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
The drawings are objected to because Figure 1 is blurry. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 30, 33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites ‘n = 1, if m = 0’ but also recites ‘m is 1 to 3’ thus making m non-zero which is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites that m is 0 to 3 which does not further limit the independent claim 1 which recites m is 1 to 3. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 – 10, 13 – 17, 19 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over White et al. (US 2016/0186088)
In regards to claims 1, 9, 10, White teaches lubricating oil compositions containing encapsulated microparticles which comprises a major component of base oil and a minor component of the microcapsule particles having a metal salt core selected from metal oxide, hydroxide or carbonate, and an encapsulating material selected from carboxylic acid, aromatic carboxylic acid etc., for use as an engine oil (abstract). The oil can be Group I to V oil [0044]. The oil is present at from about 50 to about 99% by weight of the composition and has a kinematic viscosity of from about 2.5 cSt to about 9 cSt [0067].
The metal salt can comprise metals such as zinc, calcium, magnesium, blends of zinc and calcium etc., i.e., zinc oxide, zinc hydroxide etc. [0069, 0071]. The acids include C8 to C26 acids such as oleic acid etc. [0075]. The carboxylic acid is reacted with the metal salt to form a carboxylate such as an oleate (i.e., salt) encapsulating shell (i.e., R group of claims 9, 10 are C17 from zinc oleate) [0077, 0080]. The total mass of the carboxylic acid is from 1 to 300 molar % per mol of the metal salt particles [0078]. Thus, zinc oleate salts as shell according to the limitation of formula III of the claims wherein p is 0, M is zinc, y is 2 and x is 2 appears to be taught. Similarly, aromatic carboxylates of formula II are also envisaged or obvious in view of aromatic carboxylic acids as encapsulating material which reacts with the metal salt.
Thus, the composition and colloid of the claim is provided. The composition can comprise additives such as zinc dialkyldithiophosphate at amounts of about 0.4% to about 1.2% in the composition [0112]. The weight ratio of zinc to phosphorus in the zddp based on stoichiometry (since the mole ratio of Zn:P is about 1:2 and the molar mass ratio of Zn:P is about 2:1) is about 1:1, and when the zddp provides phosphorus at from 0.12% by weight or less, or about 0.085% (i.e. 850 ppm) or less the zinc content from the zddp is similar [0113]. However, the salt also provides zinc from zinc carboxylate such as zinc oleate which is present in the microcapsule at 1:1 mol% to 1:300 mol% relative to the carboxylate shell in the microparticles, and wherein the microcapsules are present at from about 1% up to about 50% in the composition (absent any additive), thus allowing the overall amount of zinc to phosphorus to overlap the claimed range [0067].
The base oil provides the limitation A), the Zddp provides the limitation B, and the microparticles provides the limitation C) of the claim.
In regards to claim 2, White teaches the composition comprising the zinc salts of the claim as previously stated.
In regards to claim 3, White teaches the composition, wherein the microparticles have sizes of from 0.01 microns (i.e., 100 nm) to about 5 microns, or can be ultrafine nanoscale particles of from 10 nm and higher, which overlaps the claimed range [0027, 0082].
In regards to claim 4, White teaches the composition having the claimed metal as previously stated.
In regards to claims 5 – 7, White teaches the composition as previously stated. It is noted that the claims do not require the presence of the surfactant of formula I or II but merely recites what Ar is in those formulas.
In regards to claim 13, White teaches the composition which can comprise the additives of the claim [0086].
In regards to claim 14, White teaches the composition having the claimed ingredients and the optional additives and thus can be present at 0% or more in the composition according to the claims.
In regards claims 15, 16, 19, White teaches the composition having the claimed ingredients in the claimed amounts and would be expected to exhibit similar properties as claimed.
In regards to claim 17, White teaches the composition. The claim does not require the presence of the ligand but merely recites examples of useful ligands.
In regards to claim 20, White teaches the composition having the zinc content of the claim as previously discussed.
In regards to claim 21, White teaches the composition having the phosphorus content as previously stated.
In regards to claims 22, 23, White teaches the composition which is useful as engine oil, gear oil, hydraulic oil, turbine oil etc. [0030]. The composition of White is capable of providing the intended use as it comprises the claimed ingredients in the claimed amounts.
In regards to claims 24 – 27, White teaches the composition having the claimed ingredients in amounts overlapping the claimed ranges as previously discussed and thus would be expected to provide similar properties as claimed.
In regards to claims 28, 29, White teaches the composition having the claimed ingredients and useful in the claimed engines and thus provides the claimed method of obtaining adhesive wear and the method of lubricating an internal combustion engine by providing the composition and by using the composition in the engine (i.e., crankcase) which intrinsically provides the intended functions.
In regards to claim 30, White provides the method and teaches the composition which is useful in diesel (compression ignited) engines, 2-stroke engines (i.e., marine engines) etc., [0036, 0037].
In regards to claims 31, 32, White teaches the composition having the claimed ingredients in the claimed amounts and thus provides the claimed concentrate and claimed antiwear additive.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771