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 3/23/26 overcome the rejections of record. New grounds of rejections, necessitated by the amendments, are set forth below. The reference referred to as “Burns ‘222” in the previous office action is now referred to as “Burns ‘722” in order to fix a typographical error and correctly reflect the publication number; the reference remains the same.
Claim Rejections - 35 USC § 103
Claims 1-6, 8-10, 12, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Burns (U.S. PG Pub. No. 2018/0273870) in view of Chen (U.S. PG Pub. No. 2019/0359748) and Dance (U.S. PG Pub. No. 2019/0127655).
In paragraph 12 Burns discloses a lubricating oil comprising a mixture of a lubricating oil base stock as a major component and at least one cobase stock as a minor component. In paragraphs 58 and 62-64 Burns discloses that the lubricating oil base stock can be a polyalphaolefin (PAO), and in paragraph 84 Burns discloses that the cobase stock is preferably a PAO. In paragraph 114 Burns discloses that the composition can comprise a detergent additive and in paragraphs 147, 150-151, and 154 Burns discloses that calcium salicylate, as recited in component (B) of claim 1, is a preferred detergent. In paragraph 148 Burns discloses that the detergent can be an overbased detergent having a TBN of up to 600, overlapping the range recited for component (B) of claim 1.
In paragraph 44 Burns discloses that the composition even more preferably has a viscosity index of about 100 to about 200, overlapping the range recited in claim 8. In paragraph 42 Burns discloses that the composition even more preferably has a viscosity of 2 to 6 cSt at 100° C. The viscosity range at 40° C based on the even more preferred 100° C viscosity and viscosity index ranges from 5.5 cSt to 38.4 cSt, within the range recited in amended claim 1. Alternatively, Burns discloses in paragraph 34 that the composition can be an SAE 5W-16, 5W-20, 5W-30, OR 10W-30, implying a kinematic viscosity of 6.1 to 12.5 cSt at 100° C, leading to a viscosity range of 25.8 to 115.4 cSt at 40° C when the viscosity index ranges from 100 to 200, also overlapping the range recited in amended claim 1.
In paragraph 155, Burns discloses that the detergent can be present in an amount of 0.5 to 4.0% by weight of the composition, leading to amounts of calcium overlapping the ranges recited in claims 4-5 when the detergent is a calcium salicylate. In figures 6-10, Burns discloses inventive examples comprising calcium in amounts within the ranges recited in claims 4-5. In paragraphs 157-165 Burns discloses that the composition can comprise a viscosity index improver, as recited in claim 6. XW-20 and XW-30 oils have an HTHS viscosity at 150° C of 2.6 cSt and 2.9 cSt respectively, within the range recited in claim 9. In paragraph 41 Burns discloses that the compositions can have a CCS viscosity in the 0W range as well as a kinematic viscosity at 100° C viscosity in a range encompassing the 6.9 to 12.5 cSt required for a 0W-20 or 0W-30 range, as recited in claim 10.
The differences between Burns and the currently presented claims are:
i) Burns does not specifically disclose that the base oil mixture comprises the claimed proportion of a heavy fraction having 32 or more carbon atoms. Burns does disclose in paragraph 82 that the lubricating oil base stock can be present in amounts overlapping or within the range recited for the heavy fraction of claim 1, and in paragraph 113 that the cobase stock can be present in amounts overlapping the range recited for the heavy fraction of claim 1.
ii) Burns discloses in paragraph 148 that mixtures of neutral and overbased detergents can be used in the composition, and that calcium sulfonates are also preferred detergents. In paragraph 154 Burns discloses that a combination of calcium salicylate and magnesium sulfonate is a preferred detergent mixture. Burns does not specifically disclose a mixture of overbased and neutral detergents in the relative amounts recited in claims 1 and 16-17, and does not disclose specifically that the use of a metal sulfonate as the neutral detergent, as in claims 16-17.
iii) Burns does not specifically disclose an internal combustion engine comprising the lubricating oil composition, or a method of lubricating an internal combustion engine with the composition.
iv) Some of the ranges of Burns overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraphs 14-17 Chen discloses a process for producing PAO and in paragraphs 35-36 as well as the reference’s claim 1, Chen discloses preparing PAO trimers. In Example 3 (paragraphs 585-596) Chen discloses the preparation of a C32 trimer, meeting the limitations of the heavy fraction of claim 1, and the inclusion of the C32 PAO trimer of Chen as either the PAO lubricating oil base stock of Burns or the PAO cobase stock of Burns leads to a base oil mixture meeting the limitations of component (A) of claim 1 as well as newly added claims 18-19.
