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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 in the reply filed on 4/24/2026 is acknowledged.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/24/2026.
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) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scholler (US 2020/0216596) as evidenced by Radano (US 2012/0053100).
Scholler teaches oil compositions comprising a comb polymer (abstract) and includes examples where a comb polymer formed with about 75 wt% butyl methacrylate, lauryl methacrylate, styrene, and a macromonomer (Table 1) is present with Plastomoll DNA (¶284). Plastomoll DNA is diisononyl adipate, a group V base oil (¶258) having a kinematic viscosity at 40˚C of 10.73 cSt as evidenced by Table 8 of Radano where 1 cSt is 1 mm2/s.
Scholler teaches that the comb polymer is polymerized in the presence of Plastimoll DNA (¶ 284) which meets the limitations of claim 2.
Additionally, it is noted that claim 2 is recited in the product-by-process format by use of the language, “obtained by polymerizing…” Case law holds 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Scholler teaches examples where the Mw of the copolymers is 316,000 to 482,000 (able 3) which meet the range in claim 3. It is noted that the values in Table 3 use a period “.” instead of a comma “,”. However, this is a clear typographical error as polymers have molecular weights larger than 316-482.
Diisononyl adipate (Plastomoll DNA) is an ester of adipic acid and isononyl alcohol and thus meets claim 4.
Scholler teaches the compositions are lubricant compositions (abstract) and are added to lubricating oil compositions (¶ 302-303) and meet the limitation of an additive for a lubricating oil additive.
Additionally, the phrase “lubricating oil additive composition” does not provide any structural distinctions. Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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