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 12/12/2025 has been considered and entered. The amendment which requires the presence of the thiadiazole at 0.27% or higher in the composition overcomes the rejections in view of Susukida et al. (US 2020/0332218) which recites amounts of up to 0.2% of the thiadiazole. Therefore, the previous rejections are withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/2025 has been entered.
Claim Interpretation
The claim recites the presence of a base oil such as mineral or synthetic oil, wherein the synthetic oil is other than an ester synthetic oil, etc., which is understood to imply that when the base oil is synthetic oil alone, it must “also” contain a non-ester synthetic oil. This therefore does not teach away from the presence of ester synthetic oils, but requires that ester synthetic oil cannot be the only base oil present. The claim rejections in view of Masuda et al. (US 2017/0145337) which were previously withdrawn in the office action dated 10/18/2024 for reciting the presence of an ester synthetic oil are reapplied.
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, 3 – 8, 12 – 24 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (US 2017/0145337) in view of Sunagawa (US 2019/0119597)
In regards to claim 1, Masuda teaches lubricating oil composition for transmissions, gears, etc. [0118]. The composition can comprise mineral base oil having a kinematic viscosity at 100℃ (Kv100) of 1.5 mm2/s (cSt) to 20 mm2/s (cSt) [0012]. The mineral oils can be hydrocracked oils (Group II), GTL oil (Group III) according to limitation A of the claim [0035 – 0039]. The composition can comprise a sulfur-containing phosphite which is a phosphorus acid ester according to limitation C of the claim [0013]. The phosphorus compounds comprise a single sulfur atom and since the mol ratio of the phosphorus and sulfur are 1:1 and the molecular weights are about the same, the sulfur content from the phosphite would be similar to the phosphorus concentration of from close to about 150 ppm to 400 ppm [0077 – 0082].
The composition comprises a polysulfide (i.e., sulfurized olefin) or a thiadiazole component according to the limitation B of the claim [0083]. Thus, sulfurized olefin can be absent from the composition. The thiadiazole has structures (4) to (6) [0095]. The additives can be present at preferably from 0.1 to 20% [0107]. In the examples, the composition has Kv100 of 2.8 cSt or 3.3 cSt and comprises thiadiazole at 0.15% in the composition [Table 1].
Masuda does not particularly recite the amount of the thiadiazole as claimed. Sunagawa is added to similarly teach gear oils having thiadiazoles which can be present in the oil at amount of from 0.1 to 10% in the composition [0059]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used thiadiazole in the amounts recited by Sunagawa in the composition of Masuda, as Sunagawa teaches suitable amount of thiadiazole for use in gear oils.
In regards to claim 3, Masuda teaches the composition which comprises the thiadiazole with alkyl groups having from 1 to 30 carbon atoms [0096]. Alkyl groups can be either straight or branched and thus branched alkyl groups are obvious.
In regards to claims 4 – 6, Masuda teaches the composition having the claimed structures as previously stated. The structures b-1, b-2, b-3, b-4 and b-5 are tautomers and are thus similar and/or identical structures. Tautomerism allows double bonds in cyclic groups to move around within a structure.
In regards to claims 7, 8, Masuda in view of Sunagawa teaches the composition having the thiadiazole in the claimed amounts as previously stated.
In regards to claim 12, Masuda teaches composition useful as gear oils which are useful for lubricating gears as previously stated. Gears provide the limitation of speed reducer.
In regards to claim 13, Masuda teaches gear oils having the claimed composition and thus when the composition is applied to gears, the method of lubricating a speed reducer is intrinsically performed.
In regards to claim 14, Masuda teaches the composition having the claimed ingredients with the claimed limitations and thus provides the method for producing the composition as claimed, wherein when the ingredients are mixed into the oil to provide the claimed limitations, the claimed method is intrinsically performed.
In regards to claim 15, Masuda teaches the composition which does not require the presence of the sulfurized olefin as previously stated.
In regards to claims 16, 17, Masuda in view of Sunagawa teaches the composition. Masuda teaches the mineral base oil can be present at from 50 to 97%, 3 to 10% of a monoester base oil, and the phosphite that provides phosphorus in amounts of from 150 to 400 ppm (abstract, claims). The optional thiadiazole can be present at minor amounts as previously discussed. Since the monoester can be present at from 3 to 10%, the other ingredients would be present in the claimed amounts.
In regards to claim 18, Masuda in view of Sunagawa teaches the amounts of the base oil, thiadiazole, phosphite providing phosphorus at from 150 to 400ppm and other additive(s) as previously stated. Masuda exemplifies the use of phosphites such as 1,3- thio-pentyl-hydrogen phosphite (i.e., 1,3-dithio-pentyl-hydrogen phosphite) which is calculated to comprise about 11% phosphorus, stoichiometrically (table 1). Thus, when the phosphorus compound is used to provide 150 to 400 ppm of phosphorus, it would be present in the composition at calculated amounts of from about 0.14% to about 0.36% in the composition.
In regards to claim 19, Masuda teaches the composition having the sulfur containing phosphorus acid ester (phosphite).
In regards to claims 20, 24, Masuda in view of Sunagawa teaches the composition having the claimed limitations as previously stated.
In regards to claims 21 – 23, Masuda teaches the claimed limitations as previously stated.
Response to Arguments
Applicant’s arguments with respect to have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771