It is also noted that Chen discloses in paragraph 69 that the lubricating oil base stock can be esters such as dibutyl adipate or di-n-hexyl fumarate, which have fewer than 21 carbon atoms. When these esters are used as the lubricating oil base stock of Burns and the PAO of Chen is used as the cobase stock of Burns, claims 2-3 are met as well.
It would have been obvious to one of ordinary skill in the art to use the C32 PAO trimer of Chen as either the lubricating oil base stock or the cobase stock in the composition of Burns, since Chen teaches in paragraphs 595-596 that it has exceptionally low volatility and excellent low temperature properties, as well as low traction.
With respect to ii), in paragraph 7 Dance discloses a lubricating oil useful in internal combustion engines. 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 claim 1 when either the salicylate or sulfonate is the medium and/or high TBN detergent, and claims 16-17 for the case where the salicylate is the medium and/or high TBN detergent and the sulfonate is the low TBN (neutral) detergent.
It would have been obvious to one of ordinary skill in the art to use the detergent mixture of Dance as the detergent mixture in the composition of Burns, since Dance teaches that it is a suitable detergent mixture for an engine lubricating composition, and further indicates in paragraph 178 and Figure 2 that a compositions comprising a mixture of salicylate and sulfonate detergents in different TBN ranges (Candidates 3 and 4) provide improved wear performance.
With respect to iii), Burns discloses in paragraph 51 that the composition can be a passenger vehicle engine oil or a commercial vehicle engine oil. Passenger vehicle engines and commercial vehicle engines are both internal combustion engines. It therefore would have been obvious to one of ordinary skill in the art to apply the lubricating oil composition of Burns, Chen, and Dance to an internal combustion engine as recited in claim 14, creating an internal combustion filled with the composition as recited in claim 12, in order to use the composition in the manner specified by Burns.
With respect to iv), 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).
In light of the above, claims 1-6, 8-10, 12, 14, and 16-19 are rendered obvious by Burns in view of Chen and Dance.
Claims 1-6, 8-10, 12, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Burns (U.S. PG Pub. No. 2018/0273870) in view of Inayama (U.S. PG Pub. No. 2013/0131374) and Dance (U.S. PG Pub. No. 2019/0127655).
In paragraph 12 Burns discloses a lubricating oil comprising a mixture of a lubricating oil base stock as a major component and at least one cobase stock as a minor component. In paragraph 82 Burns discloses that the lubricating oil base stock can be a hydrocarbon oil such as a Group II or Group III base oil, and in paragraph 83 Burns discloses that the cobase stock can be a Group V basestock, which encompasses base oils not in Groups I-IV. Burns does not require a polyalphaolefin (Group IV) base oil, as recited in newly added claim 20. In paragraph 114 Burns discloses that the composition can comprise a detergent additive and in paragraphs 147, 150-151, and 154 Burns discloses that calcium salicylate, as recited in component (B) of claim 1, is a preferred detergent. In paragraph 148 Burns discloses that the detergent can be an overbased detergent having a TBN of up to 600, overlapping the range recited for component (B) of claim 1.
In paragraph 44 Burns discloses that the composition even more preferably has a viscosity index of about 100 to about 200, overlapping the range recited in claim 8. In paragraph 42 Burns discloses that the composition even more preferably has a viscosity of 2 to 6 cSt at 100° C. The viscosity range at 40° C based on the even more preferred 100° C viscosity and viscosity index ranges from 5.5 cSt to 38.4 cSt, within the range recited in amended claim 1. Alternatively, Burns discloses in paragraph 34 that the composition can be an SAE 5W-16, 5W-20, 5W-30, OR 10W-30, implying a kinematic viscosity of 6.1 to 12.5 cSt at 100° C, leading to a viscosity range of 25.8 to 115.4 cSt at 40° C when the viscosity index ranges from 100 to 200, also overlapping the range recited in amended claim 1.
