DETAILED ACTION
This is in response to the claim amendment and arguments filed 02 January 2026. Claims 1-17 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) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over over Jones et al (US 2023/0212476).
Applicant's arguments filed 02 January 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].
Thus, the examiner is of 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 step of lubricating the engine with a used or aged lubricant composition.
Response to Arguments
In response applicant argued that Jones does not teach a method of lowering LSPI using a lubricating oil composition containing a molybdenum compound. Applicant argued that Jones does not include molybdenum compounds in any of its inventive examples nor does the specification suggest that molybdenum compounds contribute to reducing LSPI. This is not deemed to be persuasive.
As previously set forth, 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].
Claim Rejections - 35 USC § 103
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shaw et al (US 2022/0135899).
Applicant's arguments filed 02 January 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 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 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].
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.
Response to Arguments
In response applicant argued that Shaw does not teach that a method of reducing LSPI in aged lubricating oil compositions. Applicant argued that in general, the performance of a lubricating oil composition diminishes as the composition is used. Applicant argued that they have surprisingly discovered a formulation which performs well even in aged lubricating oil compositions. This is not deemed to be persuasive.
As previously set forth 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. In general, it is known that engine oils need to be changed after some miles, and just before the oil is changed, the oil composition is aged, thus meeting the claim limitation.
Further, the results presented in the specification are not commensurate in scope with the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
THIS ACTION IS MADE FINAL. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at (571) 272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
March 16, 2026
Prosecution Insights