DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions including amendments to the claims and an IDS, filed on 18 June 2026, have been entered. Claims 1-3, 5-15 and 17-22 are pending.
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
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.
Claim(s) 1, 3, 5, 6, 8-15 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al (US 2023/0212476).
Applicant arguments filed 18 June 2026 have been fully considered but they are not persuasive. As previously set forth, Jones et al [“Jones”] disclose lubricating oil compositions containing an oil of lubricating viscosity, dispersants, additives including an overbased calcium-containing detergent and other performance additives. Jones teaches that the compositions may improve one or more of cleanliness, TBN retention, fuel economy and low-speed preignition (LSPI) [0001].
Jones discloses that the calcium detergent may be present in an amount to deliver at least 400 ppm calcium to the composition [0006], and in one embodiment, in an amount to deliver 400-1200 ppm calcium to the composition [0045]. Jones discloses that the metal overbased detergent includes one or more of phenates, sulfonates and salicylates [0039].
Jones discloses that in one embodiment, the lubricating oil composition may contain a molybdenum compound which may provide 0 to 1000 ppm molybdenum to the composition [0116]. Jones discloses that suitable molybdenum compounds include molybdenum dithiophosphates, molybdenum dithiocarbamates, amine salts of molybdenum compounds, and mixtures thereof [0116].
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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Jones discloses that the internal combustion engine may be fitted with an emission control system or turbocharger [0127]. Jones discloses that the internal combustion engine may be a direct injected gasoline engine [0128]. Jones discloses that the lubricating oil composition may be used to lubricate an internal combustion engine operating with a brake mean effective pressure (BMEP) of greater than 12 bars and at a speed of less than 3,000 rpm. In some embodiments, the internal combustion engine is a turbo-charged direct-injection engine [0130].
Dependent claim 8 recites that the direct-injected, boosted, spark-ignited, internal combustion engine set forth in independent claim 1 is “a downsized engine or an engine that ranges in size from 0.5 liters to 3.6 liters”. Although the size of the engine is not disclosed in Jones, Jones broadly discloses that the lubricating oil compositions are suitable for use in a turbo-charged (boosted) direct-injection gasoline (spark-ignited) internal combustion engine [0130]. The examiner is of the position that the claimed engine size is within typical ranges and does not lend patentability to the claimed method for reducing or preventing low speed pre-ignition (LSPI) in a direct-injected, boosted, spark-ignited, internal combustion engine unless demonstrated otherwise.
In regard to dependent claim 11 wherein the LSPI events occurring while the engine is operated are less than 10 per 100,000 combustion events, the examiner is of the position that since the direct-injected, boosted, spark-ignited, internal combustion engine of Jones is lubricated by a lubricating oil composition comprising one or more oils of lubricating viscosity, one or more molybdenum-containing compounds and one or more calcium detergents, the property of LSPI events occurring while the engine is operating is the same or similar to the claimed amount. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Thus, the examiner maintains the position that Jones meets the limitations of the method for reducing or preventing low speed pre-ignition (LSPI) in a direct-injected, boosted, spark-ignited, internal combustion engine of independent Claim 1 which comprises the sole step of lubricating the engine with a lubricating oil comprising one or more oils of lubricating viscosity, one or more molybdenum-containing compounds and one or more calcium detergents.
Claim 1, as amended, recites that the composition lubricates the engine “for a distance traveled of at least about 3,000 miles” and that “during the entirety of the distance traveled, using the one or more molybdenum-containing compounds and the one or more calcium detergents to reduce a number of LSPI events in the engine by at least about 40% compared to an otherwise comparable lubricant composition that does not contain the one or more molybdenum-containing compounds and the one or more calcium detergents”. The examiner is of the position that the amended claim language does not patentably distinguish the claim over Jones which discloses that the lubricating oil composition “comprising” (open-ended claim language) one or more molybdenum-containing compounds, and one or more calcium detergents, improves LSPI in direct-injected, boosted, spark-ignited, internal combustion engines. Jones discloses that the lubricant formulations exhibit one or more of improved cleanliness ratings, improved fuel economy, reduced low speed pre-ignition (LSPI) and improved TBN retention over lubricant formulations not including the additives of the instant lubricating formulations [0142].
