DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 2 June 2025, in the matter of Application No. 17/632,818. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1–11 are pending.
Claims 1, 3, 6-7, and 10 have been amended.
Thus, claims 1-11 represent all claims currently under consideration.
Claim Interpretation
Claim 1 recites the term “ortho-phosphoric acid.” For the purposes of examination, commonly accepted alternative names for this compound will also be considered in lieu of “ortho-phosphoric acid,” such as “phosphoric acid,” as stated in the written description (paragraph [0017]).
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 8, “…100ºC…” should read “…100 ºC…”
Appropriate correction is required.
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.
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 1-6, 8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over K. Suzuki (EP 0340302 A1; IDS of 02-04-2022; hereinafter “Suzuki”), in view of Greaves et al. (Lubr. Sci. 2012, 24, 251-262, pages 1-13; PTO-892 of 03-10-2025; hereinafter “Greaves”), M.R. Greaves (Lube Magazine 2013, 118, 22-27; hereinafter “Greaves-2”), and ASTM D7042 Standard Manual (2016).
Regarding claim 1, Suzuki teaches a lubricating oil composition which contains a base oil polyalkylene glycol ester obtained by reacting a polyalkylene glycol polymer (synthesized from alkylene oxides have 2 to 4 carbon atoms) with a carboxylic acid having 1 to 10 carbon atoms in the presence of phosphoric acid catalyst (Suzuki; Abstract; page 3, lines 20-24, line 36; and lines 54-55; page 4, lines 51-58, Example 1).
Although Suzuki teaches a genus of carboxylic acids that encompasses valeric acid (a 5 carbon carboxylic acid), Suzuki fails to explicitly teach embodiments featuring valeric acid. However, Suzuki does teach an embodiment featuring caproic acid (a 6 carbon acid) as the carboxylic acid reactant for the successful manufacture of esterified polyalkylene glycol esters (Suzuki; Example 1). Since valeric acid is among Suzuki’s taught genus and chemically homologous to caproic acid (i.e., differing by a single -CH2 group), a person of ordinary skill in the art would conclude that the method of Suzuki could similarly be applied to valeric acid with a reasonable expectation of success, in a manner consistent with the instant claim.
Although Suzuki fails to explicitly teach an esterified polyalkylene glycol that oil soluble, Suzuki teaches lubricant compositions wherein the esterified polyalkylene glycol that acts as a base oil (i.e., they are miscible with other hydrophobic oils such as mineral oil and synthetic oil) and therefore the skilled artisan would recognize that the esterified polyalkylene glycols are in fact oil soluble (Suzuki; page 3, line 17).
Suzuki fails to explicitly teach (1) an esterified polyalkylene glycol ester that is low-color and oil soluble and a polyalkylene starting material that is low viscosity and oil soluble; and (2) wherein the low-color esterified oil soluble polyalkylene glycol has a Kinematic Viscosity at 100 ºC (KV100) as determined in accordance with ASTM D7042 of 4 mm2/second or less, as recited in instant claim 1.
Regarding point (1), Greaves teaches performance properties of oil-soluble polyalkylene glycols (PAGs) and discloses that synthetic processes for manufacturing PAGs are versatile, and polymers can be synthesized to have a range of molecular weights and viscosities and can also be tailored to be water soluble or oil soluble; furthermore, Greaves discloses a new range of oil-soluble PAG base oils using butylene oxide as one of the precursors that provides superior miscibility in hydrocarbon base stocks and offers many of the traditional advantages of PAGs such as high viscosity indices, good low temperature properties and good traction behavior (Greaves; Title; page 1, paragraph 1). Greaves further teaches that since it is known that oil miscibility is partly influenced by the carbon to oxygen ratio in the PAGs, oil-soluble PAGs can be designed by carefully selecting the initiator type and oxide feed (Greaves; page 2, paragraph 2). Lastly, Greaves teaches that several oil-soluble PAGs demonstrate high oxidation stability, as indicated by their clear and colorless appearance that only begin to show color after being exposed to elevated temperature (121 ºC) for a prolonged 13-day testing period (Greaves; page 6, Table 5).
