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 Objections
Claim 9 is objected to because of the following informalities:
In line 2 of claim 9, “isoalkly” should be “isoalkyl”.
Appropriate correction is required.
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 1-35 and 37-43 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.
In claim 1 and its dependent claims, “less than 3 wt % (less than 2.5% or less than 2%)” is indefinite because it is unclear whether the weight percent values inside the parentheses are alternatives to less than 3 wt % or additional requirements.
Claim 11 recites “Formulas I, II, or III”, but claim 1, from which claim 11 depends, does not provide antecedent basis for these formulas, which appear in claims 6, 8, and 10. The examiner recommends that the claim be amended to explicitly recite the formulas, and also to clarify whether the mixture can be a mixture of different species falling under the same formula, or whether it needs to be a mixture of alcohols of different formulas.
Claims 14, 22, and 26 do not properly define the members of the Markush group. The claims should end with “and mixtures thereof” rather than “or mixtures thereof”. Claim 26 should also use “selected from the group consisting of” language.
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 2 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. Claim 2 allows for the composition to comprise less than 50% by weight of the polyalphaolefin base oil. Claim 1, from which claim 2 depends, already recites this limitation for component (a). Claim 2 therefore fails to further limit claim 1.
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
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.
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 1-8, 11-15, 24-26, 29, 32-35, 37-39, and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Champagne (U.S. PG Pub. No. 2020/0299603).
In paragraphs 30-32 Champagne discloses a lubricant composition for 4-stroke vehicle engines comprising a base oil and at least one alcohol. In paragraph 37 and Table A Champagne discloses that the base oil can be Group I, II, or III, as recited in component (a) of claim 1. As Champagne does not require additional base oils, Champagne meets the provisos of claims 1-3 regarding Group I, II, and III base oil content and polyalphaolefin content.
In paragraph 20 Champagne discloses that the alcohol is a primary alcohol which can be linear or branched and a number or carbon atoms falling within or overlapping the ranges recited in component (b) of claim 1. In paragraph 29 Champagne discloses that the alcohol can be present in concentrations overlapping the range recited in component (b) of claim 1. In paragraphs 26 Champagne discloses that the alcohol is preferably a β-branched alcohol, meeting the limitations of claims 4-5, and where the total number of carbon atoms is such that the number of carbon atoms in each R group overlap or encompass the ranges recited in claim 6. The linear alcohol meets the limitations of claim 7, and in Tables 2, 4, and 6 Champagne discloses that the alcohol can be lauryl alcohol (dodecanol), myristyl alcohol (tetradecanol), or cetyl alcohol (hexadecanol), all meeting the limitations of claim 8 where x is 9, 11, or 13. In paragraph 32 Champagne indicates that the alcohol can be a mixture (“at least one”) of alcohols, meeting the limitations of claim 11.
In paragraph 65 Champagne discloses that the composition comprises 0.5 to 2% by weight of an antioxidant, in which case the aryl amine content will be within the range recited for component (c) of claim 1 regardless of which antioxidant species is selected. When the antioxidant is not an aryl amine, claims 12 and 15 are met, and when a combination of antioxidants is used (“at least one antioxidant”, paragraphs 56 and 64-65), claim 13 is met. In paragraph 58 Champagne discloses that the antioxidants can be phenols and hindered phenols, as recited in claim 14.
In paragraph 77 Champagne discloses that the composition comprises a dispersant in an amount of 0.2 to 10% by weight, encompassing the range recited for component (d) of claim 1.
In paragraph 66 Champagne discloses that the composition can comprise a detergent, and in paragraph 69 Champagne discloses that the detergent can be a metal detergent, as recited in claim 24, where the metals can be those recited in claim 25 and the detergent soap can be those recited in claim 26.
