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The final office action dated 03/19/2026 has been withdrawn. New grounds of rejections are made below.
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 5 – 18, 20 – 23, 26, 36, 37, 39 – 44, 49 are rejected under 35 U.S.C. 103 as being unpatentable over Di Biase et al. (US 2013/0225462) in view of Rowland (US 2016/0017252)
In regards to claim 1, Di Biase teaches terpene compounds in lubricants etc. [0001, 0006]. The lubricant comprises a base oil such as Group I to V oils and can comprise supplemental ingredients such as oxidation inhibitors, detergents, dispersants, viscosity modifier, friction modifier etc. [0022]. The terpene or farnesene (olefin) can be isoprene such as a polyisoprene homopolymer or copolymer [0040, 0048 and 0088 – 0101]. The polymer has a molecular weight of from 300 to about 50000 and can be functionalized and derived from a functionalized monomer having functional groups such as carboxylic acid group or derivative (1), hydroxyl group (2), an amino group (3), carbonyl group (4), cyano group (5) or mixtures of two or more, such as for instance, about 1 to about 4 functional groups [0121].
It is noted that 5 functional groups were listed as combinable and thus a combination of 5 functional groups is obvious. Similarly, the use of about 4 functional groups makes the claimed amount of 5 or more functional groups (Fv) obvious [0119 – 0121]. Di Biase teaches the polymer may having additional functional groups, thus in addition to the about 4, which allows for 5 or more groups [0122]. Since the polymer can be homopolymer, i.e., polyisoprene homopolymer, and Fd is defined by applicants as follows:
PNG
media_image1.png
41
183
media_image1.png
Greyscale
where fmax-fmin is the difference of functional groups for higher and lower molecular weight monomeric fractions, which would be about 0; polydispersity (PDI) would be about 1 for the homopolymer, then, it appears that the value of Fd would be about 0, or less than 3.5 as claimed.
The base oil and the terpene/farnesene are mixed such that the terpene/farnesene is present at from about 1% to about 99% with the balance of the base oil, absent the optional additives [0524]. In one embodiment, the base oil is present at greater than 60% or greater than 75% in the composition [0529]. The composition is useful as engine oil, transmission oil, hydraulic fluid etc. [0527].
DiBiase teaches oxidation inhibitors and the optional presence of diphenylamines but does not particularly recite the claimed limitation.
Rowland teaches diphenylamine antioxidants for use in engine oils similar to Di Biase [0003, 0004, 0090]. They can comprise about 70 to about 100% of dialkylated diphenylamine, such as predominately (at 50% or more) a 4,4’-dialkyl diphenylamine, and about 15% or less, or about 5% or less of monoalkylated diphenylamine, with alkyl groups having from 8 to 24 carbon atoms [0015 – 0018, 0028 – 0033]. The alkylated diphenylamine (DPA) can be nonylated-DPA [0086, 0087, Examples 4 & 5]. The presence of tri-alkyl and unsubstituted DPA are not required. Unsubstituted DPA can be present at from 2% or less, or 0.5% or less in the composition, and the tri-alkylated DPA is less than 15% or less than 5% [0033]. The diphenylamines can be para-substituted dialkyl diphenylamines [0029].
It would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the diphenylamine additives of Rowland as antioxidants in the lubricant composition of DiBiase, as DiBiase allows for the use of conventional engine oil or lubricant additives including oxidation inhibitors (antioxidants) which Rowland teaches.
In regards to claims 6 – 14, Di Biase and Rowland combined teach the composition having the claimed ingredients in the claimed amounts and thus would be expected to provide similar properties as claimed.
In regards to claims 15, 16, Di Biase and Rowland combined teach the composition. Di Biase teaches additives such as sulfurized methyl ester of oleic acid (i.e., sulfurized C18 aliphatic fatty acid ester), zinc dioctyl phosphorodithioate (i.e., zinc dialkyl dithiophosphate) etc. which provide the claimed compounds and would be suitable for providing the intended use as additional antioxidants and additives as claimed [0539].
In regards to claims 17, 18, Di Biase and Rowland combined teach the composition comprising the claimed additives such as detergents, viscosity modifiers etc. as previously stated. Conventional detergents for lubricating oil compositions comprise salicylate which would have been obvious to persons of ordinary skill in the art.
In regards to claim 20, Di Biase and Rowland combined teach the composition as previously stated. Engine oils are known to have the phosphorus content of the claim which would have been obvious (i.e., see paragraph 0072, 0140 of Tang et al. US 2022/0098509).
In regards to claims 21 – 23, Di Biase and Rowland combined teach the composition having the claimed limitation. The method of preparing the diphenylamine product does not carry patentable weight. However, to the extent that the process of making the claimed product carries weight, Di Biase in view of Rowland teaches the product itself.
In regards to claim 26, Di Biase and Rowland combined teach the composition useful as engine oils having conventional additives such as dispersants, detergents, friction modifiers etc. The additives of the claims are conventional dispersants, detergents and friction modifiers useful in engine oils which would have been obvious. Di Biase teaches calcium or magnesium overbased detergents such as calcium sulfonates [0505 – 0508, 0513]. The dispersant can comprise polyisobutenyl succinimide (PIBSA-PAM) [0534]. Molybdenum friction modifiers are conventional in the art.
In regards to claims 36, 37, Di Biase and Rowland combined teach the engine oil composition having the claimed ingredients, which when used for lubricating an engine would intrinsically provide the claimed method and properties.
In regards to claims 39 – 44, 49, Di Biase and Rowland combined provide the method and teach the engine oil composition having the claimed ingredients which when used in the internal combustion engine would provide the claimed limitations.
Response to Arguments
Applicant’s previous arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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
Prosecution Insights