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 rejections set forth in the office action mailed 2/2/26 are maintained below.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-10, 12-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer (U.S. PG Pub. No. 2006/0264340) in view of Tagliamonte (U.S. Pat. No. 6,528,458).
In paragraph 15 Iyer discloses an additive composition for use in transmission fluids, comprising a dispersant and a phosphonate. In paragraph 17 Iyer discloses that the dispersant can be various ashless dispersants, as recited in claims 1, 8, and 15. In paragraph 24 Iyer discloses that the dispersant can be present in an amount of about 1 to about 6% by weight, overlapping the ranges recited in claims 1, 8, and 15, and a range of about 2 to about 4% by weight, overlapping the ranges recited in claims 1 and 8 and falling within the range recited in claim 15. In paragraph 60 Iyer discloses a phosphonate corresponding to the phosphonic acid of claims 1, 8, and 15 when R2 and R3 of Iyer are both hydrogen. The R1 group in the phosphonate of Iyer has 12 to 30 carbon atoms, overlapping the range recited for the R group of claims 1, 8, and 15. In paragraph 63 Iyer discloses that the phosphonate can be present in an amount of 0.05 to 3% by weight, encompassing the ranges recited in claims 1 and 8 and falling within the range recited in claim 15. In paragraph 63 Iyer also discloses a narrower phosphonate concentration range of about 0.10 to about 0.6% by weight, falling within the ranges recited in claims 1, 8, and 15. In paragraphs 85-86 Iyer discloses that the additive composition can be used in compositions further comprising a base oil of lubricating viscosity, as recited in claims 1, 8, and 15. In paragraph 16 Iyer discloses that the compositions are substantially zinc-free, as recited in claims 1, 8, and 15.
In paragraph 19 Iyer discloses that the dispersant can include a hydrocarbyl succinimide, as recited in claims 2 and 16, and that the hydrocarbyl group can be a polyolefin derived from isobutene, leading to a polyisobutylene succinimide as recited in claim 8. Iyer further discloses in paragraph 19 that the molecular weight of the hydrocarbyl is from about 900 to about 3000, within the range recited in claim 10. In paragraph 26 Iyer discloses that the dispersant can include a borated hydrocarbyl succinimide, as recited in claims 3 and 17, such as a boronated polyisobutylene succinimide, as recited in claim 9. In paragraph 100 Iyer discloses that the compositions can be automatic transmission fluids, as recited in claims 5 and 12. In paragraph 15 Iyer discloses that the composition further comprises a friction modifier, as recited in claims 6, 13, and 19, and in Tables 1 and 2 (paragraphs 105 and 107) Iyer discloses that the composition can comprise additional additives recited in claims 6, 13, and 19. In paragraphs 60-61 Iyer discloses sample phosphonates where the R1 group, corresponding to the R group of the currently presented claims, is various linear alkyl groups, meeting the limitations of claims 7, 14, and 20. In paragraphs 100-104 Iyer discloses a method of lubricating a transmission with the composition, meeting the method limitations of claims 15-17 and 19-20. The differences between Iyer and the currently presented claims are:
i) Iyer does not disclose the viscosity of the base oil.
ii) Iyer does not specifically disclose the pH of the combination of the dispersant and alkyl phosphonic acid.
iii) Some of the ranges of Iyer overlap or encompass the claimed ranges rather than falling within them.
With respect to i), Tagliamonte discloses in column 1 lines 6-10 and column 2 lines 35-43 a lubricant for lubricating a dual clutch transmission, where the composition comprises a base oil, a friction modifier, and a dispersant. In column 3 lines 31-48 Tagliamonte discloses that the base oil can have a viscosity overlapping or falling within the range recited in claims 1, 8, and 15. It would have been obvious to one of ordinary skill in the art to use a base oil having the viscosity of Tagliamonte as the base oil in the composition of Iyer, because Tagliamonte teaches that it is a suitable viscosity for a lubricating composition used for the same application.
With respect to ii), Iyer discloses a combination of ashless dispersant and alkyl phosphonic acid meeting the compositional limitations of the anti-wear mixture of the claims, including specific succinimide and borated succinimide dispersants recited in the dependent claims and corresponding to the dispersants used in the examples of the current application, and an alkyl phosphonic acid where the alkyl group has 12 to 30, preferably 16 to 20 carbon atoms, corresponding to the octadecyl phosphonic acid used in Example 4 of the current application. Iyer also discloses that the dispersant and phosphonic acid are used in amounts encompassing the amounts present in the examples of the current application. The pH value of the ashless dispersant and alkyl phosphonic acid will therefore at least overlap the ranges recited in claims 1, 8, and 15. See MPEP 2144.05(I): “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);”
With respect to iii), See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1-3, 5-10, 12-17, and 19-20 are rendered obvious by Iyer in view of Tagliamonte.
Claims 4, 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer in view of Tagliamonte as applied to claims 1-3, 5-10, 12-17, and 19-20 above, and further in view of Onumata (U.S. PG Pub. No. 2014/0018271).
The discussion of Iyer and Tagliamonte in paragraph 3 above is incorporated here by reference. Iyer and Tagliamonte disclose a transmission fluid and method meeting the limitations of claims 1, 8, and 15, but do not disclose the volume resistivity of the composition.
In paragraphs 8-10 Onumata discloses a transmission fluid having a volume resistivity of 5x108 Ω∙m, within the ranges recited in claims 4, 11, and 18. The composition of Onumata includes a dispersant which can be a succinimide and can be boronated (paragraphs 62-63) and a phosphorus compound which can be a phosphonic acid (paragraphs 46-48, where one X is a single bond and two R groups are hydrogen). The composition of Onumata does not require the inclusion of zinc. Preparing the transmission fluid composition of Iyer and Tagliamonte to have the volume resistivity of Onumata meets the limitations of claims 4, 11, and 18.
It would have been obvious to one of ordinary skill in the art to prepare the transmission fluid composition of Iyer and Tagliamonte to have the volume resistivity of Onumata since Onumata teaches that it is a suitable volume resistivity for a transmission fluid having a similar composition, and that the transmission fluids having such a volume resistivity are useful in hybrid and electric vehicles.
Response to Arguments
Applicant's arguments filed 6/2/26 have been fully considered but they are not persuasive. Applicant argues that Iyer and Tagliamonte do not teach or suggest a composition having the claimed pH. The examiner maintains the positions taken in the rejection and in previous office actions. Iyer discloses a combination of ashless dispersant and alkyl phosphonic acid meeting the compositional limitations of the anti-wear mixture of the claims, including specific compounds recited in the dependent claims and used in the examples of the current application, where the dispersant and alkyl phosphonic acid are used in amounts encompassing the amounts present in the examples of the current application. The examiner therefore maintains that the composition of Iyer and Tagliamonte would have a pH in a range at least overlapping the claimed range. Applicant has not provided any counterexamples, and also has not provided any evidence or reasoning to indicate that the pH of the composition of Iyer and Tagliamonte would be outside the claimed range despite having the same additives. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
While the response filed 6/2/26 does not contain any allegations of unexpected results, the examiner notes for the record that the positions taken in the office action mailed 2/2/26 remain applicable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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