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 11/17/2025 has been considered and entered. The amendment requires 0.25% to 2% of polyisobutylene which Lalla (US 2013/0096040) does not teach and which overcomes the previous rejections of claims 10 – 17 over Lalla, and which are hereby withdrawn. The amendment does not overcome the rejections of claims 1 – 9 over Brown et al. (WO 2016/061050) which are hereby maintained. Rejections of claims 4, 11 – 17 based on indefiniteness are also maintained. New grounds of rejections are made as necessitated by the amendment.
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 4, 10 – 17 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.
The term “high molecular weight” in the claims is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the sake of examination, any propylene or ethylene is taken as meeting the limitation of high propylene or high ethylene, and the high molecular weight polyisobutylene is taken as molecular weights of from 500,000 to 3,000,000, equivalent to those of the takifier of applicant’s specification.
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 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (WO 2016/061050)
In regards to claims 1 – 4 (previous claims 1, 2, 1, 2), 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 40C of from 12.5 to 105.5 cSt (i.e., about 68 SUS to about 492 SUS) [0039, Table 1]. Base oil (diluent) can be solvent extracted and dewaxed etc. [0060, 0061]. The oils include paraffinic oils [0038].
Viscosity modifiers (or VI improvers) which are thickeners can comprise polymeric material such as polyolefins (i.e., polybutenes etc.), polyisobutylene, olefin copolymers etc., and may be linear, radial or star polymers having molecular weights of from 100,000 to 800,000 g/mol [0067, 0068]. Thus, combinations of the VI improver to be used for the same purpose is obvious. Their use at the high molecular weights recited are also obvious and common in the prior art [for instance see 0038 of Gao et al. US 2007/0297279].
Brown teaches the composition can comprise dispersants comprising polybutene and polyisobutenes (PIB) and thus also provides the polybutenes of the claim. They include derivatives of long-chain hydrocarbon-substituted carboxylic acids such as succinic acids which are well known to include polyisobutenyl-succinic anhydrides (PIBSA) which are obvious [0070, 0071]. Since the composition comprises the claimed ingredients, it would be effective at performing the intended use of the claims.
In regards to claim 5 (previous claim 3), 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 regards to claims 6 – 9 (previous claims 4 – 7), Brown teaches the composition having antiwear and extreme pressure additives which can include sulfur/phosphorus oils [0079].
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Brown is drawn to biobased oil while the claims are drawn to petroleum refined oil. The argument is not persuasive.
While Brown is drawn to biobased oil, Brown also teaches that the composition can comprise other Group I to V oils which are known to include petroleum refined crude oils (i.e., Groups I to III oils) and thus teach the claim.
Conclusion
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771