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 .
DETAILED ACTION
This Office action is based on the 18/872097 application originally filed December 05, 2024.
Amended claims 1-9, filed December 05, 2024, are pending and have been fully considered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3, 5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagihara et al. (WO 2018/174188 A1) hereinafter cited under (US 2020/0071632) “Hagihara” in view of Klein et al. (US 2019/0177641).
Regarding Claims 1 and 2
Hagihara discloses in paragraph 0013, a viscosity index improver having an excellent viscosity index-improving effect and a lubricating oil composition in which a shear-induced reduction in viscosity during use is small and which generates no shear-induced precipitate during long-term use.
Hagihara discloses in paragraph 0015, a viscosity index improver containing a copolymer (A) whose essential constituent monomer is a monomer (a) having a number average molecular weight of 800 to 4,000 represented by the following formula (1), the copolymer (A) having a solubility parameter in the range of 9.00 to 9.40. A lubricating oil composition containing at least one base oil selected from the group consisting of API Group I to IV base oils, GTL base oils, and synthetic lubricant base oils and the viscosity index improver, wherein the amount of the copolymer (A) in the lubricating oil composition is 0.1 to 20% by weight,
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wherein R1 is a hydrogen atom or a methyl group; —X1— is a group represented by —O—, —O(AO)m—, or —NH—, AO is a C2-C4 alkyleneoxy group, m is an integer of 1 to 10, each AO may be the same or different when m is 2 or more; R2 is a residue after removal of one hydrogen atom from a hydrocarbon polymer whose essential constituent monomer is butadiene in which the butadiene is present in a proportion of 50% by weight or more based on the weight of R2, or after removal of one hydrogen atom from a polymer formed by partial hydrogenation of the hydrocarbon polymer; and p represents a number of 0 or 1. Hagihara discloses in paragraph 0029, R2 may also contain the following constituent monomers (1) to (3) and the like in addition to butadiene including (1) An aliphatic unsaturated hydrocarbon (e.g., C2-C36 olefins (e.g., ethylene, propylene, isobutylene, 1-butene, 2-butene, pentene, heptene, diisobutylene, octene, dodecene, octadecene, triacontene, and hexatriacontene) and C4-C36 dienes (e.g., isoprene, 1,4-pentadiene, 1,5-hexadiene, and 1,7-octadiene)).
Hagihara discloses in paragraph 0069, the proportion of the monomer (a) constituting the copolymer (A) is preferably 10 to 50% by weight, based on the copolymer (A), in view of viscosity index-improving effect and shear stability.
Hagihara discloses in paragraph 0071, the copolymer (A) is preferably a copolymer containing an alkyl (meth)acrylate (b) having a C1-C4 alkyl group (hereinafter also referred to as a “monomer (b)”) as a constituent monomer, in view of viscosity index-improving effect. Examples of the alkyl (meth)acrylate (b) having a C1-C4 alkyl group include methyl (meth)acrylate, ethyl (meth)acrylate, propyl (meth)acrylate, and butyl (meth)acrylate.
Hagihara discloses in paragraph 0150, the proportion of the monomer (b) constituting the copolymer (A) is preferably 1 to 80% by weight, based on the weight of the copolymer (A), in view of viscosity index-improving effect.
Hagihara discloses in paragraph 0162, the lubricating oil composition contains the viscosity index improver of the present invention and a base oil. The base oil is at least one selected from the group consisting of API Group I to IV base oils, GTL base oils, and synthetic lubricant base oils (ester-based synthetic base oils). Of these, Group III mineral oils and GTL base oils are preferred. The kinetic viscosity of the base oil at 100° C (measured according to JIS K 2283) is preferably 1 to 15 mm2/s, in view of viscosity index and low-temperature fluidity.
It is to be noted, it is known in the art GTL base oils are referred to Fischer-Tropsch derived based oil, as taught by Klein.
Klein discloses in the abstract, a poly alkyl(meth)acrylate polymer comprising a combination of polybutadiene-based monomers having different average molecular weight, lubricant compositions comprising the polymer, a method for manufacturing the polymer and the use of the polymer as a viscosity index improver in a lubricating oil composition.
Klein discloses in paragraph 0145, base oils which can be used are Group II-III Fischer-Tropsch derived base oils. Klein discloses in paragraph 0146, Fischer-Tropsch derived base oils are known in the art. By the term “Fischer-Tropsch derived” is meant that a base oil is, or is derived from, a synthesis product of a Fischer-Tropsch process. A Fischer-Tropsch derived base oil may also be referred to as a GTL (Gas-To-Liquids) base oil. Suitable Fischer-Tropsch derived base oils may be conveniently used as the base oil in the lubricating composition. Klein discloses in paragraph 0144, the kinematic viscosity at 100° C (KV100) of appropriate apolar base oils used to prepare a lubricant composition in accordance with the present invention is preferably in the range of 1 mm2/s to 10 mm2/s, according to ASTM D445.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the GTL base oils of Hagihara are referred to as Fischer-Tropsch base oils, as taught by Klein due to GTL base oils are known as a clean synthetic base oil within a kinematic viscosity of the base oil at 100° C (measured according to JIS K 2283) of 15 mm2/s or less.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 3
Hagihara discloses in paragraph 0020, the copolymer (A) has an SP value of preferably 9.00 to 9.40 (cal/cm3)1/2.
