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 .
DETAILED ACTION
Claims 1, 3-8, 10, 11, 13, 14, and 16-18 of M. Aho et al., App. No. 17/800,916 (Feb. 19, 2021) are pending, under examination on the merits, and are rejected.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
The claim interpretation below is updated from the previous Office action to account for the claim 1 amendments.
The Invention of Claims 1 and 11
Amended independent claim 1 recite as follows:
1. A method for preparing an organometallic salt product comprising the steps of
- reacting at least one C13 to C22 monocarboxylic acid with metal carbonate particles, selected from the group consisting of silver, palladium, copper, cobalt, lead, tin, bismuth, molybdenum, titanium, tungsten, and nickel carbonate
having a particle size of 25 μm to < 30 μm,
- heating the mixture of components to a temperature of 100 – 140 °C,
-reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours, whereby the reaction is complete by 6 hours, and
- recovering the organometallic salt product.
The specification teaches that the claimed organometallic salt product is useful in a lubricant additive composition that is effective in reducing friction and wear of moving parts in lubricated machinery. Specification at page 3, lines 1-10; Id. at page 7, lines 5-9.
Claim 1 is better understood with reference to the specification working examples. In specification Example 1, commercially supplied copper carbonate (45 μm) was milled to a particle size stated to be 25 μm. Specification at page 9, lines 1-14. The specification provides one working example (i.e. Example 2) directed to the preparation of the claimed “organometallic salt product” using the milled 25 μm copper carbonate of Example 1. Specification at page 9, lines 16-27.
Example 2 is summarized by the Examiner as follows:
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Specification at page 9, lines 16-27. Specification Example 2 does not specifically disclose the amounts of copper carbonate or oleic acid employed, but states that “amounts of components were selected so that the copper oleate provides a copper concentration in the final salt in the range of 8-9 wt%”.1 Specification at page 9, lines 23-25. And while not stated in the specification, the presumed product (based on the 2+ copper oxidation state) is:
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In specification comparative Example 5, the procedure of Example 2 was repeated except that copper carbonate of particle size 45 μm was used instead of the milled 25 μm copper carbonate and at a higher time/temperature of “up to 16 h at 150 °C”. Specification at page 10, line 26- page 11, line 5.
The specification states that the result of Example 5 was:
The copper oleate made by this method was product clear and bright immediately after synthesis. it was, however, found to contain suspended copper carbonate, which separated, agglomerated, and formed sediment after short-term storage under ambient conditions. It was not possible to re-homogenize the sediment by vigorous shaking to produce a clear and bright product.
Specification at pages 10-11.
Here, the gist of the specification (particularly in view of Examples 5 and 6) is that smaller metal carbonate particles (e.g., within the claimed range “of 25 μm to < 30 μm”) result in a faster reaction rate than larger metal carbonate particles and where lower temperatures can be employed to effect the reaction. Specification at page 3.
Interpretation of the Claim 11 Term “activated complex”
Claim 11 recites “activated complex” in the following context:
Claim 11 A method for preparing a lubricant additive composition comprising mixing the organometallic salt product produced by claim 1, with an activated complex, wherein the activated complex comprises a first metal component and a second metal component, wherein the first metal component comprises the same metal as the organometallic salt product produced by claim 1.
In the previous Office action, the claim 11 term “activated complex” was broadly and reasonably interpreted, consistently with the specification, as follows:
Broadest Reasonable Interpretation of Claim 11 “activated complex”
A mixture comprising:
(1) a first metal component; and
(2) a second metal component,
wherein the second metal component is able to reduce the metal element in the first metal component, which can be schematically summarized as follows:
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Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claims 11-13 under 35 U.S.C. 112(b) as being indefinite because the claim 11 recitation of “the first metal” is unclear respecting what metal is referenced is withdrawn in view of Applicant’s amendments.
Rejection of claims 1-18 under 35 U.S.C. 112(b) as being indefinite because the term “about” is unclear in the claims’ context is withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections - 35 USC § 112(a) (Scope of Enablement)
Rejection of claims 1, 2, 4-9, 11, 12, 13-15 and 18 under 35 U.S.C. 112(a) because the specification as non-enabled is withdrawn in view of Applicant’s amendment.
