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 .
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 1 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 1 is indefinite because it is unclear whether the CCS viscosity and HTHS viscosity are referring to the base oil or the lubricant composition as a whole. The claim is being treated as the two viscosity measurements are referring to the lubricant composition as a whole.
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.
Claims 1, 3, 5 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada, US Patent Application Publication No. 2013/0029892 (hereinafter referred to as Yamada).
Regarding claims 1, 3, 5 and 9, Yamada discloses a lubricating oil composition for an internal combustion engine (as recited in claims 5 and 9) (see Abstract) with excellent fuel saving performance comprising a base oil having a NOACK value of 6% (as recited in claim 1) wherein the composition as a whole has a CCS viscosity at -25°C is 5400 mPas (as recited in claim 1) and an HTHS viscosity at 150°C is 3.5 mPas (as recited in claim 1) (see Table 1/Example 4). Yamada further discloses 1-2 wt% of a polymeric compound-1 which is a polymethacrylate (PMA), mass average molecular weight of 45,000 (ACLUBE C-728 manufactured by Sanyo Chemical Industries, Ltd.) (as recited in claim 3) (see Table 1/Example 4 and Para. [0091]) and the presence of calcium salicylates (Para. [0055]).
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 2-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada in view of Smith et al., US Patent Application Publication No. 2020/0032158 (hereinafter referred to as Smith).
Regarding claims 2-13, Yamada discloses all the limitations discussed above including lubricating oil compositions for use in internal combustion engines. Yamada does not, however, explicitly disclose the internal combustion engines operating on hydrogen fuel as recited in claim 2, nor the engine being equipped with a turbocharger as recited in claim 4.
Smith discloses lubricating oil compositions comprising a major concentration of base oil to which are added additives including calcium salicylate (Para. [0119]) and polymethacrylate-based viscosity index improvers (Para. [0132]) for use in internal combustion engines that run on hydrogen fuel (as recited in claim 2) (Para. [0002] and [0047]) and are equipped with a supercharger (as recited in claim 4) (Para. [0046]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use the lubricating oil composition of Yamada in the engine of Smith as it is a combination of prior art elements according to known methods to yield predictable results.
Conclusion
There were unused X references from the ISR report. The examiner is of the position that the prior art cited adequately reads on the claims as instantly recited.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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