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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 11/17/2025 has been entered.
Response to Amendment
Applicants’ response filed 11/17/2025 amended claims 6 and 11 and cancelled claims 1 and 3-5. Applicants did not respond to the 35 USC 112 rejection from the office action mailed 1/25/2023; therefore, this rejection is maintained below. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Gao from the office action mailed 1/25/2023; therefore, this rejection is withdrawn. Applicants also did not address the double patenting rejection from the office action mailed 1/25/2023; therefore, this rejection is maintained below. A new ground of rejection necessitated by applicants’ amendments is set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 9 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
These claims recite the boron containing dispersant is borated polyisobutenyl succinimide or borated polyalkenyl succinic anhydride. This limitation is already recited in the independent claim from which these claims depend. 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 § 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.
Claims 6, 8-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkubo et al., US Patent Application Publication No. 2018/0258366 (hereinafter referred to as Ohkubo).
Regarding claims 6 and 8-10, Ohkubo discloses a lubricating oil composition have HTHS viscosity at 150°C of 1.3 to about 2.3 cP. The composition comprises a major amount of an oil of lubricating viscosity. The oil of lubricating viscosity has KV at 100°C of 1.5 to 6.0 and comprises a molybdenum succinimide complex (see Abstract). The base oils includes, synthetic lubricating oils which may be esters of dicarboxylic acids such ad phthalic acid and azelaic acid with alcohols such as 2-ethylhyexyl, butyl, hexyl, etc. with specific esters of diisooctyl azelate, diisodecyl azelate, isoctyl phthalate, didedcyl phthalate (Para. [0028]). The base oil may be a blend of base oils (Para. [0033]) (meeting the limitations of claim 10).
The composition may further comprise detergent mixture (Para. [0042]) (meeting the limitations of claim 8) in amounts of 200-1000 ppm in terms of magnesium and 750-3000 in terms of calcium (Para. [0053]-[0055], viscosity modifier (Para. [0057]) in amounts such as 0.5 to 15 wt.% (Para. [0059]).
The composition has a HTHS viscosity at 150° C of 2.3 cP or less (Para. [0060]). The composition has a viscosity index of at least 135 (Para. [0062]). The composition has a kinematic viscosity at 100°C of 3 to 12 mm/s (Para. [0063]). The composition has phosphorus of 0.12 wt.% or less and sulfur of 0.2 or less (Para. [0064]-[0065]). The composition may comprise additional additives such as dispersants, antioxidants, corrosion inhibitors, etc. (Para. [0067]). The dispersants include hydrocarbyl succinimides, such as polyisobuteny! succinimides in ranges of 0.1 to 10 wt.% which may be boronated (Para. [0068]-[0072]). The composition comprises 1 wt.% borated bis-succinmide dispersant (Para. [0123]) in an example. The composition is used in to lubricate an internal combustion engine (as recitedin component B) of claim 6 and reads on claim 9) (Claims 10-13 of Ohkubo).
The difference between Ohkubo and claim 6 is that Ohkubo does not explicitly disclose a single embodiment having a boron-content within the claimed range.
It is the position of the examiner that based on the disclosure in paragraphs 0069 to 0072 of Ohkubo that the boron content contemplated by Ohkubo encompasses or at least overlaps the range recited in claim 6.
See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Regarding claims 11 and 13-15, see discussion above.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
Applicant is advised that should claims 6 and 11 be found allowable, claims 4, 9 and 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both sets of claims recite the same borated dispersant species. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed
invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Applicant is advised that should claims 6 and 8-10 be found allowable, claims 11 and 13-15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both sets of claims recite the step of lubricating an internal combustion engine with the exact same composition. The only difference being the intended use thereof as set forth in the preamble which the examiner does not find further limits or defines the claimed methods. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Response to Arguments
Applicants’ arguments filed 11/17/2025 regarding claims 6, 8-11 and 13-15 have been fully considered and are moot as the rejection from the previous office action has been withdrawn as discussed above.
It is the position of the examiner that the reference discussed above adequately reads on the claims as instantly recited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771