DETAILED ACTION
This is the initial Office action for application SN 18/943,221 having an effective date of 11 November 2024 and a provisional priority date of 09 January 2024. Claims 1-21 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim 14 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation “having a phosphorus content of less than 800 ppm”, and the claim also recites “alternately less than 550 ppm” which is the narrower statement of the range/limitation. Claim 14 also recites “having a sulfated ash (“SASH”) content of less than 0.9 mass%”, and the claim also recites “alternately less than 0.5 mass %” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Eveland et al (US 2005/0202981) in combination with Bradley et al (2006/0128875) and in view of Esche, Jr. et al (US 6,107,258).
Eveland et al [“Eveland”] disclose mixed dispersants for lubricants (title). Specifically, Eveland discloses a dispersant composition comprising the reaction product of an amine, an alcohol, or an amino alcohol, with a hydrocarbyl-substituted succinic anhydride component that exhibits improved viscosity stability and reduced chlorine content, when the hydrocarbyl-substituted succinic anhydride component comprises:
10 to 95 weight % of a component prepared by reacting a polyisobutylene (C4) with maleic anhydride in the presence of chlorine (“chloro-dispersant(s)”); and
5 to 90 weight % of a component prepared by reacting a polyisobutylene with maleic anhydride in the substantial absence of chlorine (“thermal dispersant(s)”). (Abstract)
Thus, the mixed dispersants may contain up to 95 weight% of a dispersant prepared by reacting a polyisobutylene (C4) with maleic anhydride in the presence of chlorine (“chloro-dispersant(s)”). See [0041].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Eveland discloses that in regard to the chloro-dispersant, less than about 20 % of the polyisobutylene chains contain a terminal vinylidene end group, and that in regard to the thermal dispersant, at least about 70 % of the polyisobutylene chains contain a terminal vinylidene end group [0011]-[0013] and [0018]-[0019].
Eveland discloses that the invention further provides concentrates and fully formulated lubricants containing the mixtures of dispersants, and a method for lubricating an internal combustion engine by supplying such lubricants thereto [0023].
Eveland discloses that in a fully formulated lubricant, the base oil may be selected from any of the base oils in Groups I-V as specified by the API guidelines wherein Groups I, II and III are mineral oil basestocks [0050]-[0051].
Eveland discloses that in a fully formulated lubricant containing a lubricating base oil [0048], the amount of dispersant of type (a) (i.e., chloro dispersant) can be 0.5 to 10% by weight, and the amount of dispersant of type (b) (i.e., thermal dispersant) can be 0,5 to 10 weight % [0041]. Eveland discloses that a relatively minor portion of the type (b) material can be used with a relatively major portion of the type (a) material, to provide an improvement (reduction) in the viscosity increase of the dispersant formulation beyond what would be expected based on a consideration of the properties of the individual components [0041].
Eveland discloses that the hydrocarbyl substituents on each of the succinic anhydride components should normally be of sufficient length to provide a desired degree of solubility in a lubricating oil. Thus, while the length of the hydrocarbyl substituent in component (a) need not be the same as component (b), each of (a) and (b) will typically have a molecular weight of at least 300, at least 80, or at least 1200 [0033].
Eveland discloses that amines which can be used in preparing dispersants include polyamines, such as aliphatic, cycloaliphatic, heterocyclic or aromatic polyamines [0035]-[0037].
Eveland discloses that a fully formulated lubricant will typically contain (or can exclude) any of a number of additional components, depending upon some extent on whether it is to be used as an engine lubricant or other application. Eveland discloses that other additives may include detergents [0060]-[0061] in an amount of 0.5 to 10 % by weight in a formulated lubricant [0062].
Eveland discloses that the lubricants prepared from the materials of the invention contain less than 0.11% phosphorus, preferably less than 0.05% phosphorus, and less than 1.2% sulfated ash, preferably less than 0.5% sulfated ash [0066].
Eveland discloses that additional additives include metal-containing compounds such as zinc dithiophosphates [0063]-[0066], additional dispersants such as dispersant viscosity modifiers [0067], corrosion inhibitors, extreme pressure agents, anti-wear agents, friction modifiers, viscosity index improvers, pour point depressants, and others including antioxidants [0068].
Applicant’s invention differs from independent claims 1 and 10 by further adding component (1), 0.01-15 mass %, based on the total mass of the dispersant mixture, of an amide, imide, and/or ester functionalized partially or fully saturated polymer comprising C4-5 olefins having:
an Mw/Mn of less than 2,
a Functionality Distribution (Fd) value of 3.5 or less, and
an Mn of 10,000 g/mol or more (GPC-PS) of the polymer prior to functionalization.
However, as evidenced by Bradley et al. [“Bradley”] in view of Esche, Jr. et al [“Esche, Jr.”], such functionalized saturated olefins/copolymers are known in the art of lubricating oil compositions.
Bradley discloses highly grafted, functionalized olefin polymers as lubricant additives useful as dispersants in lubricating oil compositions. Bradley discloses the reaction product an acylating agent with a mixture comprising an olefin polymer having a number average molecular weight (Mn) between about 5,000 to about 100,000 and a non-volatile diluent, in the presence of a free radical initiator to provide an acylated olefin polymer which is further reacted with an amine to provide the grafted functionalized olefin polymer dispersant [0017].
Bradley teaches that the polymer substrate starting material preferably comprises copolymers of ethylene and one or more C3 to C23 alpha-olefins, and that copolymers of ethylene and propylene are most preferred [0023]. The examiner is of the position that the claimed “polymer comprising C4-5 olefins” is encompassed by C3 to C23 alpha-olefins disclosed in Bradley. Bradley discloses that the alpha-olefins include 1-butene, 1-pentene and 4-methyl-butene [0023].
Although the claimed Mw/Mn of less than 2 is not specifically disclosed in Bradley, Esche, Jr. is added to teach that the molecular weight distribution (Mw/Mn) of polymer substrates for functionalized olefin copolymers is typically between 1 and 10 (COL.2, L 31-38).
Bradley discloses that the acylating agent is grafted onto the polymer backbone in an amount to provide 0.3 to 0.75 acylating groups per 1000 Mn of the polymer backbone [0045].
The examiner is of the position that Bradley in view of Esche,Jr. meets the limitations of claimed component (1), an amide, imide, and/or ester functionalized partially or fully saturated polymer “comprising” C4-5 olefins.
Further, the examiner is of the position that it would have been obvious to one of ordinary skill in the art to have added a known functionalized olefin copolymer, such as the dispersant of Bradley/Esche, Jr., to the lubricant compositions disclosed in Eveland, if the known imparted properties were so desired. Eveland provides motivation for the addition of other additives such as additional dispersants to the compositions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jones et al (US 2020/0199479) disclose lubricants for internal combustion engines comprising polyalkenylsuccinimide dispersant which may be prepared from an “ene” or “thermal” reaction, by what is referred to as a “direct alkylation process”, and the dispersant may be obtained from a chlorine-assisted process [0045] – [0047].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
July 17, 2026
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