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 .
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 – 6, 9, 12, 14, 15, 18, 21, 23, 24, 27, 30, 33, 36, 38, 40, 45 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.
Claim 1 recites saturated hydrocarbon base oil which comprises olefin monomers or oligomers which is indefinite as olefins are unsaturated compounds. Thus, all claims are rejected on the same basis.
Claim 5 contains the trademarks/trade names SynNova 4 and SynNova 9. 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 a base oil and, accordingly, the identification/description is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 12 recites various ranges for an antiwear additive which is indefinite because the antiwear is present at each of the recited ranges since the claim uses the word “and” rather than “or”.
Claim 30 recites the term “intermediate” which is indefinite as it can mean myriads of things or component and would differ from person to person and from application to application.
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, 9, 12, 14, 15, 18, 21, 23, 24, 27, 30, 33, 36, 38, 40, 45 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 are present in the composition in amounts from about 0.1 to 99.5% (column 13 lines 12 – 23). The composition can comprise known lubricant additives such as antiwear agents, detergents, stability improvers (stabilizers), pour point depressants, antioxidants etc., as claimed (column 18 lines 48 – 56).
In regards to claims 6, 9, 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 30, Fisher teaches the composition which does not require the presence of intermediates and thus provides the claimed limitations. Also, Fisher teaches the optional presence of presence of demulsifiers in concentrates (column 26 lines 27 – 58). Concentrates can be considered intermediate compositions. The demulsifiers are optionally present at from 0.01 to 10% which overlaps the claimed range.
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.
Claims 1, 3, 5, 6, 9, 12, 14, 15, 18, 24, 27, 30 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (WO 2021/214641)
In regards to claims 1, 5, Kumar teaches grease compositions with renewable base oils comprising additives such as antiwear, antioxidant etc. (abstract). The renewable oil can be present at amounts of up to about 85% in the composition and comprises about 10 to 65% thickener (page 7 lines 29 – 34). The oil can be SynNova 9 (page 8 lines 1 – 2). In one example, SynNova 9 is present in the composition at 55.05% (page 14, Example 1).
In regards to claim 3, Kumar teaches the composition having the claimed additives as previously stated.
In regards to claims 6, 9, Kumar teaches the grease having thickener in the claimed amounts. Thickener meets the limitation of viscosity modifier.
In regards to claims 12, 14, Kumar teaches the composition can comprise zddp antiwear at 1% in one embodiment (page 6 lines 32 – 33). The composition can optionally comprise calcium sulfonate as thickener which is present in amounts overlapping the claimed ranges as previously stated (page 6 lines 1 – 31). An overbased sulfonate thickener can be present at up to 65%, such as from 10 to 65% in the grease (page 7 lines 3 – 17). The sulfonate will perform the function of antiwear as claimed.
In regards to claims 15, 18, 24, Kumar teaches the grease which does not require the presence of pour point depressants or defoamers and thus provide the limitations of 0% of the additives as claimed.
In regards to claim 27, Kumar teaches the grease comprising antiwear (i.e., wear inhibitor) such as zddp at 1% as previously stated.
In regards to claim 30, Kumar teaches the grease which does not require the presence of an intermediate thus meeting the claimed limitation of 0%.
Conclusion
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.
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 on 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.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771