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 .
DETAILED ACTION
This Final Office action is based on the 17/995738 application originally filed October 07, 2022.
Amended claims 1 and 3-5, filed January 28, 2026, are pending and have been fully considered. Claim 2 has been canceled.
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.
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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komatsubara et al. (US 2020/0032160) hereinafter “Komatsubara” and Martin (EP 2395068 A1).
Regarding Claims 1 and 3-5
Komatsubara discloses in the abstract, a lubricating oil composition including: a lubricating base oil; (A) a dispersant poly(meth)acrylate compound having a weight average molecular weight of 30,000 to 200,000 in an amount of 1 to 10 mass % on the basis of the total mass of the composition; and (B) a non-dispersant poly(meth)acrylate compound having a weight average molecular weight of 15,000 to 100,000 in an amount of no more than 15 mass % on the basis of the total mass of the composition, wherein the ratio MA/MB of the amount MA of the component (A) to the amount MB of the component (B) is 0.05 to 1; and the ratio MwB/MwA of the weight average molecular weight MwB of the component (B) to the weight average molecular weight MwA of the component (A) is 0.05 to 2.
Komatsubara discloses in paragraph 0033, (O2) a Group II base oil or a Group III base oil or a Group IV base oil of API base stock categories or any mixed base oil thereof in an amount of 5 to 70 mass % on the basis of the total mass of the entire lubricating base oil, wherein the base oil (O2) has a kinematic viscosity at 100° C. of 3.0 to 10.0 mm2/s, and a viscosity index of 110 or more.
Komatsubara discloses in paragraph 0043, the kinematic viscosity of the base oil (O2) at 100°C is 3.0 to 10.0 mm2/s. The base oil (O2) having a kinematic viscosity of this upper limit or below at 100° C. makes it possible to improve fuel efficiency. The base oil (O2) having a kinematic viscosity of this lower limit or above at 100° C. offers enough oil film formation at a lubricating point, which makes it possible to improve lubricity. Komatsubara discloses in paragraph 0044, the viscosity index of the base oil (O2) is no less than 110. The base oil (O2) having a viscosity index of this lower limit or over makes it possible to improve fuel efficiency. The upper limit thereof is not specifically restricted, and may be, for example, no more than 140.
Komatsubara discloses in paragraph 0053, the lubricating oil composition of the present invention comprises: (A) a dispersant poly(meth)acrylate compound having a weight average molecular weight of 30,000 to 200,000 (hereinafter may be referred to as “component (A)”) in an amount of 1 to 10 mass % on the basis of the total mass of the composition; and (B) a non-dispersant poly(meth)acrylate compound having a weight average molecular weight of 15,000 to 100,000 (hereinafter may be referred to as “component (B)”) in an amount of no more than 15 mass % on the basis of the total mass of the composition.
It is to be noted, the poly(meth)acrylate can be selected with molecular weights that would be under 80,000. Komatsubara discloses in paragraph 0055, the weight average molecular weight of the component (B) is 15,000 to 100,000. The component (B) having a weight average molecular weight of no less than 15,000 makes it easy for the component (B) to stay in an oil film, which makes it possible to increase oil film thickness. The component (B) having a weight average molecular weight of no more than 100,000 on one hand offers good low temperature viscosity characteristics, and on the other hand makes it possible to increase oil film thickness in a transition from hydrodynamic lubrication to boundary lubrication (mixed lubrication), which offers reduced friction coefficient, and thus improved anti-seizure and fatigue life properties. From the same viewpoint, the weight average molecular weight of the component (B) is preferably no more than 90,000, and, for example, may be no more than 80,000.
Komatsubara the Brookfield viscosity at −40 ° C. is 20,000 mPa · s or less and setting the kinematic viscosity at 100 ° C. to 1.5 mm 2 / s or more, the oil film formation is sufficient, the lubricity is excellent, and the lubricating oil composition has a smaller evaporation loss of the base oil under high temperature conditions can be obtained.
Komatsubara discloses in paragraph 0061, the lubricating oil composition comprises for example, a poly(meth)acrylate compound comprising 10 to 90 mol % of the (meth)acrylate structural units represented by the following general formula (1) on the basis of the total monomer units in the polymer (hereinafter may be referred to as “poly(meth)acrylate compound of the present embodiment”) may be preferably employed as a poly(meth)acrylate compound constituting the component (A) or the component (B):
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wherein in the formula (1), R1 is hydrogen or a methyl group, and R2 is a linear or branched chain hydrocarbon group having a carbon number of 1 to 18.
It is to be noted, Komatsubara discloses the of a polymethacrylate but fails to teach the kinematic viscosity of the lubricating oil composition at 40° C (as taught by Martin) of the present invention.
