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 06/24/2025 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections under 35 USC 101 and 102/103 are maintained. The previous rejection of claims 1 - 10 based on indefiniteness are overcome and withdrawn. However, new ground of rejection based on indefinite language is made below as necessitated by the amendment.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 10 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a step of determining the amount of depleting additives without setting forth steps or means for providing the determination. The “determining…on the basis of known degradation/depletion timescales” can be made in the mind of the person of ordinary skill in the art, may be a subjective estimation of amounts and does not require an actual measurement.
Also, if the amount needed is already known based on known degradation/depletion timescale, then no actual step of determination appears to be occurring. Still, how the steps of determination occurs, such as through taking measurements, is not particularly recited.
This judicial exception is not integrated into a practical application because the “determination” step is so broad that the application of “providing” the depleted additive is not meaningfully linked to the determination step. There is nothing indicating that adding the additive is linked to the prior determination, so for that reason there does not appear to be any application, let alone a practical one.
Even if we read the claims more narrowly and assume the depleting additive is necessarily ascertained from the abstract “determining” step, which appears to be reading more into the claims than is present, this is at best generally linking the abstract idea. The MPEP makes it clear the generally “applying” an abstract idea (MPEP 2106.05(f)) and mere transmitting of data are not practical applications, but rather insignificant post solution activities (2106.05(g)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because even considering other elements of the claims other than the abstract idea, the other elements are base oil and additives which are common components of a lubricant which are routine and conventional in the prior art. For instance, Burrington (US 2012/0178657) teaches the use of the recited additives which can be added a slow and fast release components in the amounts recited in the claims. Similarly, Schneider teaches similar method of replenishment of lubricant additives in oil having the claimed additives in the claimed amounts. None of the dependent claims appear to do anything with the determining step.
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.
Claim 6 is 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 6 recites the limitation "depleting additive" in 1. There is insufficient antecedent basis for this limitation in the claim
Claim Rejections - 35 USC § 102
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, 4 – 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Schneider (US 2004/0079589) or, in the alternative, under 35 U.S.C. 103 as obvious over Schneider (US 2004/0079589)
In regards to claim 1, Schneider teaches method and apparatus for automatically replenishing additives lost from a lubricating oil engine, by injecting controlled quantities of additives into the oil, and wherein the frequency of injection is controlled by either the operating conditions of the oil, or the changes of the properties of the oil (abstract). The method requires determining when one or more additives is needed and adding them at essentially the same rate as they are depleted from the oil such as by injecting the liquid concentrate into the oil at a rate that is controlled by the operating condition [0008, 0009]. The additive is an antioxidant [0011].
The antioxidant can be present at about 0.5% to about 2% [0027]. The determining step is provided and the first, second and more additional injections provides the first and second portions of the claims. When the oil is fresh, it comprises a fresh concentration of the additives such as antioxidant thus providing the limitation of adding a first portion as claimed (see claims 1, 6).
In regards to claim 4, Schneider teaches the method and the composition, wherein the additives can be antioxidant. The antioxidants can be aminic and phenolic antioxidant [0029].
In regards to claim 5, Schneider teaches the method comprising antioxidant in the claimed amounts.
In regards to claims 6 – 10, Schneider teaches the method wherein the antioxidant additives are presented as concentrates (i.e., booster package) which are added periodically in controlled quantities wherein the frequency of injection is based on the operating conditions and thus makes the periods of addition and amounts results effective. Generally, differences in concentration or rate of addition will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or rate of addition is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claims 1, 4 – 10 are rejected under 35 U.S.C. 103 as obvious over Burrington (US 2012/0178657)
In regards to claim 1, Burrington teaches gel-containing system that includes a slow-release composition having one or more additives and a fast release component having one or more additives provided in a matrix material and which release one or more additives into a fluid [0001]. The slow and fast release components are in fluid contact [0015]. Thus, it appears that the additives are provided into a fresh fluid, since the gel/matrix are in fluid contact. The ratio of the fast and slow-release component amounts in the composition is from 1:100:100:1 [0013]. Thus, at least when the fast release component is added, the step of providing a first portion into a fresh oil (i.e., beginning composition) is provided as the fast release component can be dissolved into the fluid immediately [0061, Tables 1 – 3 examples].
The addition of the slow-release components which is present at no more than 80% of the oil’s life provides the second portion of two or more as claimed [0018]. The additive optionally comprises antioxidant etc., at amounts of from 0 to 99% such as aromatic amine and hindered phenol [0035, 0036]. The release rate is based on various system parameters such as flow-rate of the functional fluid etc. [0015]. The rate of addition is determined by first determining the fluids service life which thus intrinsically determines the amount of the depleting additive to be added as claimed [0018, 0019 and 0060].
In regards to claims 4 – 10, Burrington provides the method and the claimed additives in the claimed amounts, and wherein the rate of addition is results effective based on operating conditions as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the judicial exception has been integrated into a practical application. The argument is not persuasive.
The claim amendment requires that the determination step is based on past knowledge of depletion timescale (or a known depletion rate) which does not provide any practical steps of determining such as measuring. Applicant merely recites applying amounts of antioxidant into a fresh oil which is standard practice as the step of integrating the abstract idea into a practical application. It is generally “applying” an abstract idea (MPEP 2106.05(f)) and mere addition of additives into oil are not practical applications, but rather insignificant post solution activities (2106.05(g)).
Applicant argues that the prior art references by Burrington and Schneider do not recite having pre-determined amounts that are added in a first portion and then in subsequent portions but merely recite equivalent amounts added throughout the life of the oil. The argument is not persuasive.
Any amount that is added into the system for a controlled delivery is a predetermined amount. The first addition provides the first portion and subsequent additions that are spread over the lifetime of the lubricant provides the remaining portion as claimed.
Applicant alleges that the claimed method demonstrates unexpected results. The argument is not persuasive.
It is noted that demonstrations of unexpected results are insufficient to overcome rejections under 35 USC 101, 112(b) and 102(a1)
The inventive examples are not commensurate in scope with the claims.
While the claims do not require any specific amount of antioxidant to be added as a first portion and subsequent portions, the inventive examples require specific amounts which does not support the breadth of the claim.
While the claims do not limit how many additions the inventive examples require specific number of additions which does support the breadth of the claims.
While the claims are drawn to the use of any suitable antioxidant, the inventive examples 1 – 3 are drawn to the specific use of amine antioxidants which does not support the breadth of the claims.
Thus, applicant has failed to provide a demonstration of unexpected results that commensurate in scope with the claims and sufficient to rebut the case of obviousness.
Conclusion
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771