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 .
Information Disclosure Statement
The copy of the Sarkar reference cited on the IDS 11/18/25 supplied by applicant is not legible. The examiner has attached a legible copy to this office action.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarkar (Sarkar, P., Bhowmick, A.K., “Terpene Based Sustainable Methacrylate Copolymer Series by Emulsion Polymerization: Synthesis and Structure-Property Relationship”, J. Polym. Sci A Polym. Chem, 2017, 55, 2639-2649).
In the experimental section on pages 2640-2641, as well as Scheme 1 on page 2640 and Table 2 on page 2643, Sarkar discloses copolymers of myrcene and various alkyl methacrylates. Myrcene meets the limitations of the structural unit of formula 1 of claims 1-2 for the case where R1 is C6H11, and also meets the limitations of the structural unit derived from myrcene of claim 3. The alkyl methacrylates meet the limitations of the structural unit derived from a (meth)acryloyl group-containing compound. In Table 2 Sarkar discloses copolymers comprising 50 or 70% by weight of the myrcene and 30 or 50% by weight of the alkyl methacrylate (the fourth paragraph in the right column of page 2642 of Sarkar discloses that the subscripts in Table 2 represent weight percents), within the range recited in claim 1 for the structural unit of formula (1), the ranges recited in claims 3-4 for myrcene, and within the range recited in claim 7 for the structural unit derived from a (meth)acryloyl group-containing compound. Based on the number-average molecular weights (Mn) and polydispersities (PDI) disclosed in Table 2, of Sarkar, the weight-average molecular weights of all the copolymers in Table 2 will fall within the range recited in claim 1. The alkyl methacrylates used in the copolymers of Sarkar have carbon numbers within the range recited in claim 5 and are methacrylic acid esters, meeting the limitations of claim 6. Claims 1-7 are therefore anticipated by Sarkar.
In Table 3 Sarkar discloses that the copolymers are soluble in various solvents, indicating the formation of a composition comprising the copolymer and a solvent, as recited in claim 8 and also meeting the method limitations of claims 17-18. While Sarkar does not specifically disclose the that the composition is a lubricating oil additive, since the composition meets the compositional limitations of the claims it will be capable of performing the intended use as a lubricating oil additive.
In light of the above, claims 1-8 and 17-18 are anticipated by Sarkar.
Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bollinger (U.S. Pat. No. 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 13 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 13, and 36% by weight of units derived from methyl methacrylate, within the range recited in claim 15. In Example 22 Bollinger discloses that the above-described copolymer can be hydrogenated—the hydrogenated copolymer still meets the limitations of claim 13 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 mineral oil of claim 13. While Bollinger discloses the copolymers as viscosity index improvers rather than friction modifiers, since the copolymers meet the structural limitations of the claimed copolymers they will also be capable of use as friction modifiers. Claims 13 and 15 are therefore anticipated by Bollinger.
Methyl methacrylate has a carbon number of 5, within the range recited in claim 14. 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 16. Claims 14 and 16 are therefore also anticipated by Bollinger.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1, 5-12, 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.
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.
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 claims 8-9 as neutral oil is a mineral oil. 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, 5-12, and 17 are rendered obvious by Bollinger.
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771