In paragraph 155, Burns discloses that the detergent can be present in an amount of 0.5 to 4.0% by weight of the composition, leading to amounts of calcium overlapping the ranges recited in claims 4-5 when the detergent is a calcium salicylate. In figures 6-10, Burns discloses inventive examples comprising calcium in amounts within the ranges recited in claims 4-5. In paragraphs 157-165 Burns discloses that the composition can comprise a viscosity index improver, as recited in claim 6. XW-20 and XW-30 oils have an HTHS viscosity at 150° C of 2.6 cSt and 2.9 cSt respectively, within the range recited in claim 9. In paragraph 41 Burns discloses that the compositions can have a CCS viscosity in the 0W range as well as a kinematic viscosity at 100° C viscosity in a range encompassing the 6.9 to 12.5 cSt required for a 0W-20 or 0W-30 range, as recited in claim 10.
The differences between Burns and the currently presented claims are:
i) Burns does not specifically disclose that the base oil mixture comprises the claimed proportion of a heavy fraction having 32 or more carbon atoms. In paragraph 112 Burns discloses that the cobase stock can be present in broad concentration ranges, up to 99% by weight of the overall base oil of the composition.
ii) Burns discloses in paragraph 148 that mixtures of neutral and overbased detergents can be used in the composition, and that calcium sulfonates are also preferred detergents. In paragraph 154 Burns discloses that a combination of calcium salicylate and magnesium sulfonate is a preferred detergent mixture. Burns does not specifically disclose a mixture of overbased and neutral detergents in the relative amounts recited in claims 1 and 16-17, and does not disclose specifically that the use of a metal sulfonate as the neutral detergent, as in claims 16-17.
iii) Burns does not specifically disclose an internal combustion engine comprising the lubricating oil composition, or a method of lubricating an internal combustion engine with the composition.
iv) Some of the ranges of Burns overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraph 14 Inayama discloses a pentaerythritol tetraester which is the reaction product of pentaerythritol with a mixture of isobutyric acid and 3,5,5-trimethylhexanoic acid, where the isobutyric acid and 3,5,5-trimethylhexanoic acid are preferably present in a mole ratio of 36/64 to 67/33.
Since the acid residues in the pentaerythritol tetraesters of Inayama will be statistically distributed, the weight percent of heavy and light fractions can be calculated. A pentaerythritol tetraester containing three 3,5,5-trimethylhexanoate groups and one isobutyrate group will have 36 carbon atoms, and pentaerythritol tetraester containing four 3,5,5-trimethylhexanoate groups will have 41 carbon atoms, both meeting the limitations of the heavy fraction of claim 1. The weight percent of pentaerythritol esters of Inayama qualifying as the heavy fraction of the claimed base oil therefore ranges from about 13% (33% mole fraction of 3,5,5-trimethylhexanoic acid), to about 59% (64% mole fraction of 3,5,5-trimethylhexanoic acid ) when the esters are statistically distributed, and when the pentaerythritol esters of Inayama are used as the cobase stock of Burns, in the amount taught by Burns, the amount of heavy fraction relative to the total base oil will overlap the ranges recited in claims 1 and 18-19.
A pentaerythritol tetraester containing four isobutyrate groups has 21 carbon atoms, and therefore qualifies as the light fraction recited in claims 2-3. The weight percent of pentaerythritol esters of Inayama qualifying as the light fraction of the claimed base oil therefore ranges from about 1.2% (36% mole fraction of isobutyric acid), to about 16% (67% mole fraction of isobutyric acid ) when the esters are statistically distributed, and when the pentaerythritol esters of Inayama are used as the cobase stock of Burns, in the amount taught by Burns, the amount of light fraction relative to the total base oil will overlap the ranges recited in claim 2.
The weight ratio of light fraction to heavy fraction in the pentaerythritol tetraester of Inayama ranges from about 0.02 (36/64 mole ratio of isobutyric to 3,5,5-trimethylhexanoic) to about 1.2 (67/33 mole ratio of isobutyric to 3,5,5-trimethylhexanoic), overlapping the range recited in claim 3.
It would have been obvious to one of ordinary skill in the art to include the pentaerythritol tetraester of Inayama as the cobase stock of Burns since ester oils are Group V base stocks, which Burns teaches are suitable cobase stocks, because Inayama teaches in paragraph 26 that the pentaerythritol can be used as an ester oil, and because Inayama discloses in paragraph 32 that the pentaerythritol has an excellent ability to dissolve additives such as silicon-based anti-foaming agents, which Burns teaches in paragraph 178 as an advantageous additive for the lubricating composition.
