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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 11-19, and 29-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention..
Claim 1 and its dependent claims have been amended to require that the capped PIBSA-PAM dispersant of component (ii) be derived from a polymer having a unimodal weight distribution. The only mention of a polymer having a unimodal weight distribution in the application as originally filed is in paragraph 26 of the specification, in reference to a second and third polyisobutylene (PIB) that have different molecular weights and are used to prepare PIBSA-PAM dispersants that are used as a mixture. The capped PIBSA-PAM dispersant recited in the currently presented claims, however, is discussed in paragraph 27 of the specification and refers to a different embodiment of the invention (“According to another aspect of the present invention…”). There is no discussion in the specification of the polyisobutylene used in the capped dispersant having a unimodal weight distribution, or any other discussion of the molecular weight distribution of the polyisobutylene used in the capped dispersant.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites a capped dispersant concentration of 0.1 to 10% by weight, a detergent concentration of 0.1 to 20% by weight, and a copolymer viscosity modifier concentration of 0.1 to 10% by weight. Claim 1, from which claim 14 depends, has been amended to recite a capped dispersant concentration of 1 to 5% by weight, which is narrower than the range recited in claim 14, a detergent concentration of 1 to 5%, which is narrower than the range recited in claim 14, and a copolymer viscosity modifier concentration of 4 to 15% by weight, which has a higher lower bound than the range recited in claim 14. Claim 14 therefore fails to further limit amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-2, 4, 11-19, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Arrowsmith (U.S. PG Pub. No. 2006/0116300) in view of Nguyen (U.S. PG Pub. No. 2021/0189281) and Diggs (U.S. PG Pub. No. 2009/0186784).
In paragraph 8, Arrowsmith discloses a lubricating oil composition comprising a major amount of an oil of lubricating viscosity, as in component (i) of claim 1, a magnesium-based detergent, as recited in component (iii) of claim 1, a calcium salicylate, meeting the limitations of component (iv) of claim 1, and a low molecular weight nitrogen-containing dispersant. Arrowsmith’s disclosure in paragraph 8 that the base oil is present in a “major amount” (greater than 50%) indicates a base oil concentration at least encompassing the range recited for component of amended claim 1. In paragraph 45, Arrowsmith discloses that the low molecular weight nitrogen-containing dispersants are derived from a polymeric backbone having a number-average molecular weight of less than or equal to 1100, within the range recited in component (ii) of claim 1. In paragraph 67 Arrowsmith discloses that the composition preferably also comprises a high molecular weight dispersant derived from a polymer having a number-average molecular weight of at least 1100, overlapping the range recited for component (ii) of claim 1. In paragraph 69 Arrowsmith discloses that the high molecular weight dispersant can be capped, as recited in component (ii) of claim 1. In paragraphs 41-42 Arrowsmith discloses that the detergents are preferably present to provide the composition with 1000 to 3000 ppm (0.10 to 0.30% by weight) of calcium and 200 to 1250 ppm of magnesium, leading to a calcium to magnesium ratio of 15:1 to 0.8:1, encompassing the range recited in component (iv) of amended claim 1. In paragraph 44 Arrowsmith discloses that the detergents can be present is amounts overlapping or encompassing the range recited in component (iv) of amended claim 1. In the table following paragraph 124 Arrowsmith discloses that the metal detergents and dispersant are present in amounts overlapping or within the ranges recited for components (ii) and (iv) of amended claim 1.
In paragraph 66 Arrowsmith discloses that the dispersants can be bis-succinimides, as recited in claim 2, and in paragraphs 62, 64, and 67 discloses that the dispersants are prepared by the reaction of a polyalkenyl substituted succinic anhydride and a polyamine, in which case the bis-succinimide structure will meet the limitations of claim 2. In paragraph 69 Arrowsmith discloses that ethylene carbonate is a suitable capping agent, as recited in claim 12. In paragraph 67 Arrowsmith discloses that the high molecular weight dispersant is derived from a polymer which is preferably a polyisobutylene, as recited in claim 12, where the polymer has a number average molecular weight of at least 1100, encompassing the range recited in claim 12.
In paragraph 125 Arrowsmith discloses that the composition preferably has a Noack volatility of no greater than 12% by weight, within the range recited for condition (a) of claim 11. In the table following paragraph 124 Arrowsmith discloses that the composition can comprise various additional additives recited in claim 13, where the additional additives are present in amounts within or overlapping the ranges recited in claim 15, and the metal detergents and dispersant are present in amounts overlapping or within the ranges recited for components (B) and (C1) of claim 14. It is noted that Arrowsmith discloses in paragraph 68 that the high molecular weight nitrogen-containing dispersant, which Arrowsmith teaches can be capped, provides 35 to 80% by weight of the total dispersant nitrogen. Arrowsmith’s disclosure in paragraph 8 that the base oil is present in a “major amount” (greater than 50%) indicates a base oil concentration at least encompassing the range recited for component (A) of claim 14.
