DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/25/25 has been entered.
Election/Restrictions
As previously set forth: Applicant’s election of a dispersant composition claims 21-24 (Group IV, not group 1 as cited in the response) in the reply filed on 4/28/24 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-20, 25-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim.
Priority
As previously set forth: The claims have a priority date of the filing of the PCT: 8/31/20
Claim Formalities
The formalities discussed in the Final are withdrawn, the repeated use of claim “21” has been corrected
Response to Arguments/Amendments
Applicant argues a full listing of claims has been submitted, thereby overcoming the Noncompliant Amendment.
The Examiner agrees. Further, Claims 21-24 of the claims entered/filed 9/25/25 are identical to those examined in the Action dated 12/20/24. Thus, they continue to be met by elements set forth below. Arguments drawn herein are thusly not persuasive.
In arguments dated 5/20/25 Applicant argues the new limitations are not met by the references. Applicant argues Stuart is drawn to a chemically different product.
The Examiner disagrees. These were not entered because of issues with the amendments (that were warned about in the Final Action dated 12/20/24). Thus, these arguments are drawn to amendments that are not found in the claims and they are moot at this time. Regarding Stuart, the maleic-polyisobutylene product, though further reacted with a dicarboxylic acid, meets the instant claims. The claims do not exclude further reaction of the dispersant made from i) and ii). Arguments therein are thusly moot.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 102(a1) and 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oude Alink (herein Alink) US 3762873.
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Alink discloses corrosion inhibiting methods using succinimides formed by reacting a hydrocarbon with a maleic compound to yield a hydrocarbon succinate and then reacting that with an amine to form the succinimide (abstract). The succinimide may be used in drilling muds (Column 12 lines 41-46) and Column 12 lines 52-62 disclose various drilling fluids that contain base oils such as mineral oils. Thus, the composition will comprise both the claimed base oil and dispersant. The hydrocarbon may be a polymerized mono-olefin such as isobutene (Column 2 lines 35-37). Example 1 uses polyisobutene and maleic anhydride, anticipating a product that meets the dispersant of claim 21. Thus, the only picking is to pick an oil base fluid from those drilling fluids above. The recitation “lubricating oil composition” is drawn to the future intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such the new limitations of the claims are met.
Alink exemplifies the reaction between polyisobutene and maleic anhydride (example 1, amongst others) and then reacts such with an amine to make the final product (example 3, amongst others), forming a succinimide. “synthesized by” is a product by process limitation. The process it is made by is not pertinent unless Applicant shows a distinct product is produced.
The reaction of polyisobutene and maleic anhydride (Column 2 lines 54-55) result in the claimed alkyl-substituted succinic anhydride of claim 23. Thus, the product succinimides of the examples anticipate claims 21-24 or alternatively render claims 21-24 prima facie obvious because the claimed product may be slightly different than the product of the prior art
Claim(s) 21-24 is/are rejected under 35 U.S.C. 102(a1) and 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cherpeck (US 5916825).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Cherpeck discloses polyisobutanyl succinimides for fuel compositions (title). The compositions comprise various base oil carrier fluids (Column 6 lines 30-45). They are made by reacting a polyisobutenyl succinic anhydride with a polyamine (Column 4 lines 7-10). The polyisobutenyl is implicitly capable of being derived from isobutene monomers. Cherpeck discloses various carrier fluids such as mineral oils and refined petroleum oils (Column 6 lines 35-40), meeting the base oil requirements of the claim. Example 1 anticipates a product that anticipates the dispersant of claim 1, thus the only picking here is to choose the base fluid (oil). The recitation “lubricating oil composition” is drawn to the future intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such the new limitations of the claims are met.
“synthesized by” is a product by process limitation. The process it is made by is not pertinent unless Applicant shows a distinct product is produced. Thus, the product succinimides of the examples anticipate claims 21-24 or alternatively render claims 21-24 prima facie obvious because the claimed product may be slightly different than the product of the prior art.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 102(a1) and 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Stuart (US 3287271).
Elements of this rejection are as previously set forth reiterated below in its entirety in italics.
Stuart discloses detergent-corrosion inhibitor compositions (title). The invention includes adding said detergent-corrosion inhibitors to lubricating oil compositions (Column 1 lines 13-15). The corrosion inhibition and detergency are obtained by combining a polyamine with an alkenyl succinic anhydrite to form a succinimide and combining this product with an aromatic dicarboxylic acid (Column 1 lines 57-65). Example A exemplifies the polyisobutylene maleic anhydride-polyamine succinate product. Therein, the product succinimide exemplified in Example A is a polyisobutylene reacted with maleic anhydride, anticipating the dispersant of claim 1. The alkenyl group of the succinic anhydride may be formed from polymerizing isobutylene monomers (Column 2 lines 13-16).
The base fluid is always an oil (Column 4 lines 8-15). Stuart discloses the base oils are used as lubricating base oils such as petroleum oils and synthetic oils (Column 4 lines 8-11). The composition is disclosed to be a lubricating oil composition (Column 1 lines 13-15).
“synthesized by” is a product by process limitation. The process it is made by is not pertinent unless Applicant shows a distinct product is produced. Thus, the product succinimides of the examples anticipate claims 21-24 or alternatively render claims 21-24 prima facie obvious because the claimed product may be slightly different than the product of the prior art.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/ALICIA BLAND/ Primary Examiner, Art Unit 1759