With respect to ii), in paragraph 7 Dance discloses a lubricating oil useful in internal combustion engines. 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 claim 1 when either the salicylate or sulfonate is the medium and/or high TBN detergent, and claims 16-17 for the case where the salicylate is the medium and/or high TBN detergent and the sulfonate is the low TBN (neutral) detergent.
It would have been obvious to one of ordinary skill in the art to use the detergent mixture of Dance as the detergent mixture in the composition of Burns, since Dance teaches that it is a suitable detergent mixture for an engine lubricating composition, and further indicates in paragraph 178 and Figure 2 that a compositions comprising a mixture of salicylate and sulfonate detergents in different TBN ranges (Candidates 3 and 4) provide improved wear performance.
With respect to iii), Burns discloses in paragraph 51 that the composition can be a passenger vehicle engine oil or a commercial vehicle engine oil. Passenger vehicle engines and commercial vehicle engines are both internal combustion engines. It therefore would have been obvious to one of ordinary skill in the art to apply the lubricating oil composition of Burns, Inayama, and Dance to an internal combustion engine as recited in claim 14, creating an internal combustion filled with the composition as recited in claim 12, in order to use the composition in the manner specified by Burns.
With respect to iv), 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).
In light of the above, claims 1-6, 8-10, 12, 14, and 16-20 are rendered obvious by Burns in view of Inayama and Dance.
Claims 1-6, 8-10, and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Burns ‘722 (U.S. PG Pub. No. 2018/0237722) in view of Chen, Dance, and Akamatsu (U.S. PG Pub. No. 2017/0009178).
In paragraphs 8-10 Burns ‘722 discloses lubricant compositions comprising a lubricating oil base stock as a major component, and various lubricant additives. In paragraphs 72-73 Burns ‘722 discloses that the lubricating oil base stock can be an ester. Burns ‘722 does not require a polyalphaolefin (Group IV) base oil, meeting the limitations of newly added claim 20. In paragraph 87 Burns ‘722 discloses that the composition comprises a metal-based detergent, as recited in component (B) of claim 1, and in paragraphs 91-92 and 100 discloses that calcium salicylate, as recited in component (B) of claim 1, is a preferred detergent, where the TBN of the detergent can be up to 600, overlapping the range recited in in claim 1. In paragraph 36 Burns ‘722 discloses that the compositions are useful for lubricating various types of engines including diesel engines.
In paragraph 102 Burns ‘722 discloses that the calcium-containing detergent can supply 0.05 to 0.50% by weight of calcium to the composition, within the ranges recited in claims 4-5. In paragraphs 148 and 178-186 Burns ‘722 discloses that the composition can comprise a viscosity index improver, as recited in claim 6. In the figures Burns ‘722 discloses compositions having a 0W-30 viscosity grade, meeting the limitations of claim 10, and having an HTHS viscosity meeting the limitations of claim 9.
The differences between Burns ‘722 and the currently presented claims are:
i) Burns ‘722 does not specifically disclose a base oil comprising the claimed proportion of a heavy fraction having 32 or more carbon atoms.
ii) Burns ‘722 discloses in paragraph 106 that the detergent can be a mixture of a sulfonate and a salicylate detergent. In paragraph 92 Burns ‘722 discloses that the detergent can be a mixture of low, medium, and high TBN detergents. Burns ‘722 does not specifically disclose a mixture of overbased and neutral detergents in the relative amounts recited in claims 1 and 16-17, and does not disclose specifically that the use of a metal sulfonate as the neutral detergent, as in claims 16-17.
iii) Burns ‘722 does not disclose the viscosity of the lubricating composition at 40° C.
iv) Burns ‘722 does not specifically disclose an internal combustion engine comprising the lubricating oil composition, or a method of lubricating an internal combustion engine with the composition.
v) Some of the ranges of Burns ‘722 overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraph 14 Inayama discloses a pentaerythritol tetraester which is the reaction product of pentaerythritol with a mixture of isobutyric acid and 3,5,5-trimethylhexanoic acid, where the isobutyric acid and 3,5,5-trimethylhexanoic acid are preferably present in a mole ratio of 36/64 to 67/33.
