DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 December 2025 has been entered. Claims 1-24 remain pending. 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 § 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.
Claim(s) 1-7, 11-19 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over UEDA et al. (US 2020/0224118).
Applicant's arguments filed 15 December 2025 have been fully considered but they are not persuasive. As previously set forth, UEDA et al. [“UEDA”] disclose a lubricating oil composition for internal combustion engines [0008] containing a base oil composition containing a GTL base oil as a main component [0009], and a comb-like polymethacrylate based viscosity index improver [0010]. UEDA teaches that the lubricating oil composition may have SAE viscosity grade of 0W-20 or 5W-20 and a viscosity index of 180 or more [0012]. UEDA teaches that the PSSI (permanent shear stability index) of the comb-like polymethacrylate based viscosity index improver is preferably 10 or less [0044].
The lubricating oil composition for an internal combustion engine of independent claim 1 differs by further containing component b), an alkaline earth metal sulfonate detergent providing 1200-2200 ppm of metal to the lubricating oil composition. However, UEDA allows for the addition of other components to the lubricating oil composition including detergents [0054] such as alkaline earth metal sulfonates [0057] wherein examples of the alkaline earth metals include calcium and magnesium [0058]. UEDA teaches that the content of metallic detergent, singly or in combination, is preferably from 0.05 to 0.3 mass % (500 to 3000 ppm), more preferably from 0.1 to 0.2 mass % (1000-2000 ppm) in terms of the metal amount based on the total mass of the lubricating oil composition [0082]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Although UEDA allows for the addition of other components to the lubricating oil composition [0054], UEDA does not teach the addition of friction modifiers. Thus, the examiner is of the position that UEDA discloses lubricating oil compositions which meet the limitations of the claimed lubricating oil compositions, and method for improving fuel economy in an internal combustion engine comprising the step of lubricating said engine with the lubricating oil compositions, when the composition is a 0W-20 SAE viscosity grade.
Response to Arguments
In response applicant argued that UEDA does not specifically teach that its lubricating oil composition must be substantially free of friction modifier. Applicant argued that UDEA discloses that an additive package is present in its examples wherein the additive package is unidentified but meets JASO DL-1 specification. JASO DL-1 is an oil specifically designed for Light Duty Diesel Engines equipped with exhaust after treatment devices. It is not clear what additives are in JASO DL-1.
In regard to [0003] where friction modifiers are mentioned, UEDA continues on in [0004]-[0006] that they have found that the above problems of deposits, etc., can be solved by blending a GTL base oil and a comb-like polymethacrylate viscosity index improver, without mentioning friction modifiers.
Further, UEDA does not teach the addition of friction modifiers in its composition, there are no friction modifiers claimed in UEDA. Not all additive packages contain friction modifiers.
Further, the examples in applicant’s specification use one friction modifier, namely a borated ester with 70 ppm boron. There are many known friction modifiers in the art including amine compounds, fatty acid esters, fatty acid amides, fatty acids, aliphatic alcohols, etc., as evidenced by Matsuda et al US 2020/0181524 (cited in the 892 by the examiner) in [0156]. It is not clear if all known friction modifiers would have the same results. The examiner maintains UEDA does not teach the addition of any friction modifiers in the composition.
Claim Rejections - 35 USC § 103
Claim(s) 1-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over DESAI et al. (US 2023/0287292).
Applicant's arguments filed 15 December 2025 have been fully considered but they are not persuasive. As previously set forth, DESAI et al. [“DESAI”] disclose an engine oil composition including 70 to 95% by weight of a base oil [0014] and 0.01 to 15 % by weight of a dispersant comb polymer [0015], wherein the engine oil composition has an SAE viscosity grade of 0W-X wherein X is 30 or less [0023]. Suitably, DESAI teaches that X may be 30, 20, 12, 8 or 4 [0067].
DESAI teaches that the present invention further provides the use of such as engine oil composition in the crankcase of an engine in order to improve fuel economy and viscosity properties [0025].
DESAI teaches that the engine oil composition comprises at least am antioxidant additive, an antiwear additive and a detergent additive [0046], and may further comprise additional additives such as friction modifiers [0046], but friction modifiers are not a required component in the engine oil composition. The additive packages used in the Examples do not contain friction modifiers, and do contain an antiwear additive, a detergent, a dispersant and an antioxidant.
DESAI teaches that the detergent additive is suitably a metal containing detergent that contains calcium and/or magnesium as an alkaline earth metal [0047]. DESAI teaches that the detergent may be a sulfonate [0048], and that the content of the metal-containing detergent is preferably from 0.05 to 20 wt.%, in terms of alkaline earth metal content relative the overall quantity of the engine oil composition [0047]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Table 1 sets forth Baseline 1 which contains Viscoplex® 3-201 which is a comb-shaped polymethacrylate viscosity modifier.
Thus, the examiner is of the position that DESAI discloses engine oil compositions which meet the limitations of the claimed lubricating oil compositions, and method for improving fuel economy in an internal combustion engine comprising the step of lubricating said engine with the lubricating oil compositions, when the compositions are a 0W-8, 0W-12 SAE viscosity grade.
Response to Arguments
Applicant argued that Desai et al. does not require the absence of friction modifier. As previously pointed out, friction modifiers are not a required component in the engine oil composition of Desai et al., and that none of the examples in the reference contain a friction modifier.
Desai et al. discloses in [0070] that Full DI package 1 which contains an antiwear additive, a detergent, a non-succinimide type dispersant and an antioxidant, plus a polyisobutylene succinimide dispersant. Modified DI Package 1 contains the same additive package as Full DI package 1, except it contains no polyisobutylene dispersant. Modified DI package 2 contains the same additive package as Full DI package 1 except a lesser amount of the polyisobutylene succinimide dispersant. Thus, the examiner is of the position that not all modern DI packages contain friction modifiers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at (571) 272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
February 10, 2026