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 .
Summary
This is the initial Office action based on application 18876282 filed 12/16/24.
Claims 24-43 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 6/9/26, 4/15/26, 12/17/25, 5/12/25 and 1/13/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the Office action.
Drawings
The Drawings filed on 12/18/24 are acknowledged and accepted by the examiner.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
Claims Objected to
Improper Multiple Dependent Claim
Claim 43 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent because claim 43 references to two sets of claims with different features within the same claim. See MPEP § 608.01(n). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 24, 26-34, 37, 38, 43 and all dependent claims 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24, 26-34, 37, 38, 43 and all dependent claims recite the broad recitation (see respective claims), and the claim also recites the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The Examiner has taken the position that only one is present. Applicant is required to bring clarification or correction.
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 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 of this title, 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.
Claims 24-43 are rejected under 35 U.S.C. 103 as being unpatentable over NAITOU ET AL. (US PG PUB 20180327688) in view of KOIVUSALMI ET AL. (EP1960497B1; 4/29/2020) in their entirety. Hereby referred to as NAITOU and KOIVUSALMI.
Regarding claims 24-43:
NAITOU teaches in the abstract to obtain a lubricating oil for machine tools, which has good lubricating properties and abrasion resistance and also exhibits a high flash point and a low pour point. A lubricating oil composition comprises, as a base oil, a base oil which includes an oil containing 20 mass % to 49 mass % of n-paraffin components and 51 mass % to 80 mass % of i-paraffin components at a quantity of 90 mass % or more of the total quantity of the base oil and which has a kinematic viscosity at 40° C. of 1 to 5 mm.sup.2/s. By blending a small quantity of β-dithiophosphorylated propionic acid and/or an acidic phosphoric acid ester in this base oil, a lubricating oil composition suitable for use for a main shaft of a machine tool is obtained. The lubricating oil composition for a main shaft of a machine tool has a flash point of 100° C. or more, a pour point of −10° C. or less, and a Shell four-ball wear mark diameter of 0.7 mm or less.
NAITOU teaches as well in claim 1 - a lubricating oil composition for a main shaft of a machine tool, the composition comprising a base oil, which includes an oil containing 20 mass % to 49 mass % of n-paraffin components and 51 mass % to 80 mass % of i-paraffin components at a quantity of 90 mass % or more of the total quantity of the base oil, and which has a kinematic viscosity at 40° C. of 1 to 5 mm.sup.2/s, wherein the base oil contains at least one component selected from among β-dithiophosphorylated propionic acid and an acidic phosphoric acid ester.
NAITOU teaches in para [0019] the base oil, a GTL (gas-to-liquid) base oil synthesised by a Fischer Tropsch polymerization method, which is a technique for obtaining liquid fuels from natural gas, can be advantageously used as the base oil component of the present invention due to having an extremely low sulfur content and aromatic content, a high constituent proportion of paraffin components, exhibiting excellent oxidation stability and having extremely low evaporative losses compared to base oils obtained by refining crude oil.
NAITOU teaches in para [0038] a variety of publicly known additives, such as amine-based or phenol-based antioxidants, rust inhibitors, steric stabilizers, viscosity modifiers, dispersing agents, pour point depressants and anti-foaming agents, can be blended as appropriate in the lubricating oil composition of the present invention.
NAITOU teaches the above hydrocarbon component as a lubricant however KOIVUSALMI teaches that the hydrocarbon component can be a lubricant or fuel.
