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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings are blurry. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 43 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and/or substantial asserted utility or a well-established utility.
The claim recites use of lubricant without providing steps for providing the use.
Claim 43 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and/or substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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 – 43 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]. 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].
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 which would intrinsically exhibit an improved BMEP as claimed.
In regards to claim 2, Smith 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 provides the method and teaches the composition having the claimed limitations as previously stated.
In regards to claim 7, Smith provides the method and 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 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 provides the method and 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 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 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). And thus, the claimed molecular weights are obvious.
In regards to claims 18, 19, Smith provides the method and 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 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 22, Smith 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 provides the method and teaches the composition and comprises one or more fuel including hydrogen fuel, natural gas, etc. [0047].
In regards to claims 24, 25, Smith provides the method and 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 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. The engines can comprise a turbocharger [0046].
In regards to claims 29 – 43, Smith provides the method of lubricating the engine, the fuel and the composition as claimed.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771