Rejections 35 U.S.C. 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Pursuant to 35 U.S.C. 112, the claim must apprise one of skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Conflicting Claim Terms
Claims 1, 3-8, 10, 14, 16, 17, and 18 are rejected pursuant to 35 U.S.C. 112, as indefinite because the following claim 1 limitation:
Claim 1 . . . reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours,
whereby the reaction is complete by 6 hours . . .
recites the above bolded conflicting reaction times to the extent that one of skill is not informed of what particular reaction time infringes claim 1. For example, one of skill opting to practice claimed reaction by heating for only 5 hours (as expressly permitted by claim 1) does not practice the “reacting” for 6 hours so as to meet the further claim 1 limitation of “whereby the reaction is complete by 6 hours”.
Claim 1 is definite because it is not clear to one of skill whether claim 1 requires heating within the temperature range of 100-140°C for the full 6 hours or whether heating for only 5 hours would infringe claim 1, for example, as long as the reaction would have been completed in 6 hours if the reaction time were extended. MPEP § 2173.05(b)(II). Dependent claim 3-8, 10, 14, 16, 17, and 18 do not cure the issue.
The Claim 1 Term “whereby the reaction is complete by 6 hours” is Unclear
Claims 1, 3-8, 10, 14, 16, 17, and 18 are rejected pursuant to 35 U.S.C. 112, as indefinite because the meaning of “whereby the reaction is complete by 6 hours” is unclear in the claim’s context and in view of the specification, particularly working Example 6.
Claim 1 recites “whereby the reaction is complete by 6 hours” in the following context.
Claim 1 . . . reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours, whereby the reaction is complete by 6 hours . . .
The specification does not provide an express definition of this underlined term. In fact, the specification teaches that “it has been difficult to ensure that the metal carbonate is completely converted to the organometallic compound”. Specification at page 2, lines 9-14. And that using the claimed invention results in “a more complete conversion of the metal carbonate to the organometallic salt”. Specification at page 3, lines 11-13 (emphasis added).
One reasonable interpretation of the subject term, based on the plain meaning, is that the lower-molar-concentration stoichiometric reagent (which, in view of the specification, would be the metal carbonate) is completely consumed (not a molecule remaining) within 6 hours. Another reasonable interpretation, perhaps more consistent with above-cited specification portions, is that the reaction is “complete” when the metal carbonate has reacted with the monocarboxylic acid to the extent that it can under the particular reaction conditions, where the claimed smaller particle size can result in (at least with the reactants of specification Example 6) a more complete conversion than larger metal carbonate particles. Specification at page 3, lines 11-13 (per above using the term “more complete”); see also, specification at page 6, lines 11-15 (using the term “sufficiently complete”). In view of these alternate interpretations, it is not clear to one of skill how much remaining, unreacted metal carbonate is permitted by claim 1 to meet the functional limitation of “whereby the reaction is complete by 6 hours”. MPEP § 2173.05(b)(II).
The issue of indefiniteness is highlighted by the specification, particularly Example 6. Specification Example 6 provides the most relevant subject matter for interpretation of “whereby the reaction is complete by 6 hours”. Specification Example 6 compares the reaction rate of oleic acid and copper carbonate of particle size 25 μm (inventive) to that of oleic acid and copper carbonate of 45 μm (reference), both at a temperature of 130 °C, over a period of hours. Specification at pages 11-12 (data in Table 1). Example 6 does not give the concentrations of copper carbonate or oleic acid employed. Rather, the specification states that (for this particular Example 6), if all the copper carbonate reacts with oleic acid, the copper concentration should be about 8.5 wt%.2 Specification at page 11, lines 20-22; see also, footnote 1.
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Per Specification Table 1, the results of Example 6, during a reaction period of 3-6 hours (the time of claim 1) are as follows:
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Specification at page 12 (emphasis added). But contrary to the above discussed plain meaning of “whereby the reaction is complete by 6 hours”, per Example 6, Table 1, neither the inventive value of 8.33% (for copper carbonate of particle size 25 μm) nor the reference value of 8.05% (for copper carbonate of particle size 45 μm) indicates that Example 6 is absolutely complete with respect to copper carbonate. Further, both the inventive value of 8.33% and the reference value of 8.05% could be said to meet the specification Example 6 definition of “whereby the reaction is complete by 6 hours”, because both of these values are about 8.5 wt%. Specification at page 11, lines 20-22; see also, footnote 2. And significantly, if the claimed reaction is performed with the reference copper carbonate particles of 45 μm for 6 hours, the result of 8.05 is better than the 7.98 value obtained with the inventive 25 μm copper carbonate particles for the expressly permitted reaction time of 3 hours. Does one of skill infringe claim 1 if the reaction is performed for 6 hours with some particular metal carbonate particles within the claim 1 size range of 25 μm to 30 μm, under the conditions of Example 6, if the obtained Cu-% value is 8.05?
