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 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3138893 A1.
EP ’893 teaches:
Fatty acid ester compositions formed by esterifying alcohols or polyols with C4–C12 carboxylic acids, including n-nonanoic acid, using standard esterification conditions (EP ’893, ¶¶ 0004–0012; Example 1).
Fatty acid esters exhibiting excellent low-temperature properties, including pour points between −50 °C and −62 °C (EP ’893, ¶¶ 0017–0038; Table 3).
Ester compositions formulated for low crystallization onset, cold-flow performance, fuel and dielectric performance, and safe flash/fire handling properties (EP ’893, ¶¶ 0002–0038; Table 3).
Thus, EP ’893 teaches all structural and processing limitations of claims 1 and 10 except one limitation: A numerical cloud-point range of −35 °C to −70 °C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process EP’893 by producing a ester having a cloud-point range of −35 °C to −70 °C because it was well known in the biodiesel, jet fuel, and bio-kerosene art that:
Low-temperature fuel quality is routinely characterized by cloud point, pour point, cold-filter plugging point, and crystallization onset.
Cloud point is routinely determined using ASTM D2500.
Whenever esters exhibit exceptionally low pour-point behavior (e.g., < −50 °C), practitioners routinely measure cloud point to assess suitability for winter diesel, aviation fuel, or cold-flow service.
A skilled artisan, having EP ’893’s esters with extremely low pour points (−50 °C to −62 °C) and expressly motivated to improve crystallization resistance and low-temperature operability, would have been explicitly motivated to measure cloud point using standard ASTM fuel testing, and any such experimental cloud-point result would predictably fall within the claimed −35 °C to −70 °C range, since cloud point is earlier in the same crystallization envelope as pour point, and therefore must fall above, but near, the extremely low pour point already disclosed by EP ’893. Determining cloud point is merely routine optimization and empirical characterization, not inventive ingenuity, consistent with KSR Int’l v. Teleflex.
Regarding claims 2 and 10, EP ’893 teaches esters with flash/fire points far above 90 °C, including Cleveland open-cup fire points ≥ 280 °C and PMCC flash values above 200 °C (Table 3), rendering the claimed ≥ 90 °C inherently predictable and obvious for fatty acid esters used in fuel-type or dielectric service.
Regarding claims 3–4, It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of EP EP’893 by utilizing ozonolysis of oleic acid to nonanoic acid because it has been widely known and routinely used in biodiesel, lubricant, feedstock, and industrial fatty acid chemistry for decades. Using oxidation or ozonolysis to source nonanoic acid is a routine precursor-generation method, not a non-obvious feature.
Regarding Claim 5, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of EP’893 by utilizing Bio-alcohols from syngas fermentation or Fischer–Tropsch because such sources were well-established renewable fuel pathways at the time. Selecting renewable alcohol origin (syngas vs fermentation vs conventional sourcing) is merely a supply-chain choice, not a structural limitation of the ester molecule.
Regarding claims 6–9 and 11–12, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of EP’893 by utilizing an alcohol as claimed because EP ’893 already teaches esterification using linear, branched, or mixed C4–C12 acids and polyol alcohols, and the fuel art was well aware that branched alcohols and chain-length variation predictably modulate cold-flow behavior. Selecting n-alcohols vs iso-alcohols in the C1–C12 or C1–6 range constitutes routine structural tuning, motivated by predictable cold-flow optimization.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive.
Biofuel limitation. Applicant argues EP ’893 does not disclose a “biofuel.” However, the claims recite only esterification of nonanoic acid with alcohol(s) to form a fatty acid ester. EP ’893 teaches the same esterification chemistry forming fatty acid esters including nonanoate-containing esters . The recitation “biofuel” is an intended use and does not structurally distinguish the claimed method or product. Thus, this argument is not persuasive.
Cloud point / result-effective variable. Applicant argues cloud point is not disclosed and cannot be optimized. The rejection does not rely on express disclosure of cloud point. EP ’893 teaches fatty acid esters with extremely low-temperature crystallization behavior (pour point −50 °C to −62 °C) . A person of ordinary skill would have found it obvious to measure and optimize cloud point, a standard ASTM low-temperature property, for such esters as part of routine characterization of crystallization behavior. No evidence of criticality or unexpected results has been provided for the claimed cloud-point range. Thus, the argument is not persuasive.
Non-analogous art. Applicant argues EP ’893 is directed to dielectric fluids and is non-analogous. However, both EP ’893 and the claimed invention concern fatty acid ester compositions exhibiting low-temperature operability (crystallization behavior). Therefore, EP ’893 is reasonably pertinent to the problem addressed and constitutes analogous art. This argument is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771