DETAILED ACTION
This is in response to the claim amendments and arguments filed 13 July 2026. Claims 13-24 are 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 § 112
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 18 is rejected under 35 U.S.C. 112 (d) or pre-AIA 35 U.S.C. 112, forth paragraph, as being improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Claim 18 depends upon method claim 13 which has been amended to include the limitation of claim 18, i.e., “wherein the composition exhibits a fuel economy improvement (FEI) of at least about 1%”.
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) 13-19 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 13 July 2026 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 13 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 amended independent claim 13 to include “wherein the lubricating oil composition exhibits a fuel economy improvement (FEI) of at least about 1%”. Applicant argued that the amendment is not taught or suggested by UEDA. This is not deemed to be persuasive.
Applicant did not point to where in the specification is there support for the amendment to claim 13, and applicant did not argue any line of reasoning why the amendment to claim 13 rebuts the rejection over UEDA.
The examples set forth in Table 1 demonstrate that the claimed comb polymethacrylate (PMA) and a sulfonate detergent [Example 1] results in better fuel economy compared to a linear dispersant polymethacrylate (PMA) [Comp. Ex. 1] or an olefin copolymer (OCP) viscosity modifier [Comp. Ex. 2] and a sulfonate detergent. However, the claimed comb polymethacrylate (PMA) and a sulfonate detergent [Example 2] results in worse fuel economy compared to a linear dispersant polymethacrylate (PMA) [Comp. Ex. 1] or an olefin copolymer (OCP) viscosity modifier [Comp. Ex. 2] and a sulfonate detergent. Further, comparative examples 3-5 resulted in better fuel economy that inventive Example 2.
Thus, the examiner is of the position that the amendment to claim 13 does not patentably distinguish the claims over UEDA.
Claim Rejections - 35 USC § 103
Claim(s) 13-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over DESAI et al. (US 2023/0287292).
Applicant's arguments filed 13 July 2026 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
In response applicant amended independent claim 13 to include “wherein the lubricating oil composition exhibits a fuel economy improvement (FEI) of at least about 1%”. Applicant argued that the amendment is not taught or suggested by DESAI. This is not deemed to be persuasive.
Applicant did not point to where in the specification is there support for the amendment to claim 13, and applicant did not argue any line of reasoning why the amendment to claim 13 rebuts the rejection over UEDA.
The examples set forth in Table 1 demonstrate that the claimed comb polymethacrylate (PMA) and a sulfonate detergent [Example 1] results in better fuel economy compared to a linear dispersant polymethacrylate (PMA) [Comp. Ex. 1] or an olefin copolymer (OCP) viscosity modifier [Comp. Ex. 2] and a sulfonate detergent. However, the claimed comb polymethacrylate (PMA) and a sulfonate detergent [Example 2] results in worse fuel economy compared to a linear dispersant polymethacrylate (PMA) [Comp. Ex. 1] or an olefin copolymer (OCP) viscosity modifier [Comp. Ex. 2] and a sulfonate detergent. Further, comparative examples 3-5 resulted in better fuel economy that inventive Example 2.
Thus, the examiner is of the position that the amendment to claim 13 does not patentably distinguish the claims over DESAI.
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.
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.
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 at (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.
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
July 27, 2026
Prosecution Insights