The claim 1 phrase “whereby the reaction is complete by 6 hours” is indefinite because, although one of skill can test to determine the amount of metal carbonate remaining after 6 hours of reaction time, it is not clear how much remaining, unreacted metal carbonate is permitted by claim 1 to meet this functional limitation3. MPEP § 2173.05(b)(II). The subject claim 1 functional language does not set forth a well-defined boundary for how to measure whether the claimed reaction is complete. MPEP § 2173.05(g). Dependent claim 3-8, 10, 14, 16, 17, and 18 do not cure the issue.
The issue is heightened here because the meaning of this very term is argued by Applicant to overcome the close prior art as cited in the §§ 102/103 rejections below. Reply filed on 9/17/2025, page 6. In crafting § 112 indefiniteness rejections, the Examiner may consider close prior art respecting the term at issue. MPEP § 2173.05(b)(III)(A) (citing Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991) (See Amgen at 1218 -- “[w]hen the meaning of claims is in doubt, especially when, as is the case here, there is close prior art, they are properly declared invalid”).
Maintained Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-8, 10, 14, and 16-18 Are Anticipated by K. Ekman et al., US 2017/0158980 (2017) (“Ekman”)
Claims 1, 3-8, 10, 14, and 16-18 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by K. Ekman et al., US 2017/0158980 (2017) (“Ekman”).
Ekman teaches a lubricant composition. Ekman at page 3, [0039]; Id. at page 4, [0051]. Ekman teaches that a metal salt of an organic acid, e.g. copper oleate, is also included in the lubricant composition to provide a source of metal ions. Ekman at page 8, [0109].
Eckman teaches working Example 6a, which is summarized by the Examiner as follows:
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Ekman at pages 22-23, [0292]-[0293].
Ekman Example 6a clearly meets the claim 1 limitation of “reacting at least one C13 to C22 monocarboxylic acid with metal carbonate particles”.
The claim 1 particle size limitation of:
Claim 1 . . . metal carbonate particles having a particle size of from about 25 μm to < 30 μm . . .
is inherently met by Ekman as evidence by H. Merkus et al., Particle Size Measurements, Fundamentals, Practice, Quality (2009). MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Ekman does not state one way or the other what particle sizes of copper carbonate are employed in Example 6a. The instant specification teaches that “size of the commercially supplied copper carbonate was about 45 μm”. Specification at page 9, lines 12-13.
Merkus teaches that a collection of particles always shows a particle size distribution, since there are always some deviations during their generation. Merkus at page 19, last paragraph. Merkus teaches that sometimes the deviations are small and all particles have nearly the same size. Id. However, Merkus teaches that:
Often, however, [particle size distribution]’s are broad and the larger and smaller particles vary in size largely. Now, the size distribution of the particles is called polydisperse. Sometimes, the sizes differ by a factor of 10 or more. It will be clear that the surface of these particles then has a difference of more than a factor of 100 and the volume and mass more than a factor of 1,000. In measurement, the occurrence of particles of certain sizes is usually expressed as the amount present in defined size classes. The width of these size classes depends on the intrinsic resolution of the measurement technique, the measurement range and the width of the PSD. Narrow size classes, of course, have better possibilities to show tiny differences in particle size than wide classes.
Merkus at paragraph bridging pages 19-20 (emphasis added). Merkus teaches that in measurement, the occurrence of particles of certain sizes is usually expressed as the amount present in defined size classes. Merkus at page 20. Merkus teaches that the width of these size classes depends on the intrinsic resolution of the measurement technique, the measurement range and the width of the particle size distribution. Merkus at page 20.
Claim 1 is claimed as a single size class (i.e., “from about 25 μm to <30 μm”). Claim 1 as broadly and reasonably interpreted, requires that only two particles of Ekman’s 150 g sample be of a particle size within the claimed range of “about 25 μm to < 30 μm” in order to meet this claim limitation. In view of Merkus’s teaching that often [particle size distribution]’s are broad and the larger and smaller particles vary in size largely, and sometimes, the sizes differ by a factor of 10 or more, it is almost statistically certain (particularly after Ekman’s vigorous stirring for 16 hours and the specification teaching that commercial samples at or around the instant filing date are about 45 μm ) that Eckman’s 150 g sample of copper carbonate comprises at least two particles that meet the claim 1 limitation of “metal carbonate particles having a particle size of from about 25 μm to < 30 μm”. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).4 The claim 1 and 15 particle size limitation is therefore asserted to be met by Ekman Example 6a.
