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 12/11/2025 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
Claim Rejections - 35 USC § 102/103
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. 102(a)(1) as anticipated by Lange et al. (EP 0593263 A1) or, in the alternative, 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 teaches composition comprising zinc dithiophosphate compounds unlike the zinc dialkyldithiophosphate free composition as claimed. The argument is not persuasive.
Lange teaches compositions that can be free of phosphorus compounds such as zinc dithiophosphates and thus teaches the claim.
Applicant argues that claim 41 is allowable because Lange is directed to the use of zinc as metal and not calcium as claimed. The argument is not persuasive.
Lange teaches the phosphorus-free (i.e., zinc dithiophosphate free and zinc free) composition. Also, the composition can comprise optional calcium detergents.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771