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
Examiner acknowledges Applicant’s response filed 02 March 2026 containing remarks and amendments to the claims.
Claims 1-2 and 5-21 are pending.
The previous rejections have been updated as necessitated by amendments to the claims. The updated rejections follow.
Claim Objections
Applicant is advised that should claim 5 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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 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 1, 6-8 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murray (US 2019/0016973).
Regarding claims 1 and 17, Murray teaches that used oil (claimed waste lubricating oil fraction) is sent to pretreatment steps; followed by hydrotreatment at temperatures of 500-700°F (260-371°C) and 600-1500 psig (40-100 atm) [0010-0012]. Examiner considers the Murray hydrotreatment to read on the claimed “hydrocracking”, since Applicant’s instant specification uses the same conditions as Murray (see instant spec page 7, lines 17-25). Murray teaches the pretreatment comprises solvent extraction [0011].
Murray teaches hydrocarbons are blended with used oil feedstocks and processed together through solvent extraction, followed by hydrotreatment (hydrocracking, see claim 1 description) [0060].
Regarding claim 6, Murray fractionates the products into a plurality of fractions [0061].
Regarding claims 7-8, Murray teaches fractionation of the hydrotreated product into naphtha, kerosene, diesel, and heavier fractions (see figure 4).
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Murray (US 2019/0016973).
Regarding claim 2, Murray teaches the same used oil/refined oil feedstock as claimed. Therefore, it is expected that the feed of Murray would have the same or similar properties as claimed, since it is the same feedstock. Alternatively, it would have been obvious to the person having ordinary skill in the art to have appropriately selected a feedstock having appropriate properties, for the benefit of obtaining the desired products.
Claims 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (US 2019/0016973) alone, or alternatively in view of El-Sawy (Co-hydroprocessing and hydrocracking of alternative feed mixture).
Regarding claims 5 and 18, Murray teaches using blends of used oil feed with conventional feedstocks [0060]. Examiner notes that it would have been obvious to the person having ordinary skill in the art to have appropriately selected the amount of each component, based off of availability and economics.
Alternatively, El-Sawy teaches 10% waste lubricating oil feedstock with the remainder of other hydrocarbons (see table 3, mix 3).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate feedstock ratios, such as those by El-Sawy, in order to obtain the desired products.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (US 2019/0016973) in view of Smilski (US 3,328,287).
Regarding claims 9-11, Murray teaches the limitations of claim 6, as discussed above. Murray sends lube hydrocracked products to catalytic dewaxing and hydro finishing (see figure 1).
Further, Smilski teaches fractionation of hydrocracker bottoms to produce heavy fraction, sent to dewaxing step (see columns 5-7 and figure).
Therefore, it would have been obvious to the person having ordinary skill in the art to have used the Smilksi fractionation to obtain the desired fraction prior to dewaxing steps. Further, it would have been obvious to the person having ordinary skill in the art to have blended any similar waste lubricant derived fraction in any appropriate amount to be treated together, as disclosed by the prior art, if they are known for the same purpose. In this regard, Applicant appears to simply duplicate the feed to the dewaxing. Examiner notes that the claims have not specified what the properties of the “separate waste lubricant-derived oil” are.
Regarding claim 12, Murray teaches hydrofinishing catalytic dewaxed product is conventional (figure 1).
Therefore, it would have been obvious to the person having ordinary skill in the art to have applied conventional hydrofinishing steps, in order to achieve the desired products.
Regarding claim 13, the previous combination teaches the limitations as applied to claims 1, and 9-12.
Regarding claim 14, Murray teaches the same used oil/refined oil feedstock as claimed. Therefore, it is expected that the feed of Murray would have the same or similar properties as claimed, since it is the same feedstock. Alternatively, it would have been obvious to the person having ordinary skill in the art to have appropriately selected a feedstock having appropriate properties, for the benefit of obtaining the desired products.
Regarding claim 15, Murray teaches used oil feed is re refined by vacuum distillation prior to solvent deasphalting [0010-0011]. It is further expected that the Murray feed would have the same or similar properties, since it is produced by the same pretreatment steps as claimed.