Ekman Example 6a meets the following claim 1 heating and reacting steps and 3-6 hour time limitation:
1. A method . . . comprising the steps of
- heating the mixture of components to a temperature of 100 – 140 °C,
-reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours . . .
for the following reasons. Here, Ekman teaches that “[t]he reactants were heated to about 150° C” Ekman’s heating step necessarily requires passing through the claimed temperature range of “100 – 140 °C”. Ekman at page 24, [0293]. Claim 1’s transitional phrase “comprising” is interpreted as open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 2111.03(I). Ekman in performance of Example 6a thus meets the claim 1 temperature range. The claim 1 time limitation of “3-6 hours” is similarly met because Ekman heats the reaction mixture for 16 hours and claim 1’s open-ended transitional phrase “comprising does not exclude additional steps. MPEP § 2111.03(I). Eckman thus necessarily heats the reaction mixture for the claim 1 period of 3-6 hours and then continues to heat the reaction mixture.
Ekman Example 6a meets the following claim 1 ‘whereby clause’:
1. A method . . . comprising the steps of
whereby the reaction is complete by 6 hours,
for the following reasons. Per the § 112(b) rejection above, one interpretation of “whereby the reaction is complete by 6 hours” is that the reaction is “complete” when the metal carbonate has reacted with the monocarboxylic acid to the extent that it can under the particular reaction conditions after 6 hours. MPEP § 2143.03(I) (If a claim is subject to more than one interpretation, the examiner should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable). Under this interpretation, Ekman Example 6a clearly meets this limitation. Furthermore, specification Example 6 (which repeats Ekman’s Example 6a) teaches that after 6 hours the reference Cu-% (see footnote 1, Cu-% is the weight percent of elemental copper atoms contributed by the copper oleate) is 8.05. Specification at page 12, Table 1. Specification Example 6 also teaches that “If all the copper carbonate reacts with oleic acid the copper concentration should be about 8.5 wt%”. Specification at page 11, lines 20-22. Ekman’s value of 8.05 (as taught by instant specification Example 6) is about 8.5. In this regard, the specification does not provide any indication as to what range is covered by the term "about.". MPEP §2173.05(b) (III)(A). Thus, Ekman’s Example 6 meets the meaning of complete after 6 hours. Each and every element of claim 1 is taught by Ekman and is anticipated.
The limitations of claim 3 are met because Ekman teaches copper carbonate.
The limitations of claim 4 are met for the following reasons. The claim 4 limitation of “wherein the metal carbonate particles have been milled to provide the particle size of from about 25 μm to < 30 μm” is interpreted as a product-by-process limitation”. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. MPEP § 2113(I). The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). Here, the metal carbonate particles of Ekman as the same as those of claim 4 regardless of the method used to produce them.
The limitations of claim 5 are met for the same reasons as claim 1, that is claim 5 employs product-by-process limitations. And as discussed above, it is almost statistically certain (particularly after Ekman’s vigorous stirring for 16 hours and the specification teaching that commercial samples at or around the instant filing date are about 45 μm) that Eckman’s 150 g sample of copper carbonate comprises at least two particles that meet the claim 5 limitation of “metal carbonate particles . . . having a particle size of about 25 μm”.
The limitations of claims 6 are met because Ekman teaches oleic acid.
The limitations of claim 7 are met because Ekman’s molar ratio of oleic acid (2.92 mol) to copper carbonate (1.21 mol) is 2.4 to 1, which falls within the claimed range.
The limitations of claim 8 are met for the following reasons. Claim 8 requires that “the mixture of components is heated to a temperature of 130 °C and mixed at said temperature until the mixture is in liquid form”. Base claim 1’s transitional phrase “comprising” is interpreted as open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 2111.03(I). The specification does not discuss what is meant by “until the mixture is in liquid form” nor even mention this concept. The only recitation of this limitation is found in claim 8 itself. The claim 8 limitation of “mixed . . . until the mixture is in liquid form” is broadly and reasonably interpreted as requiring that the mixture of components comprises a liquid. Oleic acid is a liquid and the thus Ekman mixture of Example 6a “comprises” a liquid form and meets this claim 8 recitation. Alternatively, this claim 8 limitation is inherently met as evidenced by specification working Example 5. Specification working Example 5 is a comparative example of the organometallic salt made according to the United States patent application US2017158980, which is reference Ekman. Specification at pages 10-11. Per working Example 5 “The copper oleate made by [Ekman] was product clear and bright immediately after”. Thus, the Ekman process of Example 6a produces a liquid reaction mixture necessarily meets the limitations of claim 8. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). A
The limitations of claim 10 are clearly met because Ekman Example 6a results in the copper oleate.
