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 05/01/2026 has been considered and entered. The response was considered but was not found to be persuasive over Patil et al. (US 2018/0223210) or alternatively over Patil et al. (US 2016/0122676). Therefore, the previous rejections are maintained.
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.
Claims 1, 6, 9 – 12 are 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. The claims require that the hydrogen bond acceptor is present at from 39 to 60% and the hydrogen bond donor is present at 40 to 61% in the lubricant, while solvent is present at 50% by mass or more in the lubricant which is ambiguous because the donor and acceptor make the solvent, and if they are present at 100% of the lubricant, the solvent cannot be present at 50% or more in the lubricant. For the sake of examination, the claims are read as reciting amounts of each of the hydrogen donor and acceptor in the solvent, not in the lubricant.
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, 9 – 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Patil et al. (US 2018/0223210) or, in the alternative, under 35 U.S.C. 103 as obvious over Patil et al. (US 2018/0223210)
In regards to claim 1, Patil teaches low transition temperature mixtures (LTTMs) comprising a eutectic mixture (i.e., deep eutectic solvent) of a quaternary amine and a polyol which can be useful as co-basestocks in a lubricating oil composition (abstract). The ratio of the quaternary amine to the polyol is from 1:1 to 1:9 or 1:4 which provides the recited amounts of the claim [0011, 0043]. The quaternary amine may be choline chloride (CC) or betaine (i.e., N,N,N-trimethylglycine) and the polyol can be glycerol (i.e., glycerin) [0030, 0031]. The LTTMs are useful as synthetic basestock [0044]. They can provide a composition comprising 100% of the eutectic mixture when not mixed with a co-basestock. Alternatively, they can be mixed with Group I to V base oil as a co-basestock [0055 – 0057].
Other known additives may also be added to the composition [0082]. Since betaine is useful in the place of choline chloride as the amine compound, the composition can be chlorine free and provide the amount of chlorine (i.e., halogen atom) as claimed. Patil teaches the composition comprising betaine having the claimed structure wherein the groups analogous to R1 to R3 are hydrocarbon having 1 carbon atom each (methyl) [0030].
In regards to claim 9, Patil teaches the composition which can comprise lubricant additives as previously stated.
In regards to claim 10, Patil teaches the composition which is a lubricant and thus would intrinsically provide the claimed method when used for lubrication.
In regards to claims 11, 12, Patil teaches the composition comprising the mixture of the claimed ingredients and thus provide the claimed method. Steps of preparing the eutectic mixture are also discussed including mixing them and stirring for some time [0044 – 0051].
Claims 1, 6, 9 – 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Patil et al. (US 2016/0122676) or, in the alternative, under 35 U.S.C. 103 as obvious over Patil et al. (US 2016/0122676) hereinafter cited as Patil ‘676.
In regards to claim 1, Patil’676 teaches deep eutectic solvent useful as lubricating basestock (abstract). The eutectic solvent comprises hydrogen bond acceptor such as betaine (i.e., N,N,N-trimethylglycine) and hydrogen bond donor such as malic acid [0044 – 0047]. The first and second components being the hydrogen bond acceptor and the hydrogen bond donor are mixed so as to provide an equilibrium phase eutectic mixture, and therefore the amounts of each component in the eutectic mixture are results effective and would vary as needed to provide an equilibrium phase mixture [0037]. The eutectic mixture (i.e., solvent) is a co-basestock and is present at amounts of from about 1 to about 50% by weight of the lubricant [0096]. The amount of about 50% obviates the amount of the deep eutectic solvent as claimed.
The cobasestock is mixed with a Group I to V base oil [0084 – 0085]. The lubricant composition can also comprise other additives at amounts of from 5 to 50% [0097]. Patil’676 teaches the composition having betaine in the eutectic composition. Betaine has a structure such that in the compound of the claim, R1 to R3 are methyl (C1 hydrocarbon) and n is 1.
In regards to claim 6, Patil’676 teaches the composition comprising Group I to V oils which are mineral and synthetic oils.
In regards to claim 9, Patil’676 teaches the composition having the claimed limitation as previously stated.
In regards to claim 10, Patil’676 teaches the composition which is useful as a lubricating oil composition, and thus when used for lubricating will intrinsically provide the method of lubrication as claimed.
In regards to claims 11, 12, Patil’676 teaches the composition comprising the blend of the claimed components and thus provides the method of producing the lubricant as claimed.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the mixture provides improvements over the prior art. The argument is not persuasive.
Firstly, it is noted that a demonstration of superior results cannot overcome rejections based on indefiniteness. Secondly, it is noted that a demonstration of superior results is not necessarily a demonstration of unexpectedly improved results.
To the extent that applicant is attempting to demonstrate unexpectedly improved results, the examiner notes that the inventive examples are not commensurate in scope with the claims.
While the claims allow for the betaine (i.e., N,N,N-trimethylglycine) and the glycerin or malic acid to be at amounts of from 39 to 60% and 40 to 61% respectively, the inventive examples require the betaine to be present at from 39% to 47%, the glycerin to be present at 61% or the malic acid to be present at 53% which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims are drawn to lubricant composition having the solvent at amounts of 50% or more, the inventive examples comprise the eutectic solvent at 100% without the presence of other ingredients.
The results are not persuasive.
The results of the inventive example 1 was identical to the result of comparative example 3, thus demonstrating that the inventive composition was not superior.
The results merely demonstrate intrinsic activities of different components and do not demonstrate synergism or criticality.
Therefore, applicant fails to provide inventive examples that are commensurate in scope with the claims and that demonstrate unexpected results sufficient to rebut the case of obviousness.
Applicant previously argued that Patil does not teach that the eutectic solvent comprises the hydrogen donor and acceptor compounds of the claims. The argument was not persuasive.
Patil teaches the hydrogen donor and acceptor compounds which can be used alone as lubricant and thus provides the claimed solvent.
Applicant previously argued that Patil failed to recite a combination of the betaine compound with glycerin or malic acid as claimed. The argument was not persuasive.
The Patil references recite mixtures that can comprise betaine and glycerin or malic acid as claimed.
Applicant previously argued that Patil required the eutectic solvent in low amounts when mixed with a base oil in a lubricant composition. The argument was moot.
While the examiner agreed that the eutectic mixture is present in low amounts when mixed with base oil as a second component, the eutectic mixture itself meets the limitation of a lubricating oil composition having 100% of the mixture. The examples in Patil teaches the mixtures alone which are not blended with base oils.
Conclusion
THIS ACTION IS MADE FINAL. 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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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