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 § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 5 – 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated Coupland et al. (US 3,498,916) by or, in the alternative, under 35 U.S.C. 103 as obvious over Coupland et al. (US 3,498,916)
In regards to claim 1, Coupland teaches a lubricant composition comprising substituted 2-hydroxyphenylamine compounds as antioxidants (abstract). The composition comprises a lubricant base (i.e., basestock) and an antioxidant (column 1 lines 68 – 69). The antioxidant can be a structure analogous to the structure of the claim, wherein in the claimed structure of formula I, R2, R3 are t-butyl, R1 is hydrogen, and taken together the R groups total 8 carbon atoms (column 2 lines 65 – 69). The composition is useful as crankcase oil formulations for engines and can comprise additional additives (column 3 lines 1 – 22). In one embodiment, the compound of the recited structure is present as antioxidant at 0.3% in the composition (Table 7). Since the antioxidant is one of several options, the claim is anticipated or at least obvious.
In regards to claim 5, Coupland teaches the lubricant having the antioxidant in the claimed amount as previously stated.
In regards to claim 6, Coupland teaches the composition having the claimed additives (column 3 lines 19 – 22).
In regards to claim 7 – 12, Coupland teaches the composition which can comprise conventional additives but does not particularly recite the claimed additives at the claimed amounts. As already established on record (see Non-Final Rejection dated 03/18/2025), engine oils are known to conventionally comprise the recited ingredients in the claimed amounts in view of Rowland et al. (US 2018/0079987) and thus the use of the recited additives in the amounts recited by Rowland in the composition of Coupland which allows for the use of conventional engine oil additives would have been obvious.
In regards to claims 13 – 19, Coupland teaches the composition having the claimed composition. The composition does not require the presence of diarylamine or in the recited amounts. The composition is useful for engine oils and thus the when applied to the engines the method of lubricating the engine, improving oxidative resistance of the oil comprising the antioxidant, and reducing viscosity increase of a crankcase during operation and/or testing, and the method of reducing acid number of a crankcase lubricant during operation and/or testing are intrinsically provided.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771