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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 12/18/2025 has been entered.
Response to Amendment
Applicants’ response filed 12/18/2025 amended claims 4, 7-12, 15-18, 21, 23-26, 40, 42 and 45 and cancelled claims 1 and 41. Applicants’ amendments overcome the 35 USC 112 rejection from the office action mailed 9/19/2025; therefore, this rejection is withdrawn. Applicants’ amendments in light of their arguments are not persuasive in overcoming the 35 USC 103 rejection over Burns in view of Yang from the office action mailed 9/19/2025; therefore, this rejection is maintained below.
Claim Objections
Claims 40 and 45 are objected to because of the following informalities: “Proposed Amendment” in claim 40 and “Previously Presented” in claim 45 should be “Currently Amended”. Appropriate correction is required.
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.
Claims 4, 7-12, 15-18, 21, 23-26, 29-31, 33, 40, 42 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Burns, III et al., US Patent Application Publication No. 2018/0237722 (hereinafter referred to as Burns) in view of Yang et al., US Patent Application Publication No. 2019/0330555 (hereinafter referred to as Yang).
Regarding claims 4, 7-12, 15-18, 21, 23-26, 33 and 40, Burns discloses a method for improving oxidation stability and viscosity control, while maintaining or improving cleanliness performance and deposit control in a valve train of a gasoline or hybrid engine (as recited in claim 26 and reads on claim 40) (Para. [0002], [0005] and [0046]) lubricated with a lubricating oil by using as the lubricating oil a formulated oil. The formulated oil has a composition including a lubricating oil base stock as a major component (as recited in claim 26) (see Abstract), and a mixture of (i) only one detergent, such as, 2139 ppm of magnesium from a magnesium sulfonate detergent providing 0.2 wt% or 0.63 wt% soap to the composition and having a TBN of 400 mgKOH/g providing 4.5 or 10.9 mgKOH/g of TBN to the composition (as recited in claim 26 and reads on claims 4, 7-10, 33 and 40 – and renders claim 16 obvious) (see Abstract and Figures 3 and 6/Examples 9 and 17 and Para. [0207], [0221] and [0239]), (ii) at least one dispersant, such as, boronated polyisobutenyl succinimde/succinic acid dispersant providing 100 to about 600 ppm nitrogen (as recited in claim 26 and reads on claims 18, 21, 23 and 40) (see Abstract and Figure 6/Example 17 and Para. [0132] and [0209]), (iii) 0.01 to 5 wt% of at least one antioxidant, such as, a mixed alkyl-diphenylamine ashless antioxidant (reads on claims 11-12, 33 and 40 – “booster additive package” - and renders claims 15 and 17 obvious) (see Abstract and Figure 6/Example 17 and Para. [0208] and [0239]), and (iv) 1821 ppm of calcium derived from a calcium-containing detergent (as recited in claims 24-25 and 40 – “booster additive package”) (see Figure 9/Examples 32-36).
Burns discloses all the limitations discussed above but does not explicitly disclose wherein the booster additive package is a top-treat additive package that is configured, upon addition to a fresh and/or used passenger car motor oil composition, to maintain API SP and/or GF-6 certifications; and wherein, when the booster additive package is added to a passenger car motor oil lubricating composition, the combination of the passenger car motor oil lubricating composition and the booster additive package are licensable with the American Petroleum Institute (API) and/or the International Lubricant Standardization and Approval committee ILSAC) as recited in claim 26.
Yang discloses a lubricant for use in boosted engines comprising a base oil (see Title and see Abstract) to which is added magnesium-containing detergents (see Abstract), nitrogen-containing antioxidant compounds (Para. [0079]) wherein the additives are referred to as “top treat” additives (as recited in claim 26) (Para. [0089]) and the engines meet the ILSAC and GF-6 specifications (as recited in claim 26) (Para. [0063]). It would have been obvious to one of ordinary skill in the art at the time of the invention to define the Burns lubricant within the specifications of Yang as it is a combination of prior art elements according to known methods to yield predictable results
Regarding claims 29-31, 42 and 45, see discussion above.
Response to Arguments
Applicants’ arguments filed 12/18/2025 regarding claims 4, 7-12, 15-18, 21, 23-26, 29-31, 33, 40, 42 and 45 have been fully considered and are not persuasive.
Applicants argue that the combination of Burns and Yang do not teach a finished lubricating oil composition that is API SP and/or GF-6 licensable fresh or used passenger car motor oil lubricating oil composition to which is added a “top-treat” booster additive package as recited in the instant claims. This argument is not persuasive.
Burns discloses a finished lubricating oil composition that includes all the compounds of component (a) of claim 26 and would therefore inherently be compliant with API SP and/or GF-6 specifications. This is further buttressed by Yang, wherein to the composition of Burns is added the “top treat” additives of Yang (wherein the compositions of Yang which include many of the same compounds as Burns) to yield a product that meets the requirements of a GF-6 specifications.
The examiner is of the position that applicants should show that there is a difference in the booster additives being added separately to a finished lubricating oil composition and NOT simply being added to a base oil, as is argued by applicants, bit no difference in the processing steps has been shown by applicants.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771