Furthermore, one of ordinary skill in the art would reasonably expect the teachings of Greaves to be directly applicable to the method of Suzuki, because Greaves teaches butylated oxide as a suitable precursor for manufacturing oil soluble polyalkylene glycol (Greaves; page 1, paragraph 1), and Suzuki teaches a polyalkylene glycol polymer synthesized from alkylene oxides have 2 to 4 carbon atoms (i.e., a method that encompasses butylated oxide; Suzuki, Abstract), as detailed above, and Suzuki and Greaves both teach oil-soluble polyalkylene glycols with utility in automotive engines, and therefore possess overlapping intended use (c.f., Suzuki; page 2, lines 13-19 and Greaves; page 2, paragraph 2).
Regarding point (2), Greaves-2 teaches oil soluble polyalkylene glycols (OSPs) with improved lubrication properties and deposit control for use in for example passenger car engine oils to attain better piston cleanliness and engine sludge control (Greaves-2; Title; page 23, Col. 3, paragraph 2 and page 26, Col. 1, paragraph 1). Greaves-2 further teaches that the oil soluble polyalkylene glycols in use today span a wide range of molecular weights and viscosities, and since there is a high degree of flexibility in designing OSPs, it is possible to extend this range and build polymers with even lower or higher molecular weights and functionalities (Greaves-2; page 22, Col. 3). Of particular note, Greaves-2 teaches that lower viscosity grades have high levels of biodegradability, and the lowest viscosity polymer, OSP-18, has a kinematic viscosity of 4 mm2/sec at 100 ºC, as determined in accordance with ASTM 445 (Greaves-2; page 22, Col. 3; Table 1; page 23, Col. 1, paragraph 1). This disclosed value overlaps with the range cited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Although Greaves-2 does not teach a KV100 as determined by ASTM 7042 as recited in instant claim 1, no significant bias between these two methods were found to exist for base oils; the bias calculation in accordance with Test Method D6708 applied to the results of the interlaboratory study on base oils suggested a bias correction of (Y = 0.998 X) at 100 ºC; this corresponds to a deviation of 0.2% of the measured value (i.e., a measurement of 4 mm2/sec as determined by ASTM D7042 would correspond to a measurement of about 3.992 to 4.008 mm2/sec as determined by ASTM D445), as evidenced by the ASTM D7042 Standard Manual (page 7, Col. 1, paragraph 1; page 10, Appendix X1.1, Col. 1, paragraph 1; page 11, Table X1.1). Thus, the skilled artisan would recognize that the KV100 of OSP-18 as taught by Greaves-2 is practically equivalent to the value of 4 mm2/sec as recited in instant claim 1.
The prior art as taught by Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual reside in the closely overlapping technical field of base oils, and Suzuki, Greaves, and Greaves-2 specifically teach oil soluble polyalkylene glycols with a common intended use for automotive engines and are therefore deemed analogous art, as described in MPEP § 2141.01(a). Thus, one of ordinary skill in the art would be sufficiently motivated to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to pursue the development of an improved oil soluble polyalkylene glycol with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(A).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method Suzuki to incorporate the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to produce a low-color esterified oil soluble polyalkylene glycol, the process comprising forming a reaction mixture including a low viscosity oil soluble polyalkylene glycol and an excess amount of valeric acid (i.e., a structural homologue of caproic acid taught by Suzuki), wherein the reaction mixture is formed in the presence of a catalytic amount of ortho-phosphoric acid catalyst to yield the low-color esterified oil soluble polyalkylene glycol, and wherein the low-color esterified oil soluble polyalkylene glycol has a Kinematic Viscosity at 100 ºC (KV100) as determined in accordance with ASTM D7042 of 4 mm2/second or less. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, an improved oil soluble polyalkylene glycol with superior miscibility in hydrocarbon base stocks that offers many of the traditional advantages of PAGs such as high viscosity indices, good low temperature properties and good traction behavior, high oxidation stability as indicated by its colorless appearance and resistance to coloring, and high levels of biodegradability, as described above.
