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 .
Status of Claims
Claims 1-3, 5-10, 12, 14, 15, 17, 18, and 21-26 are pending. This is the first office action on the merits.
Specification
The disclosure is objected to because of the following informalities: “refinery stream 114” in para. [0056] should read “refinery stream 214.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 1-3, 5-9, 14, 15, 17, 18, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2013/0217606 A1, cited in IDS dated 02/21/2025).
Regarding claim 1, Wang discloses a base stock composition obtained from renewable sources by oligomerization (dimerization) and deoxygenation ([0053]), wherein the base stock comprises a naphthene component and a branched paraffin component ([0079], [0086]). Wang teaches compositions having structural characteristics corresponding to those recited in claim 1. In particular, Wang discloses an exemplary base stock composition comprising a naphthene component, including “1-ring naphthenes” and “2-ring naphthenes” ([0079]). The naphthene component may comprise a naphthene ring comprising two or more paraffinic branches covalently bonded to the naphthene ring and may have a carbon number in a range of C28 to C34 ([0086]). For example, Wang discloses a 1-ring naphthene having four paraffinic branched covalently bonded to the naphthenic ring and having a carbon number of C34. Wang further discloses a branched paraffinic component ([0079], [0086]). The branched paraffinic component comprises a paraffinic backbone, wherein two or more paraffinic branches are covalently bonded to the paraffinic backbone, and wherein the branched paraffinic component has a carbon number in a range of C28 to C36 ([0085]). As an example, Wang discloses a branched paraffin having a paraffinic backbone with a carbon number of C23, four paraffinic branched covalently bonded to the backbone, and a carbon number of C34 ([0085]).
The exemplary branched paraffin disclosed in paragraph [0085] has a paraffinic backbone containing 23 carbon atoms, which is one carbon atom greater than the claimed range of “C14 to C22.” However, Wang is not limited to the particular exemplary feedstock or product described in paragraphs [0085]-[0086]. Wang teaches that the disclosed base stocks are produced from renewable biological sources, including oligomerization (dimerization) of unsaturated fatty acids to form dimer acids, followed by hydrogenation of the dimer acids to obtain saturated hydrocarbons ([0053], [0085]). Wang further discloses that, during the oligomerization, double bonds of the unsaturated fatty acid molecules react with each other to form fatty acid oligomers ([0116]). In the hydrogenation step, the oxygen atoms are removed in the form of H2O by hydrodeoxygenation, CO by hydrodecarbonylation, and/or CO2 by hydrodecarboxylation ([0124]). Thus, the carbon number of the resulting hydrocarbon product depends, in part, on the carbon number of the starting unsaturated fatty acids and the particular deoxygenation pathway.
Wang expressly discloses that suitable biological sources include myristoleic acid (cis-9-tetradecenoic acid, C14:1) and palmitoleic acid (cis-9-hexadecenoic acid C16:1) ([0108]). In view of these teachings, one of ordinary skill in the art would have recognized that selecting unsaturated fatty acids having different carbon chain lengths, including myristoleic acid and palmitoleic acid, would provide corresponding dimerized and hydrogenated hydrocarbon products having different carbon numbers and backbone lengths. Particularly, the disclosed myristoleic acid and palmitoleic acid each contain a double bond at the 9-position. Wang teaches that oligomerization occurs through reaction of the double bonds of the unsaturated fatty acids ([0116]). Accordingly, oligomerization of these fatty acids would be expected to produce products having ranching characteristics corresponding to the location of the double bond in the starting fatty acids. Wang further teaches that the carbon chain of the resulting hydrogenated dimer may be retained during hydrodeoxygenation or shortened by one or two carbon atoms through hydrodecarbonylation and/or hydrodecarboxylation ([0124]).
