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 .
This Office action is in response to the amendment filed December 12, 2025 in which claims 8 and 16 were amended.
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.
Claims 8-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Boffa (US 20190002791-appears on PTO-1449) in view of Bertram (US 20110245120-appears on the PTO-892).
Boffa teaches lubricating oil compositions comprising a major amount of lubricating oil and one or more detergents of the alkylhydroxybenzoate type (see abstract). The lubricating oil compositions simultaneously achieve wear control and corrosion inhibition, while also achieving improved fuel economy. The lubricating oil compositions are suitable for automotive engines, motorcycle engines, natural gas engines, dual fuel engines, railroad locomotive engines, mobile natural gas engines, and as functional fluids for automotive and industrial applications (see para 0003).
The one or more detergents comprising at least one alkylhydroxybenzoate compound derived from isomerized Normal Alpha Olefin (NAO) having from about 10 to about 40 carbon atoms, wherein the TBN of the alkylhydroxybenzoate compound is at least 600 mgKOH/gm on an actives basis (see para 0006-0008; 0028). In one embodiment, the detergent can be a salicylate detergent (see para 0042). The lubricating oil composition comprises about 0.01 to 2 wt. % in terms of Ca content of the alkylhydroxybenzoate detergent (see para 0043). The lubricating oil composition can comprise one or more anti-wear agent. Suitable anti-wear agents include dihydrocarbyl dithiophosphate metal salts such as zinc dihydrocarbyl dithiophosphates (ZDDP) (see para 0068). The lubricating oil compositions may also contain other conventional additives that can impart or improve any desirable property of the lubricating oil composition in which these additives are dispersed or dissolved. Any additive known to a person of ordinary skill in the art may be used in the lubricating oil compositions. For example, the lubricating oil compositions can be blended with antioxidants, anti-wear agents, detergents such as metal detergents, rust inhibitors, dehazing agents, demulsifying agents, metal deactivating agents, friction modifiers, pour point depressants, antifoaming agents, co-solvents, corrosion-inhibitors, ashless dispersants, multifunctional agents, dyes, extreme pressure agents and the like and mixtures thereof (see para 0080).
The isomerization level (I) of the olefin of Boffa was determined by hydrogen-1 (1H) NMR. The NMR spectra were obtained on a Bruker Ultrashield Plus 400 in chloroform-d1 at 400 MHz using TopSpin 3.2 spectral processing software. The isomerization level (I) represents the relative amount of methyl groups (—CH3) (chemical shift 0.3-1.01 ppm) attached to the methylene backbone groups (—CH2-) (chemical shift 1.01-1.38 ppm) and is defined by Equation (1) as shown below,
I=m/(m+n) Equation (I)
where m is NMR integral for methyl groups with chemical shifts between 0.3±0.03 to 1.01±0.03 ppm, and n is NMR integral for methylene groups with chemical shifts between 1.01±0.03 to 1.38±0.10 ppm. The isomerized level (I) of the alpha olefin is between from about 0.1 to about 0.4 (see para 0104-0106).
Example 3 contains 9.83 mmol Soap (see para 0121). It should be noted that not all of the examples contain Mg, therefore, Boffa is substantially free of magnesium. Boffa meets the limitations of the claims other than the differences that are set forth below.
Boffa does not specifically teach that MoDTC is present in the oil composition. However, Boffa teaches that his lubricating oil compositions which are suitable for automotive engines (see para 0003) may contain anti-wear agents and antioxidants (see para 0080). Bertram teaches that oil compositions comprising alkaline earth metal alkyl salicylates similar to those of Boffa may be combined with MoDTC for use in automotive engines (see abstract; para 0050-0051).
It would have been obvious to one of ordinary skill in the art to have included molybdenum dithiocarbamate in the lubricating oil composition because Boffa teaches adding anti-wear and antioxidant additives to his oil composition and Bertram teaches that molybdenum dithiocarbamate function as anti-wear and antioxidant agent in lubricating oil compositions that are used to lubricate automotive engines and other types of engines.
With respect to the engine being a hybrid engine or a turbo GDI engine, it would be reasonable to expect that Boffa meets these limitations because he teaches the same automotive engines as disclosed in the present application, which would include hybrid and GDI engines.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the cited art does not teach wherein the lubricating oil composition is "substantially free of magnesium." More specifically, Bertram states that its metal salicylates are preferably "calcium and/or magnesium salicylate" and Boffa also does not restrict magnesium content and include magnesium detergent in its Example.
It should be pointed out that Boffa teaches that the salicylate may be calcium salicylate and does not require the presence of the magnesium compound. With respect to the example that contains the magnesium compound, it is well settled that a reference is relied upon for all that it teaches and is not limited to the examples therein. It is clear that Boffa does not require the magnesium salicylate because he has several examples that do not contain magnesium.
With respect to Bertram, the secondary reference, Bertram teaches at paragraph [0018] that “In one embodiment, the metal salicylate detergent comprises substantially no magnesium alkyl salicylate detergent.” Thus, Bertram also meets the limitation with respect to the composition being substantially free of magnesium.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 16917983/20260312