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 .
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 2 – 10, 16 – 30 are rejected under 35 U.S.C. 103 as obvious over Lewtas et al. (WO 93/08243)
In regard to claims 2 – 10, 16 – 30, Lewtas teaches oil and fuel compositions having a polymeric additive with a structure of formulas (I) and (II) having R3, R4 and R5 which can be hydrogen, x + y is at least 2, and x is an integer, which is analogous to the structure of formula II of the claim (abstract, page 2). The additive is useful in fuels such as diesel fuel etc., in amounts of 0.0001 to 5% or 1ppm to 50,000 ppm (page 18 lines 1 – 18). The additive is useful as a cold flow improver (page 1 lines 6 – 11, page 4 lines 5 – 9).
Since they are useful additives for diesel fuels, when used in conventional diesel engines having EGR systems, they will effectively reduce the impact of deposits in the engine as claimed. Or, alternatively, the additive of Lewtas would have been obviously useful in the oil of Ross et al. (WO 2011/090021) which is similarly drawn to diesel fuel useful in diesel engines having turbocharger with EGR and which allows for the use of conventional additives such as cold flow improvers in the fuel (page 20 lines 15 – 21, page 51 & Example 4). The composition would be expected to have similar properties in the diesel engine of Ross. The engines of Ross can be marine diesel engines, road or non-road (off road) use (page 18 lines 26 – 28).
The claims recite a process of making the claimed structure which is a product by process limitation. As long as the claimed product itself is taught, the process of making the product limitation of the claims is also met. Lewtas teaches the molecular weight of the polymer is from 1000 to 500,000 and thus allows for the repeat units to be very large and overlap the claimed ranges (page 6 lines 21 – 26).
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
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
