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 19097235 filed 4/1/25.
Claims 1-20 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 11/4/25 and 4/1/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
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
The title of the invention “FUELS” is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2-3, 5-13, 15 and 17-26 of U.S. Patent No. 12286600. Although the conflicting claims are not identical, they are not patentably distinct from each other because the patented claims are a method of reducing the filter blocking tendency of a fuel composition having a tendency to block filers, which appears to be indistinguishable over the claimed method for reducing the filter blocking tendency of a fuel composition.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-20 are rejected under 103(a) as being obvious over MEYER (US PG PUB 20210277320) in view of BLOOM ET AL. (US PG PUB 20200222855) in their entirety. Hereby referred to as MEYER and BLOOM.
Regarding claim 1-20:
MEYER discloses in para [0239], the fuel composition may comprise first generation biofuel. First generation biofuel contains esters of, for example, vegetable oils, animal fats and used cooking fats. This form of biofuel may be obtained by transesterification of oils, for example rapeseed oil, soybean oil, safflower oil, palm oil, corn oil, peanut oil, cotton seed oil, tallow, coconut oil, physic nut oil (Jatropha), sunflower seed oil, used cooking oils, hydrogenated vegetable oils or any mixture thereof, with an alcohol, usually a mono alcohol, in the presence of a catalyst.
MEYER discloses in para [0240], such first generation biofuels may be termed fatty acid alkyl esters (FAAEs). MEYER discloses in para [0241], the fuel composition may comprise second generation biofuel. Second generation biofuel is derived from renewable resources such as vegetable oils and animal fats and processed, often in the refinery, often using hydroprocessing such as the H - Bio process developed by Petro bras. Second generation biofuel may be similar in properties and quality to petroleum-based fuel oil streams, for example renewable fuel produced from vegetable oils, animal fats etc. and marketed by ConocoPhillips as Renewable Diesel and by Neste as NEXBTL.
MEYER discloses in para [0242], the fuel composition of the present invention may comprise third generation biofuel. Third generation biofuel utilizes gasification and Fischer - Tropsch technology including those described as BTL (biomass - to - liquid) fuels. Third generation biofuel does not differ widely from some second-generation biofuel, but aims to exploit the whole plant (biomass) and thereby widens the feedstock base. MEYER discloses in para [0243], the fuel composition may contain blends of any or all of the above fuel compositions.
MEYER discloses in para [0244], the fuel composition may be a blended fuel comprising biofuel, and a second fuel. In such blends the biofuel may be present in an amount of from 0.1 % to 99 % (vol/vol). In such blends the biofuel component may include a mixture of first-generation biofuel and second-generation biofuel.
MEYER discloses in para [0166], preferred wax anti-settling additives (x) are the reaction product of (I) a nitrogen compound containing the segment-NR3R4 where R3 represents a group containing from 4 to 44 carbon atoms and R4 represents a hydrogen atom or a group R3, and (II) a carboxylic acid having from 1 to 4 carboxy lie acid groups or a reactive equivalent thereof.
MEYER further discloses in para [0176], suitable compounds (I) include primary, secondary, tertiary and quaternary amines. Tertiary and quaternary amines only form amine salts.
MEYER discloses in para [0181], preferred carboxylic acids (II) include carboxy lie acids containing two, three or four carboxylic acid groups, and reactive equivalents thereof.
MEYER discloses in para [0194], another preferred additive is the reaction product of an alkylspirobislactone (II), for example dodecenyl-spirobislactone, with mono-tallow amine and/or di-tallow amine (I).
MEYER discloses in para [0196], another suitable wax anti-settling additive is the half amide half ammonium salt of a maleic anhydride a olefin copolymer where the a olefin has 10 to 36 carbon atoms, preferably 12 to 24 carbon atoms, for example 16 to 20 carbon atoms. The amine reacted with the maleic anhydride a olefin copolymer is suitably a dialkylamine.