Claims 16 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (US 2019/0016973) in view of Smilski (US 3,328,287) as applied to claims 1 and 12 above, and further in view of Carroll (US 6,569,312).
Regarding claims 16 and 20-21, the previous combination teaches the limitations of claim 1 above.
The previous combination does not explicitly disclose the specific solvent used in the solvent extraction step, the claimed distillation separation or hydrofinishing.
However, Carroll teaches that solvent extraction may be performed to lubricating oil range feedstocks to remove asphaltenes and aromatics, prior to further refining steps. Carroll uses furfural, nmp, and phenol for extraction of aromatics (column 1, lines 42-57). Carroll also teaches it is conventional to perform distillation between hydrocracking and dewaxing, and using hydro finishing after dewaxing steps (column 1, lines 10-20).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected the appropriate solvent, distillation cut off point, and perform the appropriate steps including hydrofinishing, in order to obtain the desired upgraded lubricant products having the desired properties, including reduced aromatics and other contaminants. Examiner additionally notes that it is expected that the same contaminants are removed in the hydrofinishing step of the prior art, since the same step is performed to the same dewaxed feed. It is not seen where Applicant has distinguished the product properties in this regard.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Murray (US 2019/0016973) as evidenced by Chemical Book (Lubricating oils, petroleum, used, non catalytically refined) and Robinson (Hydrotreating and Hydrocracking Fundamentals).
Regarding claim 20, Murray teaches the same used lubricating oil feeds and the same hydro processing at temperatures of 500-700°F (260-371°C) and 600-1500 psig (40-100 atm) [0010-0012]. Examiner considers the Murray conditions to read on the claimed “hydrocracking”, since Applicant’s instant specification uses the same conditions as Murray (see instant spec page 7, lines 17-25).
Examiner notes that the feeds of Murray are expected to contain the same C30+ components, since they are the same used oils as identified. Examiner notes Chemical Book as evidence the used lubricating oils consist predominantly of C20-C50 components.
Further, it is expected that the same or similar cracking would occur since the same process steps are performed at the same temperatures and pressures as identified in the instant specification. Additionally, Examiner notes Robinson which teaches that the boundaries between hydrotreating and hydrocracking are blurry and the hydrocracking occurs in many hydrotreaters (page 182).
Response to Arguments
Applicant's arguments filed 02 March 2026 have been fully considered but they are not persuasive.
Examiner considers Applicant’s arguments to be:
The claims require “hydrocracking” which differs from “hydrotreatment”.
Regarding Applicant’s argument, Examiner notes that as applied in the rejections, Examiner considers the Murray hydrotreatment to read on the claimed “hydrocracking”, since Applicant’s instant specification uses the same conditions as Murray (see instant spec page 7, lines 17-25). It is not seen where Applicant has distinguished the process steps in this regard, since Murray teaches the same feedstocks and temperature and pressures as used in the Applicant’s instant specification. Thus, it is expected that hydrocracking would also occur in the Murray hydrotreatment reactor. Examiner inquires if there is any other difference in the process step or condition that may be amended into the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim (US 2011/0089080) – teaches solvent deasphalting, hydrotreatment, catalytic dewaxing, hydrofinishing, and fractionation steps to produce lubricating oils
Brownawell (US 3,639,229) – teaches sending used oil to solvent extraction followed by hydrogenation
Somogyl (US 3,346,483) - teaches used lubricating oil pretreatment, and hydrogenation
Goyeheneix (US 2022/0177785) – teaches blending used lube oil with pyrolysis oil, pretreatment, solvent extraction, and hydroprocessing
Jeon (US 11,873,456) and Jeon (US 12,421,462) – related cases similarly treat waste lubricant feedstocks, but do not require hydrocracking steps as claimed
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 MICHELLE STEIN whose telephone number is (571)270-1680. The examiner can normally be reached Monday-Friday 8:30 AM-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE STEIN/Primary Examiner, Art Unit 1771
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