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
This is the response to amendment filed 03/02/2026 for application 18669928.
Claims 171, 175, 177-178, 181, 189, 193, 196, 201, 219-225, and 244-246 are currently pending and have been fully considered.
Claims 1-170, 172-174, 176, 179-180, 182-188, 190-192, 194-195, 197-200, 202-218, and 226-243 are cancelled.
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.
Claim(s) 171, 175, 177-178, 181, 189, 193, 196, 201, 219-225, and 244-246 is/are rejected under 35 U.S.C. 103 as being unpatentable over MDLELENI (USPGPUB 2019/0194559).
MDLELENI teaches an aviation turbine fuel. MDLELENI teaches in paragraph 41 that the aviation turbine fuel meets the detailed requirements as per ASTM D7566 for Aviation Turbine Fuels Containing Synthesized Hydrocarbons as a Synthetic Paraffinic Kerosene (SPK).
Regarding claim 171, MDLELENI teaches in paragraph 40 a process that comprises COD processing that produces a distillate product. The distillate product can then be hydrotreated to form a modified distillate product that comprises mostly of the following hydrocarbon types; n-paraffins ( < 10 % ) , iso-paraffins ( 50 to 80 % ) , cyclo-paraffins ( 5 to 30 % ) and mono aromatics ( 3 to 15 % )
The SPK fuel comprises a fraction of the modified distillate from the hydrotreater.
The SPK fuel is also taught in paragraph 35 to be comprised mostly of iso-paraffins & cyclo-paraffins and mono-aromatic species (single ring alkyl benzenes).
Table 1 lists the composition for SPK.
The SPK fuel teaches paraffins and comprises n-paraffins and iso-paraffins from the modified distillate product.
The SPK lists a combination of mono cyclo-paraffins and di cyclo-paraffins of 21.6 %. (about 25 wt % to about 60 wt% of cyclo-paraffins)
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).
The SPK fuel is taught in paragraph 35 to comprise mono-aromatic species (single ring alkyl benzenes)
The SPK lists what saturates are present. The SPK comprise 8.3 % alkyl benzenes and 3.2 % (Benzo cylo paraffins) (0 wt% to about 5 wt% of tetralins and indanes) and 0% naphthalenes.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
MDLELENI teaches in paragraph 84 that the fuels produced should be free of poly-aromatic hydrocarbons. (less than about 1 wt% of polycyclic aromatics)
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The SPK fuel which comprises a fraction of the modified distillate would comprise an amount of iso-paraffins from the modified distillate.
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (about 5 wt% to about 40 wt% of iso-paraffins)
Alternatively, the modified distillate product that comprises mostly of the following hydrocarbon types; n-paraffins ( < 10 % ) , iso-paraffins ( 50 to 80 % ) , cyclo-paraffins ( 5 to 30 % ) and mono aromatics ( 3 to 15 % ) may be considered the fuel composition. The modified distillate product is silent to the amount of polycyclic aromatics and would be expected to be essentially not present (0% of polycyclic aromatics)
The SPK fuel which comprises a fraction of the modified distillate would comprise an amount of iso-paraffins from the modified distillate.
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (about 5 wt% to about 40 wt% of iso-paraffins)
Applicant is reminded that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Regarding claim 246, MDLELENI teaches in paragraph 40 that distillate produced comprises mostly of the following hydrocarbon types; n-paraffins ( < 10 % ) , iso-paraffins ( 50 to 80 % ) , cyclo-paraffins ( 5 to 30 % )
Regarding claims 175, it would be obvious to one of ordinary skill in the art to employ only single ring alkyl benzenes as the mono-aromatic species in the SPK fuel.
The motivation to do so can be found in paragraph 45 of MDLELENI,
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties.
A side effect of maximizing single ring alkyl benzenes as mono aromatics is minimizing other compounds as part of the mono aromatics.
If single ring alkyl benzenes are the only type of compounds present as mono-aromatics, there would be no expectation of any tetralins nor indanes present.
