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 .
Claim Objections
Claim 1, 36 and 62 are objected to because of the following informalities: “phosphorous” should be “phosphorus”. Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-6, 9-15, 20-24, 28-41, 44-50 and 55-63 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kubo et al., US Patent Application Publication No. 2019/0106651 (hereinafter referred to as Kubo).
Regarding claims 1, 5-6, 9-14, 23-24, 28-33 and 35, Kubo discloses a lubricating oil composition for use in a hydrogen fueled spark-ignited internal combustion engine fitted with a turbocgarger and including heavy duty engines (as recited in claim 1 and reads on component a)-c) of claim 1 and reads on claims 23-24, 28-33 and 35) (Para. [0155]-[0156]) comprising:
i) 85 to 98 wt% of a base oil including a Group II base oil having a KV100 ranging from 2 to 12 cSt which can also be used for making concentrates (as recited in component i) of claim 1 and reads on claims 12-14) (Para. [0025], [0059], [0105] and [0151]-[0152] and see Baseline Formulation 6/Para. [0241]);
ii) 400 ppm of Ca from an overbased calcium phenate detergent having a TBN of 150 mgKOH/g or higher (as recited in component ii) of claim 1 – Kubo does not disclose the soap content delivered by the detergent to the composition but based on the detergent and treat rate the soap content would encompass or at least overlap the range recited in component ii) of claim 1 and reads on claim 10-11) (Para. [0027] and [0137] and see Baseline Formulation 6/Para. [0241]);
iii) 180 ppm of molybdenum atoms derived from a sulfurized molybdenum succinimide complex formed by reacting an acidic molybdenum compound, such as, hydrogen sodium molybdate (as recited in component iii) of claim 1 and reads on “molybdenum amine” and “hydrogen sodium molybdate” as recited in claims 5-6 and reads on claim 9) (Para. [0112]-[0119] and see Baseline Formulation 6/Para. [0241]);
iv) wherein the lubricating oil composition has a sulfated ash content of less than or equal to 1.60 wt%, a phosphorus content of less than 0.12 wt%, and a SAE viscosity of 5W-20 (as recited in component iv) of claim 1) (Para. [0021]-[0022] and see Baseline Formulation 6/Para. [0241]).
Regarding claims 2-4 and 34, Kubo discloses all the limitations discussed above and would therefore inherently read on the limitations of claims 2-4 and 34.
Regarding claims 15 and 20-22, Kubo further discloses the presence of additional additives including a borated succinimide dispersant (as recited in claim 15) (see Baseline Formulation 6/Para. [0241]), 770 ppm of phosphorus from zinc dithiophosphate (as recited in claims 21-22) (Para. [0126] and see Baseline Formulation 6/Para. [0241]), and an alkylated diphenylamine antioxidant (as recited in claim 22) (see Baseline Formulation 6/Para. [0241]).
Regarding claims 36-41, 44-50 and 55-63, see discussion above.
Claim Rejections - 35 USC § 103
Claims 7-8, 17-18, 42-43 and 52-53 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo in view of Cant et al., US Patent Application Publication No. 2017/0101598 (hereinafter referred to as Cant).
Regarding claims 7-8, 17-18, 42-43 and 52-53, Kubo discloses all the limitations discussed above but does not explicitly disclose the molybdenum compounds recited in claims 7-8 and 42-43.
Cant discloses a lubricating oil composition for reducing low-speed pre-ignition events or improving oxidation in a spark-ignited direct injection engine comprising a base oil to which is added molybdenum-containing additives including those disclosed in paragraphs 72 to 75 of Cant, and dispersants as disclosed in paragraphs 67 to 69. It would have been obvious to one of ordinary skill in the art at the time of the invention to use the additive compounds of Cant in the composition of Kubo as it is a simple substitution of one known element for another in order to obtain predictable results.
Claim Rejections - 35 USC § 103
Claims 16, 19, 25-27 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo in view of Smith et al., US Patent Application Publication No. 2020/0032158 (hereinafter referred to as Smith).
Regarding claims 16, 19, 25-27 and 51, Kubo discloses all the limitations discussed above but does not explicitly disclose the molybdenum compounds recited in claims 7-8 and 42-43.
Smith discloses a lubricating oil composition for engines such as passenger vehicle engine and commercial vehicle engine oils or other mechanical components (see Abstract). The composition is anti-low speed pre-ignition, and thus reduces or prevents abnormal combustion events in an engine that can be fueled with hydrogen alone (100% - as recited in claims 25-27) (Para. [0047]). The composition comprises a Group I to V base oil (Para. [0051]). The oil can be a PAO having a KV100 ranging from 1.5 to 12 cSt (Para. [0055]). Smith discloses additives being added to the base oil including dispersants in amounts of from 0.1 to 20% (Para. [0157] and see Table 1). The dispersant comprises an imide such as succinimide and can have a hydrocarbon group having from 50 to 400 carbon atoms such as a polyolefin group (i.e., polyisobutylene or C4 olefin) having a polydispersity (MWD) of from 1.5 to 2.2 and have a preferred molecular weight of from 500 to 5000 and which may be functionalized with an ester and have a functionality index of 1.3 to 1.7 (Para. [0093], [0103]-[0110]. While the preferred molecular weight of the polyolefin is outside of the claimed range, Smith teaches the dispersants are conventional dispersants such as those recited by Gallic et al. (US 5,084,197) which comprise hydrocarbon groups having high molecular weights with up to 5000 carbon atoms, or up to 20,000 carbon atoms, but preferably from 50 to 400 carbon atoms (Para. [0102]); (also see Galic; column 8 lines 1-23). And thus, the claimed molecular weights are obvious.
Smith further discloses additives including tri-substituted borates (as recited in claim 19) (Para. [0082]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the additive compounds of Smith in the composition of Kubo as it is a simple substitution of one known element for another in order to obtain predictable results.
Double Patenting
9. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
10. Claims 1-63 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-40 of co-pending application No. 18/948,703. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '703 application discloses the same limitations as does the instant application except the molybdenum compounds which would have been obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Double Patenting II
11. Claims 1-63 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-55 of co-pending application No. 18/948,730. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '730 application discloses the same limitations as does the instant application except the molybdenum compounds which would have been obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Double Patenting III
12. Claims 1-63 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-48 of co-pending application No. 18/966,649. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '649 application discloses the same limitations as does the instant application except the molybdenum compounds which would have been obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Double Patenting IV
13. Claims 1-63 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-31 of co-pending application No. 18/966,678. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '678 application discloses the same limitations as does the instant application except the molybdenum compounds which would have been obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Double Patenting V
14. Claims 1-63 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-43 of co-pending application No. 18/971,578. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '578 application discloses the same limitations as does the instant application except the molybdenum compounds which would have been obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771