Thus, based on the teachings of Wang, one of ordinary skill in the art would have had reason to select myristoleic acid and/or palmitoleic acid as a biological feedstock and would have reasonably expected the resulting oligomerized and hydrogenated product to include naphthenic and branched paraffinic components having carbon numbers and backbone length within the ranges recited in claim 1. In particular, use of the disclosed C14 and C16 unsaturated fatty acids would be expected to provide corresponding products having total carbon numbers within or overlapping the claimed ranges, while the location of the double bond at the 9-position would provide the disclosed branching characteristics. The resulting paraffinic products would further be expected to have a paraffinic backbone within the claimed C14 to C22 range. This follows from (i) the C14 and C16 carbon chains of the disclosed starting fatty acids; (ii) Wang’s teaching that oligomerization occurs through reaction of the unsaturated bonds ([0116]); and (iii) Wang’s teaching that hydrogenation may proceed by hydrodeoxygenation, hydrodecarbonylation, and/or hydrodecarboxylation, with the resulting carbon chain being retained or shortened by one or two carbon atoms ([0124]). Accordingly, although the particular exemplary branched paraffin disclosed in paragraph [0085] has a backbone containing 23 carbon atoms, Wang’s broader teachings encompass the use of shorter-chain unsaturated fatty acids, including myristoleic acid and palmitoleic acid, which would have led one of ordinary skill in the art to the claimed C14 to C22 paraffinic backbone range. The resulting products would also be expected to possess the claimed branched structure because of the disclosed oligomerization of the unsaturated fatty acids and the position of the unsaturation in the starting materials.
Regarding claims 2, 3, 5, and 7, Wang does not explicitly teach that the base stock composition derived from myristoleic acid or palmitoleic acid has:
a Noack volatility of less than about 12% as measured by ASTM D5800 (claim 2);
a kinetic viscosity at 100°C of about 3.8 to about 4.3 cSt as measured by ASTM D445-01 and a viscosity index of at least 120 as measured by ASTM D2270-93 (claim 3);
a cold cranking simulator viscosity value at -35 °C of less than 3000 cP as measured by ASTM D5203 (claim 5); or
a cold pour point of less than -30 °C as measured by ASTM D5950 (claim 7).
However, these claims are each directed to a property of the claimed composition. Wang is considered to teach a base stock composition that meets all of the limitations in claim 1, as discussed above. Therefore, it is reasonably expected that the composition taught by Wang also has the claimed properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01.
Regarding claim 6, Wang is directed to producing base stock originating from renewable biological sources ([0102]). Thus, it is expected that the bas stock has close to 100% biogenic carbon.
Regarding claim 8, Wang discloses that the feedstock may comprise a mixture of different components and preferably contain a high amount of mono-unsaturated fatty acids ([0105], [0108]). Suitable fatty acids, in addition to myristoleic acid and palmitoleic acid (discussed above), also include cis-5-dodecenoic acid (C12:1) ([0108]). Therefore, it would have been obvious to process a mixture of (i) cis-5-dodecenoic acid and (ii) myristoleic acid and/or palmitoleic acid. The cis-5-dodecenoic acid, when processed in the Wang method, is expected to produce naphthenic and isoparaffinic products having a carbon number of C22-C24 with similar branching characteristics as the exemplary products shown in paragraphs [0085]-[0086], as discussed above. The claimed carbon number of “C24 to C27” overlaps with the carbon number of C22-C24 and is considered prima facie obvious.
Regarding claim 9, Wang discloses that the feedstock may comprise a mixture of different components and preferably contain a high amount of mono-unsaturated fatty acids ([0105], [0108]). Suitable fatty acids, in addition to myristoleic acid and palmitoleic acid (discussed above), also include gadoleic acid (cis-11-eicosenoic acid C20:1) and erucic acid (cis-13-docosenoic acid C22:1) ([0108]). Therefore, it would have been obvious to process a mixture of (i) myristoleic acid and/or palmitoleic acid and (ii) gadoleic acid and/or erucic acid. The gadoleic acid and erucic acid, when processed in the Wang method, are expected to produce naphthenic and isoparaffinic products having a carbon number of C38-C40 and C42-C44, respectively, with similar branching characteristics as the exemplary products shown in paragraphs [0085]-[0086], as discussed above. The claimed carbon number of “C24 to C27” overlaps with the carbon number of C22-C24 and is considered prima facie obvious.
