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 09/29/2025 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 – 6, 8 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ravishankar (US 2015/0031831)
In regards to claim 1, Ravishankar teaches polymer compositions useful as viscosity modifiers comprising a first ethylene--olefin copolymer such as ethylene propylene copolymer having melt flow rate (MFR) of greater than about 10g/10 mins according to the limitation MFRA of the claim, and an ethylene content of from about 60 to about 85% and a second ethylene--olefin copolymer such as ethylene propylene copolymer having MRF of at least 2 g/10 mins and an ethylene content of from about 40 to about 60%, and wherein the first copolymer is present in amounts of about 35 to about 50% in the polymeric composition, and the second copolymer is present in amounts of from about 50 to about 65% in the polymer composition, and wherein the polymeric composition has an overall ethylene content of from about 50 to 70 wt. % which overlaps the claimed limitations [abstract, 0010, 0011 & 0020]. Propylene is a C3 -olefin.
The first or the second copolymer can have MFR (i.e., MFRA or MFRB) of at least about 2 or at least about 3 or at least about 4 g/10 mins, and less than about 7 g/10 mins [0019]. The second polymer has an MFR of at least 2 g/10 min, thus providing a calculated ratio of MFR of first copolymer to MFR of the second copolymer (analogous to MFRA and MFRB of the claim) of about 5 or higher [0011]. The polymer composition has an MFR of 3 to 20 g/10 min which overlaps the claimed limitation [0021]. The polymer composition may have a corrected MFRR (cMFRR) of from about 24 to about 55 at a target MFR (MFRref) of 4.3/10 min [0025]. Since the first or second polymer can have MFR of at least about 2, the limitation requiring the MFR of the second polymer to be less than 2 g/10 min is overlapped, or is so close as to make the claimed limitation 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).
While Ravishankar does not recite the Tm of the composition, the composition has every limitation of the claimed copolymer, and are prepared from similar components having similar amounts to those of the claims and providing polymer compositions with similar molecular weights (when calculated using relative ratios of the copolymers) as those of applicant’s specification on paragraph 0039, and thus would be expected to have the same properties such as the Tm.
The polymeric composition can be added to a base oil such as natural or synthetic oils [0103]. The oil can be any Group I to V oil [0104]. The composition is useful in truck engines, marine and railroad diesel engines, automatic transmission fluids, tractor fluids, universal tractor fluids and hydraulic fluids, gear oils, hydraulic oils etc. [0105]. Such fluids typically comprise a major amount of base oils such has having 50% or more of base oil which would have been obvious. Also, Ravishankar teaches the composition can be useful as concentrate which can comprising up to 49% of base oil [0106]. When such concentrate is added to a lubricating base oil to provide a lubricating oil composition, the amount of oil of the claims would be provided or overlapped. In one embodiment, the 2.4% of the polymer composition was used in PAO4 oil composition [0115].
In regards to claims 2 – 6, 8 – 10, Ravishankar teaches the composition having the claimed limitations as previously stated. The ratio of MFR of the two copolymers will overlap the claimed range.
In regards to claim 11 – 16, Ravishankar teaches the composition which can comprise the base oil of the claims and useful for the same applications as previously stated. The composition comprises one or more additives as claimed [0107]. Rheology calculations (i.e., thickening efficiency and SSI) were made in PAO4 oil (Group IV oil having kinematic viscosity of 4 cSt at 100ºC) having 2.4% of the polymeric composition [0115 – 0117]. The composition can have a thickening efficiency and SSI of 1.9 and 25 respectively [0129, Table 3].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 6, 8 – 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 10 of U.S. Patent No. 12,163,104. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches a similar composition having a MFR of the second ethylene copolymer of up to 1.75 g/10 min while the claim recites MFR of 1.76 g/10 min or higher. While there is no overlap, the range is too close as to be obvious.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Ravishankar teaches that the first copolymer has MFR of about 10 g/ 10 min which does not meet the claimed limitation reciting from 0.5 to 9.5 g/10 min. The argument is not persuasive.
A limitation of about 10 g/10 min obviates the limitation of 9.5 g/10 min as they are very close. Also, Ravishankar teaches that either the first or the second copolymer has an MFR of at least 2 g/10 min and higher, and thus overlaps the claimed range.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771