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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/21/2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 6, 9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kodali (US 6420322B1) in view of Lockwood (US 20080242566).
Regarding Claims 1 and 6, Kodali teaches a method for preparing a emission-reduced corrosion protection agent (col. 5 ln. 15-24, col. 15 ln. 26-29). Kodali teaches applying a composition to the component (Claim 33, applying a lubricant composition to at least one of said moving parts), wherein the composition comprises a resin, the resin comprising a plurality of first molecules, comprising first polyunsaturated alkyd resin molecules without double allylic hydrogen atoms (hydrogenation, unreacted triacylglycerol is treated under appropriate conditions to reduce at least some of the double bonds present by addition of hydrogen thereacross, col. 12 ln. 55-58; partially hydrogenating a mixture of: unsaturated triacylglycerol oil which has previously been treated with diene; and, unsaturated triacylglycerol oil which has not been previously treated with diene, col. 13 ln. 6-12; Scheme 1), and second molecules, comprising alkyd resin molecules having double allylic hydrogen atoms, that are reacted with a substituted or unsubstituted 1,3-butadiene to form a Diels-Alder product (reacting step, Unsaturated Triacylglycerol Oil, Claims 10-13; butadiene, Claim 5; partially hydrogenating a mixture of: unsaturated triacylglycerol oil which has previously been treated with diene; and, unsaturated triacylglycerol oil which has not been previously treated with diene, col. 13 ln. 6-12). Kodali teaches the claimed reaction; therefore, the method of Kodali also includes the claimed odor-reduced property. Kodali teaches the composition used in applications which would include cavity sealing applications or application to the underside of a component (crankcase oils, transmission oils, power transfer fluids, gear oils, and greases; col. 15 ln. 5-11). Kodali teaches curing the composition through oxidative crosslinking occurs on contact with air (col. 5 ln. 25-41; AOM value is measured by passing a controlled flow of air through a heated sample of the oil, generation of oxidation products).
Kodali teaches the reaction and hydrogenation techniques may be practiced on mixtures without precise analysis of exact adduct and unreacted triacylglycerol presence in the mixture, but rather with a general understanding of overall diene take-up and hydrogen take-up with the intention to obtain a stock of desirable pour point and stability depending on the use to which the lubricating stock is to be placed (col. 13 ln. 1-19). Kodali is silent as to the ratio of the first molecules to the second molecules. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the ratio of first to second molecules in the mixture of Kodali, as suggested by the reference, in order to achieve a stock of desirable pour point and stability depending on the use to which the lubricating stock is to be placed and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed ratio.
Kodali teaches viscosity index improvers (col. 15 ln. 44). Kodali does not explicitly teach the coating thickness; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine an appropriate thickness. Lockwood teaches the lubricant prepared, including viscosity additives, to give an acceptable lubricant film thickness at the maximum shear rate, load and temperature of use in the target application ([0030], [0038]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the film thickness of Kodali, as suggested by Lockwood, in order to achieve an acceptable lubricant film thickness at the maximum shear rate, load, and temperature of use in the target application and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed thickness.
Regarding Claim 3, Kodali teaches the modified resin having a smaller number of double allylic hydrogen atoms than a non-modified resin (Scheme 1 and discussion thereof).
Regarding Claim 4, Kodali teaches the process of producing the lubricant may include blending the modified triacylglycerols with one or more petroleum based lubricating fluids and additives (col. 3 ln. 13-20). Kodali teaches resin blends of modified and unmodified triacylglycerol depending on the use to which the lubricating stock is to be placed (col. 13 ln. 1-19). Kodali teaches 5 to 20% of the total formulation being additives and teaches the amount and type of additives depends on the severity of the application (col. 15 ln. 41-52). Kodali does not explicitly teach the composition comprises 5-20% by weight of the resin. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the concentration of the resin in the lubricant of Kodali, as suggested by the reference, in order to achieve a composition with oxidative stability and viscosity properties suitable for the desired lubricant application.
Regarding Claim 9, Kodali teaches base oil with 5 to 20% of the total formulation being additives and teaches the amount and type of additives depends on the severity of the application (col. 15 ln. 41-52), i.e. 80 wt. % or greater oil concentration.
Regarding Claims 11-12 and 17-18, Kodali does not explicitly teach the claimed properties; however, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established, In re Best, 195 USPQ 430, 433 (CCPA1977).
With regard to the claimed properties limitations, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed coating, so the claimed properties relating to the coating are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Regarding Claims 13-16, Kodali does not teach a short-chain aldehyde.
Regarding Claims 19-20, Kodali teaches the automotive industry (col. 15 ln. 7-11).
Claim(s) 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kodali (US 6420322B1) in view of Lockwood (US 20080242566) as applied to claim 1, 3-4, 6, 9, and 11-20 above, and further in view of Dance (US 20180066203).
Regarding Claims 7-10, Kodali teaches the process of producing the lubricant may include blending the modified triacylglycerol with one or more petroleum based lubricating fluids and additives (col. 3 ln. 13-20). Kodali does not explicitly teach a wax or mineral oil; however, Dance teaches waxes and mineral oil are known base oils in lubricant compositions of the art ([0071]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the composition of Kodali to include a base oil, as taught in Dance, because they are known lubricating fluids in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the lubricant of Kodali with additional lubricating fluids as in Dance.
The combined references do not teach the claimed concentrations. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the concentration of the lubricants in the composition of the combined references, as suggested by Kodali, in order to achieve a composition with oxidative stability and viscosity properties suitable for the desired lubricant application.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
Applicant argues both Kodali and Lockwood specifically teach that oxidative reactions have to be avoided. Applicant argues this is also evident to the skilled person even without considering these cited documents, as one of skill in the art would understand that curing a lubricant would impede its actual use as a lubricant. In response to Applicant’s argument, Kodali teaches curing the composition through oxidative crosslinking occurs on contact with air (col. 5 ln. 25-41; AOM value is measured by passing a controlled flow of air through a heated sample of the oil, generation of oxidation products). While the references teach oxidative crosslinking is reduced, they do not teach that these reactions are completely eliminated.
Applicant argues Kodali and Lockwood are silent about preparing an odor- and emission-reduced corrosion protection agent. In response to Applicant’s argument, Kodali teaches the claimed reaction; therefore, the method of Kodali also includes the claimed odor-reduced property.
Applicant argues the combination of Kodali and Lockwood also does not teach a number ratio of the first molecules to the second molecules is at least 103. In response to Applicant’s argument, while Kodali does not explicitly teach the claimed ratio, Kodali suggests an optimization of the ratio of first to second molecules in the mixture of Kodali in order to achieve a stock of desirable pour point and stability depending on the use to which the lubricating stock is to be placed.
Applicant argues Dance does not remedy this deficiency; however, this is not convincing as discussed above.
Conclusion
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/TABATHA L PENNY/ Primary Examiner, Art Unit 1712