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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed February 25, 2026, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Nakada et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that Nakada does not explicitly disclose a viscosity-index improving agent comprising “an ester oil (Z)” and notes that the reference teaches viscosity-index improver compositions comprising a hydrocarbon oil, not an ester oil. The Office disagrees based on the finding that Nakada explicitly discloses that the composition comprises a viscosity index improver and a base oil, wherein the base oil may be an “ester-based” oil ([0070]). Applicant notes that Nakada teaches examples using hydrocarbon mineral oils and does not disclose examples comprising an ester-based oil. However, Nakada contemplates that the base oil may be chosen from three genera (i.e., mineral oils, synthetic lubricating oils, ester-based synthetic lubricating oils). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). In the instant case, a person having ordinary skill in the art would at once envisage the claimed arrangement of a viscosity index improver and an ester oil based on Nakada’s requirement of a viscosity index improver and a base oil selected from one of only three genera, including ester-based oils ([0070]).
Applicant alleges that the mixture of the copolymer (A) and ester oil (Z) give rise to unexpected results and thus argues that claim 1 as a whole would not have been obvious over Nakada. As it is the position of the Office that Nakada anticipates the combination of the claimed copolymer (A) and ester oil (Z) (see above), the unexpected results alleged by applicant are not relevant to the rejection under 35 U.S.C. 102 (see MPEP 2131.04). Accordingly, the rejection is maintained. However, even if, arguendo, the unexpected results were considered, “[a]ny differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected” (see MPEP 716.02). In the instant case, Applicant compares properties (e.g., kinematic viscosity, gelation index, HTHS viscosity) of compositions comprising base oils that are hydrocarbon oils to base oils that are ester oils. Applicant alleges that Nakada does not provide a reason to expect an ester oil (Z) to result in these properties. A person having ordinary skill in the art would reasonably expect the properties of the composition to vary when selecting base oils having different chemical structures. It is also noted that the differences in the properties alleged by applicant appear to be a difference in degree rather than a difference in kind. Finally, It is noted that “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support” (see MPEP 716.02(d)). In this instant case, it would appear that the claimed ester oil (Z) may be present in any amount and is not commensurate in scope with the examples within the instant specification, which recites three species of ester oil as a narrower range of concentrations. “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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)” (see MPEP 716.02(d) III).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7, 9-11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakada et al. (JP-2017031400, English translation provided for citations, hereinafter referred to as “Nakada”).
As to Claim 1: Nakada teaches a viscosity index improver composition comprising a polymer (A) having an ethylenically unsaturated monomer (a) represented by general formula (1) (reproduced below from the foreign document pg. 1):
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wherein Nakada teaches that the identity or value for R1, X1, R2, and p may be, inter alia, R1 = hydrogen or methyl; X1 = -O-; R2 = a residue in which one hydrogen atom has been removed from a hydrocarbon polymer having 1,2-butylene as an essential structural unit; and p = 0 or 1 ([0005]), thus reading on the claimed polyolefin-based monomer (a) represented by formula (1). Nakada further teaches that the above monomer (a) may be copolymerized with one or more constituent monomers including a (meth)acrylic acid alkyl ester (d) ([0031]) which may be n-butyl (meth)acrylate ([0039]), which reads on the claimed monomer (b) represented by formula (2) wherein R3 = a methyl group; X2 = -O-; R4 = C4 alkyl group. Nakada further teaches that the above monomer (a) may also be copolymerized with a monomer (c) which may be 2-ethyoxyethyl (meth)acrylate which reads on the claimed monomer (c) represented by formula (3) wherein R5 = methyl; X3 = -O-; R6 = C2 alkyl; and R7 = C2 alkyl. Nakada further teaches that the above monomer (a) may be copolymerized with one or more constituent monomers including a (meth)acrylic acid alkyl ester (d) ([0031]) which may be ethyl (meth)acrylate ([0039]) which reads on the claimed monomer (b) represented by formula (2) wherein R3 = a methyl group; X2 = -O-; R4 = C2 alkyl group. Nakada further teaches that the composition further comprises a base oil which may be an ester-based synthetic lubricating oil ([0070]), which reads on the claimed ester oil (Z).
As to Claim 2: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches exemplary compositions of a polymer (A) diluted in a base oil ([0078]) to a concentration of, e.g., 23 wt% polymer (A) (Foreign reference Table 2, Example 1), which yields a weight ratio of 23/77, which is within the claimed range.
As to Claim 3: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches that the polymer (A) having an ethylenically unsaturated monomer (a) represented by general formula (1) (reproduced below from the foreign document pg. 1):
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wherein R2 = a residue in which one hydrogen atom has been removed from a hydrocarbon polymer having 1,2-butylene or isobutylene groups as an essential structural unit; and p = 0 or 1 ([0005]) includes said isobutylene/1,2-butylene groups in an amount of 50 mol% or more ([0012]), which is within the claimed range.
As to Claim 4: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches that the polymer (A) has a specific solubility parameter (SP) in the range of 7.0 to 9.0 (cal/cm3)1/2 ([0019]), which is within the claimed range. Nakada teaches that the SP value is determined based on the relative molar fractions of the constituent monomer units ([0019]).
