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 Rejections - 35 USC § 103
Claims 25-30 and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Utaka (U.S. PG Pub. 2018/0072961) in view of Kubo (U.S. PG Pub. No. 2019/0106651).
In paragraph 10 Utaka discloses a lubricating oil composition for spark-ignition combustion engines comprising a base oil, a calcium detergent, and another additive which can be a magnesium-based additive. In paragraphs 14-16 Utaka discloses that the base oil can be a mineral oil, which will be a Group II or III base oil, as recited for the base oil of component (i) of claim 25. In paragraph 20 Utaka specifically discloses Group III base oils. In paragraph 17 Utaka discloses that the base oil more preferably has a viscosity of 2 to 10 mm2/s, within the range recited for component (i) of claim 25.
In paragraph 39 Utaka discloses that the magnesium-based additive can be a magnesium sulfonate or salicylate detergent, as recited for component (ii) of claim 25. In paragraph 42 Utaka discloses that the TBN of the magnesium-based detergent is preferably 10 to 650, overlapping the range recited for component (ii) of claim 25. In paragraph 43 Utaka discloses that the total sodium and magnesium content of the composition is 100 to 1500 ppm (0.01 to 0.15%) by weight, and since the sodium and magnesium-containing detergents are recited in the alternative, the composition can therefore comprise 100 to 1500 ppm of magnesium from the magnesium-containing detergent, overlapping the range recited for component (ii) of claim 25. Since Utaka discloses in paragraph 41 that the magnesium content of the magnesium-based additive is 1 to 25% by weight, the total amount of magnesium-containing detergent in the composition can range from 0.04 to 15% by weight, leading to an amount of soap delivered by the magnesium-containing detergent encompassing the range recited for component (ii) of claim 25.
In paragraph 22 Utaka discloses that the calcium-based detergent can be a sulfonate, phenate, or salicylate, as recited for component (iii) of claim 25. In paragraph 31 Utaka discloses that the TBN of the calcium-based detergent is preferably 10 to 600, more preferably 50 to 300, overlapping and falling within the ranges recited for component (iii) of claim 25. In paragraph 33 Utaka discloses that the calcium-based detergent is preferably supplied in an amount of 500 to 1500 ppm (0.05 to 0.15%) by weight of the composition, within the range recited for component (iii) of claim 25.
In paragraph 102 Utaka discloses that the sulfated ash content of the composition is preferably 1.0% by weight or less, within the range recited in claim 25. In paragraph 86 Utaka discloses that the composition can comprise zinc dialkyldithiophosphate in an amount of 0.005 to 0.2% by mass in terms of phosphorus, and in paragraphs 87-88 Utaka discloses that the composition can also comprise an extreme pressure agent which can be phosphorus-containing, in an amount of 0.001 to 5%. The total amount of phosphorus in the composition will therefore be in a range overlapping the ranges recited in claim 25.
The magnesium content range of 100 to 1500 ppm discussed above overlaps the range recited in claim 29, and the magnesium sulfonate discussed above meets the limitations of claim 30. In paragraph 98 Utaka discloses that the composition can comprise a metal deactivator (corrosion inhibitor), which can be a benzotriazole or thiadiazole-based compound, meeting the limitations of the substituted benzotriazole or thiadiazole corrosion inhibitor of claim 35. The overall concentration of the anti-wear agent, which can be zinc dialkyl dithiophosphate, disclosed in paragraph 86 of Utaka is preferably 0.3 to 5% by weight, encompassing the range recited in claim 36. In paragraphs 58 and 98 Utaka discloses that the composition can comprise additional additives meeting the limitations of claim 37.
The differences between Utaka and the currently presented claims are:
i) Utaka does not disclose the viscosity grade of the composition. This relates to claim 25, and its dependent claims.
ii) Utaka does not specifically disclose the concentration of the corrosion inhibitor. This relates to claim 35.
iii) Some of the ranges of Utaka overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraph 4 Kubo discloses an internal combustion engine lubricating oil composition comprising a base oil and an alkaline earth metal detergent. In paragraph 156 Kubo discloses that the engine can be hydrogen fueled, and in paragraphs 134, 144-145, and the sample compositions Baseline 3 and Baseline 4 in paragraphs 195-216 Kubo discloses that the composition can comprise a combination of calcium and magnesium detergents. The compositions of Kubo therefore have a similar composition to those of Utaka and are useful for the same type of engine. In paragraph 106 Kubo discloses that the base oil most preferably has a viscosity of about 4 to about 12 cSt at 100°, again in line with the disclosure of Utaka, and further discloses that the viscosity is selected to give the finished oil an SAE viscosity grade selected from various grades meeting the limitations of the grades recited in claims 1 and 25. In the examples Kubo discloses compositions having various SAE viscosity grades meeting the limitations of claims 1 and 25.