The functional limitations of claim 14 are inherently met because the copper oleate of Ekman example 6a is the same product as the only specification Example. Specification at page 9, lines 15-27, Example 2. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claim 15 are met as discussed above.
The limitations of claim 16 are clearly met because Ekman Example 6a teaches reaction of oleic acid with copper carbonate to form copper oleate.
The limitations of claim 17 are inherently met as evidenced by the specification working Examples. Specification working Example 5 is a comparative example of the organometallic salt made according to the United States patent application US2017158980, which is reference Ekman itself. Specification at pages 10-11. Per specification Table 1, working Example 5 shows that after a reaction time of 6 hours, the Ekman process produces copper oleate where in the amount of copper in the copper oleate is 8.05 %, which falls within the claimed range. Specification at page 12. Thus, Ekman necessarily meets the limitations of claim 17. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claim 18 are met because Ekman Example 6a teaches that “[a]t the end of the reaction the copper oleate mixture was filtered and allowed to cool to 60 °C”, Ekman does not specifically state that such cooling results in solidification of the copper oleate product salt. The claim 18 recitation of “to cause the organometallic salt to solidify”, is met because Ekman’s copper oleate is the same product as the specification’s only working examples and would therefore have the same solubility properties.
The specification teaches that:
The obtained metal salt mixture can then be filtered, in order to remove impurities and possibly remaining traces of unreacted reactants, and can then be allowed to cool e.g. to 60° C, to cause the salt to solidify.
Specification at page 6, lines 26-28. In view of the specification teachings, Ekman’s step of “[a]t the end of the reaction the copper oleate mixture was filtered and allowed to cool to 60 °C” necessarily results in the solidifying stated in claim 18. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Claims 11 and 13 Art Anticipated by K. Ekman et al., US 2017/0158980 (2017) (“Ekman”)
Claims 11 and 13 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by K. Ekman et al., US 2017/0158980 (2017) (“Ekman”). Independent claim 11 recites as follows:
Claim 11 A method for preparing a lubricant additive composition comprising mixing the organometallic salt product produced by claim 1, with an activated complex, wherein the activated complex comprises a first metal component and a second metal component, wherein the first metal component comprises the same metal as the organometallic salt product produced by claim 1.
The claim 11 limitation of “the organometallic salt product produced by claim 1” is interpreted as a product-by-process limitation”. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. MPEP § 2113(I). The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). The particle size constraints of the claim 1 copper carbonate (i.e., from about 25 μm to < 30 μm”) are lost upon reaction of the copper carbonate with oleic acid to product the soluble copper oleate salt. Thus, the copper oleate Ekman Example 6a is the same as that of claim 11.
With respect to the claim 11 “activated complex” Ekman teaches a lubricant composition comprising a first metal component and second metal component and may also include at least one of the following: an aliphatic alcohol, a succinimide derivative, an aromatic amine, an epoxy resin and/or a 2-iminosubstituted indoline. Ekman at page 3, [0039]; Id. at page 4, [0051]. Ekman teaches that the second metal component is able to reduce an oxidized form of the metal element being comprised in the first metal component. Ekman at page 5, [0067]. Ekman teaches that the first metal component may be (among others) CuCl2. Ekman at page 3, [0046]. Ekman teaches that the second metal component may be (among others) SnCl4. Ekman at page 5, [0073]
Ekman teaches that the key of the invention is that the two metal compounds (i.e., the first metal component (e.g., CuCl2) and the second metal components (e.g., SnCl4) interact with each other to form an activated complex. Ekman at page 8, [0110]. Ekman teaches that such combination of first metal component and second metal component (the activated complex), preferably assisted by the diphenylamine, acts as a reducing agent in the lubricant composition. Ekman at page 8, [0110].
Eckman’s discloses an “activated complex” that clearly corresponds to the instant claim 11 “activated complex”. See Claim Interpretation above.
