DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 July 2026 has been entered. Claims 1-4, 8-13 and 19-20 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The rejection of claims 5-7 and 16-18 under 35 U.S.C. 112 as being indefinite made in the previous Office action is withdrawn in view of the cancellation of these claims.
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 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Oberoi et al (US 2013/0165362).
Applicant's arguments filed 02 July 2026 have been fully considered but they are not persuasive. As previously set forth 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.
Response to Arguments
In response applicant argued that Oberoi et al [“Oberoi”] is directed to the discovery that selection of a low shear stability index (SSI) viscosity modifier can improve fuel economy. In other words, applicant argued that the invention is therefore not merely directed to a particular polymer structure, but rather to the previously unrecognized relationship between low SSI and fuel economy improvement. This is not deemed to be persuasive.
Independent claims 1 and 11 are drawn to methods of improving fuel economy of an automotive engine comprising the single method step of “lubricating the automotive engine with a lubricating oil composition comprising…”. As set forth above, 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. Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1 and 11 of “improving fuel economy of an automotive engine”. When reading the preamble in the context of the entire claim, the recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
And, as set forth above, Oberoi sets forth inventive Examples 2A, 3A, 4A, 5A, 8A and 9A in Table 1 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.
Applicant argues that the specification compares higher SSI viscosity modifiers (SSI about 24) with lower SSI viscosity modifiers and reports improved FEI values for the lower SSI materials. However, Inventive Examples 1-5 use polymers C, D, E and F which are ethylene-propylene copolymers with lower molecular weights (Mw) than comparative ethylene-propylene copolymers A and B so that a clear comparison in regard to SSI cannot be made.
Furthermore, “something which is old does not become patentable upon the discovery of a new property”. See MPEP 2112 (I) where it is stated that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
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
July 25, 2026
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