KOIVUSALMI teaches in para [0029] Paraffinic synthetic base oils produced by oligomerization are known in the art, the typical ones being PAO (polyalphaolefins) and PIO (polyinternal olefins). In the production thereof, olefinic starting materials from crude oil are used, said starting materials containing no heteroatoms. The development of base oils of the polyalphaolefin type was started in the 1930's both in the USA and in Germany where mainly products with superior low temperature properties suitable for aircrafts were developed. 1-alkene monomers to be used as starting materials for PAO are typically produced from ethylene. For commercial PAOs, C8-C12 alpha olefins or C14-C18 alpha olefins are primarily used as starting 30 materials. In the production of PAO, the monomer is polymerized thermally or using catalysts of the Ziegler or Friedel Crafts type, or using zeolite catalysts to give heavier products, followed by distillation to obtain desired product fractions, and hydrogenated to give saturated paraffins. It is possible to produce PAO products belonging to various viscosity classes, the typical representatives having kinematic viscosities of 2, 4, 6 and 8 mm2/s at 100 °C (KV100). Moreover, particularly thick base oils PA040 and PA0100 having KV100 values of 40 and 100 mm2/s are produced, said base oils being generally used for the production of thick lubricants, and as viscosity index improvers (VII). PAO products have high viscosity indices, and at the same time, excellent low temperature properties, pour points being as low as -60 °C. Because lighter monomeric compounds are removed by distillation, the volatilities of the products are low and flash points are high. Oxidation resistance is quite modest without antioxidant additives.
KOIVUSALMI teaches in para [0036] the process of the invention comprises an oligomerization step wherein the molecule of the feedstock reacts with each other, thus increasing the carbon number of the component obtained, and further, a deoxygenation step. Said deoxygenation is carried out as hydrodeoxygenation reaction. In addition, the process of the invention may also comprise an optional isomerization step for isomerization of the lighter products, and/or a finishing step. The feedstock for the process is preferably from biological origin.
KOIVUSALMI teaches in para [0051] Figure 1 shows a preferable embodiment of the process according to the invention. One or more feedstock(s) selected from the group consisting of: triglyceride feed stream 1, fatty acid feed stream 2, feed stream 3 of the esters of fatty acids with alcohols having short chains, fatty acid anhydride stream 4, and fatty alcohol stream 6, are introduced to the oligomerization reactor 10 either as separate components or as mixtures. Part of the lighter product fraction to be recycled (e.g. 52), or the hydrocarbon stream 201 may be optionally introduced to the oligomerization reactor 10 as a diluent. Diluent stream 202 comprises the recycled stream 52, or the hydrocarbon stream 201, or a mixture thereof. Product 11 containing components of the feedstock reacted at double bonds, and hydrogen as stream 7 are passed from the oligomerization reactor 10 to an optional prehydrogenation reactor 20 optionally also receiving a diluent stream 202. The product hydrogenated at double bonds from the prehydrogenation reactor 20 is passed as stream 21, and hydrogen is optionally passed as stream 7 to a deoxygenation reactor 30 optionally also receiving a diluent 202. In case deoxygenation is performed as decarboxylation/decarbonylation reaction, a mixture of hydrogen 7 and an inert gas e.g. nitrogen may be used as the gas stream (not shown in the figure). The product containing saturated hydrocarbons from the deoxygenation reactor 30 is passed as stream 31 to a distillation and/or separation unit 40 for separation of various product fractions, gas 44, gasoline 43, diesel 42, and base oil 41. Lighter gasoline and diesel fractions, respectively 43 and 42, are optionally isomerized in hydroisomerization unit 50 in the presence of hydrogen 7, thus yielding gasoline and diesel streams, respectively 51 and 52, containing branched hydrocarbons.
KOIVUSALMI teaches in para [0107] The cetane number of the product obtained with the process of the invention, suitable as a diesel component, is more than 40, preferably more than 55, and particularly preferably more than 70. It contains more than 60 %, preferably more than 99 % by volume, of paraffins, and less than 30 %, preferably less than 1 % by volume, of aromatics, based on the IP-391 method. The diesel product comprises less than 40 %, preferably less than 10 %, by weight, of linear nparaffins. The cloud point of the diesel component is less than 0 °C, preferably less than -15 °C, and particularly less than -30 °C. Typically, the diesel product obtained is totally of biological origin. In the product of the invention, there are branches formed by carbon-carbon bonds.
Therefore, from the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that performing specific test or recognizing additional instrumentation for analysis or additional analysis would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
Further, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Additionally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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