Ekman teaches that a metal salt of an organic acid, e.g. copper oleate, is also included in the lubricant composition to provide a source of metal ions that are reduced by the activated complex so as to form reduced-metal particles, preferably nanoparticles (for example, in the case of copper oleate, the copper (II) ions may be reduced by the activated complex to copper (0) nanoparticles) that deposit a tribofilm on metal friction surfaces in order to reduce friction and wear. Ekman at page 8, [0109].
Ekman teaches the additional steps in Example 6a, which are relevant to anticipation of claims 11-13.
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Ekman at pages 22-23, [0294]-[0298]. The final step of Ekman Example 6a (i.e., Ekman at paragraph [0298] meets each and every limitation of claim 11 under a product-by-process analysis.
The limitations of claim 13 are met because the second metal component of the Ekman activated complex comprises tin (i.e., SnCl4).
Applicant’s Argument for the § 102 Rejection
Applicant argues that independent claim 1 as amended recites the feature of reacting the mixture of components in a reaction at a temperature of 100-140°Cfor 3-6 hours, whereby the reaction is complete by 6 hours, which is not taught or suggested by Ekman. Applicant argues that Ekman teaches reacting a metal carbonate with an acid for 16 hours (Examples 6a-e). Applicant argues that in Ekman, the reaction ends after 16 hours, which is evidenced by e.g., [0293, 0301, 0305, 0309, and 0313] of Ekman, which state that the metal carbonate and the acid ("the reactants") were reacted in a reaction and "[a]t the end of the reaction the copper oleate mixture was filtered and allowed to cool to 60° C." Applicant argues that this indicates that in Ekman, the reaction is not complete by 6 hours, as now required by independent claim 1, but rather in 16 hours.
This argument is not persuasive for the following reasons. Per the § 112(b) rejection above, one interpretation of “whereby the reaction is complete by 6 hours” is that the reaction is “complete” when the metal carbonate has reacted with the monocarboxylic acid to the extent that it can under the particular reaction conditions after 6 hours. MPEP § 2143.03(I). Under this interpretation, Ekman Example 6a clearly meets this limitation. Furthermore, specification Example 6 (which repeats Ekman’s Example 6a) teaches that after 6 hours the reference Cu-% (see footnote 1, Cu-% is the weight percent of elemental copper atoms contributed by the copper oleate) is 8.05. Specification at page 12, Table 1. Specification Example 6 also teaches that “If all the copper carbonate reacts with oleic acid the copper concentration should be about 8.5 wt%”. Specification at page 11, lines 20-22. Ekman’s value of 8.05 (as taught by instant specification Example 6) is about 8.5. In this regard, the specification does not provide any indication as to what range is covered by the term "about.". MPEP §2173.05(b) (III)(A). Thus, Ekman’s Example 6 meets the meaning of complete after 6 hours. The subject claim limitation is therefore taught by Ekman.
Maintained 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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, 3-8, 10, 11, 13, 14, and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) alone or Ekman in view of secondary art.
Alternatively, claims 1, 3-8, 10, 11, 13, 14, and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) as above, in further view of A. Rawle, 3.2 Particle Morphology and Characterization in Preformulation, in Preformulation in Solid Dosage Form Development, 145-184 (CRC Press, 2008) (“Rawle”), and/or K. Savjani et al., ISRN Pharmaceutics, 1-10 (2012) (“Savjani”).
Alternatively, claims 1, 3-8, 10, 11, 13, 14 and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman, Rawle and Savjani as above, in further view of Y. Kim et al., KR 20190080206 A (2019) (“Kim”).
K. Ekman et al., US 2017/0158980 (2017) (“Ekman”)
Ekman was discussed in detail above in the § 102 rejection. As noted above, Eckman teaches working Example 6a, which is summarized by the Examiner as follows:
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Ekman at pages 22-23, [0292]-[0293].
Differences between Ekman and Claim 1
Ekman Example 6a meets each and every limitation of independent claim 1 as discussed above in the § 102 rejection. Rejection under § 103 is made here in alternative to the § 102 rejection. MPEP § 2112(III).
As discussed in Claim Interpretation above, per the specification (particularly in view of Examples 5 and 6) the gist of the invention is that smaller metal carbonate particles (e.g., within the claimed range “of 25 μm to < 30 μm”) result in a faster reaction rate than larger metal carbonate particles and where lower temperatures can be employed to effect the reaction. Specification at page 3.
