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 amendments filed 8/11/26 overcome the rejections set forth in the office action mailed 3/23/26. New grounds of rejection necessitated by the amendment are set forth below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/11/26 has been entered.
Claim Rejections - 35 USC § 103
Claims 1-6, 12-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Dance (U.S. PG Pub. No. 2019/0127655) in view of Rosenbaum (U.S. PG Pub. No. 2008/0153721) and Loop (U.S. PG Pub. No. 2017/0044460).
In paragraph 9 Dance discloses a lubricating oil useful in internal combustion engines and comprising a base oil (lubricating oil base stock) and at least one detergent. In paragraph 87 Dance discloses that the composition preferably comprises at least two of a low, medium, and high TBN detergent, where Dance discloses in paragraph 85 that medium and high detergents have a TBN of about 100 or greater, meeting the limitations of the overbased detergent (B1) of amended claim 1, the low TBN detergent has a TBN of less than about 100, meeting the limitations of the neutral detergent (B2) of claim 1. In paragraph 87 Dance discloses that the composition comprises about 0.2 to about 4% by weight of each type of detergent (noting that only two of the three need to be present), and that a mixture of salicylate detergents and sulfonate detergent among the preferred detergent mixtures. In paragraph 99 Dance discloses that the weight ratio of salicylate detergent to sulfonate detergent can be about 1:5 to about 5:1, leading to concentration of about 17% to about 83% for each detergent, overlapping the range recited for component (B1) of claims 1 and 17 for the case where the salicylate is the medium and/or high TBN detergent and the sulfonate is the low TBN (neutral) detergent.
In Figures 1-2 Dance discloses compositions comprising calcium and overall metal in concentrations within the ranges recited in claims 4-5. In paragraph 128 Dance discloses that the composition can comprise a viscosity index improver, as recited in claim 6. In paragraphs 9-19 Dance discloses supplying the composition to an engine, and in paragraphs 7, 31, and 34 discloses that the engines can be internal combustion engines, leading to engines meeting the limitations of claim 12 and a method meeting the limitations of claim 14. In paragraph 34 Dance discloses that the engine can be a diesel (compression-ignition) engine, as recited in claims 13 and 15.
The differences between Dance and the currently presented claims are:
i) Dance does not disclose specific base oils meeting the limitations of component (A) of the amended claims. Dance does disclose in paragraph 43 that the base oil can comprise hydroisomerized waxy stocks.
ii) Dance and Rosenbaum do not specifically disclose the viscosity of the composition at 40° C, the viscosity index or HTHS viscosity of the overall composition, nor do they disclose the viscosity grade of the composition. Rosenbaum does teach in paragraph 104 that the base oil blends are useful for multigrade engine oils including a heavy duty motor oil.
With respect to i), in paragraphs 5-10 Rosenbaum discloses a lubricant comprising a light base oil fraction prepared by hydroisomerization dewaxing a waxy feed. In paragraph 27 Rosenbaum discloses a base oil blend comprising the light base oil fraction and a heavier base oil fraction. In Table III (paragraph 102) Rosenbaum discloses two inventive base oil blends (Blend A and Blend C) and the simulated distillation curves for both. A C21 hydrocarbon has a boiling point of about 678° F and a C32 hydrocarbon has a boiling point of about 878° F. The simulated distillation data reported in Table III indicates that Blend A has a C32 or higher content of just under 30% by weight and a C21 or lower content of about 5%, and that Blend C has a C32 or higher content of between 10 and 30% by weight (about 15% by interpolation) and a C21 or lower content of about 5% by weight. The base oil blends of Rosenbaum therefore meet the limitations of component (A) of claims 1-3 and 18, as well as component (A) of claim 19 for Blend A of Rosenbaum. The use of the base oil blend of Rosenbaum as the base oil of Dance leads to a composition, engine, and method meeting the compositional limitations of claims 1-6, 12-15, and 17-19.
It would have been obvious to one of ordinary skill in the art to include the base oil blend of Rosenbaum as the base oil of Dance, since Rosenbaum teaches in paragraphs 103-104 that the blends have lower Noack volatility and favorable viscometric properties, and are useful in engine oils.
With respect to ii), Loop, in paragraph 1, discloses a lubricating composition for a heavy duty diesel engine. In paragraph 11 Loop discloses that the composition has a viscosity index of at least 130, as recited in claim 8. In Table 2 (paragraph 105) Loop discloses that the composition can have an HTHS viscosity according to ASTM D4683 of 3.3 cP (MPa∙s), within the range recited in claim 9, noting that ASTM D4683 measures the HTHS viscosity at 150° C as recited in claim 9. In paragraph 16, Loop discloses that the composition can be an SAE 0W-20 or 0W-30 composition, as recited in claim 10. Formulating the composition of Dance and Rosenbaum to have the properties disclosed by Loop meets the limitations of claims 8-10. 0W-20 and 0W-30 will have an overall viscosity range of 6.9 to 12.5 cSt at 100° C. The viscosity of these compositions at 40° C, based on the viscosity index range of 130 to 230 disclosed in paragraph 11 of Loop, is about 27.5 (6.9 cSt at 100° C, VI of 230) to about 93.1 (6.9 cSt at 100° C, VI of 130) cSt, overlapping the range recited in claim 1.
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);”
It would have been obvious to one of ordinary skill in the art to formulate the compositions of Dance and Rosenbaum to have the properties disclosed by Loop, since Loop discloses in paragraph 5 that such compositions provide improved fuel economy as well as additional benefits.
In light of the above, claims 1-6, 8-10, 12-15, and 17-19 are rendered obvious by Dance in view of Rosenbaum and Loop.
Response to Arguments
Applicant’s arguments filed that the amended claims are not prima facie obvious over the references cited in the office action mailed 4/13/26 are moot in light of the new grounds of rejection set forth above. In particular, Rosenbaum teaches the base oil of the amended claims.
Applicant also argues that the claimed composition produces unexpectedly superior results in terms of improved fluidity and suppressed evaporation, pointing to the data provided in the specification. The examiner maintains the position taken in the office action mailed 4/13/26 that the data provided by applicant does not demonstrate superior results commensurate in scope with the claims. While the claims have been narrowed somewhat, they still recite compositions comprising broad classes of base oils and detergents in broad concentration ranges, while the inventive examples supplied by applicant contain specific mixtures of base oils having specific carbon number distributions, and specific detergent mixtures. One of ordinary skill in the art would not be able to determine from the limited data that superior results would be maintained across the entire scope of the claims. Furthermore, for each of the properties reported in Tables 1-2 of the specification, there are some comparative examples that give equal or better results for those properties. The examiner recommends that if the allegation of unexpected results is dependent on a combination of properties, the properties should be recited in the claims, noting that applicant still must meet the other limitations set forth in MPEP 716.02.
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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