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 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.
Claims 1 and 10 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.
Claim 1 is indefinite because the phrase “directly pendant thereto” which defines the attachment point of the primary amine – it is unclear whether the primary amine should be attached directly to the heteroatom, directly to the secondary amine, or directly to the fused ring polycyclic amine.
Claim 10 is indefinite because the viscosity measurement at the shear rate is not properly defined.
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 1-7, 9-19 and 21-23 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 Migdal et al., US Patent No. 5,162,086 (hereinafter referred to as Migdal).
Regarding claims 1-7, 9-19 and 21-23, Migdal discloses an additive concentrates (as recited in claim 23) (Col. 9/L. 16-19) and lubricant compositions comprising a major concentration of base oil (as recited in claim 21) (see Claim 16 of Migdal) to which is added a copolymer prepared from an ethylene-propylene copolymer having a number average molecular weight ranging from 5500 to 50,000 g/mol and having grafter thereon 2-5 molecules of maleic anhydride per copolymer molecule an amino substituted phenothiazine wherein the primary amino unit (R1) is directly pendant to the fused aromatic ring; thus the functionality value is 1.8 (as recited in claim 1 and reads on claims 2-7, 9-10, 12-14 and 16-18) (see Formula 1 in Claim 1 when R1=NH2 and R2=H and Col. 6/L. 55-69). The reaction of the ethylene-propylene copolymer with the maleic anhydride is a thermal maleation process that provides succinic anhydride groups and is fully hydrogenated (as recited in claims 11, 15 and 19) (see Examples I-IV and see Tables 1-2). The lubricating oil composition further comprises a base oil and additional additives, such as dispersants (as recited in claim 22) (Col. 9/L. 20-24).
Claim Rejections - 35 USC § 103
Claims 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Migdal in view of Gieselman et al., US Patent Application Publication No. 2014/0066345 (hereinafter referred to as Gieselman).
Regarding claims 8 and 20, Migdal discloses all the limitations discussed above, but does not explicitly disclose the ethyleneamine oligomers of claim 8, nor the polyisobutylene of claim 20.
Gieselman generally shows that polyisobutylene can be used as an alternative to ethylene-propylene copolymers as a backbone for a grafted copolymer, and can be functionalized with maleic anhydride (as recited in claim 20). The resulting PIBSA product can be reacted with a wide range of amines including ethylene polyamine or aromatic amines (oligomers of ethyleneamine as recited in claim 8) (see Examples 1 and 10 of Gieselman and Para. [0050]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the backbone and amines of Gieselman in the copolymer of Migdal as it is a simple substitution of one known element for another to obtain predictable result which includes enhanced soot control properties.
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
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