DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/12/2024 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Boffa (US 2006/0025313) in view of Elnagar et al. (US 2006/0276677)
In regards to claim 1, Boffa teaches lubricating oil composition for internal combustion engines comprising a major amount of base oil, about 0.1 to 10% of overbased alkaline earth metal alkyl aryl sulfonate detergent having tbn of from about 25 to 500 (i.e., neutral or overbased), about 0.02 to 10% by weigh of oxymolybdenum complex, about 0.2 to 10% by weight of antioxidant selected from diphenylamine (abstract). Boffa does not teach that the diphenylamine is has an alkylated group comprising a propylene tetramer.
Elnagar teaches alkylated arylamines that are useful as antioxidant in engine oils etc., similar to Boffa [title, 0003]. The antioxidants are alkylated diphenylamines comprising propylene tetramer [0007, 0045]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used the diphenylamines of Elnagar as antioxidant in the composition of Boffa, as Boffa teaches the presence of diphenylamines for use as antioxidant in engine oils.
In regards to claim 2, Boffa and Elnagar combined teach the composition. The oxymolybdenum complex which can be molybdenum succinimide provides the limitation of the claim [0041, 0042]. Boffa also teaches the antioxidants can further comprise molybdenum dithiocarbamate [0088]. The antioxidants may also comprise phenolic antioxidants such as nonyl phenol [0188].
In regards to claim 4, Boffa and Elnagar combined teach the composition. Boffa teaches the sulfonates are petroleum sulfonates [0033, 0034].
In regards to claims 5, 6, Boffa and Elnagar combined teach the composition having the claimed limitations as previously stated.
In regards to claim 7, Boffa and Elnagar combined teach the composition having the molybdenum complex such as molybdenum succinimide which is present in amounts of the claim.
In regards to claim 8, Boffa and Elnagar combined teach the composition having the claimed limitation as previously stated.
In regards to claim 9, Boffa and Elnagar combined teach the composition. Boffa teaches the presence of the claimed additives [0118].
In regards to claim 10, Boffa and Elnagar combined teach the composition. The sulfonate can be linear alkylaryl sulfonate [0030].
In regards to claims 11 – 20, Boffa and Elnagar combined teach the composition having the claimed ingredients and which are useful in internal combustion engines, and thus when they are added would intrinsically provide the claimed method of intrinsically improving the oxidation stability of the oil.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious that diphenylamine alkylated with propylene tetramer would have been better than nonylated diphenylamine in sulfonate detergent which is synergistic. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
The examples comprise specific blends at specific amounts while the claims do not particularly limit the amount of the claimed ingredients.
The results are not persuasive.
The result compares nonylated (C9) diphenylamine with propylene tetramer (C12) diphenylamine and concludes that the C12 group performed better in sulfonate detergent which is synergistic. However, the comparison does not particularly demonstrate synergism as the chain lengths for the olefins are different.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims and that demonstrates synergistic results sufficient to rebut the case of obviousness.
Applicant previously argued that there was no motivation to combine Elnagar with Boffa nor to particularly select propylene tetramer as Elnagar teaches other alkylene groups. The argument was not persuasive.
Elnagar is similarly drawn to engine oils comprising alkylated diphenylamine antioxidants as in Boffa. While Elnagar teaches a few useful alkylating groups, propylene tetramer was taught as a preferred group (See Examples 6 & 7). Thus, Elnagar provides motivation to select propylene tetramer from the list of alkylating groups.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771