Regarding claim 2 depending from claim 1, Suzuki teaches a ratio of carboxylic acid to polyalkylene glycol of 1:1 to 1.5:1 (Suzuki; page 3, lines 50-51). This disclosed range overlaps with the range cited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 3 depending from claim 1, Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual fail to explicitly teach a process wherein the low-color esterified oil soluble polyalkylene glycol has a color as determined in accordance with ASTM D1209 of less than 110 American Public Health Association (APHA) units. However, Greaves teaches that several oil-soluble PAGs demonstrate high oxidation stability, as indicated by their clear and colorless appearance that only begin to show color after being exposed to elevated temperature (121 ºC) for a prolonged 13-day testing period (Greaves; page 6, Table 5). In addition, the esterified polyalkylene glycols taught by Suzuki show good stability to oxidation, and are manufactured form the same reactants (polyalkylene glycol, carboxylic acid, and catalyst) as those of the instant claim (Suzuki; Abstract; page 3, lines 20-24, line 36; and lines 54-55; page 4, lines 36-37 and 51-58, Example 1). Therefore, one of ordinary skill in the art would predictably determine that the esterified polyalkylene glycol taught by Suzuki is low-color.
Finally, since the combination of Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual teaches all of the limitations of the claimed process, then the product produced from said process should be substantially identical, or very similar to, the product claimed. Thus, the low-color property and the method of color determination recited in the instant claim are inherently taught. MPEP § 2112.01 states that “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” Furthermore, MPEP § 2112.01(II) states that “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 structure, 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). Furthermore, one of ordinary skill the art could reasonably arrive at a color within the claimed range by means of routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In addition, the claimed process includes unrecited purification steps, and it would be prima facie obvious to the skilled artisan to further purify a compound to arrive at a low-color product, because the one of ordinary skill would recognize that most organic small molecules are visually colorless and therefore the presence of color typically indicates the presence of impurities. Therefore, as with claim 1, it would have been prima facie obvious to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to manufacture low-color esterified oil soluble polyalkylene glycol with a color as determined in accordance with ASTM D1209 of less than 110 American Public Health Association (APHA) units.
Regarding claim 4 depending from claim 1, Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual fail to explicitly teach a process wherein the low-color esterified oil soluble polyalkylene glycol has a viscosity index as determined in accordance with ASTM D2270 of greater than 160. However, Greaves teaches eight examples of low-color oil soluble polyalkylene glycols with a ASTM 2270 viscosity index of greater than 160 (Greaves; page 4, Table II and Table III). In addition, Greaves teaches that polyalkylene glycols (PAGs) and their synthetic processes for manufacturing are versatile, and polymers can be synthesized to have a range of molecular weights and viscosities, as detailed above (Greaves; Title; page 1, paragraph 1). Furthermore, Suzuki teaches that esterified polyalkylene glycols can act as viscosity improvers since they have specific viscosities at both high and low temperatures (page 4, lines 38-39). Consequently, the skilled artisan could predictably arrive at the claimed invention through the combined teachings of Suzuki and Greaves.
Finally, since the combination of Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual teaches all of the limitations of the claimed process, then the product produced from said process should be substantially identical, or very similar to, the product claimed. Thus,the viscosity index and ASTM D2270 method of its determination recited in the instant claim are inherently taught. MPEP § 2112.01 states that “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” Furthermore, MPEP § 2112.01(II) states that “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 structure, 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). Furthermore, since Greaves teaches that the manufacturing processes are versatile, and Greaves-2 further teaches that the oil soluble polyalkylene glycols in use today span a wide range of molecular weights and viscosities, one of ordinary skill the art could reasonably arrive at a viscosity within the claimed range by means of routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, as with claim 1, it would have been prima facie obvious to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to manufacture low-color esterified oil soluble polyalkylene glycol that has a viscosity index as determined in accordance with ASTM D2770 of greater than 160.