Formulating the composition of Utaka to have the viscosity grades disclosed by Kubo meets the limitations of the composition of claims 25, 29-31, and 35-37. Additionally, since the composition and method meet the claim limitations, they will possess the properties of claims 25-28 regarding abnormal pre-ignition events.
It would have been obvious to one of ordinary skill in the art to formulate the Utaka to have the viscosity grades disclosed by Kubo, since Kubo teaches that they are suitable viscosity grades for similar compositions used in hydrogen fueled engines.
With respect to ii), Utaka discloses in paragraphs 98-99 that the additives such as the metal deactivator (corrosion inhibitor) are present “in an amount falling within the range where the purpose of the present invention is not impaired”. Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It therefore would have been within the scope of ordinary skill in the art to optimize the concentration of corrosion inhibitor to not impair the purpose of the invention, arriving at a concentration within the range recited in claim 35, or a range of concentrations at least overlapping the claimed range.
With respect to iii), See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Allowable Subject Matter
Claims 1-22, 24, 31, and 33-34 are allowed. Claim 1 has been amended to incorporate the limitations of previous claim 23, indicated as containing allowable subject matter in the office action mailed 8/11/25. The prior art does not disclose or provide motivation for one of ordinary skill in the art to carry out the claimed method in a hydrogen-fueled engine having the specific break mean effective pressure (BMEP) and air:fuel ratio recited in claim 23. The references cited in the above rejections and the office action mailed 8/11/25 are silent regarding these engine properties and the prior art does not provide any references which teach these properties and are combinable with the cited references.
Claim 31 has been amended to incorporate the limitations of previous claim 32, also indicated as containing allowable subject matter in the office action mailed 8/11/25. The prior art, as exemplified by the references discussed above and in the office action mailed 8/11/25, does not disclose or render obvious the inclusion of a dispersant or dispersant viscosity modifiers having the properties recited in amended claim 31. In particular, the prior art does not suggest dispersants or dispersant viscosity modifiers having the claimed functionality distribution. Haidaaz (U.S. PG Pub. No. 2024/01411156) provides evidence in paragraphs 628-634, particularly paragraph 634, that dispersant viscosity modifiers having the claimed polydispersity and number-average molecular weight would can have varying functionality distributions, and can have functionality distributions well outside the claimed range, so the functionality distribution cannot be considered inherent to dispersant viscosity modifiers even if they meet the other claim limitations.
The double patenting rejection in the office action mailed 8/11/25 is withdrawn in light of the approved terminal disclaimer filed 12/11/25.
Response to Arguments
Applicant's arguments filed 12/11/25 have been fully considered but they are not persuasive regarding the rejections of claims 25-31 and 35-37 over Utaka in view of Kubo. Applicant argues that Utaka in view of Kubo does not teach the feature of amended claim 25 regarding the reduction of abnormal pre-ignition events in a hydrogen fueled internal combustion engine (HICE). However, as discussed in the rejection, the composition of Utaka and Kubo meets the compositional limitations of the claims, and will therefore possess the claimed properties regarding the reduction of abnormal pre-ignition events in a HICE. Applicant has not presented evidence to the contrary, and their argument on this point is therefore not persuasive regarding the establishment of a prima facie case of obviousness.
Applicant also argues that the claimed composition produces unexpectedly superior results in terms of the reduction in abnormal pre-ignition events. In order to successfully rebut a prima facie case of obviousness, applicant must provide a comparison with the closest prior art. See MPEP 716.02(e). The comparative examples supplied by applicant contain only calcium detergent, which has been reduced to an optional component in amended claim 25, with no magnesium detergent. Utaka, as discussed in the above rejection, discloses compositions comprising a combination of calcium and magnesium detergents. Utaka is therefore closer prior art than the comparative examples supplied by applicant. Even if Utaka were even equally close prior art as the comparative examples supplied by applicant, a comparison with Utaka would still be required. Showing unexpected results over one of two equally close prior art references is not sufficient to rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other than the testing of one showing unexpected results would provide the same information as to the other. Applicant also must demonstrate superior results commensurate in scope with the claims. See MPEP 716.02(d). In this case, applicant relies on the limitation requiring the reduction of abnormal pre-ignition events by at least 13% to limit the scope of the claims to those which produce unexpectedly superior results, but this only renders the results commensurate in scope with the claims if prior art compositions were not also capable of achieving this reduction, and since applicant has not provided a comparison with the closest prior art, one of ordinary skill in the art would not be able to draw this conclusion.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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.
/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771