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 02/03/2026 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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 – 6, 9 – 22, 24 – 31, 36 are rejected under 35 U.S.C. 103 as being unpatentable over Rowland (US 2016/0017252)
In regards to claims 1 – 5, Rowland teaches diphenylamine antioxidants (abstract). The antioxidants are useful in engine oils [0003, 0004 and 0090]. The diphenylamine comprises from about 70% to about 100% of dialkylated diphenylamine, such as predominately (at 50% or more) a 4,4’-di-alkyl diphenylamine, and about 15% or less or about 5% or less of monoalkylated diphenylamine, with alkyl groups having from 8 to 24, or 8 to 12 carbon atoms [0015 – 0018, 0028 – 0033]. The alkylated diphenylamine (DPA) can be nonylated-DPA [0086, 0087, Examples 4 & 5]. The presence of tri-alkyl and unsubstituted DPA are not required. Unsubstituted DPA can be present at from 2% or less, or 0.5% or less in the composition, and the tri-alkylated DPA is less than 15%, or less than 5% [0033].
In regards to claims 6, Rowland teaches the composition useful in engine oils having the diphenylamine antioxidant. Rowland does not require the presence of tri-alkyl DPA or unsubstituted DPA according to limitations c) and d) of the claim. 4,4’-dialkyl groups which allows one of w or z to be 1 and the other 0, and n to be 1 in the structure of the formula III is preferred as previously stated. Engine oils are known to generally contain base oils in the claimed amount the presence of the claimed additives which is obvious. Alternatively, at least in view of Tang et al. (US 2022/0098509) which is drawn to lubricating oil compositions such as engine oils similar to Rowland, and which comprises diphenylamine antioxidants, dispersants and detergents as claimed, the claimed limitations are obvious [Tang, abstract, 0009, 0076, 0091].
Tang teaches dispersants are present at from 2 to 20% in base oil, thus providing a balance of oil at 80% or higher [0010]. In the examples, Tang teaches additives such as antioxidants, dispersants, detergents etc., are present at amounts of up to about 40% at the most with a balance of base oil [0139, Table]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used the diphenylamine additives of Rowland in the composition of Tang, as Tang allows for the presence of diphenylamine antioxidants in the composition.
In regards to claims 9 – 13, Rowland and alternatively in view of Tang teaches the composition having the claimed limitation as previously discussed. The ratio of the di-alkyl to the mono-alkyl DPA overlaps the claimed limitation as previously discussed. Rowland teaches the same diphenylamine additives and thus the composition would be expected to have the same properties as claimed. Tri-alkylated diphenylamines can be present at 15% or less or less than 5% and mono-alkylated diphenylamines can be present at 15% or less or less than 5%, and thus the ratio of the tri-alkyl DPA to the mono-alkyl DPA would overlap the claimed range [0033, 0035]. The composition comprises similar ingredients and would be expected to have similar properties as claimed.
In regards to claims 14, 15, Rowland and Tang teach the composition having the claimed limitations. Tang teaches the presence of zinc dialkyl dithiophosphate (zddp), hindered phenol, molybdenum compound [0064, 0075, 0163]. Tang teaches sulfurized olefin antioxidants [0084].
In regards to claim 16, Rowland and Tang teach the composition. Tang teaches salicylate detergent which may be neutral or overbased and thus has the tbn of the claim [0086, 0087].
In regards to claim 17, Rowland and Tang teach the composition having the optional ingredients such as additional antioxidant, zinc dialkyldithiophosphate antiwear, etc., as previously stated.
In regards to claim 18, Rowland and Tang teach the composition. Tang teaches the composition can comprise dispersants. The dispersant has a polyolefin with Mn of 400 to 10,000 [0030]. The dispersant comprises an imide such as a succinimide and the dispersant can be functionalized [0034, 0035]. Tang teaches similar imide with olefin polymers that are similarly functionalized partially or fully as discussed in paragraph 0154 of applicant’s specification, and thus similar functionality distribution would be expected [0037]. Also, the polymer can be linear polyalphaolefin and thus would generally have a functionality distribution of less than 2 [0027].
In regards to claim 19, Rowland and Tang teach the composition for engines. Tang teaches the engine oil can comprise phosphorus from zddp at from 0.01 to 0.12%, or 0.08% (i.e., 800 ppm) or less [0066]. Since no other phosphorus component is required the zddp provides the phosphorus content of the oil.
In regards to claims 20 – 22, 24, Rowland and Tang teach the composition having the claimed limitations. Tang teaches the presence of dispersants such as polyisobutylene succinimide dispersant (PIBSA-PAM), detergents comprising calcium or magnesium sulfonates, salicylates, molybdenum compounds, and polyol fatty acid ester friction modifier such as molybdenum dithiocarbamate, sunflower oil or monoester of polyol and aliphatic carboxylic acid (typically fatty acid) [0031, 0091 and 0132]. The process of making the DPA does not carry patentable weight, or is at least provided for so long as the compound itself is taught.
In regards to claim 25, Rowland teaches the diphenylamine antioxidant as previously stated. Again, the mono and tri-alkyl DPA groups can each be present at 15% or lower (i.e., 0 to 15%) and are groups having n = 1, z = 1 and n = 1, w = 1, z = 1 respectively.
In regards to claims 26 – 29, Rowland and alternatively in view of Tang teach the diphenylamine useful in lubricants and thus provide the claimed concentrate. Tang teaches the presence of the additives as concentrate in oil in amounts overlapping the claim [0024].
In regards to claims 30, 31, Rowland and Tang teach the composition for use in engines. Tang teaches the engine is gasoline or diesel engine thus providing fuel which would be combusted in the engine [0144]. When the composition is added to the engine, i.e., into the crankcase, it provides the method of lubricating the internal combustion engine. The engine would be expected to have similar temperature as claimed.
In regards to claim 35, Rowland teaches the antioxidant composition as previously discussed, and thus would be expected to possess similar properties as claimed.
In regards to claim 36, Rowland teaches the composition having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the inventive examples support criticality of the claimed amounts of mono, di, tri-alkyl and unsubstituted DPA in the antioxidant composition and lubricating oil. The inventive examples were considered but not found to be persuasive.
The inventive examples are not commensurate in scope.
While the claims allow for diphenylamines to be present at from 0.5 to 5% of diphenylamine in the composition, the inventive examples require their presence at 1% in the oil composition which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims allow for the presence of 75 to 93% of di-C9-alkyl-DPA in the DPA composition, the inventive examples require amounts of from 82.23 to 90% which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims recite 1.5 to 13% of the mono-C9-alkyl-DPA, the inventive examples require amounts of from 4.3 to 13.21% which do not support the breadth of the claims nor demonstrate criticality of the claimed range at the lower amount.
While the claims recite 5 to 12% of tri-C9 alkyl-DPA, the inventive examples require amounts of from 4.56 to 5.8% which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims recite 0.05% or less of unsubstituted DPA, the inventive examples require amounts of less than 0.1% of the unsubstituted DPA which does not support the breadth of the claims.
The results are not persuasive.
For the oxidation text, the comparative oil A3 appears to perform better than inventive Oil H3 which fails to demonstrate superiority of the claimed composition.
Therefore, the inventive examples are not commensurate in scope with the claims for demonstrating a showing of unexpected results sufficient to rebut the case of obviousness.
Conclusion
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
Prosecution Insights