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 12/03/2025 has been considered and entered. The response was considered and found to be persuasive over the rejections of claims 5 – 18, 20 – 23, 26, 36, 37, 39 – 44, 49 in view of Rowland (US 2016/0017252) for failing to teach the functionalized polymer of the claim, which are hereby withdrawn.
The rejections of claims 12, 23, 41 – 44, 46, 47, 49 based on indefiniteness are overcome by the amendment, and are thus withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 – 18, 20 – 23, 26, 36, 37, 39 – 44, 49 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite an average functionality of from 5 to 15 which is not present in the disclosure as originally filed. The published application is US 20250136889A1 which is different from US 20240141156 from which applicant relies upon for support.
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 5 – 18, 20 – 23, 26, 36, 37, 39 – 44, 49 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 claims recite polymer having a Fd value of from 3.5 or less but also recites Fv value of from 5 to 15, however, according to paragraph 0330 of applicant’s specification, Fv and Fd are the same, thus making the claims indefinite.
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 Tang et al. (US 2022/0098509)
In regards to claim 5, Tang teaches lubricant composition comprising an oil of lubricating viscosity, and an additive package (abstract). The oil is present in the composition amounts of at least 50%, or at least 80% of the composition [0024]. The composition can comprise detergents [0086]. The composition can comprise viscosity modifier such as C3-C10 olefin copolymer which can be functionalized, i.e., derivatized [0098 – 0101]. The functionalized polymer can comprise ester functionality [0107]. The polymer has molecular weights overlapping the claimed range [0104]. Various functional groups can also be added and their mixtures which overlaps the Fv values of the claim [0109, 0110]. Since similar polymers having similar functional groups are taught, they would be expected to have similar Fd value of the claim. Tang teaches the diphenylamine of the claim [0076].
In regards to claims 6 – 14, Tang teaches the composition having the diphenylamines with ratio of the di-alkyl to the mono-alkyl DPA overlapping the claimed limitation, and such additives will have similar properties as claimed.
In regards to claims 15, 16, Tang teaches the composition comprising zinc dialkyl dithiophosphate (zddp), hindered phenol, molybdenum compound [0064, 0075, 0163]. It can also comprise sulfurized olefin antioxidants [0084].
In regards to claim 17, Tang teaches the composition wherein the detergent can be neutral or overbased salicylate having the tbn of the claims [0086, 0087].
In regards to claim 18, Tang teaches the composition having the claimed ingredients as previously stated.
In regards to claim 20, Tang teaches the composition is engine oil having zddp at from 0.01 to 0.12% or 0.08% (i.e., 800 ppm) or less [0066]. Since no other phosphorus component is required the zddp provides the phosphorus content of the oil.
In regards to claims 21 – 23, 26, Tang teaches the composition having dispersants such as polyisobutylene succinimide (PIBSA-PAM), detergents comprising calcium or magnesium sulfonates, molybdenum compounds, and polyol fatty acid ester friction modifier such as molybdenum dithiocarbamate, sunflower oil or monoester of polyol and aliphatic carboxylic acid (typically fatty acid) [0031, 0091 and 0132].
In regards to claims 36, 37, Tang teaches the composition for engines such as gasoline or diesel engine thus providing a hydrocarbon fuel [0144]. When the composition is added to the crankcase, it provides the method of lubricating the internal combustion engine. The engine would be expected to have similar temperature as claimed.
In regards to claim 39, Tang teaches the composition having antioxidants in the engine oil and thus when applied to an engine would be expected to provide the claimed properties.
In regards to claim 40, Tang teaches the composition having Group II and Group III base oils [0022].
In regards to claims 41 – 44, Tang teaches the composition having the claimed ingredients and limitations and would be expected to have similar properties as claimed.
In regards to claim 49, Tang teaches the engine oil composition having the claimed ingredients which when used in an engine would intrinsically provide the claimed method. Antioxidants useful in the engine can be diphenylamines at from 1.2 to 7% by weight of the composition, or from 0.1 to 2% [0075, 0077]. Thus, when applied to an engine the claimed method would be intrinsically provided.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Tang fails to teach polymers having the number of functional groups as claimed. The argument is not persuasive.
As discussed in the rejections above, Tang teaches the viscosity modifier polymer can comprise one or more functional groups and recites mixtures that exceeds 5 groups (see para 0110).
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