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 11/25/2025 has been considered and entered. The amendment to claim 6 overcomes the rejection based on indefiniteness which is hereby withdrawn. The amendment does not overcome the rejections based on the prior art of Onouchi et al. (US 2019/0119601) which are hereby maintained.
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.
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 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Onouchi et al. (US 2019/0119601)
In regards to claim 1, Onouchi teaches lubricating oil composition for internal combustion engines comprising a major amount of oil of lubricating viscosity comprising alkaline earth metal alkylhydroxybenzoate detergents, molybdenum compound providing molybdenum in amounts of from about 100 to about 1500 ppm, and wherein magnesium is present at amounts of from 100 to 800 ppm, and calcium is present at from 500 to about 2000 ppm (abstract). The benzoate detergent is a salicylate of metal salts such as calcium and/or magnesium [0058]. The detergent also comprises overbased sulfonates, phenate or naphthenates [0065]. The detergent provides the calcium and magnesium amounts of 500 to 2000 ppm calcium and 100 to 800 ppm magnesium [0064]. The composition comprises viscosity modifier in amounts of from 0.5 to 15% by weight [0093]. The composition can comprise various additives such as pour point depressants [0121]. Thus, the claimed limitations are overlapped.
In regards to claims 1 – 6, Onouchi teaches the composition having the claimed limitations with ratios overlapping the claimed ranges as previously discussed.
In regards to claim 7, Onouchi teaches the composition wherein the molybdenum compound is an organomolybdenum compound such as molybdenum dithiocarbamate [0079 – 0081].
In regards to claims 8 – 10, Onouchi teaches the composition for use in hybrid engines and thus would be useful in plug-in hybrid or hybrid vehicles with a range extender [0119]. When the composition is used in such engines, they would provide the claimed improvement and would intrinsically provide the claimed method.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Onouchi fails to teach the proportion of the viscosity index improver. The argument is erroneous.
Paragraph 0093 teaches the amount of the viscosity modifier which overlaps the claimed range.
Applicant argues that Onouchi does not teaches the claimed additives including the presence of the pour point depressant. The argument is not persuasive.
Onouchi teaches the magnesium carboxylate, molybdenum compound and other detergent as claimed. Paragraph 0121 teaches the pour point depressant.
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.
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
Prosecution Insights