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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/5/26 has been entered.
The amendments filed 2/5/26 do not overcome the rejections set forth in the office action mailed 10/8/25, which are maintained below. The discussions of the rejections have been updated as necessitated by the amendments.
Claim Rejections - 35 USC § 103
Claims 1, 5-6, 8-9, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Dance (U.S. PG Pub. No. 2019/0127655).
In paragraph 13 Dance discloses a lubricating oil comprising a lubricating oil base stock, meeting the limitations of the oil of lubricating viscosity of claim 1, and a detergent which can be an alkaline earth metal sulfonate. In paragraph 94 Dance discloses that the alkaline earth metal sulfonate soap can be about 100% of the total detergent soap, within the range recited in claim 1, and implying a concentration of other soaps within the ranges recited in claims 1 and 8, as well as proportions of sulfonate and phenate soap within the ranges recited in amended claim 1. In paragraph 94, Dance discloses that the metal sulfonate soap preferably delivers 0.4 to 0.6% by weight of soap to the composition, within the range recited in amended claim 1, and in paragraph 121 Dance discloses that the detergent can supply a TBN of 1 to 12 to the composition, encompassing the range recited in amended claim 1 and leading to a preferred range of ratios of TBN to soap content of about 1.7 (1/0.6) to 30 (12/0.4), encompassing the range recited in amended claim 1. In paragraph 64 discloses that the dispersants present in the composition can be non-borated, and since there are no other required boron-containing components in the composition, the composition of Dance can be free of boron, as recited in amended claim 1. In paragraph 87, embodiments (ii) and (iv), Dance discloses that the detergents can be a calcium sulfonate, magnesium sulfonate, or mixtures thereof, meeting the limitations of claims 5-6. In paragraph 85 Dance discloses that the high TBN detergents have a TBN of greater than about 200 and the low TBN detergents have a TBN of less than about 100, within the ranges recited for the overbased and neutral sulfonate detergents of amended claim 1. In paragraph 143, Dance discloses that the composition comprises 0.01 to 5% by weight, preferably 0.01 to 1.5% by weight, of antioxidant, encompassing the range recited in amended claim 1. In paragraphs 36-61, Dance discloses suitable base stocks for the composition, including numerous base stocks other than Group IV base oils, therefore meeting the limitations of claims 1 and 11 regarding the content of Group IV base oil. In paragraph 87 and Candidates 2 and 6 of Figure 2, Dance discloses detergent systems having a having an amount of metal supplied by the metal detergent within the range recited in claim 9 and a mixture of low TBN and high TBN detergent in amounts within or overlapping the ranges recited in claim 14. In paragraph 100 Dance discloses that the detergent concentration is 0.1 to 10% by weight (100 to 100,000 ppm), which will lead to a metal concentration supplied by the detergent at least overlapping the range recited in claim 9.
The difference between Dance and the compositional limitations of the currently presented claims is that some of the ranges of Dance overlap or encompass the claimed ranges rather than falling within them. See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). The compositional limitations of claims 1, 5-6, 8-9, 11, and 14 are therefore rendered obvious by Dance.
As the composition of Dance meets the compositional limitations of the claims, it will meet the limitations of claim 1 regarding TDi3 piston cleanliness, noting that Tables 3-6 of the current specification indicate that compositions comprising only sulfonate detergents meet the limitations regarding piston cleanliness, and the specification does not indicate that the other components of the composition are crucial for meeting the limitations regarding piston cleanliness. Claims 1, 5-6, 8-9, 11, and 14 are therefore rendered obvious by Dance.
Claims 15, 19-25, and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Dance in view of Lubrizol (“Understanding the CEC L-117 Piston Cleanliness Test”, retrieved from the internet at < https://360.lubrizol.com/2021/Understanding-the-CEC-L-117-Piston-Cleanliness-Test> on 1/3/24).
The discussion of Dance in paragraph 4 above is incorporated here by reference. Dance discloses a lubricating composition meeting the compositional limitations of the lubricating composition of claims 15, 19-23, and 27-28, and teaches in paragraph 23 and the examples that the compositions provide improved piston cleanliness in the VW TDi2 test. Dance does not disclose a method further including measuring the piston cleanliness in the VW TDi3 test.
