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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 3, the claim recites numerous overlapping numerical alternatives for the C20–C32 content, including individual lower limits (“at least about 10 wt.%, or 15 wt.%, or 20 wt.%, or 30 wt.% ...”) together with numerous ranges (“about 10 to 80 wt.%, or 15 to 80 wt.%, or 20 to 80 wt.% ...”). It is unclear whether the individual numerical values represent separate minimum limitations, preferred values within the broader ranges, or alternative boundaries of the claimed subject matter. Consequently, the metes and bounds of the claimed C20–C32 content are unclear. See MPEP §2173.05(c), explaining that recitation of broader and narrower numerical ranges in the same claim may render the claim indefinite where the boundaries of the claim are not discernible.
Regarding claim 4, the claim recites that the C20+ content is “less than” numerous different values, alternatively “greater than” numerous different values, “or a combination thereof,” and thereafter recites numerous overlapping numerical ranges. The phrase “or a combination thereof” fails to identify which of the preceding upper and lower limits are to be combined and therefore fails to establish a definite numerical range. For example, it is unclear whether a recited lower limit is to be combined with any of the recited upper limits or only with a corresponding particular upper limit. The subsequent recitation of numerous overlapping ranges further fails to resolve the ambiguity as to the scope encompassed by “a combination thereof.” Accordingly, one of ordinary skill in the art cannot determine with reasonable certainty which combinations of the recited upper limits, lower limits, and ranges define the scope of claim 4. MPEP §2173.05(c). Regarding claim 5, the claim separately recites ranges for C16, C18, C20, C22, C22+, C24 and C24+ content, separated by semicolons, followed by the phrase “or a combination thereof.” It is unclear whether all of the preceding carbon-number limitations are required, whether any one of the limitations is sufficient, or which subset or subsets constitute the recited “combination thereof.” Accordingly, the claim fails to clearly define which carbon-number-content limitations must be satisfied and is indefinite. Although alternative limitations are not per se indefinite, they are indefinite when their manner of recitation leaves the scope uncertain. MPEP §2173.05(h). Regarding claim 5, the claim is indefinite because it includes limitations that biocomponents C20 - C24+ can be zero which is inconsistent with limitation in claim 1.
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, 7, 11, 13-24, and 27 are rejected under 35 U.S.C. §102(a)(1) as anticipated by Miller (US 2010/0018109 A1). Regarding claim 1, Miller teaches a process for producing renewable base oil and transportation fuel from a triglyceride-containing biologically derived vegetable oil by processing/hydrotreating the vegetable oil and subsequently isomerizing the resulting material over an isomerization catalyst. The resulting isomerized mixture comprises a base-oil component and at least 10 wt.% alkanes having a carbon number of C30 or greater (¶¶ [0040], [0047]–[0051], Figs. 1–2). Because C30+ material is necessarily C20+ material, Miller meets the claimed C20+ content of at least about 10 wt.%. Miller further teaches Pt or Pd hydroisomerization catalysts supported on SAPO-11, SM-3, SSZ-32, ZSM-23, or ZSM-22 (¶ [0049]). Regarding claims 6 and 7, Miller processes triglyceride-containing biologically derived vegetable oil and expressly exemplifies processing canola oil without a fossil-fuel component (¶¶ [0046], [0076]–[0077]). Thus, Miller's disclosed embodiment contains only renewable biocomponents and does not use a fossil-fuel component along with the biofeedstock. Regarding claim 11, Miller expressly produces a base oil/base-oil component from the renewable vegetable-oil feed (¶¶ [0040], [0052], [0076]–[0078]). Regarding claim 13, Miller expressly teaches that suitable hydroisomerization catalysts include Pt or Pd supported on SSZ-32, as well as SAPO-11, SM-3, ZSM-23 and ZSM-22 (¶ [0049]). Because claim 13 recites SSZ-32 as an alternative, this limitation is met. Regarding claims 14-16, Miller teaches NiMo and CoMo base-metal hydrotreating catalysts and noble-metal catalysts (¶ [0047]), and expressly teaches Pt and Pd hydroisomerization catalysts (¶ [0049]). Thus, Miller teaches the claimed Mo/Ni base metals and Pt/Pd precious metals. Regarding claim 17, Miller's Example expressly hydrotreated canola oil over NiMo/Al₂O₃ and passed the resulting material to a second reactor containing Pt/SM-3 isomerization catalyst, thereby teaching a hydrotreating section followed directly by a hydroisomerization section (¶¶ [0076]–[0077]). Regarding claim 18, Miller expressly produces both a diesel/middle-distillate product and a base-oil product from the renewable feed (¶¶ [0040], [0052]). Regarding claim 19, Miller's disclosed hydroconversion process employs hydrotreating followed by hydroisomerization and does not employ a hydrocracking catalyst to produce the renewable base oil. The expressly disclosed embodiment therefore meets the claimed absence of a hydrocracking catalyst. See ¶¶ [0047], [0049], [0076]–[0077]. Regarding claim 20, Miller's Example employs 610°F, 1000 psig, 5000 scf H₂/bbl and 1.66 h⁻¹ LHSV, each squarely within the claimed ranges of 300-800°F, 15-3000 psig, 0.1-20 h⁻¹ LHSV and 1000-10,000 scf H₂/bbl (¶ [0077]). Accordingly, the claimed operating conditions are expressly exemplified by Miller. Regarding claim 21, Miller expressly processes triglyceride-containing vegetable oils and recognizes vegetable oils as biological lipid sources comprising triglycerides/fatty-acid components (¶¶ [0040], [0046]–[0047]). Regarding claim 22, Miller expressly identifies canola and rapeseed oil as suitable biologically derived feedstocks (¶ [0046]). Canola/rapeseed is a Brassica feedstock belonging to the Brassicaceae family and therefore meets at least one of the alternatively claimed plant families. Regarding claims 23 and 24, Miller expressly identifies canola, soy, rapeseed, palm, peanut, jatropha, yellow grease and algae as suitable biologically derived oil sources (¶ [0046]). Thus, multiple alternatively recited feedstocks of claim 23 are expressly taught, and the expressly taught rapeseed and peanut oils independently meet claim 24. Regarding claim 27, Miller's Example produces, after further hydroisomerization, a renewable base oil having KV100 = 3.3 cSt, pour point = −10°C, and VI = 204, thereby satisfying the claimed pour point ≤−10°C, viscosity at 100°C ≥1.5, and VI ≥105 (¶ [0077]).
