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 .
The office action is in response to the amendment filed October 31, 2025 in which claims 1, 38 and 40 were amended and claims 51-52 were added.
The rejections of the claims under 35 USC 112(b) and 112(d) are withdrawn in view of the amendment to the claims.
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.
Claims 1-3, 12-17, 19-49 and 51-52 are rejected under 35 U.S.C. 103 as being unpatentable over Bertram (US 20110245120-appears on PTO 1449) in view of Honda (US 20180100112-appears on previous PTO-892) and Kamano (US 20160024417-appears on current PTO-892).
Bertram teaches a lubricating oil composition having a phosphorus content of up to 0.12 wt %, and a sulfated ash content of up to 1.2 wt %. The composition comprising (a) a major amount of an oil of lubricating viscosity; (b) an alkali metal or alkaline earth metal alkyl salicylate lubricating oil detergent providing from 7-15 mmol salicylate soap per kilogram of lubricating oil composition; and (c) one or more dispersants providing the lubricating oil composition with from at least 0.12 wt % to 0.20 wt % atomic nitrogen, based on the weight of the lubricating oil composition (see abstract). The lubricating oil composition is suitable for use in diesel engines (see para 0002; claims 10-12; para 0078).
The oil of lubricating viscosity may be selected from Group I, II, III, IV or V base stocks, synthetic ester base stocks or mixtures thereof. The base stock will have a viscosity preferably of 3-12, more preferably 4-10, most preferably 4.5-8 mm2/s (cSt.) at 100 C (see para 0009).
The composition comprises at least one alkali metal or alkaline earth lubricating oil salicylate detergent. The metal salicylate detergent may be C8-C30 alkyl salicylates or mixtures thereof. Preferably, the salicylate detergent will be a calcium and/or magnesium salicylate and will have a Total Base Number at 100% active mass (TBN) between 10 and 1000. The amount of metal salicylate detergent used can vary from about 0.1 to about 5 wt %. The amount of metal salicylate detergent used in the present invention provides the composition with at least 8 mmol soap per kilogram of the finished oil composition (see para 0017-0019).
Other metal containing detergents, such as metal sulfonates, may be present in the lubricating composition. Advantageously, the composition comprises a mixture of detergent types such as a mixture of metal salicylate and metal sulphonate detergents. The additional detergents may be either calcium or magnesium metal salts (see para 0021). The total soap content of the lubricating oil is suitably no more than 1.5 wt % (see para 0028).
Bertram teaches that the oil composition contains ashless dispersants such as succinimide dispersants (see para 0029-0030). The dispersant may be further post treated by boration. Useful dispersant contain from about 0.05 to about 2.0 mass % boron(see para 0032).
Preferred dispersants are borated or non-borated polyisobutenyl succinimide dispersants wherein the polyisobutenyl has a number average molecular weight (Mn) of about 400 to 3,000 (see para 0037). The dispersant comprises a combination of dispersants, the mixture suitable comprises a low molecular weight dispersant and a high molecular weight dispersant. A low molecular weight dispersant is a dispersant with a polymeric hydrocarbon backbone having a number average molecular weight (Mn) of about 500 to 1750. A high molecular weight dispersant is a dispersant with a polymeric hydrocarbon backbone having a number average molecular weight (Mn) of about 1800 to 3000. In one embodiment, the total dispersant present in the lubricating oil composition comprises less than 40 mass of low molecular weight dispersants (see para 0039).
Bertram contains standard oil additives such as antioxidants, friction modifiers and Zn dialkyldithiophosphates that introduces about 0.02 to 0.12 wt% (200-1200 ppm) of phosphorus into the lubrication oil composition (see para 0048, 0049, 0063). Examples 1 and 2 substantially set forth the present invention. Bertram meets the limitations of the claims other than the differences that are set forth below.
Bertram does not specifically teach the HTHS of less than 2.7mPa*s. However, Honda meets this limitation in a similar lubricating oil composition for diesel engines .
Honda teaches a lubricating oil composition that may contain succinimide dispersants ( see para 0059 ); alkaline earth metal salicylates and sulfonates (see para 0055); phosphorus antiwear agents (see para 0056) and having a kinematic viscosity at 100 C of less than 8.3 cSt (see para 0050). The composition has a HTHS at 150 C of 2.0 to 3.5 mPas*s, as measured by ASTM D4683( see para 0038).
It would have been obvious to one of ordinary skill in the art to produce a lubricating oil composition having a HTHS viscosity of less than 2.7 mPa*s because Honda teaches that lubricating oil compositions such as those set forth in Bertram have such HTHS viscosities and that by controlling the HTHS viscosity within the above range that proper fuel efficiency characteristics can be maintained while also ensuring engine durability.
With respect to the TBN of the dispersants, it would be reasonable to expect that the succinimide dispersants of Bertram would meet the TBN limitations because he teaches low molecular weight and high molecular weight succinimides that encompass those of the present invention.
Bertram does not specifically teach specific PIB succinimides wherein the molecular weight is as claimed. However, Kamano teaches this difference.
Kamano teaches a lubricating oil composition for diesel engines comprising PIB succinimide dispersants and metallic detergents (see abstract; para 0001). The mass-average molecular weight of the alkenyl group is 500 to 3000 (see para 00028). When the mass-average molecular weight is 500 or more the solubility in the base oil is high and when it is 3000 or less, the detergent effect can be expected (see para 0029 and 0032). The alkenyl group includes, for example, a polybutenyl group or a polyisobutenyl group, with polyisobutenyl being preferred.
It would have been obvious to one of ordinary skill in the art to have selected PIB succinimides derived from and 1800-2100 Mn PIB and a PIB succinimide derived from PIB with an Mn less than 1600 because Kamano teaches that when the molecular weight of the PIB is 500 or more the solubility in the base oil is high and when the molecular weight is 3000 or less, the detergent effect can be expected.
With respect to claim 52 and the method by which the second PIB succinimide is prepared, it is well settled that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the examiner has not pointed to any express disclosure in the reference to explain why it would have been obvious to one of ordinary skill in the art to select the claimed invention. Applicant argues that the ranges disclosed in Ex 1 and 2 of Bertram are directed to limited ranges.
The examiner has set forth a prima facie case of obviousness in the above discussion of modified Bertram and will not repeat that discussion here. With respect to the examples, it is well settled that a reference is relied upon for all that it teaches and is not limited to the examples therein. Bertram teaches use of 2 PIB succinimides and Kamano teaches why the molecular weight of the PIB substituents are important for producing a lubricating oil composition that improves engine performance.
With respect to the total sulfated ash of the present claims being less than those values in Examples 1 and 2 of Bertram, Bertram teaches that the sulfated ash content may be up to 1.2%. This teaching encompasses amount within the claimed 0.3 to 0.9 wt% because in the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18027186/20260115