Martin discloses a lubricating oil composition comprising a base oil and viscosity index improvers. Martin discloses in paragraph 0008, a lubricating oil composition comprising: (a) a base oil selected from Group III base oils, polyalphaolefins, and mixtures thereof; (b) 0.3 wt% or less of sulphur; and (c) 30 wt% or less of viscosity modifier; wherein the lubricating oil composition has a kinematic viscosity at 40°C in the range of from 2 mm2/s to 220 mm2/s and wherein the lubricating oil composition provides a weld load of 150 Kg or greater in the 4 ball weld load test (ASTM D2596). It is to be noted, Martin has been applied to teach the claimed kinematic viscosity of the lubricating base oil at 40° C in the range of from 2 mm2/s to 220 mm2/s, which overlaps the claimed kinematic viscosity of the lubricating oil at 40° C and the kinematic viscosity of the lubricating base oil at 40° C of Komatsubara.
Martin discloses in paragraph 0031, further examples of viscosity index improvers which may conveniently be used in the lubricating compositions of the present invention include the styrene-butadiene stellate copolymers, styrene-isoprene stellate copolymers and the polymethacrylate copolymers and ethylene propylene copolymers (also known as olefin copolymers) of the crystalline and non-crystalline type.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to produce a lubricating oil composition with an kinematic viscosity at 40℃ within the range of from 2 mm2/s to 220 mm2/s as taught by Martin and Komatsubara. The motivation to do so is to produce lubricating oil composition with improvements to oxidation stability and anti-wear properties with the known standards of lubricating oil compositions for hydraulic oils.
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).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive. It is to be noted, the above rejection has been updated to further include additional paragraph citations of Komatsubara.
Applicants argued: “Since neither the invention described in Komatsubara nor the invention described in Martin takes into consideration the function as a hydraulic oil, neither Komatsubara nor Martin appreciate the problem faced by the inventors and the inventors' and the solution in using a kinematic viscosity at 100°C of 8.00 mm2/s to 10.00 mm2/s. Komatsubara provides no teaching or suggestion to exceed 7.5 mm2/s and so teaches against applicant's claimed range of 8.00 mm2/s to 10.00 mm2/s. On this basis, Komatsubara and Martin fails to teach or suggest the claimed subject matter.”.
Applicants arguments are not deemed persuasive. As stated in the above rejection, Komatsubara specifically overlaps the claimed limitation of the lubricating oil composition having a kinematic viscosity at 100°C of 8.00 mm2/s to 10.00 mm2/s. Komatsubara discloses in paragraph 0033, (O2) a Group II base oil or a Group III base oil or a Group IV base oil of API base stock categories or any mixed base oil thereof in an amount of 5 to 70 mass % on the basis of the total mass of the entire lubricating base oil, wherein the base oil (O2) has a kinematic viscosity at 100° C. of 3.0 to 10.0 mm2/s, and a viscosity index of 110 or more. Therefore, it is maintained the overlapping kinematic viscosity of Komatsubara has met the claimed kinematic viscosity of the lubricating oil composition.
Applicants argued: “Komatsubara does not teach or suggest the claimed range of 20,000 to 80,000 where a PMA above 80,000 is expressly excluded. There is nothing in Komatsubara to suggest that PMA with a MW above 80,000 is never to be selected, as claimed. The Examiner has provided no reason why one of skill would restrict the PMA of Komatsubara to a molecular weight below 80,000 and so does not present a prima facie case of obviousness of the claimed subject matter.”.
Applicants arguments are not deemed persuasive. As stated in the above rejection, Komatsubara discloses the poly(meth)acrylate can be selected with molecular weights that would be under 80,000. Komatsubara discloses in paragraph 0055, the weight average molecular weight of the component (B) is 15,000 to 100,000. The component (B) having a weight average molecular weight of no less than 15,000 makes it easy for the component (B) to stay in an oil film, which makes it possible to increase oil film thickness. The component (B) having a weight average molecular weight of no more than 100,000 on one hand offers good low temperature viscosity characteristics, and on the other hand makes it possible to increase oil film thickness in a transition from hydrodynamic lubrication to boundary lubrication (mixed lubrication), which offers reduced friction coefficient, and thus improved anti-seizure and fatigue life properties. From the same viewpoint, the weight average molecular weight of the component (B) is preferably no more than 90,000, and, for example, may be no more than 80,000. Therefore, it is maintained the molecular weight of poly(meth)acrylate of Komatsubara has met the claimed molecular weight of poly(meth)acrylate.
Applicants argued: “Komatsubara provides no motivation to move above a kinematic viscosity at 40℃ of 24 mm2/s. Martin merely teaches a broad range of kinematic viscosity at 40℃ of from 2 mm2/s to 220 mm2/s for lubricating oil compositions. Martin provides no direction to one of skill to select the claimed range of 41.1 mm2/s to 50.0 mm2/s from within the broad range of 2 mm2/s to 220 mm2/s. Martin fails to cure this deficiency.
Applicants arguments are not deemed persuasive. As stated in the above rejection, Martin has been applied to teach the claimed kinematic viscosity at 40℃ of the lubricating oil composition. It is maintained the kinematic viscosity of Martin overlaps the claimed kinematic viscosity of the lubricating oil at 40° C and the kinematic viscosity of the lubricating base oil at 40° C of Komatsubara. Additionally, the applicant is reminded that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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