MEYER discloses in para [0197], one further class of wax anti-settling additives that may be useful herein are alkylphenol aldehyde resins modified by a Mannich reaction with an alkylamine. These compounds are suitably formed by forming an alkylphenol condensate with an aldehyde and then reacting the condensate in a Mannich reaction with an alkylamine and an aldehyde or ketone (preferably and aldehyde). The alkyl phenol suitably is mono substituted with one alkyl group having 1 to 30 carbon atoms; the aldehyde used to prepare the resin preferably has 1 to 4 carbon atoms. Preferably the alkylamine preferably includes one primary amine group and has 12 to 24 carbon atoms. An aldehyde having 1 to 4 carbon atoms, preferably formaldehyde is used in the Mannich reaction.
MEYER discloses in the abstract, a method of improving the low temperature properties of a middle distillate fuel composition comprising: (a) a nitrogen-containing dispersant; and (b) one or more low temperature property enhancers ester copolymers and which are selected from (x) wax anti-settling additives; (y) middle distillate flow improvers and mixtures thereof.
MEYER discloses in para [0003], standardized tests have been devised to measure various low temperature properties of middle distillate fuels, including the temperature at which the fuel hazes, the lowest temperature at which a fuel can flow and the cold filter plugging point CFPP.
MEYER discloses in para [0004], the cloud point of a fuel is the temperature at which a cloud of wax crystals first appears in a liquid when it is cooled under prescribed conditions, for example as measured by the test method as defined in ASTM D 2500.
MEYER disclose in para [0005], at temperatures below the cloud point but above the pour point, the wax crystals can reach a size and shape capable of plugging fuel lines, screens, and filters even though the fuel will physically flow. These problems are well recognized in the art and have a number of recognized test methods such as the CFPP value.
MEYER discloses in para [0006], tests such as these were introduced to give an indication of low temperature operability as the cloud point test was considered to be too pessimistic.
MEYER further discloses in para [0007], fuel additives in the form of cold flow and wax anti - settling additives (WASAs) have been devised to ameliorate the problems of precipitation in fuels at low temperatures, and these are routinely added to middle distillate fuels.
MEYER further discloses in para [0008], some such additives may assist in keeping the so - called " waxes" in solution in the mineral fuel; others may alter their crystal morphology or size, so that filterability and pourability are maintained in spite of precipitation. Other additives may be used to prevent precipitated waxes from settling during storage.
MEYER discloses in para [0198], preferred middle distillate flow improvers (y) are copolymers of ethylene and an olefinically unsaturated compound.
It is to be noted, MEYER discloses running a Sediment Test in order to determine the effectiveness of wax anti-settling additives or additive combinations. MEYER discloses it is known in the art to run various test to determine various levels of crystals but fails to further teach providing a Canadian Cold Soak Filter Blocking Tendency test the development of crystals when the biodiesel is subjected to cold conditions.
However, it is known in the art to test biodiesel fuel compositions with a Canadian Cold Soak Filter Blocking Tendency test in order to measure the development of crystals when the biodiesel is subjected to cold conditions, as taught by BLOOM.
BLOOM discloses in the abstract, processes for treating, producing, or producing and treating biodiesel.
BLOOM further discloses in para [0026], the CGSB-3.0 No. 142.0 cold soak filter blocking tendency test measures the relative filterability of biodiesels after a cold soak cycle as a result of the propensity of minor components of some biodiesel esters, for example, in the form of saturated monoglycerides, to separate from a blend of biodiesel and isoparaffinic solvent above the cloud point of a biodiesel fuel blend.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to perform the Canadian standard method CGSB-3 .0 No. 142.0 cold soak filter blocking tendency test of BLOOM on the biodiesel fuel composition of MEYER. The motivation to do so to test biodiesel fuel compositions with a Canadian Cold Soak Filter Blocking Tendency test in order to measure the development of crystals when the biodiesel is subjected to cold conditions.
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 adding duplicate / repeating process steps 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.
“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