Regarding claim 5 depending from claim 1 with further wherein the low-color esterified oil soluble polyalkylene glycol has a viscosity index as determined in accordance with ASTM D2270 of greater than 160 and has a color in accordance with ASTM D1209 of less than 100 APHA units, these two limitations are rendered obvious over Suzuki in view of Greaves, Greaves-2, and the ASTM D7042 Standard Manual as detailed above in instant claims 3 and 4, respectively. Regarding the APHA range, see the discussion of claim 3, wherein these arguments also apply to the range of claim 5. Furthermore, regarding the viscosity index range, see the discussion of claim 4, wherein these arguments also apply to the range of claim 5. Therefore, as with claim 1, it would have been prima facie obvious to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to manufacture low-color esterified oil soluble polyalkylene glycol that has a viscosity index as determined in accordance with ASTM D2770 of greater than 160 and has a color in accordance with ASTM D1209 of less than 100 APHA units.
Regarding claim 6 depending from claim 5, Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual fail to explicitly teach a process wherein the low-color esterified oil soluble polyalkylene glycol has a KV100 as determined in accordance with ASTM D7042 of 3.2 mm2/second or less. However, Greaves-2 teaches that the lowest viscosity polymer, OSP-18, has a kinematic viscosity of 4 mm2/sec at 100 ºC, as determined in accordance with ASTM 445 (Greaves-2; page 22, Col. 3; Table 1). This disclosed value is reasonably close to the range recited in the instant claim. MPEP § 2144.05(I) states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Furthermore, Greaves-2 teaches that the lower viscosity grades have high levels of biodegradability, and since there is a high degree of flexibility in designing OSPs, it is possible to extend this range and build polymers with even lower or higher molecular weights and functionalities (Greaves-2; page 22, Col. 3 and page 23, Col. 1, paragraph 1), such that the skilled artisan would be sufficiently motivated to further reduce the KV100 in an effort to realize, with a reasonable expectation of success, an oil soluble polyalkylene glycol with improved biodegradability through means of routine experimentation. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, as with claim 1, it would have been prima facie obvious to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to manufacture low-color esterified oil soluble polyalkylene wherein the low-color esterified oil soluble polyalkylene glycol has a KV100 as determined in accordance with ASTM D7042 of 3.2 mm2/second or less.
Regarding claims 8-11 depending from claim 1, Suzuki teaches that the reaction product (i.e., the esterified polyalkylene glycol) is distilled in vacuo and the solvent(s) and excess starting materials are distilled off to obtain the polyglycol ester (page 4, lines 1-2). An exemplary organic solvent for the reaction taught by Suzuki is toluene page 4, lines 53, Example 1). Thus, these teachings from Suzuki can be reasonably interpreted as fulfilling each limitation of the instant claim: (1) removing the esterified polyalkylene glycol from the organic phase by virtue of solvent removal (i.e., toluene); (2) drying the removed esterified polyalkylene glycol (via concentration in vacuo); and (3) obtaining a dry esterified polyalkylene glycol with less than about 5 weight percent polyalkylene glycol (i.e., excess starting materials are distilled off, including valeric acid and ortho-phosphoric acid), in a manner consistent with instant claims 8 and 10. Further regarding instant claim 9, it would be prima facie obvious for one of ordinary skill in the art would to recognize that recovered materials (e.g., excess valeric acid removed by distillation) could be recycled to increase the efficiency of the process. Finally, since Suzuki teaches that excess starting materials are distilled off to achieve the isolated polyalkylene glycol product, one of ordinary skill in the art would recognize that valeric acid must have a lower boiling point than the polylalkylene glycol, in a manner consistent with instant claim 11. Therefore, as with claim 1, it would have been prima facie obvious to modify the method of Suzuki with the teachings of Greaves, Greaves-2, and the ASTM D7042 Standard Manual to arrive at the instantly claimed invention.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over K. Suzuki (EP 0340302 A1; IDS 02-04-2022; hereinafter “Suzuki”), in view of in view of Greaves et al. (Lubr. Sci. 2012, 24, 251-262, pages 1-13; PTO-892 of 03-10-2025; hereinafter “Greaves”), M.R. Greaves (Lube Magazine 2013, 118, 22-27; hereinafter “Greaves-2”), and ASTM D7042 Standard Manual (2016) as applied to claim 1-6, and 8-11 above, and further in view of N.G. Anderson (Practical Process Research & Development, 2000, pages 46 and 106; PTO-892 of 03-10-2025; hereinafter “Anderson”).
