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 10/03/2025 has been considered and entered. The amendments were considered but not found to be persuasive over the rejections based on indefinite language in regards to olefins being saturated compounds. The response in view of the rejections over Fisher et al. (US 7,592,295) as not teaching the claimed amendment is not persuasive. Therefore, the previous rejections are maintained. The amendment which adds new limitations to the claims and/or new claims necessitates new rejections.
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.
Claims 1, 3, 4, 6, 12, 14, 15, 18, 21, 23, 24, 27, 33, 36, 38, 40, 45 – 48 are 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.
Claims 1, 46 each recites saturated hydrocarbon base oil which comprises olefin monomers which is indefinite as olefins are unsaturated compounds. Thus, all claims are rejected on the same basis.
Claims 47, 48 contains the trademark/trade name Infineum SV261L and Infineum D3503L. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe unidentified chemical compounds and, accordingly, the identification/description is indefinite.
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, 3, 4, 6, 12, 14, 15, 18, 21, 23, 24, 27, 33, 36, 38, 40, 45 – 48 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher et al. (US 7,592,295)
In regards to claims 1, 3, 4, Fisher teaches farnesene dimers and/or farnesene dimers and compositions (title). The farnesene is b-farnesene and which is/are C15 olefin monomers, dimers (oligomers) etc. (column 8 lines 29 – 49). The structure in claim 4, namely, (6E)-7,11-dimethyl-3-methylene-1, 6, 10-dodecatriene is b-farnesene, which Fisher teaches. Farnesene which can be a or b-farnesene, when it is hydrogenated, it becomes farnesane according to Fisher. Thus, Fisher teaches hydrocarbon base oil of the claims. The farnesene compounds/derivatives (i.e., farnesane) can be present in combinations and each is present in the composition in amounts from about 0.1 to 99.9% which provides the limitation a) and the limitation b) of the claims (column 5 lines 1 – 41; column 8 lines 41 – 49).
The composition can comprise known lubricant additives such as antiwear agents, detergents, stability improvers (stabilizers), viscosity index improvers, pour point depressants, antioxidants etc., as claimed (column 18 lines 48 – 56; column 30 lines 10 – 50). In one embodiment, the pour point depressants are polymethacrylates (which are known to be multifunctional viscosity index improvers) that can be present at from 0.01 to about 10% according to the limitation c) of the claims (column 27 lines 45 to column 28 lines 10).
In regards to claims 6, 12, Fisher teaches the composition having the farnesene in amounts of 0.1 to 99.5% with a balance of additives which overlaps the claimed range. For instance, each additive can be from 0.001% to about 20% (column 23 lines 23 – 33). The additive can be ATF having viscosity index improvers present at from about 0.5% to 1.5%, antiwear present at from about 0.1 to about 0.4%, etc., in the composition (column 31 lines 29 – 40).
In regards to claim 14, Fisher teaches the composition can comprise calcium sulfonate etc., as additives which would be expected to provide the function of antiwear as claimed (column 23 lines 60 – 66). Antiwear/EP compounds also include metal dithiocarbamates (column 25 lines 12 – 19). While molybdenum dithiocarbamates are not particularly recited, they are ubiquitously known as metal dithiocarbamates which are oil soluble dithiocarbamates for use as additives in oils and which would have been obvious.
In regards to claim 15, Fisher teaches the composition having pour point depressant (PPD) additives in amounts overlapping the claimed range as previously stated. For instance, the ppd’s are present at from 0.01 to 10% in one embodiment (column 28 lines 1 – 10).
In regards to claim 17, Fisher teaches the composition comprising anti-foaming agents at amounts of from 0.01 to about 5% in the composition (column 28 lines 11 – 32).
In regards to claims 21, 23, Fisher teaches the composition which can comprise aminic antioxidants such as alkylated diphenylamine, phenyl alpha naphthylamine etc., at amounts of from about 0.01 to 10% by weight of the composition (column 29 lines 58 – column 30 lines 8).
In regards to claim 24, Fisher teaches the composition which can comprise known additives and does not require the presence of antimicrobials and thus obviates the claimed limitation.
In regards to claim 27, Fisher teaches the composition having additives in the claimed amounts. Additives meet the limitations of inhibitors as claimed. For instance, antioxidants are oxidation inhibitors which are present in amounts overlapping the claimed range as previously stated.
In regards to claim 33, Fisher teaches the composition which can comprise additives in amounts overlapping the claimed range as previously stated. The additives can include one or more such as storage stabilizers, antioxidants etc. (column 21 lines 57 – 63). Antioxidants also meets the limitation of stabilizers.
In regards to claims 36, 38, 40, Fisher teaches the composition can comprise base oil at from 1 to 20% (column 19 lines 6 – 14). The oils can comprise synthetic oils such as polyalphaolefins, esters (i.e., esterification products) etc. (column 19 lines 15 – 27).
In regards to claim 45, Fisher teaches the composition which can comprise farnesene oligomers such as dimers as previously stated.
In regards to claims 46 – 48, Fisher teaches the composition having the claimed oil and additives as previously stated. The composition can comprise a detergent at amounts of from 0.001 to 5% (column 24 lines 2 – 15). The composition can comprise friction modifiers at from 0.01 to 10% (column 27 lines 12 – 20). The composition can comprise pour point depressants such as polymethacrylates which also provides the limitation of viscosity index improvers at from 0.01 to about 10% (column 28 lines 1 – 5). In one embodiment the composition can comprise viscosity index improvers at from 0.5 to 1.5% (column 31 lines 29 – 40). For claim 48, it appears that the SV261L refers to VI improvers and D3503L refers to an additive package each of which appears to be present in Fischer.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the claims have been amended to include the limitations of now canceled claim 5 which requires the presence of SynNova 4 and SynNova 9 into the claims which overcomes the rejections of Fisher for not teaching such limitations. The argument is not persuasive.
The claims have not been amended to require the presence of SynNova 4 and SynNova 9 as base oils. Therefore, the argument is erroneous and moot. The rejections in view of Fisher are maintained.
Applicant argues that Kumar (WO 2021/214641) fails to teach compositions having the viscosity index improver of the claims. The argument is moot as Kumar has not been applied.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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