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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 1, 3, 6, 10, 14, and 15 are objected to because of the following informalities: The claim recite the limitation “about”, however, this term does not provide an exactitude of the range, but rather a contemplated variation.
Appropriate correction is required.
Drawings
The drawings are objected to because Figs 1 and 2 are difficult to understand . correlate legend in the graphs, and too light mainly when reduced to print. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 7, 10, 11-15, 18, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Emert et al. (US 5,756,428) (“Emert” herein).
Claim 1.
Emert discloses a method of inhibiting fouling, comprising:
adding an effective amount of an antifoulant composition to a medium, (Col. 12 l. 9-61) wherein the antifoulant composition comprises from
about 30 wt. % to about 99 wt. % of a polyisobutylene (PIB) derivative (Col. 5 l. 23-37; Col. 6 l. 9-15) and
about 1 wt. % to about 50 wt. % of a dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Since Elmer discloses the same composition comprising a polyisobutylene (PIB) derivative and a dialkyl dithiophosphate metal salt, it would be an of an antifoulant composition to a medium.
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2.
Emert discloses the method of claim 1, further comprising dispersing an asphaltene in the medium. (Col. 12 l. 9-61)
Claim 3.
Emert discloses the method of claim 1, wherein the composition comprises from
about 50 wt. % to about 90 wt. % of the PIB derivative (Col. 12 l. 9-61) and
about 10 wt. % to about 50 wt. % of the dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim 7.
Emert discloses the method of claim 1, wherein the dialkyl dithiophosphate metal salt is selected from the group consisting of zinc dialkyl dithiophosphate (ZDDP), molybdenum dialkyl dithiophosphate (MoDDP), and any combination thereof. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim 10.
Emert discloses the method of claim 1, wherein the effective amount is from about 1 ppm to about 50,000 ppm. (Col. 12 l. 9-61)
Claim 11.
Emert discloses the method of claim 1, wherein the composition consists of or consists
essentially of the PIB derivative (Col. 12 l. 9-61) and the dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim 12.
Emert discloses the method of claim 1, wherein the medium is selected from the group consisting of a petroleum product, crude oil, a hydrocarbon feedstock, a hydrocarbon stream, slop oil, heavy residua, atmospheric or vacuum residua, shale oil, liquified coal and tar sand effluent, and any combination thereof. (Col. 12 l. 9-61)
Claim 13.
Emert discloses the method of claim 1, wherein the method is carried out in a crude unit, a coker unit, a visbreaker unit, and any combination thereof. (Col. 12 l. 9-61)
Claim 14.
Emert discloses an antifoulant composition, comprising:
about 30 wt. % to about 99 wt. % of a PIB derivative (Col. 12 l. 9-61) and
about 1 wt. % to about 50 wt. % of a dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Since Elmer discloses the same composition comprising a polyisobutylene (PIB) derivative and a dialkyl dithiophosphate metal salt, it would be an of an antifoulant composition..
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 15.
Emert discloses the composition of claim 14, wherein the composition comprises
from about 50 wt. % to about 90 wt. % of the PIB derivative (Col. 12 l. 9-61) and
about 10 wt. % to about 50 wt. % of the dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim 18.
Emert discloses the composition of claim 14, wherein the dialkyl dithiophosphate metal salt is selected from the group consisting of ZDDP, MoDDP, and any combination thereof. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim 20.
Emert discloses the method of claim 14, wherein the composition consists of or consists
essentially of the PIB derivative (Col. 12 l. 9-61) and the dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 4, 5, 6, 8, 9, 16,17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Elmer as applied to claims 1, 4, 7, 14, and 16 above, and further in view of Yichao Lin (Antifriction and Antiwear Characteristics of Molybdenum Dithiophosphate in Engine Oils) (“Yichao” herein – provided by applicant).
Claim 4.
Emert discloses the method of claim 1. Emert however does not explicitly disclose, wherein the PIB derivative is a PIB imide. (Same as claims 5 and 7)
Claim 5 and 17.
Elmer discloses the method of claims 4 and 16. Elmer however does not explicitly disclose wherein the PIB imide comprises a structure selected from:
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70
484
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and any combination thereof, wherein each m and n are independently selected from an integer ranging from 0 to 100.
Yichao teaches the above limitation (See Table 1 & Page 856 →Yichao teaches this limitation in that Table 1 shows the molecular structure formula for Base Oil
and Engine Oil Additives
Name Molecular Formula
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298
588
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Greyscale
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104
346
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Greyscale
sulfidoxymolyblenum O, O-n-butyl, 2-ethylhexylphosphorodithioate
Mo₂O₂S₂ (DTP)₂),
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40
586
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Greyscale
For the purpose of having optimum fuel/energy saving benefit through friction and wear reduction. (Page 855, Introduction)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Elmer with the above limitation, as taught by Yichao, in order to have friction and wear reduction.
Claim 6 and 16
Elmer discloses the method of claims 1 and 14. Elmer however does not explicitly disclose, wherein the PIB derivative has a weight average molecular weight between about 500 amu and about 4,200 amu. (Same as claim 5 and 17)
Claim 8.
Elmer discloses the method of claim 7. Elmer however does not explicitly disclose, wherein the ZDDP comprises the following structure:
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62
182
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wherein each R is independently selected from a C₁ - C20 alkyl group. (Same as claims 5 and 17)
Claim 9.
Elmer discloses the method of claims 7. Elmer however does not explicitly disclose, wherein the MoDDP comprises the following structure:
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52
182
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wherein each R is independently selected from a C₁ - C20 alkyl group. (Same as claims 5 and 17)
Claim 19.
Emer discloses the composition of claim 18, consists essentially of the PIB derivative (Col. 12 l. 9-61) and the dialkyl dithiophosphate metal salt. (Col. 13 l. 22-52; Col. 15 l. 4-38)
Emert discloses the composition of claim 18. Emert however does not explicitly disclose, wherein the ZDDP comprises the following wherein each R is independently selected from a C₁ - C₂₀ alkyl group. (Same as claims 5 and 17)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stevenson et al. (US 2017/0101594 A1) COUPLED QUATERNARY AMMONIUM SALTS teaches The present technology is related to coupled quaternary ammonium salts, and the use of such coupled quaternary ammonium salts in fuel and oil compositions, or demulsification and/or engine performance of the compositions, Boons et al. (US 2019/0256791 A1) MARINE DIESEL LUBRICANT OIL COMPOSITIONS teaches lubricating oil composition includes a major amount of an oil of lubricating viscosity and about 0.1 wt. % to about 10 wt. % actives, based on the total weight of the lubricating oil composition, of at least one Mannich reaction product prepared by the condensation of a polyisobutyl-substituted hydroxyaromatic compound, wherein the polyisobutyl group is derived from polyisobutene containing at least about 70 wt. % methylvinylidene isomer and has a number average molecular weight of from about 400 to about 2500, an aldehyde, an amino acid or ester derivative thereof, and an alkali metal base. The lubricating oil composition can have a TBN of 5 to 200 mg KOH/g, and Southby et al. (US 2021/0277319 A1) LIQUID FUEL COMPOSITIONS teaches Use of a liquid fuel composition in an internal combustion engine, the internal combustion engine containing a lubricating composition for lubricating said internal combustion engine, wherein the liquid fuel composition comprises at least one nitrogen-containing detergent additive, for the purpose of reducing engine wear caused by the presence of soot in the lubricating composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 06/04/2026
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