As to Claim 7: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches that the above monomer (a) may be copolymerized with one or more constituent monomers including a (meth)acrylic acid alkyl ester (e) which may be, inter alia, n-dodecyl (meth)acrylate ([0040]), which reads on the claimed (meth)acryloyl monomer (e) having a C12 straight-chain alkyl group.
As to Claim 9: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches various exemplary polymer (A) having a molecular weight within the claimed range (Foreign reference Table 2, Example 1, Mw = 55 x 104 g/mol).
As to Claim 10: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches that the composition may comprise a polymer (B) in addition to the polymer (A), wherein said polymer (B) may be a (meth)acrylate copolymer other than (A) ([0068]) present in an amount of 0.01 to 30 wt% based on the weight of (A) ([0069]).
As to Claim 11: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada further teaches that the absolute value of the difference between the solubility parameter value of the polymer (A) and the base oil is preferably 1.0 to 1.5 (cal/cm3)1/2 ([0064]), which is within the claimed range.
As to Claim 12: Nakada teaches the viscosity-index improving agent of claim 1 (supra).
Nakada teaches that the composition further comprises a base oil which may be an ester-based synthetic lubricating oil ([0070]), which reads on the claimed ester oil (Z). Nakada further teaches that a mixture of oils may be used, and contemplates both hydrocarbon-based and ester-based oils ([0070]), which reads on the claimed “further containing a hydrocarbon oil.”
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakada et al. (JP-2017031400, English translation provided for citations, hereinafter referred to as “Nakada”).
As to Claim 13: Nakada teaches a viscosity index improver composition comprising a polymer (A) having an ethylenically unsaturated monomer (a) represented by general formula (1) (reproduced below from the foreign document pg. 1):
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wherein Nakada teaches that the identity or value for R1, X1, R2, and p may be, inter alia, R1 = hydrogen or methyl; X1 = -O-; R2 = a residue in which one hydrogen atom has been removed from a hydrocarbon polymer having 1,2-butylene as an essential structural unit; and p = 0 or 1 ([0005]), thus reading on the claimed polyolefin-based monomer (a) represented by formula (1). Nakada further teaches that the above monomer (a) may be copolymerized with one or more constituent monomers including a (meth)acrylic acid alkyl ester (d) ([0031]) which may be n-butyl (meth)acrylate ([0039]), which reads on the claimed monomer (b) represented by formula (2) wherein R3 = a methyl group; X2 = -O-; R4 = C4 alkyl group. Nakada further teaches that the above monomer (a) may also be copolymerized with a monomer (c) which may be 2-ethyoxyethyl (meth)acrylate which reads on the claimed monomer (c) represented by formula (3) wherein R5 = methyl; X3 = -O-; R6 = C2 alkyl; and R7 = C2 alkyl. Nakada further teaches that the above monomer (a) may be copolymerized with one or more constituent monomers including a (meth)acrylic acid alkyl ester (d) ([0031]) which may be ethyl (meth)acrylate ([0039]) which reads on the claimed monomer (b) represented by formula (2) wherein R3 = a methyl group; X2 = -O-; R4 = C2 alkyl group. Nakada further teaches that the composition further comprises a base oil which may be an ester-based synthetic lubricating oil ([0070]), which reads on the claimed ester oil (Z).
Nakada further teaches that the viscosity-index improving agent may comprise, inter alia, additives including detergents, dispersants, antioxidants, oiliness improvers, friction and wear modifiers, extreme pressures agents, antifoaming agents (i.e., defoamer), demulsifiers, and corrosion inhibitors ([0074]).
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.
Claim(s) 5, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada et al. (JP-2017031400, English translation provided for citations, hereinafter referred to as “Nakada”).
As to Claim 5: Nakada teaches the viscosity-index improving agent of claim 1 (see above).
Nakada further teaches that the kinematic viscosity of the base oil which reads on the claimed ester oil (Z) (see above) is within the range of 2 to 6 mm2/sec ([0071]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Nakada suggests, that the overlapping portion is a useable range for the viscosity of a base oil suitable for use in viscosity index improving compositions in automotive applications.
As to Claim 6: Nakada teaches the viscosity-index improving agent of claim 1 (see above).
Nakada further teaches that the amounts of the components which read on the claimed monomers (b), (c), and (d) may be present in amounts relative to copolymer (A):
Monomer (d) of Nakada (reads on the instantly claimed monomer (b)): 1 to 70 wt% ([0062]);
Monomer (c) of Nakada (reads on the instantly claimed monomer (c)): 1 to 50 wt% ([0062]);
Monomer (d) of Nakada (reads on the instantly claimed monomer (d)): 1 to 70 wt% ([0062]).