The examiner is of the position that it is known in the art of lubricating oil compositions that engine lubricating oils need to be changed after so many miles, and just before the oil is changed which is typically, but not always, occurs at 3,000 miles, the oil composition is aged, thus meeting the claim limitation.
In regard to dependent claim 17, the examiner is of the position that the lubricant compositions of Jones as old as 5,000 miles can perform satisfactorily as engine oils. Jones does not teach that the engine lubricating oils of the invention must be changed after 5,000 miles to perform satisfactory.
Newly presented dependent claims 18-22 require that using the one or more molybdenum-containing compounds and the one or more calcium detergents to reduce the number of LSPI events of at least 60% (claim 18) [or at least 70% (claim 19), or at least 80% (claim 20) or at least 90% (claim 21) or at least 95% (claim 22)] compared to an otherwise comparable lubricant composition that does not contain the one or more molybdenum-containing compounds and the one or more calcium detergents. As set forth above, Jones discloses that the lubricant formulations exhibit one or more of improved cleanliness ratings, improved fuel economy, reduced low speed pre-ignition (LSPI) and improved TBN retention over lubricant formulations not including the additives of the instant lubricating formulations [0142]. The examiner is of the position that the lubricant formulations disclosed in Jones are effective as new lubricants (when initially added to an engine as an engine oil) as well as over time. As previously set forth, it is known in the art that engine oils are changed after so many miles, and that change at 3,000 miles is typically recommended. However, the engine oils are still effective after 3,000 miles is reached, depending upon other factors such as new or used engine, city driving versus highway driving, amount of starts and stops, etc. There is no clear evidence of record that the claimed reduction of number of LSPI events is at least 40% compared to other engine oils at 3.000 miles.
The examiner is of the position that where the claimed and prior art products are identical or substantially identical in composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 5-15 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Shaw et al (US 2022/0135899 in view of deVries et al (US 4,285,822).
Applicant's arguments filed 18 June 2026 have been fully considered but they are not persuasive. As previously set forth, Shaw et al [“Shaw”] discloses a method of reducing low-speed pre-ignition (LSPI) in a direct-injected spark-ignited internal combustion engine comprising lubricating the crankcase of the engine with a composition comprising a combination of a molybdenum-containing additive and a boron-containing additive. Shaw teaches that preferably the composition comprises a calcium detergent providing a calcium content of at least 0.08 wt.% (800 ppm), based on the weight of the lubricating oil composition (Abstract).
Shaw teaches that the lubricating oil composition comprises at least 175 ppm molybdenum, and preferably no more than 1500 ppm molybdenum [0030]. Shaw discloses that examples of suitable molybdenum compounds include molybdenum dithiocarbamates, molybdenum dithiophosphates, and others [0051]. Shaw discloses molybdenum nitrogen complexes [0077] and teaches that molybdenum/sulfur complexes of basic nitrogen compounds may be used [0079].
Shaw discloses that suitable molybdenum/sulfur complexes of basic nitrogen compounds include those described in U.S. Patent Nos. 4,263,152; 4,285,822; 4,283,295; 4,272,387; 4,265,773; 4,261,843; 4,259,195 and 4,259,194; and WO 94/06897 [0097]. deVries et al (U.S. 4,285,822) is added to teach that molybdenum-succinimide complexes (see the claims) are well-known in the art of lubricating oil additives. deVries discloses that lubricating oil compositions containing the additive disclosed therein are effective as either fluid or grease compositions (depending upon the specific additive or additives employed) for inhibiting oxidation, imparting antiwear and extreme pressure properties, and modifying the friction properties of the oil which may, when used as a crankcase lubricant, lead to improved milage. COL.2, L10-16.
Thus, the examiner is of the position that Shaw provides motivation for the addition of the molybdenum/sulfur complexes of basic nitrogen compounds, such as succinimides, to the lubricating oil composition, such as disclosed in deVries.
Shaw teaches that the lubricating oil composition in all aspects of the invention may have a calcium content of at least 0.10 wt.% (1000 ppm), preferably at least 0.15 wt.% (1500 ppm), for example at least 0.18 wt.% (1800 ppm), based on the weight of the lubricating oil composition [0081]. Shaw teaches that the lubricating oil compositions may have calcium content of higher than 0.18 wt.% such as 0.80 wt%. Shaw teaches that it is particularly advantageous to utilize LSPI -reducing additives in lubricating oil compositions containing higher concentrations of calcium [0081]. Shaw teaches that the overbased calcium detergents may include an overbased calcium phenate, an overbased calcium salicylate and an overbased calcium sulfonate [0084].