In the examples, Champagne discloses that the composition can comprise organomolybdenum compounds, meeting the limitations of the molybdenum compound of claim 29. In paragraphs 51-53 Champagne discloses that the composition can comprise zinc dialkyldithiophosphates, meeting the limitations of claims 32-33, in concentration ranges that will lead to a zinc concentration range overlapping or encompassing the range recited in claims 34-35. When the antiwear agent is not zinc dialkyldithiophosphate, claim 37 is met. In paragraph 52 Champagne discloses that an alternative antiwear agent is sulfurized olefins, as recited in claim 38; the concentration range disclosed in paragraph 53 for the antiwear agent encompasses the range recited in claim 38 for sulfurized olefins, and the inclusion of sulfurized olefins also meets the limitations of claim 14 for the case where sulfurized olefins are the additional antioxidant. When the antiwear agent is zinc dialkyldithiophosphate and the sulfurized olefins are not present, claim 39 is met.
In paragraph 34 and the examples, Champagne discloses supplying the composition to an internal combustion engine and operating the engine, meeting the method limitations of claims 41-42.
The difference between Champagne and the currently presented claims is that some of the ranges of Champagne overlap or encompass the claimed ranges rather than falling within them. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 16-19, 27-28, 30-31, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Champagne in view of Loop (U.S. PG Pub. No. 2017/0044460).
The discussion of Champagne in paragraph 11 above is incorporated here by reference. Champagne discloses an engine lubricating composition meeting the limitations of claim 1. The differences between Champagne and the currently presented claims are:
i) In paragraphs 75-76 Champagne discloses that the composition can comprise succinimide dispersants, and in paragraphs 69-70 discloses that the composition can comprise overbased calcium or magnesium detergents, but does not disclose the specific succinimides of claims 16-19 or the detergent concentrations of claims 27-28.
ii) Champagne does not specifically disclose the phosphorus or sulfated ash content of the composition, as recited in claims 30-31 and 40.
With respect to i), in paragraphs 5-6 Loop discloses an engine lubricating composition comprising an ashless dispersant and an overbased metal detergent. In paragraph 38 Loop discloses that the ashless dispersant can be a hydrocarbyl succinimide dispersant, as recited in claim 16, frequently a polyisobutylene succinimide, as recited in claim 17. In paragraph 51 Loop discloses that the dispersant can be post-treated with boron, meeting the limitations of claim 18. In paragraph 41 Loop discloses that the succinimide can be prepared by the direct alkylation route, as recited in claim 19.
In paragraph 58 Loop discloses that the composition can comprise an overbased calcium detergent in an amount of 500 to 3000 ppm, as recited in claim 27, and can also be present in an amount to deliver no more than 500 ppm of magnesium, as recited in claim 28.
The inclusion of the succinimides of Loop as the succinimide dispersant in the composition of Champagne meets the limitations of claims 16-19. The inclusion of the calcium and magnesium detergents of Loop as the calcium and magnesium detergents of Champagne, in the amounts taught by Loop, meets the limitations of claims 27-28.
It would have been obvious to one of ordinary skill in the art to include the succinimides of Loop as the succinimide dispersant in the composition of Champagne, and to include the calcium and magnesium detergents of Loop as the calcium and magnesium detergents of Champagne, in the amounts taught by Loop, since Loop teaches that those are suitable dispersant and detergent species and concentrations for an engine lubricant.
With respect to ii), Loop discloses in paragraphs 100 that the composition can have a phosphorus content of 0.2% by weight or less, as recited in claim 30, and the unbounded lower end of the disclosed concentration range indicates that the range overlaps the range defined by “substantially free of or free of” in claim 31. In paragraph 100 Loop also discloses that the composition has a total sulfated ash content of 2% or less, as recited in claim 40.
It would have been obvious to one of ordinary skill in the art to formulate the composition of Champagne to have the phosphorus and sulfated ash contents disclosed by Loop, since Loop teaches that those are suitable phosphorus and sulfated ash contents for a lubricant composition for an internal combustion engine, and since Champagne does not require any additional phosphorus-containing or ash-producing components.
Claims 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Champagne in view of George (U.S. PG Pub. No. 2004/0266630).