As Nakada teaches that one or more monomers of each of monomers (b)-(e) may be copolymerized with monomer (a) ([0031]), Nakada is construed to embrace wherein more than one monomer may be selected from each of (a)-(e) such that the sum of said monomers is within the amounts for that monomer. It is also noted that Nakada teaches various exemplary compositions comprising multiple monomers from one group (see Table 2). For example, Nakada teaches wherein the composition may comprise monomer (d) which may n-butyl (meth)acrylate or ethyl (meth)acrylate an amount of 1 to 70 wt% ([0062]), wherein selection of one or more of said monomer would yield a weight ratio of n-butyl (meth)acrylate:ethyl (meth)acrylate 0:75 to 75:0. Thus, Nakada teaches an amount for the monomers which read on the claimed weight ratio of monomers (b), (c), and (d). For example:
50
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%
N
a
k
a
d
a
c
+
1
w
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%
e
t
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l
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a
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y
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69
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b
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m
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t
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a
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y
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≈
0.74
Or, for example:
50
w
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%
N
a
k
a
d
a
c
+
37.5
w
t
%
e
t
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37.5
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2.3
This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Nakada suggests, that the overlapping portion is a useable range for relative amounts or ratios of monomers which read on the claimed monomers (b), (c), and (d) resulting in a copolymer with properties suitable for use in viscosity index improving compositions in automotive applications.
As to Claim 8: Nakada teaches the viscosity-index improving agent of claim 7 (see above).
Nakada further teaches that the amounts of the components which read on the claimed monomers (a), (b), (c), (d), and (e) may be present in amounts:
Monomer (a) of Nakada (reads on the instantly claimed monomer (a)): 1 to 50 wt% ([0062])
Monomer (d) of Nakada (reads on the instantly claimed monomer (b)): 1 to 70 wt% ([0062]);
Monomer (c) of Nakada (reads on the instantly claimed monomer (c)): 1 to 50 wt% ([0062]);
Monomer (d) of Nakada (reads on the instantly claimed monomer (d)): 1 to 70 wt% ([0062]);
Monomer (e) of Nakada (reads on the instantly claimed monomer (e)): 1 to 40 wt% ([0062]).
These ranges overlaps with the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Nakada suggests, that the overlapping portion is a useable range for relative amounts or ratios of monomers which read on the claimed monomers (a), (b), (c), (d), and (e) resulting in a copolymer with properties suitable for use in viscosity index improving compositions in automotive applications.
Claim(s) 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada et al. (JP-2017031400, English translation provided for citations, hereinafter referred to as “Nakada”) in view of Lammle et al. (US20130190217, hereinafter referred to as “Lammle”).
As to Claim 14-17: Nakada teaches the viscosity-index improving agent of claim 1 (see above).
Nakada teaches that the composition further comprises a base oil which may be an ester-based synthetic lubricating oil ([0070]), which reads on the claimed ester oil (Z).
However, Nakada is silent towards the structure of said ester oil.
Lammle teaches a related lubricating oil based on ester oils wherein the ester oil is formed from the esterification product of at least one monoalcohol with at least one polycarboxylic acid and/or an esterification product from the esterification of at least one monocarboxylic acid with at least one dialcohol (Abstract). Lammle teaches exemplary esters formed from adipic acid (i.e., a C6 aliphatic saturated dicarboxylic acid) and isodecanol (i.e., a C10 aliphatic saturated monohydric alcohol) (bottom of pg. 10, [0177]) and from isodecanoic acid (i.e., a C10 aliphatic saturated monovalent carboxylic acid) and 1,6-hexanediol (i.e., a C6 aliphatic saturated dihydric alcohol) (bottom of pg. 12, [0179]). Nakada and Lammle are considered analogous art because they are directed towards the same field of endeavor, namely lubricating oil compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a blend of ester-oils having the structure of the claimed ester oils (z1) and (z2) based on the finding that Nakada teaches that the viscosity-index improving composition comprises an ester-based lubricating base oil ([0070]) and Lammle teaches that ester oils having the structure of the claimed ester oils (z1) and (z2) are recognized within the art as suitable for the intended purpose of lubricating base oil compositions. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claim 18: Nakada teaches the viscosity-index improving agent of claim 1 (see above).
Nakada teaches that the composition further comprises a base oil which may be an ester-based synthetic lubricating oil ([0070]), which reads on the claimed ester oil (Z).
However, Nakada is silent towards the structure of said ester oil.
Lammle teaches a related lubricating oil based on ester oils wherein the ester oil is formed from the esterification product from the esterification of at least one monoalcohol with at least one polycarboxylic acid (Abstract). Lammle teaches exemplary esters formed from adipic acid (i.e., a C6 aliphatic saturated dicarboxylic acid) and isodecanol (i.e., a C10 aliphatic saturated monohydric alcohol) (bottom of pg. 10, [0177]), the structure of which reads on the claimed diisodecyl adipate. Nakada and Lammle are considered analogous art because they are directed towards the same field of endeavor, namely lubricating oil compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a blend of ester-oils having the structure of the claimed ester oils (Z) based on the finding that Nakada teaches that the viscosity-index improving composition comprises an ester-based lubricating base oil ([0070]) and Lammle teaches that ester oils having the structure of the claimed ester oils (Z) are recognized within the art as suitable for the intended purpose of lubricating base oil compositions. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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