure, a semicolon should be inserted between “one or more ring structures” and “wherein at least”; and seventh line below the Formula (I) structure, “separated from the N atom by one or more carbon atoms” should read “separated from the N atom that links with R6 and R7 by one or more carbon atoms”. Appropriate correction is required.
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 29, 30, 31 and 33 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.
Claim 29 recites that “wherein the one or more hydroxyl group(s) are separated from the N atom by two or more carbon atoms, and optionally by two carbon atoms”. It is unclear how the phrase “and optionally by two carbon atoms” limits the claim, given that the claim already recites “two or more carbon atoms” immediately preceding the phrase. Appropriate correction is required.
Claim 30 recites a formula - (CR102)q(CHOH)(CH2)zR11, in which q and z could be a covalent bond (e.g., (-)). One of ordinary skill in the art is not apprised the scope of the claim because q or z appears to be the subscript of the formula. Does it means that q or z can be zero? Claim 31 or claim 33 is rejected for the same reason. Further, the phrase "preferably" as recited in claims 30 and 33 renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate correction is required.
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 18, 19, 22, 23, and 27-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dhawan US Patent Application Publication No. 2020/0339503 A1 (cited in the IDS submitted on 12/20/2023, hereinafter referred to as Dhawan).
It is noted that Dhawan is from the same applicant as the claimed invention, and Dhawan cites an oxygenated aminophenol that is the same as the Formula (I) of the claimed invention.
Regarding claims 18, 22, 23, and 27-35, Dhawan teaches a method for inhibiting oxidation of a composition (e.g., a gasoline product, a lubricant, or an oil- or fat- based food such as vegetable oil and butter, [0017; 0099; 0104; 0118-0119]), the method comprising adding an aminophenol antioxidant that is defined the same as the Formula (I) or those species as instant claims 27-35 ([0009-0012; 0046-0047; 0051-0052; 0054]). A gasoline product or a lubricant is known to contain a natural oil (e.g., hydrocarbon, see [0005; 0017; 0104]), and oil- or fat- based food such as vegetable oil and butter is known to contain natural oil (e.g., triglyceride, which reads on the limitation about an ester of a vegetable-or animal- fatty acid as recited in claim 23).
Regarding claim 19, Dhawan teaches adding 250-500 ppm the aminophenol antioxidant to the gasoline product (0109).
Claims 18, 19, 21, 23, 24, 25, 26, 27, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamane JP 2011256314 A (Application number JP2010133165A, English translation relied upon for reference, hereinafter referred to Yamane).
Regarding claims 18, 21, 23, 24, 25, 26, 27, 28 and 29, Yamane teaches a method of inhibiting oxidation of a composition (e.g., a biodiesel, which reads on the bio-based fuel of claim 21), the method comprising adding a diphenylamine compound having a chemical formula (I) ([0012; 0009]). Specifically, Yamane teaches that the diphenylamine compound is 3,3′-dihydroxydiphenylamine, 4,4′-dihydroxydiphenylamine, and 2,4-dihydroxydiphenylamine ([0025]), each of which reads on Formula (I) of instant claims 18, 27 and 29. Further, 4,4′-dihydroxydiphenylamine or 2,4-dihydroxydiphenylamine reads on claim 28.
Further, Yamane teaches that the biodiesel contains a fatty acid alkyl ester such as a fatty acid alkyl ester ([0031; 0041]), and such an ester is obtained by reacting a vegetable oil (e.g., rapeseed oil, soybean oil and palm oil, etc.) or an animal oil (e.g., beef tallow, swine oil, fish oil, etc.) with an alcohol such as methanol ([0032-0034]), which necessarily results in a fatty acid methyl ester, or more specifically a polyunsaturated fatty acid methyl ester, given that one or more of the aforementioned vegetable oils contain a polyunsaturated fatty acid such as linoleic acid and linolenic acid.
Regarding claim 19, Yamane teaches adding 800-1200 ppm the diphenylamine compound to the biodiesel ([0036]).
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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Dhawan as applied to claim 18 above.
Regarding claim 19, Dhawan teaches adding 1-500 ppm to food ([0120\). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791