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 amendment dated 12/11/2015 has been considered and entered. The response was found to be persuasive over the rejections of claims 1 – 17 in view of Gooding et al. (US 2018/0298302) for failing to teach the functionalized homo-polyisoprene having 5 to 20 functional groups of the claims as amended, and separately over claims 19 – 34, for failing to particularly recite the air: fuel ratio of the claims as amended. Therefore, the previous rejections in view of Gooding alone are withdrawn and new grounds of rejections are made below as necessitated by the amendments.
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 – 13, 15 – 17 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. The claims recite functionality distribution of 3.5 or less and average functionality of from 5 to 20 which appears to be ambiguous as paragraph 0068 of applicant’s disclosure as originally filed recites that average functionality (Fv) is the same as functionality distribution (Fd).
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 – 13, 15 – 17, 19 – 34 are rejected under 35 U.S.C. 103 as being unpatentable over Gooding et al. (US 2018/0298302) in view of McDermott et al. (CA 3 166 808 A1)
In regards to claim 1, Gooding teaches lubricating oil composition for internal combustion engines (ICE) comprising base oil as a major component, calcium or magnesium salicylate or their combination (abstract). The engine can be hydrogen fueled (i.e., H2ICE) [0051, 0052]. The composition is low sulfur, low phosphorus oil containing a detergent such as alkaline earth metal (i.e., calcium) salicylate, alkaline earth metal (i.e., magnesium) sulfonate [0018]. The molar ratio of the metal from the detergent such magnesium (Mg) or calcium (Ca) from the salicylate into the oil is from 0.1 to 40 [0023]. The detergent can be low, medium or high TBN ranging from 0 to 600 and is present at from about 0.5 to about 6% by weight in the composition according to c) and d) of the claim [0092, 0099]. The detergent can be a calcium or magnesium detergent or mixtures [0089]. Thus, calcium detergents can be absent and calcium can be absent from the composition.
The base oil is a Group I to V oil having a viscosity of from about 2.5 to about 12 cSt at 100℃ (Kv100) according to a) of the claim [0056, 0079]. The base oil is present at from about 50 to about 99% by weight of the composition [0078]. Since the oil is present at up to 99%, the composition can essentially have the viscosity of the base oil in the absence of large amounts of VI improver.
The composition may comprise zinc dialkyl dithiophosphate (ZDDP) which can be present at from about 0.4 to about 1.2% by weight, and wherein the composition comprises 0.12% or less, or, about 0.085% or less of phosphorus according to g) of the claim [0104 – 0107]. The composition can comprise dispersants [0108]. The dispersants can include hydrocarbyl succinimides having molecular weights of from about 500 to 5000 in the hydrocarbyl group and mixtures of dispersants such as mixtures of borated and non-borated dispersants according to e) and f) of the claim [0119]. Dispersants can be multifunctional compounds such as multifunctional dispersant-viscosity index improvers [0120]. The dispersants can have a functionality of from 1.3 to 1.7 and be present at from 0.01 to 10% in the composition [0121, 0129]. Some dispersants may be borated or carbonated [0129].
The composition may comprise viscosity index (VI) improvers which can be multifunctional dispersant-viscosity index improvers and include polymers with molecular weights of from 10,000 to 1,500,000, such as including methacrylates, styrene, isoprene, butadiene and combinations according to b) of the claim [0133, 0134]. The VI improvers are present at from 0 to about 10% in the composition and may be added to the oil as a concentrate [0138].
When the salicylate is calcium or magnesium salicylate having the structure of 0094 and present in amounts of from 0.5 to 6%, it can provide magnesium into the composition in calculated amounts of from about 0.013% to 0.44% (i.e., from about 130ppm to 4400 ppm). Thus, the claimed limitations are provided. Gooding fails to teach the polyisoprene having at least 5 functional groups as claimed.
McDermott teaches viscosity index improvers useful in lubricating oil composition for engines and comprising a viscosity modifier or dispersant viscosity modifier such as an olefin polymer or copolymer of isobutylene or isoprene having a polar moiety which are grafted thereon which can be more than 5 functional groups [abstract, 0086 – 0098].
Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the viscosity modifier of McDermott as the VI improver of Gooding, as McDermott teaches it is similarly useful for engine oils. Or, alternatively, it would have been obvious to have functionalized the VI improver of Gooding with the functional groups of the viscosity modifiers of McDermott to add additional functionality to the viscosity improver, such as dispersantcy etc.
By providing the homo-polyisoprene having the same number of functional group, the functionality distribution parameter would be expected to be similar.
In regards to claims 2, 3, Gooding teaches the composition having dispersants such as polyisobutylene succinimide (PIBSA-PAM), does not require the presence of calcium and teaches magnesium detergents in the claimed amounts and thus would be expected to provide similar improvements to the oil as claimed [0110, 0111].
In regards to claim 4, Gooding teaches the composition having the viscosity index improver which can be a functionalized polymer in amounts that overlaps the claimed range.
In regards to claims 5, 6, Gooding teaches the composition having the claimed limitations as previously stated.
In regards to claim 7, Gooding teaches the composition comprising zddp as previously stated. The zddp can comprise straight or branched alkyl groups or mixtures of primary and secondary alkyl [0104].
In regards to claims 8, 9, Gooding teaches the composition comprising rust and corrosion inhibitors in amounts of from 0.01 to 1.5% and thus would be expected to have similar corrosion/rust properties and protection as claimed [0151].
In regards to claim 10, Gooding teaches the composition which does not require the presence of water and thus would have no separation as claimed.
In regards to claim 11, Gooding teaches the composition which can provide boron from borated dispersants in amounts of from 0.1 to 5 moles of boron per mole of dispersant [0115]. For a dispersant such as PIBSA-PAM having 500 to 5000 g/mol of PIBSA and succinimide having about 99 g/mol, the PIBSA-PAM has from about 600 to about 5100 g/mol. Boron has about 10.8 g/mol. At 0.1 mol of boron, i.e., 1.08 g boron per 600 to 5100 g of dispersant up to 5 mol of boron, i.e., 54 g of boron per 600 to 5100 g of dispersant, the boron would be present in the dispersant at amounts of from 0.02% to 0.09%. When the dispersant is present at from 0.01 to 20% in the composition, the boron content contributed to the oil is calculated to be from 0.02 ppm to 90 ppm.
In regards to claim 12, Gooding teaches the composition having the claimed ingredients and which would be expected to have similar properties as claimed.
In regards to claim 13, Gooding teaches the composition which may optionally comprise molybdenum compounds but they are not required.
In regards to claims 15, 16, Gooding teaches the composition is useful as passenger vehicle engine oil, or commercial duty engine oils such as heavy-duty engines [0031, 0037].
In regards to claim 17, Gooding teaches the composition having the claimed limitations and which can be in the form of concentrates. Since concentrates generally allows for a lower amount of base oils, the amounts of the ingredients in the concentrates will overlap the claimed limitations.
In regards to claims 19 – 34, Gooding teaches the claimed composition used in the same engines which when used would intrinsically provide the method of reducing abnormal ignition events. Gooding particularly teaches that the composition is anti-LSPI thus resistant to LSPI combustion events [0051]. Gooding teaches hydrogen fueled engine (i.e., 100% hydrogen) but does not particularly recite the air: fuel ratio as claimed.
Yan et al. (CN 116201630A) teaches hydrogen internal combustion engines having air: fuel ratio of about 2.5 and BNEP of greater than 12 bar under large load condition [0031, 0035]. Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used the composition of Gooding in the hydrogen fueled engine of Yan, as Gooding teaches lubricating oil for such engines.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771