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 09/02/2026 has been considered and entered. The amendment requires the presence of ethylene propylene diene monomer which Brown et al. (WO 2016/061050) does not teach, thus overcoming the previous rejections in view of Brown alone. The amendment removes the term “high molecular weight” which overcomes the previous rejections based on indefiniteness, now withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/02/2026 has been entered.
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.
Claims 1 – 3, 5 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (WO 2016/061050) in view of Abraham et al. (US 2006/0052255)
In regard to claims 1 – 4, 10, Brown teaches engine oil comprising biobased oil and Groups I to V base oil as cobasestock at up to 80% and various additives such as dispersant, detergent, corrosion inhibitor, viscosity modifiers etc. [0011 – 0021]. The oil can have a kinematic viscosity at 40℃ (Kv40) of from 12.5 to 105.5 cSt (i.e., about 68 SUS to about 492 SUS) [0039, Table 1]. The kv100 of the oils can be from 3.8 to 26.1 [0087, Table IV]. Base oil (diluent) can be solvent extracted and dewaxed etc. [0060, 0061]. The oils include paraffinic oils [0038].
Brown teaches the composition comprises biobased hydrocarbon oil at 25 to 95%, 1ppm to 50% additives, and cobasestock such as one or more oil including mineral oil, synthetic esters, polybutene etc. [0058]. The cobasestock is present at 0 to 50% in the composition [0062, Table III]. Since the engine oil is a low viscosity engine oil such as about 3.8 cSt or more at 100℃, the polybutene oil will have molecular weights overlapping the claimed range [0015]. Brown teaches the composition can comprise dispersants comprising polyisobutenyl-succinic anhydrides (PIBSA) [0072]. The composition can comprise the dispersant such as PIBSA at amounts of from 0.1 to 20% [0062, Table III].
Viscosity modifiers (or VI improvers) which are thickeners can comprise polymeric material such as polyolefins, polyisobutylene (PIB), olefin copolymers (OCP) etc., and may be linear, radial or star polymers having molecular weights of from 100,000 to 800,000 g/mol [0067, 0068]. The VI improver can be present at typical amounts of up to about 10%, such as from 0 to 10% [0062 & Table III and 0068]. The amounts of each of the OCP and PIB are close and thus would be obvious.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Extreme pressure and antiwear agents can be sulfur and phosphorus compounds such as phosphates etc., and present at from 100 ppm to 1% [0079]. Phosphates provide phosphorus gear oil of the claim.
Brown does not particularly recite the presence of ethylene-propylene diene copolymers, however, in view of Abraham, the claimed limitation is provided. Abraham recites viscosity improvers for engine oils which can comprise mixtures of polymers such as olefin homopolymers such as polyisobutylene, olefin copolymers such as ethylene-propylene or ethylene-propylene-diene copolymer (EPDM), etc., and their mixtures [0033].
Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used ethylene-propylene-diene polymers (EPDM) as the olefin copolymers of Brown, as Abraham teaches that they are useful olefin copolymers for engine oils.
In regard to claim 5, Brown and Abraham teach the claimed composition. Brown teaches the dispersants wherein the polymeric backbone includes polybutenes having 40 to 500 carbon atoms which correlates to molecular weights of about 560 to about 7000 daltons [0070].
In regard to claims 6 – 9, Brown and Abraham teach the claimed composition. Brown teaches the composition having antiwear and extreme pressure additives which can include sulfur/phosphorus oils [0079].
In regard to claim 11, Brown and Abraham teach the composition which can comprise mineral oil as part of a cobasestock at amount of from 0 to 50%. The mineral oil includes Group I solvent refined oils which are known to include brightstock 150, thus making them obvious [0056].
In regard to claims 12 – 17, Brown and Abraham teach the claimed composition having the claimed ingredients.
Response to Arguments
Applicant's arguments have been fully considered but they are moot as they do not apply to the combination of references relied upon for making the present rejections.
Applicant argues that Brown fails to teach compositions for packings and plungers of hydraulic pumps. The argument is not persuasive.
The claims are drawn to a composition having the recited ingredients. Since Brown in view of Abraham teaches the claimed ingredients, the composition would be sufficient to provide the intended use.
Applicant argues that Brown fails to teach the presence of EPDM. The argument is moot.
Abraham teaches the use of EPDM as olefin copolymers in engine oils.
Applicant alleges the composition as claimed exhibits unexpected benefits. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims do not limit the amount of each of the claimed ingredients, the inventive examples require specific ingredients at specific amounts which do not support the breadth of the claims.
While the claims 1 – 3, 5 – 9 recite EPDM, the inventive examples merely recite olefin copolymers which include myriads of ingredients that may not be EPDM.
The results are not persuasive.
The comparative formulation was not disclosed. It is unclear what formulations are being compared and at what relative concentrations.
Therefore, applicant fails to provide inventive examples that are commensurate in scope with the claims and which demonstrates a showing of unexpected results sufficient to rebut the case of obviousness.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
