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 amendments filed 4/1/26 overcome the rejections set forth in the office action mailed 12/5/25. New grounds of rejection necessitated by the amendment are set forth below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/1/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 30 recites a range with an upper endpoint of “less than about 0.12”. The upper endpoint of this range is unclear since there is no guidance in the regarding the definition “about”, for example the percent variation from the recited value, and since “about 0.12” implies a range of values, it is unclear whether the “less than” would be less than the upper endpoint of the range implied by “about 0.12”, or less than the lower endpoint of the range implied by “about 0.12”. For the purposes of examination, sulfated ash to base ratios of less than 0.12 are considered to meet the limitations of claim 30.
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 Gallo (U.S. Pat. No. 5,143,633) in view of Boffa (U.S. PG Pub. No. 2019/0002789).
In column 1 lines 10-12, Gallo discloses overbased additives for lubricant oils containing an organic molybdenum complex virtually insoluble in hydrocarbons. In column 4 lines 6-14 Gallo discloses a process for the preparation of overbased additives by carbonating a mixture containing a detergent or a detergent precursor and a promoter which can be a nitrogen-containing promoter. In column 4 lines 15-19 Gallo discloses that suitable detergents include salicylates (hydroxybenzoates), as recited in claim 10. In column 5 lines 20-29 Gallo 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 column 6 lines 25-32 and Example 9 (column 10 lines 12-23) Gallo discloses 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 column 4 lines In column 5 lines 3-9 and column 6 lines 3-6 Gallo 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. From column 4 line 67 through column 5 line 2 Gallo discloses that the detergent precursors can be neutralized prior to carbonation, meeting the limitations of claim 13. The metal base used in the examples is slaked lime, which is Ca(OH)2 as recited in claim 14. In column 4 lines 53-56 Gallo discloses that the salicylate is derived from alkyl hydroxy benzoic acid (alkylsalicylic acid), meeting the limitations of claim 8. Claims 2-9 are therefore also anticipated by Gallo.
In column 6 lines 58-62 Gallo 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.
In column 4 lines 53-56 Gallo 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 Gallo 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.
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 Gallo, 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 Gallo and Boffa will further include additional basicity from the nitrogen-containing promoter of Gallo, the sulfated ash to base number ratio of Gallo 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 Gallo 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 Gallo, 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, especially in the presence of a molybdenum compound, which is a required component of Gallo. In paragraphs 160, 184, and 199 Boffa discloses additional advantages from the use of the hydroxybenzoate derived from non-isomerized normal alpha olefin.
Claim(s) 31-32 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Le Coent (U.S. PG Pub. No. 2007/0027043) in view of Gallo.
In paragraphs 20-25 Le Coent discloses a process for preparing an overbased alkaline earth metal alkylhydroxybenzoate. Steps (a) through (e) of the process of Le Coent correspond to steps (a) through (e) of claim 31, and step (f) of the process of Le Coent is an overbasing step, as recited in step (f) of claim 31. In paragraph 56 Le Coent discloses that the TBN of the detergent is more preferably from about 300 to about 400, within the range recited in claim 35, and can also be from about 100 to about 250, also within the range recited in claim 35. In paragraphs 119-123 Le Coent discloses that the overbased alkaline earth metal hydroxybenzoate can be incorporated into lubricating compositions comprising various hydrocarbon base oils. In paragraphs 129 and 140 Le Coent discloses that the composition comprising the overbased alkaline earth metal alkylhydroxybenzoate can further comprise an amine-molybdenum complex. Le Coent does not disclose performing the overbasing step in the presence of an amine or amine derivative.
The discussion of Gallo in paragraph 6 above is incorporated here by reference. Gallo discloses a process of preparing an overbased alkylhydroxybenzoate (alkylsalicylate) additive for lubricating oils comprising virtually insoluble molybdenum complexes, such as amine-molybdenum complexes. Gallo discloses in column 4 lines 6-14 that the overbasing (carbonation) step can occur in the presence of a nitrogen-containing promoter, as well as the insoluble organic molybdenum complex. In column 5 lines 20-29 Gallo 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 step (f) of claim 31 as well as claim 32. Performing the overbasing step (f) of the process of Le Coent in the presence of the amine or amine derivative promoter of Gallo, as well the molybdenum-amine complex, meets the limitations of claims 31-32 and 35.
In Table III, Le Coent discloses that the process produces detergents having a sulfated ash to TBN ratio of about 0.121 (noting that calcium content is multiplied by 3.4 to obtain the sulfated ash content). However, since the amines and amine derivative promoters of Gallo are basic and will contribute additional TBN without contributing additional ash content, and the promoters of Gallo can be added in a significant molar excess (column 5 lines 31-32 of Gallo), the detergents prepared by the process of Le Coent and Gallo will have a lower sulfated ash to TBN ratio, leading to a sulfated ash to TBN ratio of Le Coent and Gallo in a range at least overlapping the range recited in claim 36.
It would have been obvious to one of ordinary skill in the art to perform the overbasing step (f) of the process of Le Coent in the presence of the amine or amine derivative promoter of Gallo, as well the molybdenum-amine complex, since Gallo teaches that performing the overbasing step in this manner solubilizes the molybdenum-amine complex in hydrocarbon oils while also preparing an overbased detergent suitable for use in lubricant oils.
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Le Coent in view of Gallo as applied to claims 31-32 above, and further in view of Boffa.
The discussions of Le Coent, Gallo, and Boffa in paragraphs 6-7 above are incorporated here by reference. Le Coent and Gallo disclose a process meeting the limitations of claims 31-32, and Le Coent discloses in paragraph 50 that the alkyl group in the alkylhydroxybenzoate can have various chain lengths within or overlapping the ranges recited in claims 33-34. Le Coent and Gallo do not specifically disclose the use of alkyl groups having the isomerization level recited in claims 33-34.
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 range recited in amended claim 33 and encompassing the range recited in claim 34 while also being consistent with the ranges taught by Le Coent and Gallo, 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 claim 33 while also encompassing the range recited in claim 34. 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 claims 33-34.
Using the isomerized normal alpha olefins of Boffa to prepare the alkyl group in the alkylhydroxybenzoate detergent in the process of Le Coent and Gallo therefore meets the limitations of claims 33-34.
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 alkyl group in the alkylhydroxybenzoate detergent of Le Coent and Gallo, 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, especially in the presence of a molybdenum compound, which is a required component of Gallo. In paragraphs 160, 184, and 199 Boffa discloses additional advantages from the use of the hydroxybenzoate derived from non-isomerized normal alpha olefin.
Response to Arguments
Applicant’s arguments with respect to claims 10-16, 19-25, and 28-36 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly applied Boffa and Le Coent references address the newly recited limitations regarding the isomerization level, TBN, and sulfated/ash base ratio, as well as the process limitations of new claim 31.
Conclusion
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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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