The Lubrizol reference is dated 6/4/21 and therefore qualifies as prior art under 35 USC 102(a)(1). Lubrizol discloses that the TDi3 test has been introduced to replace the TDi2 test, and uses a more modern engine to ensure that lubricant performance continues to protect current diesel engines. It therefore would have been obvious to one of ordinary skill in the art to perform the TDi3 test on the composition of Dance, meeting the method limitations of claims 15, 19-25, and 27-28, in order to assess whether the compositions of Dance continue to meet current standards regarding piston cleanliness. As discussed in paragraph 9 above, since the compositions of Dance meet the compositional limitations of the claims, and are comparable to the inventive examples reported in the specification, they will meet the claim limitations regarding piston cleanliness. Claims 15, 19-25, and 27-28 are therefore rendered obvious by Dance in view of Lubrizol.
Response to Arguments
Applicant's arguments filed 2/5/26 have been fully considered but they are not persuasive.
Applicant argues that Dance does not disclose a ratio of TBN to sulfonate soap, or appreciate the significance of this ratio. However, as discussed in the rejection, Dance discloses the range of TBN supplied by the detergent and discloses the concentration range of sulfonate soap, leading to an implied range of ratio of TBN to sulfonate soap which is trivially calculated by one of ordinary skill in the art. Applicant argues that Dance does not recognize the significance of this ratio, but the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Calculating a range of ratios from the concentration ranges disclosed by Dance is not hindsight reasoning; the ratio is simply an implicit feature of the disclosure of Dance. Applicant argues that the range of ratios of Dance is broad, but nevertheless, “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). It is noted that while applicant refers to a range of ratios of 1 to 200, the rejection relies upon a range of 1.7 to 30 calculated from the preferred concentration ranges of Dance.
Applicant argues that Dance “specifically requires boron”. However, in paragraph 64 Dance discloses that the dispersant compound can be borated or non-borated. In claims 1, 36, 55, and 72 Dance recites compositions comprising a dispersant but not requiring a borated dispersant, further indicating that Dance considers their invention to includes embodiments that do not comprise a borated dispersant. Candidates 2 and 6 of Dance are relied upon in the rejection only to illustrate the amount of metal provided by the detergents and the amounts of neutral and overbased sulfonates; there is no indication in Dance that these values are contingent on whether the composition comprises a borated dispersant, and paragraphs 87 and 100 of Dance also disclose amounts of low and overbased detergents in amounts overlapping the ranges of claim 14, and overall detergent concentrations in ranges that imply a metal content at least overlapping the range recited in claim 9.
Applicant argues that the data provided in Tables 3-4 of the specification demonstrate that compositions having the claimed composition produce unexpectedly superior results. The examiner maintains the positions taken in the previous office action. In order to successfully rebut a prima facie case of obviousness with a showing of unexpected results, applicant must provide a comparison with the closest prior art. See MPEP 716.02(a). In this case, the embodiment of Dance relied upon in the rejection has a sulfonate soap content of 0.4 to 0.6% by weight, where the sulfonate soap comprises about 100% of the total detergent soap (paragraph 94 of Dance). Dance further emphasizes in paragraphs 175-178 that soap levels of less than 0.60% by weight provide strong piston cleanliness and wear control. None of the comparative examples provided in Table 3 are reflective of this embodiment, and therefore applicant has not supplied the necessary comparison with the closest prior art. For the same reason, the comparative examples also do not constitute counterexamples showing that the compositions of Dance would not meet the claim limitation regarding piston cleanliness.
In order to successfully rebut a prima facie case of obviousness with a showing of unexpected results, applicant must also demonstrate that the results are commensurate in scope with the claims. See MPEP 716.02(d). It is noted that “Inventive 2” has a detergent system TBN of 8.8, outside the range recited in the amended claims, so “Inventive 1” is the only remaining inventive example. This example comprises specific amounts of specific additives, specific TBN values, and specific soap concentrations while the claims recite compositions comprising broad classes of compounds in broad concentration ranges.
Applicant also points to Tables 5-6 as indicating that compositions comprising a majority of sulfonate soap would not achieve acceptable levels of pistol cleanliness in the older TDi2 test, but all the compositions exemplified by Dance containing only sulfonate soap pass the TDi2 test.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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