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 18876309 filed 12/18/24.
Claims 24-45 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 5/15/26, 4/15/26, 12/17/25, and 1/28/25 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
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 24-34, 36, 37, 38, 44, 45 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 24-34, 36, 37, 38, 44, 45 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. Applicants are required to bring clarification or correction.
Claim 45 is unclear as it relates to the limitation “…aviation fuels set in ASTM D7566-21 Table 1…”. The claim includes a reference to a table which does not clearly set forth the metes and bounds of the patent protection desired, which renders the claim indefinite. The resulting table is not defined by the claim, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicants are required to further bring clarification and/or correction to claims.
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 24-45 are rejected under 35 U.S.C. 103 as being unpatentable over NAITOU ET AL. (US PG PUB 20180327688) in view of ABHARI ET AL. (US PG PUB 20190276758) in their entirety. Hereby referred to as NAITOU and ABHARI.
Regarding claims 24-45:
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 synthesized 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 can be a lubricant and a fuel. NAITOU does not explicitly call the fuel an aviation fuel, however it is within the scope of NAITOU as taught by ABHARI.
ABHARI teaches in the abstract a compositions that include at least about 98 weight percent (“wt %”) n-paraffins which, among other surprising features, may be suitable for use as a diesel fuel, an aviation fuel, a jet fuel blendstock, a blendstock to reduce the cloud point of a diesel fuel, a fuel for portable heaters, and/or as a charcoal lighter fluid. The composition includes at least about 98 wt % C7-C12 n-paraffins, where at least about 10 wt % of composition includes n-decane, at least about 20 wt % of the composition includes n-dodecane, and at least about 75 wt % of the composition includes even carbon number paraffins. The composition also includes less about 0.1 wt % oxygenates and less than about 0.1 wt % aromatics. The composition may be produced by a process that includes hydrotreating a biorenewable feedstock comprising at least one of palm kernel oil, coconut oil, babassu oil, microbial oil, or algal oil.
ABHARI teaches in para [0010] The term “paraffins” as used herein means non-cyclic, branched or unbranched alkanes. An unbranched paraffin is an n-paraffin; a branched paraffin is an iso-paraffin. “Cycloparaffins” are cyclic, branched or unbranched alkanes.
ABHARI teaches in para [0011] The term “paraffinic” as used herein means both paraffins and cycloparaffins as defined above as well as predominantly hydrocarbon chains possessing regions that are alkane, either branched or unbranched, with mono- or di-unsaturation (i.e. one or two double bonds).
ABHARI teaches in para [0012] Hydroprocessing as used herein describes the various types of catalytic reactions that occur in the presence of hydrogen without limitation. Examples of the most common hydroprocessing reactions include, but are not limited to, hydrogenation, hydrodesulfurization (HDS), hydrodenitrogenation (HDN), hydrotreating (HT), hydrocracking (HC), aromatic saturation or hydrodearomatization (HDA), hydrodeoxygenation (HDO), decarboxylation (DCO), hydroisomerization (HI), hydrodewaxing (HDW), hydrodemetallization (HDM), decarbonylation, methanation, and reforming. Depending upon the type of catalyst, reactor configuration, reactor conditions, and feedstock composition, multiple reactions can take place that range from purely thermal (i.e. do not require catalyst) to catalytic. In the case of describing the main function of a particular hydroprocessing unit, for example an HDO reaction system, it is understood that the HDO reaction is merely one of the predominant reactions that are taking place and that other reactions may also take place.
ABHARI teaches in para [0095] The present technology may include, but is not limited to, the features and combinations of features recited in the following lettered paragraphs, it being understood that the following paragraphs should not be interpreted as limiting the scope of the claims as appended hereto or mandating that all such features must necessarily be included in such claims: [0096] A. A composition comprising [0097] at least about 98 wt % C7-C12 n-paraffins, wherein at least about 10 wt % of composition comprises n-decane, at least 20 wt % of the composition comprises n-dodecane, and at least about 75 wt % of composition comprises even carbon number paraffins. [0098] less about 0.1 wt % oxygenates; [0099] less than about 0.1 wt % aromatics. [0100] B. The composition of Paragraph A, wherein at least about 75 wt % of composition comprises even carbon number n-paraffins. [0101] C. The composition of Paragraph A or Paragraph B, wherein the composition comprises at least about 99 wt % C7-C12 n-paraffins. [0102] D. The composition of any one of Paragraphs A-C, wherein the composition comprises at least about 99.5 wt % C7-C12 n-paraffins. [0103] E. The composition of any one of Paragraphs A-D, wherein the composition comprises less than about 0.01 wt % oxygenates. [0104] F. The composition of any one of Paragraphs A-E, wherein at least 20 wt % of the composition comprises n-octane. [0105] G. The composition of any one of Paragraphs A-F, wherein the weight ratio of C12 paraffins to C7 paraffins is about 150:1 or greater. [0106] H. The composition of any one of Paragraphs A-G, wherein the weight ratio of C12 paraffins to C9 paraffins is about 10:1 or greater. [0107] I. The composition of any one of Paragraphs A-H, the weight ratio of C12 paraffins to C11 paraffins is from about 3.0:1 to about 1.2:1. [0108] J. The composition of any one of Paragraphs A-I, wherein the weight ratio of C10 paraffins to C7 paraffins is about 150:1 or greater. [0109] K. The composition of any one of Paragraphs A-J, wherein the weight ratio of C10 paraffins to C9 paraffins is about 10:1 or greater. [0110] L. The composition of any one of Paragraphs A-K, the weight ratio of C10 paraffins to C11 paraffins is from about 2.0:1 to about 0.5:1. [0111] M. The composition of any one of Paragraphs A-L, the weight ratio of Cu paraffins to C10 paraffins is from about 2.0:1 to about 0.5:1. [0112] N. The composition of any one of Paragraphs A-M, wherein the composition is produced by hydrotreating a biorenewable feedstock comprising at least one of palm kernel oil, coconut oil, babassu oil, microbial oil, or algal oil. [0113] O. The composition of any one of Paragraphs A-N, wherein the composition is suitable as a diesel fuel, a diesel fuel additive, a diesel fuel blendstock, a turbine fuel, a turbine fuel additive, a turbine fuel blendstock, an aviation fuel, an aviation fuel additive, an aviation fuel blendstock, a fuel for portable heaters, a fuel for portable generators, a charcoal lighter fluid, or a combination of any two or more thereof.
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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