In paragraphs 1, 17, 137, the abstract, and the reference’s claims 30-31, Arrowsmith discloses that the compositions can be heavy duty diesel engine oils, as recited in claim 16, and discloses a method of lubricating and operating an internal combustion engine such as a heavy duty diesel engine with the composition, meeting the limitations of claims 17-19, noting that providing a hydrocarbon, renewable, and/or alternative fuel to the engine, as recited in step (ii) of claim 17, is an inherent part of operating the diesel engine.
In paragraphs 86-87 Arrowsmith discloses that the composition can comprise a zinc dihydrocarbyl dithiophosphate, where the hydrocarbyl groups are preferably alkyl groups, and the alkyl groups on the dithiophosphate can be prepared from secondary alcohols, as recited in component (1) of amended claim 30. Based on the dispersant concentration disclosed by Arrowsmith and discussed above, and the proportion of the dispersant derived from the high molecular weight nitrogen-containing dispersant, which can be capped, the concentration of capped dispersant of Arrowsmith will encompass the range recited in component (3) of claim 30.
The differences between Arrowsmith and the currently presented claims are:
i) Arrowsmith discloses in paragraphs 88-114 that the composition can comprise polymeric viscosity modifiers/viscosity index improvers, but does not disclose the specific copolymer viscosity modifier of component (v) of claim 1. In the table following paragraph 124, Arrowsmith discloses that the viscosity modifier is present in an amount of 0.01 to 10%, or 0.25 to 3% by weight, overlapping and falling within the range recited for the viscosity modifier (v) of amended claim 1 and (C2) of claim 14.
ii) In paragraphs 72-85 Arrowsmith discloses that the composition can comprise a molybdenum-containing material, as recited in component (vi) of amended claim 1. Arrowsmith does not specifically disclose the amount of molybdenum provided to the composition by the molybdenum-containing material.
iii) Arrowsmith does not specifically disclose that the polyisobutylene used to prepare the dispersant has a unimodal molecular weight distribution.
iv) Some of the ranges of Arrowsmith overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraph 13 Nguyen discloses a comb copolymer viscosity modifier which can be made by the polymerization a hydrogenated polybutadiene-based (alk)acrylate ester macromonomer, a C3-C8 alkyl (alk)acrylate ester monomer, a C12-C24 (alk)acrylate ester monomer, and an end-capped (alk)acrylate monomer. Nguyen more specifically discloses that the C3-C8 alkyl (alk)acrylate monomer can be a butyl methacrylate, the C12-C24 (alk)acrylate monomer can be a lauryl methacrylate, and the endcapped alk(acrylate) monomer can be an ethylene glycol phenyl ether methacrylate (also known as 2-phenoxyethyl methacrylate). In paragraph 183 and Table 1 (paragraph 190) Nguyen discloses specific comb copolymers made up of repeat units from hydrogenated butadiene methacrylate macromonomer, butyl methacrylate, a mixture of C12-C16 methacrylates including lauryl (dodecyl) methacrylate, and ethylene glycol phenyl ether methacrylate.
At the end of paragraph 24, Nguyen discloses that the macromonomer can be present in an amount of 9 to 15% by weight of the repeat units. At the end of paragraph 28, Nguyen discloses that the C3-C8 (alk)acrylate monomer can be present in an amount of 33 to 64% by weight of the repeat units. In paragraph 33 Nguyen discloses that the C12-C24 (alk)acrylate monomer and the endcapped monomer can collectively make up 21 to 35% by weight, or 21 to 23% by weight, of the repeat units.
While Nguyen does not specifically disclose that the comb copolymer viscosity modifiers have the specific viscosity properties recited in claim 1, the comb copolymer of Nguyen can comprise the same monomers used in the inventive polymers VM-3 through VM-7 and VM-16 exemplified on pages 101-102 of the current specification, in amounts encompassing the amounts used in the inventive polymers. In particular, Figure 3 and Table 1 of the current specification indicate that VM-16 has the viscosity properties recited in claim 1. The comb copolymer viscosity improvers of Nguyen will therefore have relative viscosity ratios and viscosity indices at least overlapping the ranges recited for component (v) of claim 1 and 4. It is noted that the viscosities recited in claim 4 limit the properties of the copolymer of component (v) rather than requiring the claimed composition to comprise a Group III oil having the recited viscosities.