Applicant argues that Ekman Example 6a does specifically teach the following claim 1 limitations of:
Claim 1 . . . [metal carbon carbonate particles] having a particle size of 25 μm to < 30 μm,
- heating the mixture of components to a temperature of 100 – 140 °C,
-reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours, whereby the reaction is complete by 6 hours . . .
Reply at page 7. These limitations are met for the reasons discussed above in the § 102 rejection. However, an alternative rationale is presented here under § 103 that one of ordinary skill is motivated to optimize within the claimed particle size, temperature, and time ranges.
§ 103 Rejection over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) Alone
Claims 1, 3-8, 10, 11, 13, 14, and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) alone.
Claims 1 requires the following particle-size, time and temperature ranges:
Claim 1 . . . [metal carbon carbonate particles] having a particle size of 25 μm to < 30 μm,
- heating the mixture of components to a temperature of 100 – 140 °C,
-reacting the mixture of components in a reaction at a temperature of 100-140°C for 3-6 hours, whereby the reaction is complete by 6 hours . . .
As stated in the § 102 rejection the claim 1 particle size limitation is met because it is almost statistically certain (particularly after Ekman’s vigorous stirring for 16 hours and the specification teaching that commercial samples at or around the instant filing date are about 45 μm ) that Eckman’s 150 g sample of copper carbonate comprises at least two particles that meet the claim 1 limitation of “metal carbonate particles having a particle size of from about 25 μm to < 30 μm”.
The claim 1 time and temperature and time ranges of 100 – 140 °C and 3-6 hours are an obvious variation of Eckman’s 150 °C for 16 hours. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). One of ordinary skill is motivated to lower Ekman’s 150 °C reaction temperature to within the claimed range (for example a reaction temperature of 130 °C) and shorten the reaction time (for example to 5 or 6 hours), because Ekman teaches that copper salts of carboxylic acids (e.g., Cu salts of polyisobutenyl succinic acid) may be somewhat unstable at temperatures of over 140 °C for extended times. Ekman at page 4, [0050] (stating that “It may be necessary, depending upon the salt produced, not to allow the reaction to remain at a temperature above about 140° C for an extended period of time, e.g., longer than 5 hours, or decomposition of the salt may occur”). The time and temperature limitations of claim 1 are therefore obvious over Ekman. MPEP § 2144.05(II)(A)
The additional limitations of dependent claims 3-8, 10, 11, 13, 14, and 16-18 are met for the same reasons discussed above in the § 102 rejection.
Alternative § 103 Rejection over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) in view of Secondary Art Rawle and Savjani
Claims 1, 3-8, 10, 11, 13, 14, and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) in further view of A. Rawle, 3.2 Particle Morphology and Characterization in Preformulation, in Preformulation in Solid Dosage Form Development, 145-184 (CRC Press, 2008) (“Rawle”), and/or K. Savjani et al., ISRN Pharmaceutics, 1-10 (2012) (“Savjani”).
A. Rawle, 3.2 Particle Morphology and Characterization in Preformulation, inPreformulation in Solid Dosage Form Development, 145-184 (CRC Press, 2008)
Rawle teaches that the dissolution rate of a material is governed amongst other parameters by the surface area of the material—the more the surface area, the more rapid the dissolution rate. Rawle at page 150. Rawle teaches that chemical reactions, in general, are speeded up by having finer constituents. Rawle at page 150.
K. Savjani et al., ISRN Pharmaceutics, 1-10 (2012) (“Savjani”)
Savjani teaches that the solubility of drug is often intrinsically related to drug particle size; as a particle becomes smaller, the surface area to volume ratio increases. Savjani at page 3, col. 1. The larger surface area allows greater interaction with the solvent which causes an increase in solubility. Id. Conventional methods of particle size reduction, such as comminution and spray drying, rely upon mechanical stress to disaggregate the active compound. Id. Particle size reduction is thus permitting an efficient, reproducible, and economic means of solubility enhancement.
Obviousness Rationale
Eckman Example 6a does not specifically state the particle size of the CuCO3 employed. As discussed in Claim Interpretation above, per the specification (particularly in view of Examples 5 and 6) the gist of the invention is that smaller metal carbonate particles (e.g., within the claimed range “of 25 μm to < 30 μm”) result in a faster reaction rate than larger metal carbonate particles and where lower temperatures can be employed to effect the reaction. Specification at page 3.
