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 .
Response to Amendment
Applicant’s response filed 11/13/2025 cancelled claims 1-7 and added new claims 8-19. Applicant’s amendments overcome the 35 USC 112/101 rejection from the office action mailed 5/14/2025; therefore, these rejections are withdrawn. Applicant’s amendments in light of their arguments are persuasive in overcoming the 35 USC 102 rejections over Samsodin, Kian, and Kim from the office action mailed 5/14/2025; therefore, these rejections are withdrawn. New grounds of rejection necessitated by applicant’s amendments are set forth below.
Claim Rejections - 35 USC § 102/103
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.
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 8-14 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Malaysian Patent No. MY140833A (hereinafter referred to as MY ‘833).
Regarding claims 8-14 and 17-19, MY ‘833 discloses biodegradable polyol esters derived from branched polyols have been developed for various biodegradable lubricant applications. These fluids have excellent thermal stability, better lubricity, low volatility and resist hydrolysis better than other esters. Palm oil methyl esters were found to be suitable in synthesis of polyol ester that is suitable for used as lubricant base stock in two-stroke engine lubricant and other biodegradable lubricant applications. Palm oil methyl ester (POME) and palm kernel methyl ester (PKOME) were found suitably used in the transesterification of palm oil methyl esters into trimethylolpropane esters in the presence of sodium methoxide catalyst (as recited in claim 8 and reads on claims 9-14 and 17-19) (see Abstract and Page 2/L. 13-15 and see Claims of MY ‘833).
Claim Rejections - 35 USC § 103
Claims 8-9 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Brauer et al., US Patent No. 5,348,669 (hereinafter referred to as Brauer).
Regarding claims 15-16, Brauer discloses castor oil is a naturally occurring trigylceride of ricinoleic acid. Castor oil polyol esters can be made by methods well known in the art, e.g., by direct esterification of ricinoleic acid with alcohols, such as, propylene glycol (as recited in claims 15-16).
The difference between Bauer and claims 8 and 15 is that Bauer does not explicitly disclose the reaction taking place in the presence of a catalyst. However, it is well-known in the art at the time of the invention that direct esterification reactions include the use of catalysts, see above.
Response to Arguments
Applicant’s arguments filed 11/13/2025 regarding claim 8-19 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
It is the position of the examiner that the references discussed above adequately read on the claims as instantly recited.
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 VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771