It would have been obvious to one of ordinary skill in the art to include the comb copolymer viscosity modifier of Nguyen as the viscosity modifier in the composition of Arrowsmith, since Nguyen teaches in paragraphs 37, 111, and 124 that the comb copolymers impart various advantageous characteristics to lubricating compositions, including viscosity-related characteristics.
With respect to ii), Diggs, in paragraph 1, discloses lubricants for heavy duty diesel engines. In paragraphs 103-106 Diggs discloses that the lubricants can comprise molybdenum-containing compounds similar to those disclosed by Arrowsmith and Nguyen, and in paragraph 106 Diggs discloses that the compounds are present in an amount to provide 10 to 1000 ppm or molybdenum to the composition, encompassing the range recited in component (vi) of 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).
It would have been obvious to one of ordinary skill in the art to include the molybdenum-containing compounds in the composition of Arrowsmith and Nguyen in the amount taught by Diggs, since Diggs teaches that it is a suitable concentration of molybdenum-containing compound for heavy duty diesel lubricants, in particular compositions comprising reduced amounts of phosphorus, such as the low SAPS lubricant compositions described in paragraph 88 of Arrowsmith.
With respect to iii), the teaching regarding the capping agent in paragraph 69 of Arrowsmith refers specifically to the high molecular weight dispersant of Arrowsmith. There is no indication in paragraph 67 of Arrowsmith, where the polymeric substituent of the high molecular weight dispersant is discussed, or a mixture of polymers having different molecular weights. It therefore would have been obvious to one of ordinary skill in the art to use a polymer having a unimodal molecular weight distribution as the substituent in the high molecular weight dispersant of Arrowsmith, meeting the limitation of component (ii) of amended claim 1 regarding the molecular weight distribution of the capped dispersant.
With respect to iv), 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).
In light of the above, claims 1-2, 4, 11-19 and 30 are rendered obvious by Arrowsmith in view of Nguyen and Diggs. Additionally, since the composition of Arrowsmith and Nguyen meets the compositional limitations of the claims, they will provide a fuel economy improvement relative to the benchmark in a range at least overlapping the range recited in claim 29, as evidenced in Figure 4 and Table 2 of the current specification. Claim 29 is therefore also rendered obvious.
Response to Arguments
Applicant argues that Arrowsmith and Nguyen combined do not teach a capped PIBSA-PAM dispersant derived from a polymer having a unimodal molecular weight distribution. However, as discussed in the above rejection, Arrowsmith discloses a capped PIBSA-PAM dispersant, and the teachings of Arrowsmith render obvious the use of a polymeric substituent having a unimodal molecular weight distribution, since Arrowsmith only teaches capped high molecular weight dispersants, and does not provide any teaching of a mixture of polymeric substituents for the high molecular weight dispersants. Also, as discussed in paragraph 3 above, the limitation regarding the unimodal molecular weight distribution fails to comply with the written description requirement, since it was only disclosed in the application as originally filed with regard to a different dispersant composition. The dispersant composition discussed in paragraph 26 of the specification corresponds to non-elected claim 22, whereas the sections of the disclosure corresponding to the elected claims do not mention a unimodal molecular weight distribution.
Applicant also argues that the claimed composition produces unexpectedly superior results in terms of providing improved fuel economy. In order to successfully rebut a prima facie case of obviousness, must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). The claimed compositions allow for the inclusion of any base oil and broad classes of additives in broad concentration ranges. The inventive examples supplied by applicant comprise specific base oils and additives, and in fact many of the purportedly inventive examples supplied by applicant are outside the scope of the claims. Examples 9-12 in Tables 4-6, which comprise the inventive capped dispersant and show superior fuel economy, use VM-1 and VM-2 as viscosity modifiers, which applicant characterizes as non-inventive viscosity modifiers (paragraph 410 of the specification for example). Examples 9-10 also contain sulfonate detergents instead of the claimed salicylate detergents. Additionally, the examples in Tables 2 and 7-9 use a dispersant having a number-average molecular weight of 2300, outside the scope of the claimed range, and the examples in Table 1 use binary blends of viscosity modifier and base oil. Example 11 in Table 6 gives less fuel economy improvement than Example 3, which contains a dispersant having a molecular weight outside the claimed range. One of ordinary skill in the art therefore would not be able to conclude that superior results would be maintained across the full scope of the 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.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771