DETAILED ACTION
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 amendment dated 06/17/2026 has been considered and entered. The amendment overcomes rejections based on anticipation, now withdrawn, but do not overcome rejections based on obviousness, now maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites bis-(2-ethylhexyl) maleate which does not further limit the 6 to 12 carbon atom esters as claimed. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 10 – 28, 35 – 39, 41 are rejected under 35 U.S.C. 103 as obvious over Lange et al. (EP 0593263 A1)
In regards to claim 1, Lange teaches lubricating oil composition comprising a major amount of oil of lubricating viscosity and a minor amount of a reaction product of dimercaptothiadiazole (DMTD) and at least one alpha, beta-unsaturated ester prepared by reacting an alpha, beta-unsaturated carboxylic acylating agent with a hydroxy compound, or a salt reaction product (abstract). The acylating agent can be carboxylic acids such as acrylic, methacrylic, fumaric acid, itaconic acid, maleic acid and lower C1-7 alkyl esters (page 4 lines 25 – 28).
The hydroxy compounds of the acylating agent can be alcohols having 4 to 30 carbon atoms including linear and branched alcohols such as pentanol, methyl pentanol, 4-methyl-2-pentanol, 2-ethylhexanol, octanol etc. (page 4 lines 29 – 54). Salts can be formed from reaction of the DMTD products with a metal or amine or ammonium base, such as including metal oxide, metal hydroxide, etc., from metals such as molybdenum, titanium, iron, nickel etc., and amines such as methylamine, ethylamine, propylamine, butylamine, octylamine, dimethylamine, diethylamine etc. (page 6 lines 16 – 38). The oil is useful as engine oils etc. (page 14 lines 1 – 6).
The composition can be low or no phosphorus lubricant, and therefore does not require the presence of zinc dithiophosphates or any other zinc compound (page 15 lines 40 – 44).
In regards to claim 4, Lange teaches the composition having the esters having the number of carbon atoms of the claim.
In regards to claims 10 – 13, Lange teaches the composition having linear and branched alkyl groups having the number of carbon atoms and which would provide the claimed compounds.
In regards to claims 14, 15, Lange teaches the composition having the claimed metals as previously stated.
In regards to claim 16, Lange teaches the composition wherein the DMTD derivative does not require zinc, as zinc is useful in the alternative.
In regards to claims 17, 18, Lange teaches the composition having the claimed amine compounds and amine salt as previously stated.
In regards to claims 19, Lange teaches the composition having the DMTD which does not require the presence of alkali or alkaline earth metals as it can be amine salts.
In regards to claim 20, Lange teaches the composition having the DMTD derivative can be in the form of a concentrate at amounts of from 0.01 to 90% in oil, or in a lubricating oil composition at from about 0.01 to about 10% in the composition (page 14 lines 7 – 18). In the examples, the DMTD product has a sulfur content of 27.4%, 14.6%, etc., and thus would provide sulfur in amounts overlapping the claimed range (page 11).
In regards to claims 21 – 23, Lange teaches the composition comprising the metal detergents such as calcium and/or magnesium sulfonate (i.e., from sulfonic acid), phenates (i.e., from phenols) etc., of the claims (page 19 lines 44 – 54).
In regards to claim 24, Lange teaches the composition comprising the calcium and/or magnesium detergent but does not particularly recite the amount of calcium provided to the oil. However, engine oils having calcium amounts of the claims from detergents are conventional and would be obvious. For instance, Carrick et al. (US 7,285,516) recites engine oils having calcium sulfonates and calcium phenates which can provide calcium in amounts of 0.2759% (2759 ppm), 0.2265% (2265 ppm) etc. (column 17, Table 1; column 19, Table 1). Thus, at least in view of Carrick, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used calcium sulphonates and/or phenates to provide calcium in the claimed amounts in the engine oil of Lange, as such amounts are taught as suitable for such oils.
In regards to claim 25, Lange teaches the composition and allows for the use of magnesium detergents which are optional and thus would provide magnesium in the amounts of the claim. Alternatively, Carrick recites the presence of magnesium detergents which can provide magnesium at 0.0330% (330 ppm) (columns 19 & 20, Example 4, Table 1). Thus, at least in view of Carrick, the claimed amounts are also obvious.
In regards to claim 26, Lange teaches the composition which can comprise a molybdenum compound (page 16 lines 18 – 27).
In regards to claims 27, 28, Lange teaches the composition which can comprise low or no phosphorus, such as amounts of less than 0.1% or less than 0.02% (i.e., less than 200 ppm) (page 15 lines 40 – 44).
In regards to claims 35, 36, Lange teaches the composition which may comprise sulfurized compounds such as sulfurized fats, oils, olefins, etc., in amounts of from 0.1% to 10% (page 17 lines 25 – 34). Thus, sulfurized olefins may be present in the recited amounts.
In regards to claim 37, Lange teaches the composition having the claimed additives with low amounts of ash producing components which would be expected to provide similar amounts of sulfated ash as claimed, but Lange does not particularly recite the ash content of the composition. Carrick teaches similar engine oils can comprise sulfated ash content of below 1.5% or below 0.5% by weight of the composition (column 3 lines 41 – 46). Thus, at least in view of Carrick, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have prepared the composition of Lange to have such low sulfated ash content, as Carrick recites suitable amounts of sulfated ash for engine oils.
In regards to claims 38, 39, 41, Lange teaches the composition having the claimed ingredients which are useful as engine oils and thus provides for the method of lubricating an internal combustion engine and the method of decomposing peroxide, wherein when the oil is used in the engine the claimed methods are intrinsically provided.
In regards to claim 41, Lange teaches the composition having the claimed limitations. The composition can comprise neutral or basic calcium detergents, but Lange does not recite the amount of calcium from the detergents in the composition (page 19 lines 44 – page 20 lines 10). However, Carrick teaches similar composition which can comprise detergents that provide calcium in the claimed amounts (Table 1). Thus, at least in view of Carrick, the use of calcium detergents to provide calcium in amounts within the claimed range is obvious, and persons of ordinary skill would have found it obvious to use such amounts in the composition of Lange.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Lange fails to teaches the maleate ester of the claim. The argument is not persuasive
Lange teaches maleate ester having carbon content that overlaps the claimed range.
Applicant argues that the sole example fluid 3 performed better than other fluids thus demonstrating superior results. The argument is not persuasive.
A demonstration of superior results is not necessarily the same as a demonstration of unexpected results.
Also, a demonstration of unexpected results cannot overcome rejections under 35 USC 112d.
The inventive example is not commensurate is scope with the claims.
A single inventive example having a specific concentration of specific ingredients does not support the breadth of the claims which allows does not limit the concentration of the DMTD ester derivative in the composition.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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