Since the acid residues in the pentaerythritol tetraesters of Inayama will be statistically distributed, the weight percent of heavy and light fractions can be calculated. A pentaerythritol tetraester containing three 3,5,5-trimethylhexanoate groups and one isobutyrate group will have 36 carbon atoms, and pentaerythritol tetraester containing four 3,5,5-trimethylhexanoate groups will have 41 carbon atoms, both meeting the limitations of the heavy fraction of claim 1. The weight percent of pentaerythritol esters of Inayama qualifying as the heavy fraction of the claimed base oil therefore ranges from about 13% (33% mole fraction of 3,5,5-trimethylhexanoic acid), to about 59% (64% mole fraction of 3,5,5-trimethylhexanoic acid ) when the esters are statistically distributed, and when the pentaerythritol esters of Inayama are used as the ester base stock of Burns ‘722, the amount of heavy fraction relative to the total base oil will overlap the ranges recited in claims 1 and 18-19.
A pentaerythritol tetraester containing four isobutyrate groups has 21 carbon atoms, and therefore qualifies as the light fraction recited in claims 2-3. The weight percent of pentaerythritol esters of Inayama qualifying as the light fraction of the claimed base oil therefore ranges from about 1.2% (36% mole fraction of isobutyric acid), to about 16% (67% mole fraction of isobutyric acid ) when the esters are statistically distributed, and when the pentaerythritol tetraesters of Inayama are used as the ester base stock of Burns ‘722, the amount of light fraction relative to the total base oil will overlap the ranges recited in claim 2.
The weight ratio of light fraction to heavy fraction in the pentaerythritol tetraester of Inayama ranges from about 0.02 (36/64 mole ratio of isobutyric to 3,5,5-trimethylhexanoic) to about 1.2 (67/33 mole ratio of isobutyric to 3,5,5-trimethylhexanoic), overlapping the range recited in claim 3.
It would have been obvious to one of ordinary skill in the art to include the pentaerythritol tetraester of Inayama as the cobase stock of Burns ‘722 since ester oils are Group V base stocks, which Burns ‘722 teaches are suitable base stocks, because Inayama teaches in paragraph 26 that the pentaerythritol can be used as an ester oil, and because Inayama discloses in paragraph 32 that the pentaerythritol has an excellent ability to dissolve additives such as silicon-based anti-foaming agents, which Burns ‘722 teaches in paragraph 189 as an advantageous additive for the lubricating composition.
With respect to ii), in paragraph 7 Dance discloses a lubricating oil useful in internal combustion engines. In paragraph 34 Dance discloses that the oil can be used in diesel (compression-ignition) engines. 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 claim 1 when either the salicylate or sulfonate is the medium and/or high TBN detergent, and claims 16-17 for the case where the salicylate is the medium and/or high TBN detergent and the sulfonate is the low TBN (neutral) detergent.
It would have been obvious to one of ordinary skill in the art to use the detergent mixture of Dance as the detergent mixture in the composition of Burns ‘722, since Dance teaches that it is a suitable detergent mixture for an engine lubricating composition, and further indicates in paragraph 178 and Figure 2 that a compositions comprising a mixture of salicylate and sulfonate detergents in different TBN ranges (Candidates 3 and 4) provide improved wear performance.
With respect to iii), Akamatsu discloses in paragraphs 1 and 15 a lubricating composition suitable for a diesel engine. In paragraph 56 Akamatsu discloses that the composition has a viscosity of 10 to 70, 20 to 60, or 30 to 55 mm2/s at 40° C, all overlapping the range recited in amended claim 1. Akamatsu further discloses that the compositions exhibit excellent effects when they have an SAE viscosity grade of 0W-30, consistent with many of the inventive compositions disclosed in the figures of Burns ‘722. In Table 1 (following paragraph 81) Akamatsu discloses compositions having a viscosity at 40° C within the range recited in claim 1 and a viscosity index within the range recited in claim 8. Formulating the composition of Burns ‘722, Chen, Dance, and Akamatsu to have the viscosity of Akamatsu at 40° C meets the compositional limitations of claims 1-6, 8-10, and 16-19.
It would have been obvious to one of ordinary skill in the art to formulate the composition of Burns ‘722, Chen, Dance, and Akamatsu to have the viscosity of Akamatsu at 40° C since Akamatsu teaches that it is a suitable viscosity for diesel engine lubricating composition, and is consistent with compositions having the viscosity grades taught by Burns ‘722.
