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
Applicants’ response filed 11/3/2025 amended claims 21 and 29, and cancelled claims 27-28. Applicants’ amendments overcome the claim objection from the office action mailed 8/1/2025; therefore, this objection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejection over Krull in view of Maehling from the office action mailed 8/1/2025; therefore, this rejection is maintained below.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. Claims 21 and 29-34 are rejected under 35 U.S.C. 103 as being unpatentable over Krull, US Patent Application Publication No. 2005/0126070 (hereinafter referred to as Krull) in view of Maehling et al., US Patent Application Publication No. 2009/0307964 (hereinafter referred to as Maehling).
Regarding claims 21 and 29-34, Krull discloses a fuel composition comprising 70% by volume diesel oil (mineral diesel as recited in claim 21) (see Abstract), 30% by volume of a fatty acid methyl ester (renewable diesel as recited in claim 21) (Para. [0047] and see Table 8), 0.001 to 5 wt% of an ethylene copolymer further comprising vinyl acetate and vinyl neodecanoate or 2-ethylhexyl acrylate (terpolymer as recited in “second additive” component (ii) of claim 1 and reads on claims 30-33) (Para. [0049]) and [0099]-[0100] and see Table 8/Examples 14-18 and 21), a reaction product of a copolymer composed of C14/C16 olefin and maleic anhydride with 2 equivalents of secondary tallow, and a reaction product of phthalic anhydride with 2 equivalents of di(hydrogenated tallow fat amine) (see Claims 1, 3, 14 and 19 of Krull).
Krull discloses all the limitations discussed above but does not explicitly disclose the first additive (i) of claim 1.
Maehling discloses an additive concentrate and composition for a diesel and renewable biodiesel fuels (Para. [0146]) comprising solubilizers for homogenizing additive concentrates (see Abstract). Maehling, in Example 6 discloses an additive composition in naphtha comprising solubilizer which is a monoamide formed by reacting maleic acid and tridecylamine, 1 to 50 wt% of a cold flow improver which is the reaction product of 1 mol of ethylenediamine tetraacetic acid and 4 mol of hydrogenated ditallow fat amine (as recited in component (I)(a) of claim 1 and reads on claims 27-27 and 34) (Para. [0164]-[0174]), a cold flow improver which is an ethylene-vinyl acetate-acrylate copolymer, a booster which is an oleic acid-diethylenetriamine reaction product (as recited in claim 21). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the additive compounds of Maehling in the composition of Krull in order to enhance the solubility and cold flow properties of the composition.
Krull/ Maehling do not disclose the LTFT depression of at least 2°C as recited in claim 1, but as the references disclose the same composition as the present application it is highly indicative that it will have the same parameters as exemplified in the application.
Response to Arguments
6. Applicants’ response filed 11/3/2025 regarding claims 21 and 29-34 have been fully considered and are not persuasive.
Applicants argue that the combination of Krull and Maehling do not explicitly disclose the limitation “a method of improving the performance in an LTFT test of a diesel fuel composition”; as recited in instant, independent claim 21. This argument is not persuasive in overcoming the obviousness rejection set forth above. It is the position of the examiner that s the combination of references explicitly discloses all the compound limitations of instant, independent claim 21 that the modified composition would inherently read on the limitation of claim 21.
It is noted that a prima facie case of either anticipation or obviousness has been established when the reference discloses all the limitations of a claim (in this case, hydrogenating the polyalphaolefin to a level wherein the required level of Bromine Index is achieved) except for a property (in the present case, RBOT level or Lube Oil Oxidator level) and the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103.
Applicants also argue that the combination of references do not disclose all three components of the “first additive” as recited in the instant, independent claim. This argument is also not persuasive. From the discussion above it is evident that the combination of references teach all three compounds enumerated as “first additive” as recited in claim 21.
Applicants further argue that the combination of references do not teach the weight ratio of first additive to second additive ranging between 1:2 to 1:10 as recited in instant, independent claim 21. This argument is also not persuasive. As discussed above Maehling discloses a broad concentration of 1 to 50 wt% of cold flow improving additives and then goes on to disclose additives reading on components (b) and (c) of the “first additive”. This combined with the concentration of 0.001 to 5 wt% of an ethylene copolymer further comprising vinyl acetate and vinyl neodecanoate or 2-ethylhexyl acrylate as disclosed in Krull clearly encompasses and overlaps the range recited in claim 21. See MPEP 2144.05(I): “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).”
Finally, applicants argue that the instant application demonstrates unexpected results and as such overcomes the obviousness rejection set forth. This argument is not persuasive. In order to demonstrate unexpected results applicants must fulfill two criterions: 1) applicants must compare their formulations against the closest prior art, and 2) the claims must be commensurate in scope with the data provided.
Regarding the first criteria – applicants have not compared their formulations against the closest prior art, nor shown that the comparative examples from the instant specification adequately represent the closest prior art.
Regarding the second criteria – the claims are not commensurate in scope with the data provided. For example, the example formulations from the instant specification require very specific “first” and “second” additive compounds present in very narrow concentration which are broadly recited in the instant claims. For these reasons applicants have not fulfilled this criterion in the unexpected results analysis.
Conclusion
7. 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 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