The discussion of Champagne in paragraph 11 above is incorporated here by reference. Champagne discloses an engine lubricating composition meeting the limitations of claim 1. In paragraphs 75-76 Champagne discloses that the composition can comprise succinimide dispersants, but does not disclose the specific succinimides or amine dispersants of claims 16-22.
In paragraphs 8-9 George discloses a lubricating composition for an engine, comprising a dispersant additive. In paragraph 23 George discloses that the dispersant can be a polyisobutenyl succinimide, meeting the limitations of claims 16-17. In paragraph 30 George discloses that the dispersants can be post-treated with boron, meeting the limitations of claim 18. While George does not specifically disclose preparing the dispersant by a direct alkylation process, claim 19 is in product-by-process format, and the polyisobutenyl succinimide of George will be obtainable by direct alkylation, meeting the limitations of claim 19. In paragraph 24 George indicates that the succinimide dispersant can also have a primary amine functional group (the top structure in paragraph 24), in which case the dispersant can also comprise an amine dispersant, as recited in claim 20. In paragraph 23 George discloses that the dispersants are prepared by reacting polyisobutenyl succinic anhydride with an amine such as an ethylene polyamine, meeting the limitations of claims 20-22.
It would have been obvious to one of ordinary skill in the art to include the succinimide and/or amine dispersants of George as the dispersants in the composition of Champagne, since George teaches that the dispersants are part of an advantageous additive composition for engine lubricants.
Claims 16-19, 23, 30-31, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Champagne in view of Zhang (U.S. Pat. No. 10,988,701).
The discussion of Champagne in paragraph 11 above is incorporated here by reference. Champagne discloses an engine lubricating composition meeting the limitations of claim 1. The differences between Champagne and the currently presented claims are:
i) In paragraphs 75-76 Champagne discloses that the composition can comprise succinimide dispersants, but does not disclose the specific succinimides of claims 16-19. Champagne also does not disclose the further addition of the oxyalkylated hydrocarbyl phenol of claim 23.
ii) Champagne does not specifically disclose the phosphorus or sulfated ash content of the composition, as recited in claims 30-31 and 40.
With respect to i), in column 1 lines 16-29 Zhang discloses an engine lubricating composition comprising an oxyalkylated hydrocarbyl phenol, as recited in claim 23. In column 8 lines 65-66 Zhang discloses that the composition can further comprise a dispersant, and in column 9 lines 26-37 Zhang can be a hydrocarbyl succinimide dispersant, as recited in claim 16, such as a polyisobutylene succinimide, as recited in claim 17. In column 9 lines 52-62 Zhang discloses that the succinimide dispersant can be borated, meeting the limitations of claim 18. In column 9 lines 63-66 Zhang discloses that the succinimide can be prepared by the direct alkylation route, as recited in claim 19.
It would have been obvious to one of ordinary skill in the art to include the succinimides of Zhang as the succinimide dispersant in the composition of Champagne, since Zhang teaches that those are suitable succinimide dispersant species for an engine lubricant. It would have been obvious to one of ordinary skill in the art to include the oxyalkylated hydrocarbyl phenol of Zhang in the engine lubricant composition of Champagne, since Zhang teaches from column 3 line 65 through column 4 line 9 that the oxyalkylated hydrocarbyl phenol imparts various advantages to the lubricating composition. While Zhang does not specifically refer to the oxyalkylated hydrocarbyl phenol as a dispersant, since it meets the structural limitations of the claimed oxyalkylated hydrocarbyl phenol it will be effective as a dispersant, meeting the limitations of claim 23.
With respect to ii), Zhang discloses in column 14 line 40 that the composition can have a phosphorus content of 0.2% by weight or less, as recited in claim 30, and the unbounded lower end of the disclosed concentration range indicates that the range overlaps the range defined by “substantially free of or free of” in claim 31. In column 14 lines 46-50 Zhang also discloses that the composition has a total sulfated ash content within the range recited in claim 40, for example a sulfated ash content of 0.3 to 1.2% by weight.