With respect to iv), Burns ‘722 discloses in paragraph 36 that the lubricating oil compositions are useful as heavy duty diesel engine lubricants and light duty diesel passenger vehicle lubricants. Diesel engines are internal combustion engines. It therefore would have been obvious to one of ordinary skill in the art to apply the lubricating oil composition of Burns ‘722, Chen, Dance, and Akamatsu to an internal combustion engine as recited in claim 14, and specifically a diesel engine as recited in claim 15, creating an internal combustion filled with the composition as recited in claims 12-13, in order to use the composition in the manner specified by Burns ‘722.
With respect to v), 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).
In light of the above, claims 1-6, 8-10, and 12-19 are rendered obvious by Burns ‘722 in view of Chen, Dance, and Akamatsu.
Claims 1-6, 8-10, and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Burns ‘722 (U.S. PG Pub. No. 2018/0237722) in view of Inayama, Dance, and Akamatsu (U.S. PG Pub. No. 2017/0009178).
In paragraphs 8-10 Burns ‘722 discloses lubricant compositions comprising a lubricating oil base stock as a major component, and various lubricant additives. In paragraphs 61 and 65-67 Burns ‘722 discloses that the lubricating oil base stock can be a polyalphaolefin (PAO). In paragraph 87 Burns ‘722 discloses that the composition comprises a metal-based detergent, as recited in component (B) of claim 1, and in paragraphs 91-92 and 100 discloses that calcium salicylate, as recited in component (B) of claim 1, is a preferred detergent, where the TBN of the detergent can be up to 600, overlapping the range recited in in claim 1. In paragraph 36 Burns ‘722 discloses that the compositions are useful for lubricating various types of engines including diesel engines.
In paragraph 102 Burns ‘722 discloses that the calcium-containing detergent can supply 0.05 to 0.50% by weight of calcium to the composition, within the ranges recited in claims 4-5. In paragraphs 148 and 178-186 Burns ‘722 discloses that the composition can comprise a viscosity index improver, as recited in claim 6. In the figures Burns ‘722 discloses compositions having a 0W-30 viscosity grade, meeting the limitations of claim 10, and having an HTHS viscosity meeting the limitations of claim 9.
The differences between Burns ‘722 and the currently presented claims are:
i) Burns ‘722 does not specifically disclose a base oil comprising the claimed proportion of a heavy fraction having 32 or more carbon atoms.
ii) Burns ‘722 discloses in paragraph 106 that the detergent can be a mixture of a sulfonate and a salicylate detergent. In paragraph 92 Burns ‘722 discloses that the detergent can be a mixture of low, medium, and high TBN detergents. Burns ‘722 does not specifically disclose a mixture of overbased and neutral detergents in the relative amounts recited in claims 1 and 16-17, and does not disclose specifically that the use of a metal sulfonate as the neutral detergent, as in claims 16-17.
iii) Burns ‘722 does not disclose the viscosity of the lubricating composition at 40° C.
iv) Burns ‘722 does not specifically disclose an internal combustion engine comprising the lubricating oil composition, or a method of lubricating an internal combustion engine with the composition.
v) Some of the ranges of Burns ‘722 overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraphs 14-17 Chen discloses a process for producing PAO and in paragraphs 35-36 as well as the reference’s claim 1, Chen discloses preparing PAO trimers. In Example 3 (paragraphs 585-596) Chen discloses the preparation of a C32 trimer, meeting the limitations of the heavy fraction of claim 1, and the inclusion of the C32 PAO trimer of Chen as either the PAO lubricating oil base stock of Burns or the PAO cobase stock of Burns ‘722 leads to a base oil mixture meeting the limitations of component (A) of claim 1 as well as newly added claims 18-19.
In the figures, Chen discloses numerous compositions comprising both a PAO (Group IV) base stock and an ester (Group V) base stock, where the Group IV base stock is present within the concentration range recited for the heavy fraction of claim 1, and the Group V base stock is present in an amount within the range recited in claim 3 and producing a ratio of ester to PAO within the range recited in claim 2. In paragraph 72 Chen discloses that suitable ester base stocks include dibutyl adipate or di-n-hexyl fumarate, which have fewer than 21 carbon atoms and meet the limitations of the light fraction of claims 2-3. The use of the PAO of Chen and the light esters of Burns ‘722 as the Group IV and Group V base oils in the base oil blend in the composition of Burns ‘722 therefore additionally meets claims 2-3.
