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 .
Claim Rejections - 35 USC § 103
Claims 10-16, 19-25, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Roman (EP 0438942 A1) in view of Boffa (U.S. PG Pub. No. 2019/0002789).
An English-language machine translation of Roman, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraph 14, Roman discloses overbased additives for lubricant oils prepared by carbonating a mixture containing a detergent or a detergent precursor and a promoter which can be a nitrogen-containing promoter. In paragraph 14 Roman discloses that suitable detergents include salicylates (hydroxybenzoates), as recited in claim 10. In paragraphs 36-37 Roman discloses that the nitrogen-containing promoter can be hydrocarbyl or alkylated amines, ethylenediamine, ethanolamine, or diethanolamine, meeting the limitations of the amine and amine derivative of claims 10 and 15-16.
In paragraph 42 Roman that the components can be mixed in the presence of carbon dioxide (CO2) and an alkali metal, as recited in claim 11. Overbasing a hydroxybenzoate with carbon dioxide and an alkali metal forms a metal carbonate as recited in claim 11. In paragraphs 32-33 and 42 Roman discloses that an excess of metal base is included during the mixing, meeting the limitations of claim 12 since it will neutralize the precursor acid. In paragraph 26 Roman discloses that the detergent precursors can be neutralized prior to carbonation, meeting the limitations of claim 13. In Example 15 (paragraph 97) Roman discloses that the metal base can be slaked lime, which is Ca(OH)2 as recited in claim 14.
In paragraph 51 Roman discloses that the overbased additives are incorporated into lubricant oils in a minor amount, leaving a major amount for the lubricant oils, meeting the limitations of claim 19, as well as claims 20-25 which are analogous to claims 11-16.
The differences between Roman and the currently presented claims are:
i) Roman does not specifically disclose a ratio of amine or amine derivative to alkylhydroxybenzoate (salicylate) within the ranges recited in amended claims 10 and 19.
ii) In paragraph 30 Roman discloses that the alkyl group of the alkylsalicylic acid contains at least 12 carbon atoms, encompassing the ranges recited in amended claims 10, 19, and 28, but Roman does not disclose the use of alkyl groups having the isomerization level recited in amended claims 10, 19, and 28, and does not disclose the TBN or sulfated ash/base number ratio of claims 29-30.
With respect to i), Roman discloses in paragraphs 38 and 42 that the molar ratio of the nitrogen promoter (which can be an amine or amine derivative, as discussed above) to the phenolic compound (such as alkylhydroxybenzoate) and detergent ranges from 0.05 to 30, encompassing the range recited in amended claim 1.
See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
With respect to ii), Boffa, in paragraphs 4-9, discloses a lubricating composition comprising an overbased alkylhydroxybenzoate compound derived from isomerized normal alpha olefins having 10 to 40 carbon atoms. In paragraph 25 Boffa discloses that the isomerized normal alpha olefins preferably have 20 to 28 carbon atoms, within the ranges recited in amended claims 10 and 19 and encompassing the range recited in claim 28 while also being consistent with the range taught by Roman, and in paragraph 40 Boffa discloses that the isomerized normal alpha olefins have an isomerization level of about 0.10 to about 0.40, meeting the limitations of amended claims 10 and 19 regarding isomerization level, as well as encompassing the range recited in claim 28. In paragraphs 42-43 and Examples A and B (paragraphs 141-142) Boffa discloses specific isomerized normal alpha olefins meeting the limitations of the isomerized alpha olefins of amended claims 10, 19, and 28. Examples A and B also disclose overbased detergents having TBN values within the range recited in claim 29, and in paragraph 35 Boffa more broadly discloses that the TBN is preferably from 100 to 300, within the range recited in claim 29. Example B of Boffa has a calcium content of 4.2% by weight and a TBN of 120, leading to a sulfated ash to base number ratio of (4.2 * 3.4 /120) = 0.119, within the range recited in claim 30. Since the detergent of Roman and Boffa will further include additional basicity from the nitrogen-containing promoter of Roman, the sulfated ash to base number ratio of Roman and Boffa will be even lower.
Using the isomerized normal alpha olefins of Boffa to prepare the alkylsalicylic acid in the method and composition of Roman therefore meets the limitations of claims 10-16, 19-25, and 28-30.
It would have been obvious to one of ordinary skill in the art to use the isomerized normal alpha olefins of Boffa to prepare the alkylsalicylic acid in the method and composition of Roman, since Boffa teaches in paragraph 157 that the alkylhydroxybenzoate derived from the isomerized normal alpha olefin has better corrosion inhibition and deposit control performance that a hydroxybenzoate derived from non-isomerized normal alpha olefin. In paragraphs 160, 184, and 199 Boffa discloses additional advantages from the use of the hydroxybenzoate derived from non-isomerized normal alpha olefin.
Allowable Subject Matter
Claims 37-38 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. The prior art, as exemplified by the Roman and Boffa references discussed above, as well as the references discussed in previous office actions, do not disclose or render obvious the use of the specific amine or amine derivatives recited in claims 37-38 in the claimed method of preparing a detergent.
Response to Arguments
Applicant’s arguments filed 7/14/26 have been considered but are moot in light of the new grounds of rejection set forth above. Roman teaches a ratio of amine or amine derivative to alkylhydroxybenzoate encompassing the range recited in the amended claims.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
Prosecution Insights