It would have been obvious to one of ordinary skill in the art to formulate the composition of Champagne to have the phosphorus and sulfated ash contents disclosed by Zhang, since Zhang teaches that those are suitable phosphorus and sulfated ash contents for a lubricant composition for an internal combustion engine, and since Champagne does not require any additional phosphorus-containing or ash-producing components.
Claims 1-6, 11-16, 24, and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Hobson (U.S. Pat. No. 10,669,501).
In column 3 lines 46-48 Hobson discloses an industrial lubricant composition comprising a synthetic base oil, an industrial additive package, and a compatibilizer. In column 4 lines 40-51 Hobson discloses that the composition can also comprise a non-synthetic base oil such as a Group I, II, or III base oil, where the non-synthetic oil makes up a minor amount, or less than half, of the overall base oil. An amount of less than 50% overlaps the range recited in component (a) of claim 1 for the Group I, II, or III base oil. In column 4 lines 8-19 Hobson discloses that the synthetic base oil can be synthetic oils that are not polyalphaolefins, meeting the proviso of claims 1-3 regarding polyalphaolefin concentration.
In column 5 lines 63-67 Hobson discloses that the compatibilizer can be a saturated linear or branched alcohol. In column 6 lines 25-35 Hobson discloses that the compatibilizer can be various suitable Guerbet alcohols such as 2-butyloctanol, 2-ethyldecanol, 2-octyldodecanol, and 2-decyltetradecanol, all of which are β-branched alcohols meeting the limitations of component (b) of claims 4-6. In column 6 line 28 Hobson indicates that the compatibilizer can be a mixture of alcohols, meeting the limitations of claim 11.
In column 8 lines 45-63 Hobson discloses that the composition can further comprise an antioxidant, which can be substituted hydrocarbyl monosulfides or sterically hindered phenols, in which case the composition will comprise less than 3% by weight of an aryl amine antioxidant, as recited for component (c) of claim 1, and can be free of aryl amine antioxidant, as recited in claim 15. The sterically hindered phenols meet the limitations of the phenols and hindered phenols of claim 14. In column 9 lines 11-20 Hobson discloses that the composition can also comprise sulfurized olefin, as recited in claim 14, where the concentration ranges disclosed by Hobson for the additional additives encompass the range recited in claim 38, but the sulfurized olefin is optional and the composition can therefore also be free of sulfurized olefin, as recited in claim 39. Hobson also indicates in column 13 lines 4-12 that the additional additives can each be present in various ranges overlapping or falling within a range of less than 3%, so even if the composition of Hobson includes an aryl amine antioxidant, it will be present in a concentration range overlapping the range recited for component (c) of claim 1. When the aryl amine antioxidant is not present, claim 12 is met, and when the composition comprises the sulfurized olefin in addition to one of the compounds disclosed by Hobson as an antioxidant, claim 13 is also met.
From column 8 line 64 through column 9 line 10 Hobson discloses that the composition can comprise a dispersant, as recited in component (d) of claim 1, which can be a hydrocarbyl succinimide dispersant, as recited in claim 16, and borated derivatives thereof. Hobson in column 13 lines 4-12 that the additional additives (such as dispersants) can each be present in various ranges encompassing, overlapping, or falling within the range recited for component (d) of claim 1.
In column 13 lines 62-66 Hobson discloses that the composition can further comprise a detergent, and in column 14 line 42 Hobson indicates that the detergent can be metal-containing, meeting the limitations of claim 24.
The difference between Hobson and the currently presented claims is that some of the ranges of Hobson overlap or encompass the claimed ranges rather than falling within them. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1-6, 11-16, 24, and 38-39 are rendered obvious by Hobson.
Claims 1-3, 9-10, 12-18, 20, and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ozbalik (U.S. Pat. No. 8,557,752) in view of Henly (U.S. PG Pub. No. 2007/0293406).
