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 06/25/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, rejections in view of Lumby et al. (CA 3 043 439 A1) are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submission filed on 06/25/2026 has been entered.
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 5, 6, 10, 12 – 14, 17, 18, 20 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lumby et al. (CA 3 043 439 A1)
In regards to claim 5, Lumby teaches lubricating oil composition for slideway applications comprising additive [0001]. The composition can comprise a phosphonate diester having a structure which is analogous to the structure of the friction modifier of formula I of the claim and having R groups (i.e., R5 are each C4 and R4 can be C18) similar to the hydrocarbyl groups having chain lengths thus providing R groups including dibutyl octadecylphosphonate which can be present at from 0.01 to 0.5% [0013 – 0016]. Also, Lumby teaches phosphorus antiwear compounds such as phosphates and their sulfur analogs (i.e., thiophosphates) including R groups that provides dibutyl thiophosphates in amounts of from 0.08 to 0.5% [0040 – 0043].
Lumby teaches the composition having thiophosphate meeting the limitation of the claimed structure when in the structure of formula II of the claims, R4 is OR”, X2 is SR”, X1 is S, m is 0, n is 1, R5 is R” and R” is hydrocarbyl having 1 to 18 carbon atoms. The composition comprises base oil such as mineral oils which includes Group I to III oils, or synthetic oils [0038, 0039].
In regards to claim 6, Lumby teaches the composition having the antiwear meeting the claimed limitations as previously discussed.
In regards to claim 10, Lumby teaches the composition which can comprise corrosion inhibitors comprising ingredients such as fatty acid esters and polyglycols which are known to function as solubility enhancing agents [0056, 0058]. The composition also comprises carrier fluids as supplemental additives which appear to also provide the function of solubility enhancers [0040].
In regards to claims 12 – 14, Lumby teaches the composition having the claimed limitations as previously stated. The additive would be expected to have similar antiwear performance as claimed. When the composition which are metal working fluids are used in machine parts such as slideway apparatuses having such metal working surfaces, the method of applying such composition to the metal surfaces would of such machines would be intrinsically performed (abstract).
In regards to claims 17, 18, 20 – 22, Lumby teaches the composition having the claimed ingredients and thus would be expected to have similar properties. The composition comprises mineral base oil such as Group I base oil [0072]. The composition will be suitable for providing the intended use of the claims.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Lumby does not teach the claimed phosphonate and thiophosphate amounts. The argument is not persuasive.
Lumby teaches phosphorus friction modifiers that encompasses the phosphonate of the claim. Also, other phosphorus compounds such as phosphates and sulfur analogs are taught which encompasses the thiophosphate of the claims. Both are present in amounts overlapping the claimed range.
Applicant argues that the combination of friction modifier and antiwear additives of the claims unexpectedly improved friction properties and antiwear properties when the amine thiophosphate is used in the claimed composition. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims recite about 0.31 wt. % of dibutyl octadecylphosphonate, the sole inventive example specifically recites 0.31 wt. % of dibutyl octadecylphosphonate which does not support the breadth of the claimed range, as amounts of about 0.31% can include amounts higher and lower than 0.31%.
While the claims recite about 0.2 wt. % of dibutyl thiophosphate amine salt, the sole inventive example requires the presence of the thiophosphate at 0.2% which does not support the breadth of the claimed range as an amount of about 0.2% can include amounts that are higher and lower than 0.2%.
The result is not persuasive.
The results merely demonstrate intrinsic properties of dibutyl octadecyl phosphonate as compared to the properties of dimethyl octadecyl phosphonate. There was no demonstration of synergistic benefits nor a demonstration of critical amounts of the ingredients in the composition. Since different antiwear and/or friction modifier compounds would generally be expected to have different activities in oil, the differences in properties are not a demonstration of unexpected results. Also, merely reciting that antiwear compounds should not provide improved friction benefits or friction modifiers should not provide improved antiwear benefits is not a demonstration of unexpected results. Phosphorus compounds are generally known to provide multifunctional properties such as antiwear, anti-friction, extreme pressure agent, etc.
Applicant has thus failed to provide inventive examples that are commensurate in scope with the claims and demonstrates unexpected results sufficient for rebutting the case of obviousness.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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