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 response dated 09/25/2025 has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yuki et al. (US 6,746,993)
In regards to claims 1 – 6, Yuki teaches viscosity index improver (VII) and lube oil containing the same (title). The composition comprises VII polymer A0 or A1 (column 1 lines 40 – 45). Polymer A0 comprises at least one C20-40 alkyl (meth)acrylate and at least one other alkyl methacrylate, and both polymers have a weight average molecular weight of from 5,000 to 2000,000 (column 1 lines 65 – column 2 lines 5). Since Mw of the polymer is from 5,000 to 200,000, the Mn would be expected to similarly overlap the claimed range. Polymer A1 contains monomer (a0) is C20-40 alkyl (meth) acrylate, (a1) is C16-19 alkyl (meth) acrylate, (a2) is C1-4 alkyl (meth) acrylate, (a3) is C8-15 alkyl (meth) acrylate, (a4) is C16-18 alkyl (meth) acrylate etc. such as n-hexadecyl, n-octadecyl (meth)acrylate which are straight chain alkyls etc. (column 3 lines 45 – column 4 lines 46). Monomeric units a0 and/or a1 are present at from 5 to 90%, a2 at 0 to 85% or preferably from 10 to 70%, a3 and/or a4 at 0 to 20% etc. in polymer A1 (column 8 lines 36 – 45).
In the polymer A1, when (a0) is 0%, (a1) is 5 to 90% (i.e., equivalent to monomer (b) of the claim), a2 is 0 to 85% (i.e., equivalent to monomer (a) of the claim), a3 is 0%, and a4 is 0 to 20% (i.e., equivalent to monomer c) of the claim), the consisting language limitation for the polyalkyl methacrylate polymer B of the claim is met. Polymer A1 will be expected to have an average carbon number overlapping the claimed ranges since the C1-C4 alkyl (meth)acrylates are present at from about 0 to about 80% or preferably from 10 to 70%. The alkyl groups are at least one straight chain or branched alkyl group of the claim, thus providing the claimed limitations.
Yuki teaches the composition can optionally (i.e., at 0% or higher) comprise an additional polyalkyl (meth)acrylate copolymer (B) or (B1) having Mw of from 5,000 to 1,000,000 or from 10,000-250,000 and comprising monomers a2 at 0-40%, a3 and a4 at 60 to 100% and which provides average carbon number of from 12.2-12.6 within the claimed range for the polymer C of the claim (column 13 lines 17 – 54). Since Mw of the polymer is from 5,000 to 1,000,000, the Mn would be expected to similarly overlap the claimed range.
Yuki teaches lubricating oil composition having the base oil, VII polymer A and polymer B and further additives in the claimed amounts. The base oil comprises polymer A in amounts of from 0.5 to 30%, while an additive concentrate can contain the polymer A in oil such as mineral oil (i.e., Group I to III) having Kv100 of from 1 to 15 mm2/s in amounts of from 10 to 90% (column 12 lines 37 – 67). The lubricant composition has Kv100 of from 1 to 10 mm2/s (column 13, Table).
Polymer A and Polymer B are present at ratios of from 1 to 99 to 99 to 1 in the composition thus providing polymer B in amounts overlapping the claimed range (column 13 lines 65 – 67). Additives are optional and present in amounts of from 0 to 20% (column 14 lines 33 – 42).
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 – 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 of U.S. Patent No. 12,234,354. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches lubricating oil comprising the claimed copolymer while the instant claims are drawn to an additive composition having the copolymer. While the patent does not particularly recite the amounts of the polymer in an additive concentrate, nor particularly recite the type of base oil or the kinematic viscosity, Yuki et al. (US 6,746,993) teaches similar copolymers and their amounts in the oil and the kinematic viscosity.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the present additives are the same additives present in the parent composition (16/814,663) that was previously allowed for demonstrating unexpected results and thus possesses similar unexpectedly improved property which makes the claims allowable. The argument is erroneous.
The inventive examples and claims are not commensurate in scope.
The claims allow for use of the additive in any suitable composition or in any suitable oil in large amounts which does not support the embodiments considered for demonstrating unexpected results that were drawn to use of additives at very minor amounts of from 1 to 3% of the polymethacrylates in base oil. No examples were provided for demonstrating unexpected results for the polyacrylates over the prior art when used in large amounts of from 20 to 40% in oil, or when used in any other non-base oil containing composition as the instant claims would allow.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the present claims and sufficient to demonstrate unexpected results to rebut the case of obviousness.
Conclusion
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771