In column 1 lines 14-20 Ozbalik discloses a power transmission fluid comprising an ashless dispersant. In column 14 lines 57-61 and column 15 lines 46-50 Ozbalik discloses that the base oil can a mineral oil, which is a Group I, II, or III base oil, as recited in component (a) of claim 1. As Ozbalik does not require additional base oils, Champagne meets the provisos of claims 1-3 regarding Group I, II, and III base oil content and polyalphaolefin content.
In columns 10-12 Ozbalik discloses that the ashless dispersant can be an alkenyl succinimide, as recited in claim 16 and meeting the limitations of the dispersant of component (d) of claim 1, where the alkenyl can be derived from isobutene (column 11 lines 13-15 and 27), in which case the dispersant will be a polyisobutylene succinimide meeting the limitations of claim 17. In column 14 lines 1-25 Ozbalik discloses that the dispersant can be borated, as recited in claim 18. In column 13 lines 36-40 Ozbalik discloses that the dispersant can be an amine dispersant, as recited in claim 20. In column 14 lines 33-38 Ozbalik discloses that the dispersant is present in an amount sufficient to supply 0.05% (500 ppm) of nitrogen to the lubricating composition, implying a dispersant concentration at least overlapping or encompassing the ranges recited for component (d) of claim 1.
From column 16 line 62 through column 17 line 10, Ozbalik discloses that additional additives can be added as a concentrate in combination with a diluent, and that isodecanol (column 17 line 7), meeting the limitations of the alcohol having an isoalkyl group of claim 9, as well as the alcohol of claim 10 where x is 6, is a suitable diluent. As Ozbalik teaches in column 17 lines 11-13 that the additional additives are present in the composition in a minor amount (less than 50% by weight) and teaches in column 16 lines 62-66 that the diluent is present in an amount of 1 to 99% by weight of the additive concentrate, in which case the concentration of the isodecanol will encompass the range recited for component (b) of claim 1.
In column 16 lines 44-52 Ozbalik discloses that the additional additives for the composition include antioxidants and detergents, but does not disclose specific suitable antioxidants or detergents.
Henly, in paragraph 4, discloses a power transmission fluid comprising an ashless dispersant and a succinimide friction modifier, as in the composition of Ozbalik, and further comprising a metal detergent. In paragraphs 38-39 Henly discloses that the composition can comprise 0.01 to 3.0% by weight of an antioxidant.
In paragraph 39 Henly discloses that suitable antioxidants include types other than aryl amines, in which case the composition meets the limitations of component (c) of claims 1 and 15 for the case where the aryl amine concentration is zero, as well as the limitations of claim 12. Henly discloses that suitable antioxidants include phenols and hindered phenols, meeting the limitations of claim 14. Henly also discloses in paragraph 39 that the antioxidant can be various diphenylamines, which are aryl amines, and since the concentration range of Henly has an upper bound of 3.0% by weight, the aryl amine will be present in an amount meeting the limitations of component (c) of claim 1 when it is used as the antioxidant. Henly discloses that the composition can comprise a combination of antioxidants (“and combinations thereof”), in which case the composition comprises an additional antioxidant as recited in claim 13.
In paragraphs 34-36 Henly discloses that the metal detergents, which meet the limitations of claim 24, can contain the metals and detergent soaps recited in claims 25-26, and can provide greater than about 100 ppm of calcium or magnesium to the composition, encompassing the range recited in claim 27 and overlapping the range recited in claim 28.
The inclusion of the antioxidants and detergents of Henly as the antioxidants and detergents in the composition of Ozbalik, in the amounts taught by Henly, therefore meets the limitations of claims 1-3, 9-10, 12-18, 20, and 24-28.
It would have been obvious to one of ordinary skill in the art to include the antioxidants and detergents of Henly as the antioxidants and detergents in the composition of Ozbalik, in the amounts taught by Henly, since Henly teaches that they are suitable detergent species and concentrations for a power transmission fluid.
Conclusion
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
