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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 7/23/2026 has been entered.
Response to Amendment
Applicants’ response filed 7/23/2026 amended claims 12 and 21, and cancelled claims 14 and 23. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejection over Amblard from the office action mailed 4/23/2026; therefore, this rejection is maintained below. Applicants filed a terminal disclaimer to obviate the double patenting rejection from the office action mailed 4/23/2026; therefore, this rejection is withdrawn.
Information Disclosure Statement
The information disclosure statement filed 7/23/2026 fails to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claims 12-13, 15-22 and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Amblard et al., US Patent Application Publication No. 2020/0040276 (hereinafter referred to as Amblard).
Regarding claims 12-13, 15, 17-22 and 24-29, Amblard discloses a marine diesel cylinder lubricating oil composition (Para. [0193]) comprising:
(a) a major amount of an oil of lubricating viscosity which does not include bright stock (see Table 1a/Example L2); and
(b) 0.01 to 2 wt% of at least one olefinic copolymer having an average molecular mass ranging from 40,000 to 220,000 and a polydispersity index between 1.5 to 5, and an ethylene content ranging from 30 to 80% (Para. [0015] and [0032]-[0041]); and
(c) at least one hydrogenated and linear styrene-butadiene copolymer (as this copolymer is hydrogenated it is not an olefinic copolymer and not a viscosity modifier per the disclosure of Amblard) (Para. [0016]); wherein the lubricating oil composition has a TBN ranging from 3 to 80 mgKOH/g (Para. [0054]), is a monograde SAE-40 monograde lubricating oil according to SAE J300 classification (Para. [0067]), and has a KV100 ranging from 5.6 to 26.1 cSt (Para. [0068]).
Amblard differs from claim 12 in that the olefin copolymer recited in Amblard has a number average molecular weight range that encompasses and overlaps the range recited in claim 1.
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).”
Regarding claim 16, Amblard discloses a detergent being present in the composition in a range from 1 to 30 wt% (Para. [0042]-[0052]). Amblard does not explicitly disclose the sulfated ash content of the lubricating oil composition. It is the position of the examiner that based on the disclosure of the detergent with the treat rate of Amblard the sulfated ash content will overlap the range recited in claim 7.
Response to Arguments
8. Applicants’ arguments filed 7/23/2026 regarding claims 12-13, 15-22 and 24-29 have been fully considered and are not persuasive.
Applicants argue that as the instant claims explicitly disclose the presence of only the one or more olefins copolymers as viscosity index improvers that Amblard is obviated as Amblard discloses the necessary presence of at least one hydrogenated and linear styrene-butadiene copolymer. This argument is not persuasive. As is discussed above, Amblard does not refer to the hydrogenated and linear styrene-butadiene copolymer as a viscosity index improver. Furthermore, as can be seen by Streets, US Patent No. 3,419,365 hydrogenated and linear styrene-butadiene copolymers are well-known for their use as pour point depressants and not necessarily viscosity index improvers. For these reasons applicants’ arguments regarding Amblard are not persuasive.
Applicants also argue that Amblard does not disclose the one or more olefin copolymers with the specificity required for an obviousness rejection. This argument is also not persuasive. The example formulations of Amblard clearly use olein copolymers as additives in the compositions disclosed therein. For these reasons applicants’ arguments are not persuasive.
Conclusion
9. THIS ACTION IS MADE FINAL. 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 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.
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 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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