Regarding Claim 5
Hagihara discloses in paragraph 0073, viscosity index-improving effect, the (co)polymer (A) is preferably a copolymer containing a monomer (c) represented by the following formula (2) as a constituent monomer:
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wherein R3 is a hydrogen atom or a methyl group; —X2— is a group represented by —O—or —NH—; R4O is a C2-C4 alkyleneoxy group; R5 is a C1-C8 alkyl group; and q is an integer of 1 to 20, each R4O may be the same or different when q is 2 or more, and the (R4O)q moieties may be randomly bonded or block-bonded.
Regarding Claim 7
Hagihara discloses in paragraph 0132, the copolymer (A) has an Mw of preferably 5,000 to 2,000,000, in view of viscosity index-improving effect and shear stability of the lubricating oil composition.
Regarding Claim 8
Hagihara discloses in paragraph 0162, the lubricating oil composition contains the viscosity index improver and a base oil. The base oil is at least one selected from the group consisting of API Group I to IV base oils, GTL base oils, and synthetic lubricant base oils (ester-based synthetic base oils). Of these, Group III mineral oils and GTL base oils are preferred. The kinetic viscosity of the base oil at 100° C (measured according to JIS K 2283) is preferably 1 to 15 mm2/s, in view of viscosity index and low-temperature fluidity.
Regarding Claim 9
Hagihara discloses in paragraphs 0166-0190, the lubricating oil composition further containing at least one additive selected from the group consisting of dispersants, detergents, antioxidants, oiliness improvers, pour point depressants, friction and wear modifiers, extreme pressure additives, defoamers, demulsifiers, metal deactivators, and corrosion inhibitors, in a total amount of 0.1 to 30% by weight.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagihara et al. (WO 2018/174188 A1) hereinafter cited under (US 2020/0071632) “Hagihara” in view of Klein et al. (US 2019/0177641) and further in view of Sato et al. (JP 2020-026519 A) hereinafter cited under English Translation “Sato”.
Regarding Claims 4 and 6
Hagihara discloses in paragraph 0015, a viscosity index improver containing a copolymer (A) whose essential constituent monomer is a monomer (a) having a number average molecular weight of 800 to 4,000 represented by the following formula (1), the copolymer (A) having a solubility parameter in the range of 9.00 to 9.40. A lubricating oil composition containing at least one base oil selected from the group consisting of API Group I to IV base oils, GTL base oils, and synthetic lubricant base oils and the viscosity index improver, wherein the amount of the copolymer (A) in the lubricating oil composition is 0.1 to 20% by weight.
Hagihara discloses in paragraph 0069, the proportion of the monomer (a) constituting the copolymer (A) is preferably 10 to 50% by weight, based on the copolymer (A), in view of viscosity index-improving effect and shear stability.
Hagihara discloses in paragraph 0150, the proportion of the monomer (b) constituting the copolymer (A) is preferably 1 to 80% by weight, based on the weight of the copolymer (A), in view of viscosity index-improving effect.
Hagihara discloses in paragraph 0151, the proportion of the monomer (c) constituting the copolymer (A) is preferably 0 to 60% by weight, based on the weight of the copolymer (A), in view of viscosity index-improving effect.
Hagihara modified by Klein discloses claim 1 of the presently claimed invention but fails to further disclose a (meth)acryloyl monomer (c) and the amount of monomer (c).
However, it is known in the art for a copolymer to comprise a (meth)acryloyl monomer, as taught by Sato.
Sato discloses on page 2, a viscosity index improver comprising a copolymer (A) having a (meth) acryloyl monomer (c) having a linear alkyl group of several 10 to 22 as an essential constituent monomer. Based on the total weight of the constituent monomers of A), the content of the monomer (a) is 10 to 70% by weight, and a monomer having an amino group and / or an amide and having 3 to 12 carbon atoms. A viscosity index improver having a content of the monomer (b) of 0.5 to 5.0% by weight and a content of the (meth) acryloyl monomer (c) of 25 to 86% by weight.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the (meth)acryloyl monomer (c) of Sato as a monomer of the copolymer (A) of Hagihara. The motivation to do so is to add monomers that aid in excellent antioxidative properties and low temperature viscosity properties in a viscosity index improver.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakada et al. (JP 2017-031400 A) discloses in the abstract, viscosity index improver composition having excellent shear stability of lubricating oil composition, low HTHS viscosity of lubricating oil composition, difficult to increase low temperature viscosity of lubricating oil composition, and easy handling at atmospheric temperature. A viscosity index improver composition comprising a polymer (A) having a monomer (a) represented by the general formula (1) as a constituent monomer and a base oil, A viscosity index improver composition having a value (V1) obtained by dividing the kinematic viscosity at 100 ° C by the kinematic viscosity at 100 ° C in the range of 0.2 to 5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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