Regarding claim 14, Wang discloses that suitable biological sources include myristoleic acid (cis-9-tetradecenoic acid, C14:1) and palmitoleic acid (cis-9-hexadecenoic acid C16:1) ([0108]). As discussed above, it is reasonably expected that myristoleic acid or palmitoleic acid as when converted to base composition according to Wang will produce naphthenic and paraffinic products having carbon chains of C26-C28 and C30-C32, respectively. The claimed carbon number of C28-C30 for the naphthenes and C28-C34 for the branched paraffinic component overlaps the carbon numbers suggested by Wang and are considered prima facie obvious.
Regarding claim 15, Wang discloses that the base composition is derived from dimerization of an unsaturated fatty acid with a carbon number of C14 to C22, wherein the fatty acids may be derived from a seed oil, e.g., canola oil, rapeseed oil, or mustard oil ([0053], [0108])
Regarding claim 17, Wang suggests that the base stock composition may be blended with petroleum derived base stocks ([0078]). This reasonably suggests that a base stock composition derived from renewable feedstock in Wang may be blended with a base stock having comparable naphthene, branched paraffin, or both and originating from a refining process.
Regarding claim 18, Wang discloses that the base stock composition may comprise less than 1 ppm sulfur and less than 100 ppm nitrogen ([0098]). Wang further discloses that the base stock composition may comprise substantially no oxygenates, i.e., < 0.5 wt% ([0092]), which overlaps and renders the claimed range of less than 100 ppm oxygen.
Regarding claim 23, Wang teaches the claimed base stock, which is the same composition as recited in claim 1 (see rejection of claim 1 above).
Wang further teaches a lubricant composition comprising the base stock and an effective amount of one or more additives ([0048]).
Regarding claim 24, Wang discloses that the additives may include antioxidants, stabilizers, detergents, dispersants, demulsifiers, antioxidants, anti-wear additives, pour point depressants, viscosity index modifiers, friction modifiers, anti-foam additives, defoaming agents, corrosion inhibitors, wetting agents, rust inhibitors, copper passivators, metal deactivators, and extreme pressure additives ([0137]).
Regarding claim 25, Wang discloses that the base stock composition may be blended with co-base lube stocks, where useful co-base lube stock include Group I, II, III, IV, and V ([1036]).
Regarding claim 26, Wang does not explicitly teach that the base stock composition derived from myristoleic acid or palmitoleic acid has a kinematic viscosity at 100 °C of about 3.8 to about 4.3 cSt as measured by ASTM D 445-01, a viscosity index above 120 as measured by ASTM D2270-93, and a Noack volatility is less than about 12% as measured by ASTM D5800.
However, claim 26 is directed to properties of a lubricating oil composition containing the claimed base stock composition. Wang is considered to teach a base stock composition that meets all of the limitations in claim 23 (i.e., claim 1), as discussed above. Therefore, it is reasonably expected that the composition taught by Wang also has the claimed properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01.
Allowable Subject Matter
Claims 10, 12, and 21-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter. The prior art of record fails to teach or suggest a base stock composition according to claim 1, wherein the composition comprises the naphthene component in an amount of 15 wt% to about 30 wt% based on a total weight of the base composition, as recited in claims 10 and 21, or the composition comprises the branched paraffinic component in an amount of about 70 wt% to about 85 wt%, based on a total weight of the base stock composition, as recited in claims 12 and 21. Wang, applied in the rejection, expressly discloses that the ratio of 1-ring naphthenes to paraffins is from 1.8 to 5.0 ([0048]), suggesting that the content of naphthene in the base stock contemplated by Wang is about 64-83 wt% (or the paraffinic content of about 17-36 wt%).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Y Chong whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772
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