DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/18/2026. In particular, claim 1 has been amended to recite the comb shaped polymer (X) comprises structural units derived from a monomer other than (A), (B) and (C) in less than 0.1 mol%. Additionally, new claims 12-20 have been added. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
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.
Claim(s) 1-5, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholler (US 2019/0203148) as evidenced by Radano (US 2012/0053100).
Scholler teaches comb polymers (abstract) and compositions of the comb polymer with an additive such as a base oil including Plastomoll DNA (¶146-149). 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 the comb polymers have (a) 10-25 wt% of repeating units derived from esters of (meth)acrylic acid and hydroxylated hydrogenated polybutadiene, (b) 0.5-11 wt% C4-18 alkyl acrylates, (c) 0-1 wt% methyl methacrylate, (d) 55-70 wt% repeat units derived from butyl (meth)acrylate, (e) 5-20 wt% repeating units derived from C10-C30 alkyl (meth)acrylates, and (f) 0-2 wt% repeating units derived from styrene monomers (¶ 28-48).
The component (a) of Scholler corresponds to the claimed macromonomer (C). The components (b)-(d) of Scholler corresponds to the claimed structural unit (a). The component (e) of Scholler corresponds to the claimed structural unit (b).
Scholler does not explicitly provide an inventive example with only short chain alkyl methacrylate (a), long chain alkyl methacrylate (b), and macromonomer (c). However, Scholler teaches the amount of methyl methacrylate and styrene include 0 wt% (¶31 and 34) which would give polymers of only short chain alkyl methacrylate (a), long chain alkyl methacrylate (b), and macromonomer (c) (corresponding to repeat units (d), (e) and (a) of Scholler, respectively). It would have been obvious to one of ordinary skill in the art to use the amounts of 0 wt% for methyl methacrylate and styrene because Scholler teaches these are suitable amounts (¶31 and 34) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Alternatively, the amounts of 0-1 wt% of styrene taught by Scholler overlaps the range of less than 0.1 mol% recited in the instant claims. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Scholler suggests the monomer amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Scholler. See MPEP 2123.
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 200,000-800,000 (¶57) which meet the range in claim 3. It is noted that the values Scholler use a period “.” instead of a comma “,”. However, this is a clear typographical error.
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 (abstract) 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).
It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Scholler suggests the monomer amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Scholler. See MPEP 2123.
Scholler teaches suitable monomers include butyl acrylate, C12-15 alkyl methacrylate, (¶ 261-262) and a macromonomer has a molecular weight of about 4750 (¶ 294). When the butyl acrylate is present in 70 wt%, the C12-15 alkyl methacrylate is 5 wt%, and the macromonomer is 25 wt%, the corresponding mol% of butyl methacrylate is about 95.2 mol%, the amount of lauryl methacrylate is about 3.8 mol%, and the amount of macromonomer is about 1.0 mol%. This represents a point near the upper endpoint of a range of butyl methacrylate when converted to mol% and gives ranges which overlap claims 15-20.
Response to Arguments
Applicant's arguments filed 9/18/2026 have been fully considered but they are not persuasive because the rejection above is over Scholler (US 2019/0203148) which does not require a grafting reaction.
Allowable Subject Matter
Claims 12-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 12-14 recites the amount of structural unit (a) is 85 mass% or more, 94 mass% or more, or 95 mass% or more of the total structural units of the comb polymer.
The closest prior art includes Scholler (US 2019/0203148) and Scholler (US 2020/0216596).
Scholler ‘148 teaches comb polymers (abstract) and compositions of the comb polymer with an additive such as a base oil including Plastomoll DNA (¶146-149). 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 ‘148 teaches the comb polymers have (a) 10-25 wt% of repeating units derived from esters of (meth)acrylic acid and hydroxylated hydrogenated polybutadiene, (b) 0.5-11 wt% C4-18 alkyl acrylates, (c) 0-1 wt% methyl methacrylate, (d) 55-70 wt% repeat units derived from butyl (meth)acrylate, (e) 5-20 wt% repeating units derived from C10-C30 alkyl (meth)acrylates, and (f) 0-2 wt% repeating units derived from styrene monomers (¶ 28-48).
Scholler ‘148 teaches 55-70 wt% repeat units derived from butyl (meth)acrylate which falls outside the ranges recited in claims 12-14.
Scholler ‘596 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 ‘596 teaches the comb polymer includes units B which are grafted to the polymer (¶16) and includes structural units derived from a polar unsaturated monomer of an anhydride or diester (¶ 23-25). Thus, Scholler ‘596 does not meet the claimed limitation where structural units other than (A), (B), and (C) are less than 0.1 mol% of the comb polymer.
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.
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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