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 status
The examiner acknowledged the amendment made to the claims on 06/09/2026.
Claims 18-19 and 21-35 are pending in the application. Claims 18-19 are currently amended. Claims 21-35 are newly presented. Claims 18-19 and 21-35 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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 23-26 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 23 depends from claim 18 and recites that the composition includes an ester of a vegetable fatty acid or an animal fatty acid. It is unclear whether the ester recited in claim 23 is the fatty acid methyl ester of claim 18, or is an additional ester in the composition of claim 18. Claims 24-25 are rejected for the same reason. Claim 26 is rejected because it depends from claim 25. Clarification 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, 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 methyl ester ([0031; 0041]), and such an ester is obtained from the transesterification of 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.
Claims 18, ajnd 22 -35 rejected under 35 U.S.C. 103 as being unpatentable over of Afifah, “Biolubricant production from palm stearin through enzymatic transesterification method”, Biochemical Engineering Journal 148 (2019) 178–184 (hereinafter referred to as Afifah) in view of Miller US Patent Application Publication No. 2009/0029427 A1 (hereinafter referred to as Miller) and Dhawan US Patent Application Publication No. 2020/0339503 A1 (cited in the IDS submitted on 12/20/2023, hereinafter referred to as Dhawan).
Regarding claims 18 and 22-35, Afifah teaches a lubricant comprising fatty acid methyl ester (e.g., palm stearin methyl ester) that is obtained from transesterification of one other fatty acid ester (e.g. palm stearin, which is known to contain polyunsaturated fat) (Abstract; page 179, section 2.2; page 183, “Conclusion”).
Afifah is silent regarding adding an aminophenol compound of Formula (I) to the lubricant to inhibit the oxidation.
Miller teaches that fatty acid methyl esters generally have poor oxidation stability (0003).
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]).
Both Afifah and Miller are directed to fatty acid methyl esters. Both Afifah and Dhawan are directed to lubricants. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Afifah by adding the aminophenol antioxidant of Dhawan to the lubricant of Afifah for inhibiting the oxidation of the lubricant of Afifah. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because where Afifah in view of Miller teaches that a fatty acid methyl ester-based lubricant might have oxidation stability issue, Dhawan teaches that the aminophenol antioxidant is able to inhibit the oxidation of a lubricant.
Where Afifah in view of Miller and Dhawan teaches adding the same aminophenol compound to a fatty acid methyl ester as the claimed invention, it logically follows that such a aminophenol could inhibit the oxidation of the fatty acid methyl ester. See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered and the examiner’s response is shown below:
The 35 USC 112(b) rejection is withdrawn in view of the amendments made to the claims.
The 35 USC 102 rejection over Dhawan is withdrawn in view of the amendment made to claim 18. Further, the argument on page 10 of the Remark regarding Dhawan failing to teach FAME is considered but found moot over the new ground of rejection over Afifah in view of Miller and Dhawan as set forth in the instant office action.
Applicant asserts unexpected result in the para. that bridges pages 10 and 11. In particular, applicant submits that the experimental result in the instant specification has demonstrated the compound of Formula (I) provides surprisingly effective oxidative stabilization for FAME.
The assertion is considered. It is noted that Examples 3-7 of the instant specification has tested the oxidation inhibition of two aminophenol antioxidants represented by Formula (I) (e.g., AO-1 and AO-2) on FAME. However, it is questionable whether the two compounds could enable a much broader formula (I). In other words, it does not appear that the showing is commensurate in scope with the claims. Further, the attention of the applicant is drawn to MPEP 716.02 (b), which states that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. To this end, it is noted that applicant has not shed light on why they think it is surprising to observe that AO-1 and AO-2 has antioxidant capability on a FAME. Does one skilled artisan expect they do not? Note that Dhawan as cited actually teaches that the aminophenol compound of Formula (I) are known antioxidants.
Applicant argues on pages 11-12 of the Remarks that Yamane does not disclose a compound of Formula (I). In particular, applicant argues that where Yamane teaches two separate phenyl ring connected by the -NH- bridge, Formula (I) of claim 18 has only phenyl ring that the nitrogen is bonded to.
The argument is considered but found unpersuasive. Applicant appears to overlook the claim language that at least one of the R6/R7 bonded to the N atom is “a carbon-containing group including one or more hydroxyl group(s) separated from the N atom by one or more carbon atoms”, which does not exclude a phenyl group that has a hydroxy group thereon (e.g., phenol). It just happens that each of 3,3′-dihydroxydiphenylamine, 4,4′-dihydroxydiphenylamine, and 2,4-dihydroxydiphenylamine as disclosed by Yamane contains a carbon-containing group including a hydroxyl group (e.g., phenol) which is separated from the N atom by one or more carbon atoms.
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 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
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