Regarding claim 7, claim 1 is rendered obvious over Suzuki in view of Greaves, Greaves-2, and the ASTM D7042 Standard Manual, as detailed above.
Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual fail to teach a solvent-free process including less than 1.0% by weight of total weight of the reaction mixture. However, Anderson teaches that “neat” (solvent-free) reactions are used when appropriate to increase productivity and to avoid the difficulties associated with solvent emissions and recovery (page 46, paragraph 1). Anderson further teaches that the advantages of this approach are that no expenses are incurred for the purchase and disposal or recovery of solvent, and under such concentrated conditions the reaction proceeds rapidly and product throughput is very high. (page 106, paragraph 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suzuki, Greaves, Greaves-2, and the ASTM D7042 Standard Manual to incorporate the teachings of Anderson to implement a solvent-free process including less than 1.0% by weight of total weight of the reaction mixture. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a reaction method that increases productivity, avoids the difficulties associated with solvent emissions and recovery, incurs no expenses for the purchase and disposal or recovery of solvent, and achieves concentrated reaction conditions that proceed rapidly with very high product throughput, as described above.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed method. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Claim Rejections - 35 USC § 103
Applicant's arguments filed 2 June 2025, asserting that the teachings of Suzuki, Greaves, and Anderson do not disclose or make obvious Applicant’s claimed method, and that the combination of Suzuki, Greaves, and Anderson do not render Applicant’s claimed method obvious, have been fully considered and were found to be persuasive with respect to the previous Office Action mailed 10 March 2025. However, the alleged deficiencies are addressed in the new rejection detailed herein.
Applicant argues the following:
“As acknowledged by the examiner, Suzuki fails to specifically teach the use of valeric acid. The Examiner has asserted that since valeric acid is among Suzuki's taught genus and chemically homologous to the caproic acid used in the (i.e., differing by a single -CH2 group), a person of ordinary skill in the art would conclude that the method of Suzuki could similarly be applied with valeric acid with a reasonable expectation of success. Applicants contest the implied assertion that materials differing by a single CH2 group would be expected to behave similarly. For example, it is well known that methanol and ethanol have very different properties despite differing by only a single -CH2 group. While a person of ordinary skill in the art may think that valeric acid could be reacted with a polyalkylene glycol ether, there is no teaching or expectation that the resulting esterified polyalkylene ether would exhibit low color, as the present application demonstrates.”
This argument has been fully considered, but is not found to be persuasive. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In addition, MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” Furthermore, the low-color properties of oil soluble polyalkylene glycols is described by Greaves, who teaches that several oil-soluble PAGs demonstrate high oxidation stability, as indicated by their clear and colorless appearance that only begin to show color after being exposed to elevated temperature (121 ºC) for a prolonged 13-day testing period (Greaves; page 6, Table 5). Furthermore, one of ordinary skill in the art would reasonably expect the teachings of Greaves to be directly applicable to the method of Suzuki, because Greaves teaches butylated oxide as a suitable precursor for manufacturing oil soluble polyalkylene glycol (Greaves; page 1, paragraph 1), Suzuki teaches a polyalkylene glycol polymer synthesized from alkylene oxides have 2 to 4 carbon atoms (i.e., a method that encompasses butylated oxide; Suzuki, Abstract), and both Suzuki and Greaves both teach oil-soluble polyalkylene glycols with utility in automotive engines, and therefore possess overlapping intended use (c.f., Suzuki; page 2, lines 13-19 and Greaves; page 2, paragraph 2). Therefore, the new claim rejections are maintained for the reasons of record and the reasons set forth above.
Applicant argues the following:
“More importantly, claim 1 now recites that the low-color esterified oil soluble polyalkylene glycol has a Kinematic Viscosity at 100 ºC (KV100) of 4 mm2/second or less, whereas, Suzuki teaches that "a polyoxyalkylene glycol ester having a viscosity of less than 5 mm2/s at 100 ºC is undesirable (see page 3, lines 39-40 of Suzuki). Thus, Suzuki expressly teaches away from claim 1, as currently recited. Greaves is used by the examiner for the proposition that it would have been obvious to one of ordinary skill in the art how to make an esterified polyalkylene glycol ester that is oil soluble. The examiner has not cited anything in Greaves that points the skilled artisan towards making low viscosity esters now recited.
