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 .
Response to Amendment
Applicants’ response filed 3/2/2026 amended claims 12-17, 19-26 and 28-29. Applicants’ amendments overcome the claim objections from the office action mailed 12/2/2025; therefore, the objections are withdrawn. Applicants’ amendments in light of their arguments are not persuasive in overcoming the 35 USC rejection over Amblard from the office action mailed 12/2/2025; therefore, this rejection is maintained below. Applicants did not address the double patenting rejection from the office action mailed 12/2/2025; therefore, this rejection is maintained below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/5/2026 was filed after the mailing date of the non-final office action on 12/2/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 12-29 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 12-15 and 17-29, 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.
Double Patenting
7. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. Claims 12-29 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-26 of co-pending application No. 18/994,524. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending ‘524 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosure to Amblard discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Response to Arguments
9. Applicants’ arguments filed 3/2/2026 regarding claims 12-29 have been fully considered and are not persuasive.
It is the position of the examiner that the references discussed above adequately read on the claims as instantly recited.
Conclusion
10. 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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