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 .
Claim Rejections - 35 USC § 103
Claims 1, 5-7, 10-12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bollinger (U.S. Pat. 4,533,482).
In Example 21 (column 16 lines 24-40) Bollinger discloses an isoprene-methyl methacrylate copolymer. Isoprene meets the limitations of the structural unit of formula (1) of claim 1 for the case where R1 is CH3, and methyl methacrylate is a structural unit derived from a (meth)acryloyl group-containing compound. The copolymer is prepared from 50 grams of isoprene and 28 grams of methyl methacrylate and therefore contains about 64% by weight of units derived from isoprene, within the range recited in claim 1, and about 36% by weight of units derived from methyl methacrylate, within the range recited in claim 7. In column 9 lines 6-13 Bollinger discloses that the copolymer preferably has a weight average molecular weight of 80,000 to 1,000,000, overlapping the range recited in claim 1. In Example 22 Bollinger discloses that the above-described copolymer can be hydrogenated—the hydrogenated copolymer still meets the limitations of claim 1 since the structural units are still derived from isoprene and methyl methacrylate—and in column 8 lines 45-50 Bollinger discloses that the hydrogenated copolymer can be added to neutral oil, meeting the limitations of the solvent of claim 1 since neutral oil is a mineral oil.
Methyl methacrylate has a carbon number of 5, within the range recited in claim 5, and comprises methacrylic acid ester, as recited in claim 6.
Neutral oil contains paraffins and since it is the only solvent, claim 10 is met by Bollinger as well. Since the lubricating oil additive meets the compositional limitations of the claims, it will be possess the properties recited in claim 11. Preparing the solution of the polymer in the neutral oil meets the method limitations of claim 17.
Throughout the reference, for example in column 13 lines 5-6 and Table II (columns 19-20) Bollinger discloses lubricant compositions comprising the copolymer, meeting the limitations of claim 12.
The difference between Bollinger and the currently presented claims is that the weight average molecular weight range of the copolymer of Bollinger overlaps the claimed range rather than falling within it. 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);”
In light of the above, claims 1, 5-7, 10-12, and 17 are rendered obvious by Bollinger.
Allowable Subject Matter
Claims 3-4, 13-16, and 18 are allowed. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 13 has been amended to limit n to 6 to 11, requiring the R1 group of formula (1) to have 6 to 11 carbon atoms. This overcomes the rejection set forth over Bollinger in the office action mailed 1/29/26, since Bollinger only discloses copolymers comprising isoprene, which has one carbon atom in the group corresponding to R1. One of ordinary skill in the art would not have motivation to modify the copolymer of Bollinger to meet the limitations of the amended claims. Sarkar, discussed in the office action mailed 1/29/26, discloses copolymers meeting the limitations of the polymer of amended claim 13, but one of ordinary skill in the art would not have motivation to include the polymer of Sarkar in a mineral or synthetic oil as required by the claims. Claim 3 and its dependent claims are similar to claim 13 but recite an even more specific polymer comprising a myrcene structural unit, and is distinguished over Bollinger and Sarkar for the same reasons. Claim 2 also recites a composition comprising a polymer more specific than that of claim 13, differing from claim 3 in that the C6H11 group could be linear or have a different branching structure than the C6H11 group in myrcene.
Response to Arguments
Applicant's arguments filed 4/21/26 have been fully considered but they are not persuasive regarding the rejection over Bollinger. Applicant argues that the rejection is overcome by the incorporation of “non-rejected claim 9” into claim 1. However, claim 9 was rejected over Bollinger in the office action mailed 1/29/26, and as discussed in the above rejection, Bollinger discloses a composition comprising the claimed polymer and a mineral oil, as recited in the amended claims. Applicant also argues that the polymer of Bollinger is hydrogenated and the claimed polymer is not hydrogenated. However, as discussed in the rejection, the claimed polymer recited structural units derived from a compound of formula (1) and a (meth)acryloyl-group containing compound, and hydrogenating the polymer does not change the compounds from which the structural units are derived.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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