Regarding claim 244, MDLELENI teaches in paragraph 40 that the modified distillate produced comprises mostly of the following hydrocarbon types; n-paraffins ( < 10 % )
The SPK fuel which comprises a fraction of the modified distillate would comprise an amount of n-paraffins from the modified distillate.
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (from about 5 wt% to about 50 wt% n-paraffins)
Regarding claims 189 and 244, MDLELENI teaches in paragraph 40 that the modified distillate produced comprises mostly of the following hydrocarbon types; iso-paraffins (50 to 80 %).
The SPK fuel which comprises a fraction of the modified distillate would comprise an amount of iso-paraffins from the modified distillate.
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (about 5 wt% or about 7 wt% or about 9 wt% or about 11 wt% or about 13 wt% or about 15 wt% or about 30% or about 35.7% of iso-paraffins)
Regarding claims 196 and 244, the total sulfur in the SPK is taught in Table 2 to be 0. (less than about 0.3 wt% sulfur)
Regarding claim 220-221, the total sulfur in the SPK is taught in Table 2 to be 0. (less than about 1 ppm of sulfur-containing impurities and essentially no sulfur-containing impurities)
Regarding claims 177-178 and 245, MDLELENI teaches in paragraph 84 that the fuels produced should be free of poly-aromatic hydrocarbons. (less than about 0.5 wt% of polycyclic aromatics as well as from 0 wt% to about 0.5 wt% [polycyclic aromatics)
Regarding claim 181, MDLELENI teach in table 1 that the SPK comprises 8.2 % alkyl benzenes and 3.2 % Benzo Cyclo paraffins. (from about 8 wt% to about 15 wt % monocyclic aromatics)
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 193, the total acidity of the fuel is taught in Table 2 to be 0.0002. (total acidity of less than about 0.10 mg KOH/g)
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 201, the fuel is taught in paragraph 36 to readily meet the requirements of the Standard Specification for Aviation Turbine Fuels Containing Synthesized Hydrocarbons (ASTM D7566) for Jet A and Jet A1 as well as the extended properties. Table 7 teaches the specifications for Jet A or Jet A-1 fuel and includes a density of 775-840 kg/m3.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 219, ASTM D1655 is the standard specification for aviation turbine fuels and the requirements for Jet A and Jet A-1 fuels.
MDLELENI teaches in paragraph 36 to readily meet the requirements of the Standard Specification for Aviation Turbine Fuels Containing Synthesized Hydrocarbons (ASTM D7566) for Jet A and Jet A1 as well as the extended properties. ASTM D 7566 is specifically for synthetic components but must also meet the specifications for ASTM D 1655.
Regarding claims 222-225, MDLELENI teaches in paragraph 24 that the process for producing the aviation turbine fuels from olefins derived from a high temperature Fischer-Tropsch process.
A Fischer-Tropsch process is a well-known process and converts synthesis gas into other compounds. Synthesis gas comprises carbon dioxide.
The Fischer-Tropsch process may be conver non-petroleum products.
It is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant’s arguments with respect to claim(s) 171, 175, 177-178, 181, 186, 189, 193, 196, 201, 219-225, and 244-246 have been considered but are not persuasive.
Applicant argues that MDLELENI teaches a fuel composition that containing iso-paraffins in about 50% to about 80% and that the present claims teach a composition with about 5 wt% to about 40wt%. Applicant states that the amount of iso-paraffins is important as it affects the density of the fuel composition.
This is not persuasive as the modified distillate contain about 50% to about 80% of iso-paraffins.
The SPK fuel may comprise a fraction of the modified distillate and would comprise a fraction of the amount of iso-paraffins from the modified distillate.
For example, MDLELENI teaches in paragraph 59 that modified distillate (ASH 1925 SPK) may be used neat or as a blend component for alternative aviation turbine fuel.
The distillate product as synthesized is highly branched. The degree of branching, type of hydrocarbons, especially aromatics heavily impact the H/C ratio on a molecular level that directly impacts the fuel properties. The amount of iso-paraffins is therefore a result-effective variable.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (about 5 wt% to about 40 wt% of iso-paraffins)
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.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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