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 12/11/2025 has been considered and entered. The amendment now requires that the hydrogen-fueled engine has at least 90% of hydrogen. The amendment also requires an air to fuel ratio of from 1:1 to 3:1 which Smith does not particularly recite. The amendment necessitates new grounds of rejections.
The rejections based on obviousness double patenting has been overcome by the filing of terminal disclaimers dated 12/19/2025 which have been approved. Therefore, the rejections based on double patenting are withdrawn.
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 9, 17 – 23, 26 – 29 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.
Claims 9, 17 – 23, 27 – 29 recites Fd of 3.5 or less but also recites Fv of from 3 to 15 for the same polymer which is indefinite because paragraph 0339 of applicant’s disclosure as originally filed explains that average functionality of a polymer is also revered to as average functionality Fv and functionality distribution Fd, thus apparently making Fd and Fv equivalent.
Claim 26 depends from canceled claim 24 which is 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 1 – 14, 16 – 23, 26 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2020/0032158)
In regards to claim 1, Smith teaches lubricating oil composition for engines such as passenger vehicle engine and commercial vehicle engine oils or other mechanical components (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 [0047]. While Smith does not recite the BMEP, or air-to-fuel ratio of the hydrogen engine as claimed. However, such engines are known in view of Yan et al. (CN 116201630A) which recites hydrogen internal combustion engines (i.e., 100% hydrogen fuel) having air to fuel ratio of about 2.5, and BMEP of greater than 12 bar under large load condition [0031, 0035]. Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the lubricating oil composition of Smith in the engine of Yan, as Smith teaches useful oil composition for hydrogen engines.
Smith teaches the lubricant composition comprises a Group I to V base oil [0051]. The oil can be PAO having kinematic viscosity at 100℃ (Kv100) of up to 150 cSt, such as from 1.5 to 12 cSt [0055]. GTL oil and/or hydrocarbyl aromatic oil each can have Kv100 of from 3 to 50 cSt [0058, 0059]. Preferably the base oil is useful in spark-ignited or compression-ignited engines with Kv100 of from about 2.5 to 12 cSt and is present from about 50 to about 99% of the lubricant composition [0073, 0074]. Thus, in the absence of viscosity improvers, since the base oil can be present in amounts of 50 to 99%, the composition would have similar viscosities (of i.e., 3 to 50 cSt) similar to that of the base oil and which overlaps the limitation of the SAE groups of the claim which is equivalent to about 4 cSt to about 22 cSt (i.e., from 0W-8 to 25W-60).
The composition comprises detergents such as calcium or magnesium phenate, sulfonate, salicylate and mixtures thereof [0119]. The detergent has total base number (TBN) of from 0 to 600 and having a metal ratio of from 1 to 5 [0120]. The detergent is present in the oil at amounts of from 0.5 to 6% in the composition [0127]. Generally, useful range of the detergent is from 0.1 to 20% in the composition [0157, Table 1]. Thus, the detergent would provide the amounts of metal and soap of the claim.
Thus, Smith provides a method of reducing abnormal combustion events in a hydrogen fueled engine during operation by providing the lubricating oil in the engine containing fuel and combusting the fuel in the engine.
In regards to claims 2 – 4, Yan and Smith provide the engine. Smith provides the method and composition having the claimed additive and which would be expected to provides similar properties as claimed. The steps of measuring pre-ignition events at specific air: fuel ratios such as 1.85, 2.05 etc., does not further limit the step of reducing abnormal combustion events by adding the claimed lubrication oil composition in the hydrogen-fueled engine.
In regards to claims 5 – 7, Yan and Smith provide the engine. Smith provides the method and composition having the claimed limitations as previously stated.
In regards to claims 8 – 10, Yan and Smith provide the engine. Smith provides the method and the composition for engines which can run on hydrogen fuel alone (i.e., up to 100%) and comprises the claimed additives as previously stated. The additive can be dispersant in amounts of from 0.1 to 20% [0157, 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 [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 Galic 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 [0102]; (also see Galic; column 8 lines 1 – 23). Galic teaches the dispersant can comprise one or more polar groups such as nitrogen, oxygen and phosphorus and thus provides average functionality of 3 or more as claimed (column 5 lines 60 – 68). And thus, the claimed molecular weights are obvious.
In regards to claim 11, Yan and Smith provide the engine. Smith provides the method and teaches the composition having additives such as inhibitors such as corrosion inhibitors/antirust additives in amounts of from 0.01 to 5% [0148, 0149]. Conventional corrosion inhibitors include azole compounds such as benzotriazole, thiadiazole etc., which are obvious. Other additives of the claims are also taught [Table 1].
In regards to claim 12, Yan and Smith provide the engine. Smith provides the method and teaches the composition comprising zinc dialkyl dithiophosphate having C1 to 18 alkyl groups which is zinc dihydrocarbyl dithiophosphate (Zddp) which is present at from about 0.4 to 1.2% by weight [0088 – 0090].
In regards to claim 13, Yan and Smith provide the engine. Smith provides the method and teaches the composition having the claimed additives [0157, Table 1].
In regards to claim 14, Yan and Smith provide the engine. Smith provides the method and teaches the composition for engines which can run on hydrogen fuel alone (i.e., up to 100%) and comprises the claimed additives as previously stated.
In regards to claim 16, Yan and Smith provide the engine. Smith provides the method and teaches the composition and the engine which can be commercial gasoline or diesel engines as previously stated. Commercial diesel engines typically heavy-duty diesel engines.
In regards to claims 17 – 23, 26 – 29, Smith teaches the composition having the claimed ingredients in the claimed amounts and useful in similar engines and would be expected to provide similar properties of the claims.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 14, 16 – 23, 26 – 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 55 of copending Application No. 18/948,730. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches engine oils for engines fueled by hydrogen and wherein the oils contain similar salicylate and phenate detergents, zinc dialkyl dithiophosphate in similar amounts. The composition comprises the claimed additives and has the same viscosity and properties of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 14, 16 – 23, 26 – 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 40 of copending Application No. 18/948,703. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches engine oils for engines fueled by hydrogen and wherein the oils contain similar salicylate and phenate detergents, zinc dialkyl dithiophosphate in similar amounts. The composition comprises the claimed additives (i.e., molybdenum compounds which are friction modifiers, silicone compounds which are antifoaming agents) and has similar viscosity and properties of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claims 1 – 14, 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Smith does not teach the hydrogen engine having the BMEP and air: fuel ratio as claimed. The argument is moot based on new grounds of rejections.
Applicant argues that Smith fails to teach the functionalized polymer having the claimed functionality. The argument is not persuasive.
Smith teaches dispersants such as those of Galic which was incorporated by reference, and which recites dispersants having the claimed functionality.
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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