It would have been obvious to one of ordinary skill in the art to use the C32 PAO trimer of Chen as the PAO lubricating oil base stock in the composition of Burns ‘722, since Chen teaches in paragraphs 595-596 that it has exceptionally low volatility and excellent low temperature properties, as well as low traction.
With respect to ii), in paragraph 7 Dance discloses a lubricating oil useful in internal combustion engines. In paragraph 34 Dance discloses that the oil can be used in diesel (compression-ignition) engines. 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 claim 1 when either the salicylate or sulfonate is the medium and/or high TBN detergent, and claims 16-17 for the case where the salicylate is the medium and/or high TBN detergent and the sulfonate is the low TBN (neutral) detergent.
It would have been obvious to one of ordinary skill in the art to use the detergent mixture of Dance as the detergent mixture in the composition of Burns ‘722, since Dance teaches that it is a suitable detergent mixture for an engine lubricating composition, and further indicates in paragraph 178 and Figure 2 that a compositions comprising a mixture of salicylate and sulfonate detergents in different TBN ranges (Candidates 3 and 4) provide improved wear performance.
With respect to iii), Akamatsu discloses in paragraphs 1 and 15 a lubricating composition suitable for a diesel engine. In paragraph 56 Akamatsu discloses that the composition has a viscosity of 10 to 70, 20 to 60, or 30 to 55 mm2/s at 40° C, all overlapping the range recited in amended claim 1. Akamatsu further discloses that the compositions exhibit excellent effects when they have an SAE viscosity grade of 0W-30, consistent with many of the inventive compositions disclosed in the figures of Burns ‘722. In Table 1 (following paragraph 81) Akamatsu discloses compositions having a viscosity at 40° C within the range recited in claim 1 and a viscosity index within the range recited in claim 8. Formulating the composition of Burns ‘722, Chen, Dance, and Akamatsu to have the viscosity of Akamatsu at 40° C meets the compositional limitations of claims 1-6, 8-10, and 16-19.
It would have been obvious to one of ordinary skill in the art to formulate the composition of Burns ‘722, Chen, Dance, and Akamatsu to have the viscosity of Akamatsu at 40° C since Akamatsu teaches that it is a suitable viscosity for diesel engine lubricating composition, and is consistent with compositions having the viscosity grades taught by Burns ‘722.
With respect to iv), Burns ‘722 discloses in paragraph 36 that the lubricating oil compositions are useful as heavy duty diesel engine lubricants and light duty diesel passenger vehicle lubricants. Diesel engines are internal combustion engines. It therefore would have been obvious to one of ordinary skill in the art to apply the lubricating oil composition of Burns ‘722, Chen, Dance, and Akamatsu to an internal combustion engine as recited in claim 14, and specifically a diesel engine as recited in claim 15, creating an internal combustion filled with the composition as recited in claims 12-13, in order to use the composition in the manner specified by Burns ‘722.
With respect to v), 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).
In light of the above, claims 1-6, 8-10, and 12-19 are rendered obvious by Burns ‘722 in view of Chen, Dance, and Akamatsu.
Response to Arguments
Applicant's arguments filed 3/23/26 have been fully considered but they are not persuasive. Applicant argues that the Burns reference does not disclose the detergent system recited in the amended claims. However, the newly applied Dance reference provides motivation for one of ordinary skill in the art to use the claimed detergent mixture as the detergent in the Burns and Burns ‘722 references. Additionally, the newly applied Akamatsu reference provides motivation for one of ordinary skill in the art to formulate the composition of Burns ‘722 to have a viscosity in a range overlapping the range recited in amended claim 1, as well as a viscosity index meeting the limitations of claim 8. The alternate set of rejections citing Inayama instead of Chen addresses the limitations of claim 20 and demonstrates that the cited references also render obvious the claimed composition free of polyalphaolefin. It is noted that there is no requirement in the claims that the base oil be a hydrocarbon and paragraphs 12-13 of the current application specifically disclose ester oils as suitable base oils.
Applicant also alleges a “synergetic effect” of the base oil and detergent system. In order to successfully rebut a prima facie case of obviousness, applicant must meet the standards set forth in MPEP 716.02. For example, applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case, the claims 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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