DETAILED ACTION
This is in response to the claim amendments and arguments filed 15 December 2025. Claims 1-20 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claims 1-20 under 35 USC 103 as being unpatentable over Smythe et al. (US 2014/0287970) made in the previous Office action is withdrawn in view of the amendments made to independent claims 1 and 11.
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.
Claims 5-7, 14 and 16-18 are 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.
Dependent claim 5 states “wherein the olefin copolymer is an ethylene-propylene copolymer”. However, claim 1 was amended to delete “an olefin copolymer”. Dependent claims 6 and 7 refer to “the ethylene-propylene based copolymer” of claim 5. Dependent claim 14 states “wherein the viscosity modifier is an ethylene-propylene based copolymer”. However, claim 11 was amended to delete “an olefin copolymer”. Claims 16-18 recite “the ethylene-propylene based copolymer”. There is insufficient antecedent basis for these claim limitations.
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.
Claim(s) 1-4, 8-13, 15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Oberoi et al. (US 2013/0165362).
Oberoi et al. [“Oberoi”] disclose polymers suitable for use as viscosity index improvers for lubricating oil compositions including lubricating oil compositions for passenger car and heavy-duty diesel engines [0001]. Oberoi discloses linear triblock polymers and star polymers which have excellent shear stability and thickening efficiency and further provide lubricating oil compositions incorporating such polymers with fuel economy benefits [0001].
The polymers include linear polymers characterized by the formula:
D’ – PA – D”
And star polymers characterized by the formula:
(D’ – PA – D”)n – X
wherein D’ represents an “outer” block derived from diene having a number average molecular weight of from about 10,000 to about 120,000 daltons; PA represents a block derived from monoalkenyl arene having a number average molecular weight of from about 10,000 to about 50,000 daltons; D” represents an inner random derived from diene having a number average molecular weight of from about 5,000 to about 60,000 daltons; n represents the average number of arms per star polymer formed by the reaction of 2 or more moles of a polyalkenyl coupling agent per mole of arms; and X represents a nucleus of a polyalkenyl coupling agent [0018]-[0020].
Oberoi discloses that at least one of diene blocks D’ and D”, and preferably each of diene blocks D’ and D”, are copolymer blocks derived from mixed diene monomers such as isoprene and butadiene. Oberoi discloses that diene blocks D’ and D” are preferably hydrogenated to remover at least about 80% or 90% or 95% of unsaturations, and more preferably, are fully hydrogenated [0021].
Oberoi discloses suitable monoalkenyl arene monomers include monovinyl aromatic compounds such as styrene, monovinyl-naphthalene, as well as the alkylated derivatives thereof. Oberoi discloses that the preferred monoalkenyl arene is styrene [0027].
Oberoi discloses that the linear polymers have a number average molecular weight of from about 25,000 daltons to about 1,000,000 daltons [0028]. Oberoi discloses that the star polymers have a number average molecular weight of from about 100,000 daltons to about 1,000,000 daltons [0029].
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)
Oberoi sets forth inventive Examples 2A, 3A, 4A, 5A, 8A and 9A in Table 1 and sets forth the shear stability index (SSI) in Table 2. The SSI values are 8.40 (2B), 20.60 (3B), 0.93 (4B), 5.00 (5B), 4.13 (8B) and 6.38 (9B). Thus, 5 of 6 inventive Examples have a shear stability index of 15 or less.
Oberoi discloses that the linear and star polymers of the invention are used in the formation of crankcase lubricating oils for passenger car and diesel engines and may comprise the sole VI improver, or may be used in combination with other VI improvers. Oberoi does not require the addition of other VI improvers.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
February 26, 2026
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