The claim 1 metal carbonate size “of 25 μm to < 30 μm” is not a patentable variation of Ekman because particle size is result-effective variable that one of ordinary skill is motivated to optimize because the secondary art teaches the unremarkable result that particle size reduction results in increase particle solubility and a faster reaction rate. For example, Rawle teaches that chemical reactions, in general, are speeded up by having finer constituents. Rawle at page 150.
One of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05; see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Generally, with respect to optimization of result-effective variables, changes to the prior art involving degree is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. MPEP § 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929). For example, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).5 Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. Id. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. Id. There are several ways by which the applicant may rebut that presumption, for example, a modification of a process parameter may be patentable if it produces a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. E. I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018); see also MPEP § 2144.05(III)(A); MPEP § 716.02(c) (to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (citing In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)).
Independent claim is obvious over Ekman in further view of Rawle and Savjani because ordinary skill is motivated to optimize Ekman’s reaction of copper carbonate with oleic acid by reducing the particle size of the copper carbonate (for example, to within the claimed particle size range “of 25 μm to < 30 μm”) in order to improve the solubility and reaction kinetics in view of the teaching by Rawle and Savjani that smaller particle size improves solubility and can improve reaction kinetics. For example, Rawle teaches that chemical reactions, in general, are speeded up by having finer constituents. Rawle at page 150. Here, one of ordinary skill is aware of the unremarkable property that the particle size of the copper carbonate is directedly related to the concentration of dissolved copper carbonate in the oleic acid by virtue of surface area; for example, as taught by Rawle and Savjani. A prima facie case of obviousness is established and the burden is on Applicant to demonstrate that the claimed particle size limitations are critical (generate an unexpected result). MPEP § 716.02(c) (to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (citing In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960))
The additional limitations of dependent claim 3-8, 10, 11, 13, 14, and 16-18 are met for the same reasons discussed above in the § 102 rejection.
Second Alternative § 103 Rejection over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) in view of Secondary Art Rawle, Savjani, and Kim
Claims 3-8, 10, 11, 13, 14, and 16-18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over K. Ekman et al., US 2017/0158980 (2017) (“Ekman”) in view of Rawle and Savjani as above in further view of Y. Kim et al., KR 20190080206 A (2019) (“Kim”).
Y. Kim et al., KR 20190080206 A (2019) (“Kim”)
An English-language machine (Google) translation is attached as the second half of reference Kim. Kim thus consists of 19 total pages (including the English-language translation portion). Accordingly, this Office action references Kim page numbers in the following format “xx of 19”.
Kim teaches a method for producing basic copper carbonate having various sizes and shapes using copper sulfate. Kim at page 14 of 19. Kim teaches that the purity of the basic copper carbonate formed is higher than that used in prior art methods. Kim at page 16 of 19, lines 1-2. And that basic copper carbonate of high purity can be obtained. Kim at page 16 of 19, last two lines.
Kim teaches that basic copper carbonate was synthesized by varying the concentrations of copper sulfate and soda ash varying from 0.1 M to 1 M. Table 1 (table summarizing the concentration of the raw materials, the shape and the particle size of the reaction products in this embodiment). Kim at page 16 of 19, 6th paragraph. Kim teaches that the average particle size was measured by using a particle size analyzer. Kim at page 16 of 19, 6th paragraph. Per Kim Table 1, sample 3 are basic copper carbonate particles (of 20 to 30 μm) which overlaps with the claimed size ranges. Kim at page 6 of 19 (last column in Table 1, which is headed as “average particle size”)6; see also, Kim Fig. 9 at page 11 of 19 (showing particle size distribution curve).
Obviousness Rationale
Independent claim 1 is obvious over the cited art because ordinary skill is motivated to employ the basic copper carbonate produced by the method of Kim Sample 3 of particle size from 20 to 30 μm, which overlaps with the claimed size ranges, in Example 6a of Ekman. Note that Ekman teaches that the salts themselves may be basic, neutral or acidic. Ekman at page 4, [0049]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). One of ordinary skill is so motivated because Kim teaches that the purity of the basic copper carbonate formed is higher than that used in prior art methods. Kim at page 16 of 19, lines 1-2. Kim’s basic copper carbonate is merely a convenient source of copper carbonate.
The additional limitations of dependent claim 3-8, 10, 11, 13, 14, and 16-18 are met for the same reasons discussed above in the § 102 rejection.
Applicant’s Argument for the § 103 Rejection
In addition to the above-addressed § 102 arguments, Applicant further argues that a skilled artisan would not have found it obvious to complete the reaction of Ekman by 6 hours, as Ekman's metal