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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Shaw teaches that LSPI is most likely to occur in direct-injected, boosted (turbocharged or supercharged) spark-ignited (gasoline) internal combustion engines that, in operation generate a brake mean effective pressure (BMEP) level of greater than about 15 bar, such as at least 18 bar, particularly at least about 20 bar, at engine speeds of from about 1000 to about 2500 rotations per minute (rpm) [0026]. Dependent claim 8 recites that the direct-injected, boosted, spark-ignited, internal combustion engine set forth in independent claim 1 is “a downsized engine or an engine that ranges in size from 0.5 liters to 3.6 liters”. Although the size of the engine is not disclosed in Shaw, the prior art discloses that the lubricating oil compositions are suitable for use in a turbo-charged (boosted) direct-injection gasoline (spark-ignited) internal combustion engine. The examiner is of the position that the claimed engine size is within typical ranges and does not lend patentability to the claimed method for reducing or preventing low speed pre-ignition (LSPI) in a direct-injected, boosted, spark-ignited, internal combustion engine unless demonstrated otherwise.
In regard to dependent claim 11 wherein the LSPI events occurring while the engine is operated are less than 10 per 100,000 combustion events, the examiner is of the position that since the direct-injected, boosted, spark-ignited, internal combustion engine of Shaw is lubricated by a lubricating oil composition comprising one or more oils of lubricating viscosity, one or more molybdenum-containing compounds and one or more calcium detergents, the property of LSPI events occurring while the engine is operating is the same or similar to the claimed amount. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Shaw discloses the addition of other additives including dispersants [0120], friction modifiers [0143], antioxidants [0152], and others.
Thus, the examiner is of the position that Shaw meets the limitations of the method for reducing or preventing low speed pre-ignition (LSPI) in a direct-injected, boosted, spark-ignited, internal combustion engine of independent claim 1 which comprises the step of lubricating the engine with a used or aged lubricant composition.
Claim 1, as amended, recites that the composition lubricates the engine “for a distance traveled of at least about 3,000 miles” and that “during the entirety of the distance traveled, using the one or more molybdenum-containing compounds and the one or more calcium detergents to reduce a number of LSPI events in the engine by at least about 40% compared to an otherwise comparable lubricant composition that does not contain the one or more molybdenum-containing compounds and the one or more calcium detergents”. The examiner is of the position that the amended claim language does not patentably distinguish the claim over Shaw which discloses that the lubricating oil composition “comprising” (open-ended claim language) one or more molybdenum-containing compounds and one or more calcium detergents improves LSPI in direct-injected, boosted, spark-ignited, internal combustion engines.
In regard to dependent claim 17, the examiner is of the position that the lubricant compositions of Jones as old as 5,000 miles can perform satisfactorily as engine oils. Jones does not teach that the engine lubricating oils of the invention must be changed after 5,000 miles to perform satisfactory.
Newly presented dependent claims 18-22 require that using the one or more molybdenum-containing compounds and the one or more calcium detergents to reduce the number of LSPI events of at least 60% (claim 18) [or at least 70% (claim 19), or at least 80% (claim 20) or at least 90% (claim 21) or at least 95% (claim 22)] compared to an otherwise comparable lubricant composition that does not contain the one or more molybdenum-containing compounds and the one or more calcium detergents. As set forth above, Jones discloses that the lubricant formulations exhibit one or more of improved cleanliness ratings, improved fuel economy, reduced low speed pre-ignition (LSPI) and improved TBN retention over lubricant formulations not including the additives of the instant lubricating formulations [0142]. The examiner is of the position that the lubricant formulations disclosed in Jones are effective as new lubricants (when initially added) as well as over time. As previously set forth, it is known in the art that engine oils are changed after so many miles, and that change at 3,000 miles is typically recommended. However, the engine oils are still effective after 3,000 miles is reached, depending upon other factors such as new or used engine, city driving versus highway driving, amount of starts and stops, etc. There is no clear evidence of record that the claimed reduction of number of LSPI events is at least 40% compared to other engine oils at 3.000 miles.
The examiner is of the position that where the claimed and prior art products are identical or substantially identical in composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
August 24, 2026
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