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 2-5, 8, 10 and 26 are rejected under 35 U.S.C. §103 as being unpatentable over Miller.
Regarding claims 2 and 3, Miller teaches an isomerized renewable product comprising at least 10 wt.% C30+ alkanes, and expressly teaches embodiments comprising at least 20 wt.% and 30 wt.% C30+ alkanes (¶ [0051]). Miller further teaches that the carbon-number composition of the resulting product is a function of the chain length of the carboxylic-acid components of the triglyceride-containing biologically derived feed (¶ [0074]).
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 Miller by selecting the renewable feed and processing conditions to provide at least about 10 wt.% of C30–C32 biocomponents, which fall within the claimed C20–C32 class, as a predictable selection of Miller's expressly taught C30+ product distribution.
Regarding claim 4, Miller expressly teaches renewable hydroisomerized compositions containing about 10, 20, and 30 wt.% C30+ alkanes (¶ [0051]), which are necessarily C20+ material and correspond to concentrations encompassed by the claimed broad C20+ ranges, including 10-80, 10-70, 10-60, 10-50, and 10-40 wt.%. Selection of a C20+ content within these overlapping ranges would have been an obvious selection of Miller's expressly contemplated product composition.
Regarding claim 5, Miller teaches biologically derived oils having different fatty-acid chain-length distributions and expressly teaches that the resulting hydrocarbon composition depends upon the chain length of the fatty-acid components of the feed (¶¶ [0046], [0074]). It would have been obvious to select the feedstock and hydroconversion conditions to provide C16, C18, C20, C22, C22+, C24 and/or C24+ components within the claimed broad 0–70 wt.% ranges as routine optimization of Miller's expressly recognized carbon-number distribution.
Regarding claim 8, Miller teaches sequential hydrotreating and hydroisomerization and further teaches that the initial processing and isomerization steps may be fully or partially integrated and carried out simultaneously (¶ [0071]). Thus, use of either a single-stage or two-stage arrangement would have been an obvious process configuration for carrying out Miller's hydroconversion reactions.
Regarding claim 10, Miller's Example expressly uses a first reactor containing NiMo/Al₂O₃ hydrotreating catalyst followed by a second reactor containing Pt/SM-3 isomerization catalyst (¶ [0077]). To the extent “single-stage” distinguishes this expressly disclosed series-reactor configuration, it would have been obvious to operate Miller's serial reactors as a common hydroconversion stage because the reactors perform the expressly taught consecutive hydrotreating and hydroisomerization operations on the same process stream.
Regarding claim 26, Miller does not expressly characterize its renewable base oil using the terminology “Group III+.” However, Miller expressly produces a renewable base oil having a VI of 151, and after additional hydroisomerization produces a base oil having VI 204, KV100 3.3 cSt, pour point −10°C, and cloud point −4°C (¶ [0077]). Miller also expressly claims base oil having VI greater than 120. It would have been obvious to one of ordinary skill in the art to produce/select Miller's high-VI hydroisomerized renewable base oil as a Group III+ base oil because Miller expressly teaches producing highly isomerized, high-VI base oils possessing the properties sought for premium Group III-type lubricant base stocks. The difference resides in the designation/product specification rather than a materially different hydroconversion process.
Claims 9, 12, and 25 are rejected under 35 U.S.C. §103 as being unpatentable over Miller in view of Rantasalo et al. (US 2022/0411699 A1). Miller teaches the renewable-feed hydrotreating/hydroisomerization process and renewable base-oil product discussed above but does not expressly describe all of the particular reactor/use/property relationships recited in these claims. Regarding claim 9, Rantasalo expressly teaches that hydrotreatment and isomerization may be conducted in the same reactor, and alternatively in separate reactors (¶¶ [0082]–[0083]). It would have been obvious to conduct Miller's hydroconversion in a single reactor as taught by Rantasalo to integrate the hydrotreating and hydroisomerization operations and simplify the renewable hydroprocessing system. Regarding claim 12, Miller produces renewable lubricant base oil but does not expressly identify the particular process-fluid uses recited. Rantasalo teaches that its renewable base oil may serve as a component of high-performance engine oils, driveline fluids or industrial lubricants (¶ [0117]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used Miller's renewable base oil in such conventional lubricant/process-fluid applications because both references produce hydroprocessed/isomerized paraffinic renewable base oils having favorable viscosity and low-temperature properties. In particular, the expressly taught driveline-fluid use provides a known application corresponding to transmission/gear lubrication. Regarding claim 25, Miller produces hydrotreated material and subsequently hydroisomerizes it to obtain renewable base oil. Rantasalo expressly teaches that hydroisomerization causes branching of the hydrotreated hydrocarbon chains and thereby provides better cold properties than the merely hydrotreated feedstock, including a lower pour point (¶ [0070]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have hydroisomerized Miller's hydrotreated renewable feed to obtain the expressly recognized reduction in cold-flow/cloud-point characteristics relative to the corresponding merely hydrotreated material.
Conclusion
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.
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 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM M NGUYEN/Primary Examiner, Art Unit 1771
Prosecution Insights