DETAILED ACTION
Response to Amendment
Examiner acknowledges Applicant’s response filed 26 November 2025 containing amendments to the claims and remarks.
Claims 1-11, 13-18, and 20-22 are pending. Claims 21 and 22 are newly added.
The previous rejection of claims 1, 2, 4-8, 10, 11, 13, 15, 18, and 20 under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendments to the claims. The previous rejection of claims 3, 9, 14, 16, and 17 under 35 U.S.C. 103 is maintained.
New grounds for rejection of claims 1, 2, 4-8, 10, 11, 13, 15, 18, and 20, necessitated by Applicant’s amendments to the claims, is entered under 35 U.S.C. 103. Finally, newly added claims 21 and 22 are indicated allowable. The rejections follow.
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 1-11, 13-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Germanaud (US 2018/0148653).
With respect to claims 1, 2, 4-6, 13, and 15, Germanaud discloses a hydrocarbon fluid comprising over 90% isoparaffins and less than 20 ppm aromatics (see Germanaud, paragraphs [0023] and [0074]), the fluid having an initial boiling point and a final boiling point in the range of 100°C to 400°C (see Germanaud, paragraph [0023]) and a flash point which may be between 62°C and 90°C (see Germanaud, paragraph [0088]), the hydrocarbon having a biodegradability measured at 28 days greater than or equal to 60% according to OECD 306 (see Germanaud, paragraphs [0023] and [0031]). The fluid comprises carbon atoms in the range of 6 to 30 (see Germanaud, paragraph [0072]) and less than 50 ppm naphthenes (see Germanaud, paragraph [0027]). The fluid may have a pour point of -40°C or lower (see Germanaud, paragraph [0089]).
With respect to claim 20, Germanaud discloses wherein the hydrocarbon fluid may be used as a solvent, e.g., in a water treatment composition (see Germanaud, paragraph [0033]).
With respect to claims 7, 8, 10, 11, and 18, Germanaud discloses a method of making a hydrocarbon fluid as described above, the method comprising catalytic hydrogenation at a temperature in the range of 80°C and 180°C (see Germanaud, paragraphs [0050]-[0052]), and pressure in the range of 50 bar to 160 bar (see Germanaud, paragraphs [0050]-[0052]). The starting feed may be a biosourced syngas (see Germanaud, paragraph [0001]), and the method may further include hydroconversion, hydrocracking, and isomerization along with cracking-decarboxylation which may be followed by fractionation/distillation for recovery of the feed to hydrogenation step (see Germanaud, paragraphs [0040]-[0045]).
With respect to claims 3, 9, 14, 16, and 17, Germanaud includes overlapping disclosure for limitations related to relative hydrocarbon fraction constituent content; boiling range; and flash point (see discussion supra at paragraphs 8-10). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Allowable Subject Matter
Claims 21 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments filed 26 November 2025 have been fully considered but they are not persuasive.
Examiner understands Applicant’s arguments to be:
Germanaud does not teach or suggest embodiments having both a flash point lower than 90°C and a pour point of less than -50°C.
Germanaud teaches improved fluids used for offshore or onshore oilfield applications having a flash point of more than 90°C and a pour point of -40°C or lower.
No single embodiment of Germanaud discloses both a flash point lower than 90°C and a pour point of less than -50°C. Germanaud only discloses improved fluids having a flash point and a pour point in combination with one another when the flash point is more than 90°C, not less than 90°C as claimed.
With respect to Applicant’s first, second, and third arguments, Examiner notes that the only remaining rejections are under 35 U.S.C. 103 and not 35 U.S.C. 102. Moreover, the broadest claim at issue (claim 1) only requires a pour point of -50°C (see claim 1) (“said hydrocarbon fluid having a pour point of less than or equal to -50°C”) (emphasis added). Germanaud states that “[f]luids used for offshore and on-shore applications” may have “a flash value of usually more than 90°C” and “a pour point of -40°C or lower” (see Germanaud, paragraph [0089]) (emphasis added). Examiner thus submits that Germanaud discloses or, at the very least, suggests hydrocarbon fluids having the same attributes as the rejected claims. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Finally, it is noted that obviousness does not require absolute predictability, only a reasonable expectation of success. In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
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 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