Accordingly, it is respectfully submitted that the claim 1, as amended, as well as the remaining claims which all depend from claim 1, are patentable over Suzuki in light of Greaves.
”
This argument has been fully considered, but is not found to be persuasive. As detailed in the new 103 rejection above, the deficiency cited by Applicant in the method of Suzuki has been adequately addressed by Greaves-2 and the supporting teachings of the ASTM D7042 Standard Manual, who teach oil soluble polyalkylene glycols with improved lubrication properties and deposit control for use in for example passenger car engine oils to attain better piston cleanliness and engine sludge control (Greaves-2; Title; page 23, Col. 3, paragraph 2 and page 26, Col. 1, paragraph 1), including OSP-18, that has a kinematic viscosity of 4 mm2/sec at 100 ºC, as determined in accordance with ASTM 445 (Greaves-2; page 22, Col. 3; Table 1; page 23, Col. 1, paragraph 1). This disclosed value overlaps with the range cited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Although Greaves-2 does not teach a KV100 as determined by ASTM 7042 as recited in instant claim 1, no significant bias between these two methods were found to exist for base oils; the bias calculation in accordance with Test Method D6708 applied to the results of the interlaboratory study on base oils suggested a bias correction of (Y = 0.998 X) at 100 ºC; this corresponds to a deviation of 0.2% of the measured value (i.e., a measurement of 4 mm2/sec as determined by ASTM D7042 would correspond to a measurement of about 3.992 to 4.008 mm2/sec as determined by ASTM D445), as evidenced by the ASTM D7042 Standard Manual (page 7, Col. 1, paragraph 1; page 10, Appendix X1.1, Col. 1, paragraph 1; page 11, Table X1.1). Thus, the skilled artisan would recognize that the KV100 of OSP-18 as taught by Greaves-2 is practically equivalent to the value of 4 mm2/sec as recited in amended claim 1. Therefore, the new claim rejections are maintained for the reasons of record and the reasons set forth above.
Applicant argues the following:
“Claims 7 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Suzuki (EP 0340302 Al; IDS reference) in view of Greaves et al. (Lubr. Sci. 2012,24,251-262, pages 1-13; hereinafter "Greaves") as applied to claim 1-6, 8, and 10-11 above and further in view of N.G. Anderson (Practical Process Research & Development, 2000, pages 44-47 and 106; hereinafter "Anderson"). Anderson is used by the examiner for the proposition that solvent free reactions are used when appropriate. The examiner has not cited anything in Anderson that points the skilled artisan towards making low viscosity esters now recited. Moreover, nothing cited by the examiner suggests that solvent-free reactions lead to less color in the resulting product, and so it would not be obvious from Anderson to use a solvent-free reaction to produce a low-color esterified oil soluble polyalkylene glycol.
Accordingly, it is respectfully submitted that claims 1-11, as amended, are patentable over Suzuki in light of Greaves and Anderson. A withdrawal of the rejections and a notice of allowable subject matter is therefore courteously solicited.”
This argument has been fully considered, but is not found to be persuasive. As detailed in the new 103 rejections above, Anderson teaches several advantages of solvent-free reaction methods recycling chemical reagents, such as increasing productivity, avoiding the difficulties associated with solvent emissions and recovery, incurring no expenses for the purchase and disposal or recovery of solvent, achieving concentrated reaction conditions that proceed rapidly with very high product throughput, and incorporating a cost-effective “green chemistry” process that minimizes waste and therefore overall manufacturing costs, as described above (Anderson;
(page 44, paragraph 1; page 45, paragraph 2; page 46, paragraphs 1-2 and page 47, paragraph 1; page 106, paragraph 1). Furthermore, the motivation for one of ordinary skill in the art to combine prior art elements in an obviousness rejection need to be the same particular motivation or problem-solving approach of the inventor. MPEP § 2141(III) states that “In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls.” Therefore, the new claim rejections are maintained for the reasons of record and the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Derek Rhoades whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm EST.
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692