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 11/18/2025 has been considered and entered. The amendment requires BMEP, AFR and functionality distribution values that Smith et al. (US 2020/0032158) alone does not teach, thus overcoming the previous rejections. New grounds of rejections are made below.
The drawings dated 11/18/2025 are accepted.
The cancellation of claim 43 overcomes the previous rejections under 101/112 which are hereby withdrawn.
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 – 31, 34 – 40, 42 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2020/0032158) in view of applicant’s admitted prior art (AAPA) and further in view of Yan et al. (CN 116201630A)
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]. The 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].
The composition comprises 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]. From stoichiometric calculations, when the C1-18 alkyl Zddp is used at amounts of from 0.4 to about 1.2%, it provides calculated amounts of phosphorus (based on molar mass calculations) of about 0.019 to 0.214% and zinc at calculated amounts (based on molar mass calculations) of from about 0.02 to 0.225%. The composition preferably has a phosphorus content of preferably less than about 0.12, and preferably less than 0.085% [0091].
Smith does not recite the air to fuel ratio (AFR) of hydrogen engine, but the applicant’s admitted prior art (AAPA) in the background of the invention recites AFR of hydrogen engines ranging from 2 to 2.5 typically, while it is about 1 for gasoline [0009]. Thus, at least in view of AAPA, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have prepared the hydrogen engines of Smith to have AFR of 2 to 2.5, as the range is conventional in the art.
Smith also fails to particularly recite the BMEP of the hydrogen engine of the claims. However, Yan teaches that BMEP for hydrogen engines can be less than 5 bars for small load conditions, 5 – 12 bars for medium load conditions and greater than 12 bars for heavy load conditions, thus making the claimed range both obvious and results effective (Yan, claims 9 – 11). Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the BMEP ranges of Yan in the hydrogen engines of Smith, as Yan teaches that they are suitable for hydrogen engines.
In regards to claim 2, Smith, AAPA and Yan provides the method and teaches the lubricant having up to about 99% of base oil, which when absent of any viscosity improving additives, would have 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).
In regards to claims 3 – 6, Smith, AAPA and Yan provides the method and teaches the composition having the claimed limitations as previously stated.
In regards to claim 7, Smith, AAPA and Yan provides the method, and Smith teaches the composition wherein the Zddp having primary or secondary alkyl groups which are derived from primary or secondary alcohol groups [0088].
In regards to claim 8, Smith, AAPA and Yan provides the method and the composition wherein the Zddp can provide zinc in calculated amounts of from 0.02 to 0.225% (200ppm to 2250ppm) as previously stated.
In regards to claim 9, Smith, AAPA and Yan provides the method, and Smith teaches the composition which can comprise the base oil and Zddp as previously stated, and can also comprise detergent, dispersant etc. [0092, 0115].
In regards to claims 10 – 17, Smith, AAPA and Yan 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. Smith teaches the dispersant comprises an imide such as succinimide or bis-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 from 1.3 to 1.7 functional groups per polyalkylene moiety [0093, 0103 – 0110]. Since mono succinimides will typically have at least one polyalkylene moiety, while bis-succinimide would have at least two polyalkyelene moiety on each succinic group. Thus, the number of functional groups (i.e., Fv) for a bis-succinimide would overlap the claimed range, i.e., from 2.6 to 3.4 functional groups. Also See 0069 of US 2022/0169946 for bissuccinimide and monosuccinimide structures.
Since the number of functional groups of the dispersant is 2.6 to 3.4 for the bissuccinimides of Smith, it appears that the average functionality of the dispersant would overlap the claimed range or be less than 3 as claimed. The examiner cannot determine whether or not the reference inherently possesses properties that render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103.
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). And thus, the claimed molecular weights are obvious.
In regards to claims 18, 19, Smith, AAPA and Yan provides the method, and Smith teaches the composition having the dispersant such as polyisobutylene succinimide (PIBSA-PAM) and which can be borated and having the claimed limitations and which is useful at amounts of 0.01 to 20% (i.e., 100 ppm to 200,000 ppm) in the composition [0113].
In regards to claims 20, 21, Smith, AAPA and Yan provides the method, and Smith 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 22, Smith, AAPA and Yan provides the method and teaches the composition and an engine with hydrogen fuel and thus intrinsically provides at least one of the three types of hydrogen fuel as claimed.
In regards to claim 23, Smith, AAPA and Yan provides the method, and Smith teaches the composition and comprises one or more fuel including hydrogen fuel, natural gas, etc. [0047].
In regards to claims 24, 25, Smith, AAPA and Yan provides the method, and Smith teaches the composition having the fuel which are useful in various engines such as 2-stroke engines etc., which are engines that combine lubricating oils with fuels [0045]. Where the fuel is blended, whether prior to or in the combustion chamber will depend on the engine design and which is obvious.
In regards to claims 26 – 28, Smith, AAPA and Yan provides the method, and Smith 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. The engines can comprise a turbocharger [0046].
In regards to claims 29 – 31, 34 – 40, 42, Smith, AAPA and Yan provides the method of lubricating the engine, the fuel and the composition as claimed.
Response to Arguments
Applicant’s arguments 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 fails to teach hydrogen engines, BMEP and AFR of the hydrogen engine as claimed. The argument is not persuasive.
As discussed above, Smith teaches the engine can be hydrogen engine and thus provides up to 100% hydrogen as fuel. While Smith does not recite the BMEP and the AFR, they are taught in view of AAPA and Yan.
Applicant argues that Smith fails to teach dispersants or dispersant VI improvers having the claimed number of functional groups of 3 or more but recites about 1.3 to 1.7 per polyolefin group. However, since there are two polyolefin groups in bissuccinimide, the average number of functional groups (Fv) in Smith doubles to 2.6 to 3.4. Since Fv can be 2.6 to 3.4, it appears that the functionality distribution of the same polymers would be within or overlapping the claimed range of 3 or less.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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