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 amendment dated 12/04/2025 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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 – 5, 8 – 13, 15 – 22, 55 – 58 are rejected under 35 U.S.C. 103 as obvious over Brobey et al. (WO 2019/173605)
In regards to claim 1, Brobey teaches lubricating oil composition comprising natural or synthetic basestock such as polyalphaolefins (PAOs) etc. [0204, 0205]. The composition comprises an ethylene copolymer which comprises ethylene in preferred amounts of from about 40% to about 70% and has a molecular weight Mw(LS) of preferably from about 30,000 g/mol to about 450,000 g/mol [0182, 0184]. It has a polydispersity (Mw/Mn) of preferably greater than 2 and up to about 6, and branching index g’vis of about 0.95 or less, such as from about 0.4 to about 0.6 preferably [0186, 0187]. The copolymer is a long-chain branched polyolefin copolymer [0012, 0013]. The claimed ranges are obviated as they are very close or overlapping the limitations in Brobey. For instance, a limitation of about 0.95 or lower obviates a limitation of 0.96 or higher, as “about 0.95” includes “0.96”. Basestock can have Kv100 of from 4 to 1000 cSt [0206, Table].
In regards to claim 2, Brobey teaches the composition having the copolymer with limitations a) to d) as previously stated. The copolymer has a shear stability index (30 cycles) of less than about 60 or less than about 35 or less than about 15 or less [0189, 0209].
In regards to claim 3, Brobey teaches the composition having one or more of the copolymers and wherein the copolymers have ethylene contents overlapping the claimed ranges as previously stated [0209]. Thus, the ethylene content of one copolymer can vary from that of a second [see 0180, 0200].
In regards to claim 4, Brobey teaches the composition comprising ethylene/propylene copolymers [0180, 0200].
In regards to claim 5, Brobey teaches the composition. While aluminum-based additives such as scavengers may be present, they are optional and the composition does not require the presence of aluminum.
In regards to claims 8, 9, Brobey teaches the composition with the copolymers having kinematic viscosity at 100℃ (Kv100) of from about 0 to about 20 cSt or preferably from 8 cSt to about 14 cSt and base oils having Kv100 such as 4 cSt or 6 cSt or 8cSt in some examples [0191, 0206]. Basestock can have Kv100 of from 4 to 1000 cSt [0206, Table]. Thus, the claimed low viscosity composition is envisaged or obvious.
In regards to claims 10, 11, Brobey teaches the composition with the copolymer having the shear stability index (SSI) of the claims as previously discussed. The composition has SSI of less than about 55 or less than about 15 [0209].
In regards to claim 12, 13, Brobey teaches the composition with the copolymer having thickening efficiency of from about 0.5 to about 6 or preferably from about 2 to about 3 [0189]. The composition comprises TE of from 1.5 to 2.6 [0209].
In regards to claims 15, 16, Brobey teaches the composition comprising from about 0.01 to about 12% of the copolymer [0211].
In regards to claim 17, Brobey teaches the composition having the claimed base oil as previously stated.
In regards to claim 18, Brobey teaches the composition having the claimed additives [0212].
In regards to claim 19, Brobey teaches the composition having HTHS of the claims [0256, Table 3].
In regards to claim 20, Brobey teaches the composition having the claimed composition as previously stated.
In regards to claim 21, Brobey teaches the composition having the claimed copolymer. The process of preparing the copolymer using metallocene catalyst does not carry patentable weight. However, to the extent that the catalyst used carries any weight, Brobey teaches the use of metallocene catalysts in the preparation of the copolymer [0014].
In regards to claim 22, Brobey teaches the composition having SSI of less than about 15 which provides the claimed limitation. For instance, using the expression in the claim, the values range from 0.0003 (30,000)-2.125 = 6.875 and 0.0003 (450,000)-2.125 = 132.87, and thus SSI of 15 or less can be much lower than 132.87 according to the upper limit of the calculated values.
In regards to claim 55 – 58, Brobey teaches the composition having the claimed limitations as previously discussed. An Mw/Mn of about 6 obviates the limitation of MW/Mn of 6.1 as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 13, 15 – 22, 55 – 57 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 25 of copending Application No. 18/557,771. The copending application teaches lubricating oil composition comprising the ethylene copolymer of the claims and having similar properties as claimed. The copending application does not recite the presence of aluminum and thus its absence obviates the claimed limitation. The claimed ranges as also overlapped.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the claimed composition demonstrates unexpected results. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims recites ethylene copolymer Mw/Mn of from about 2.5 to about 6.4, Mw(LS) of from about 152,000 to about 239,000 g/mol, g’vis of from about 0.58 to about 0.82, and ethylene content of about 46 to about 69%, the inventive examples provides a calculated Mw/Mn of from about 3 to about 4.65, Mw(LS) of from about 152,624 to about 224,407, g’vis of from 0.582 to 0.814, and %eth of from 56.1 to 63.6% which do not support the breadth of the claimed ranges, nor support criticality at the claimed lower and upper limitations.
The examiner agrees that the inventive examples (F1, F4, F10, F11 and F19) demonstrate unexpected results.
Therefore, applicant failed to provide inventive examples that are commensurate in scope for demonstrating unexpected results sufficient to rebut the case of obviousness.
Applicant argues that the copending applications required for making obviousness double patenting rejections require the presence of a metal hydrocarbenyl chain transfer agent which is not present in the claimed composition and thus fails to teach the claims. The argument is not persuasive.
The claim language is “comprising” and thus allows for the presence of other ingredients not positively recited.
Conclusion
THIS ACTION IS MADE FINAL. 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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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771