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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/28/25 has been entered.
The amendments filed 11/28/25 overcome the rejections set forth in the office action mailed 11/26/24. New grounds of rejection necessitated by the amendments are set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 7-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4 and 7-14 use improper Markush language, since they should end with “and combinations thereof” rather than “or a combination thereof” in order to properly define the members of the group. The examiner recommends that “is selected from” be followed by “the group consisting of” and “or a combination thereof” be replaced by “and combinations thereof”. Alternatively, applicant could delete “selected from”.
Claim Rejections - 35 USC § 102
Claims 1-7 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonner (U.S. Pat. No. 3,282,842).
In column 1 lines 8-58, Bonner discloses lubricating compositions comprising a mineral oil and a minor amount of an oil-soluble discoloration inhibitor, where the discoloration inhibitor can be a phenyl benzotriazole (compound III of Bonner). Bonner does not teach that any other additives are required. The composition of Bonner therefore meets the product-by-process limitations of claim 16, and since the composition must be made by combining the mineral oil with the discoloration inhibitor, the method of claim 1 is anticipated by Bonner as well. In column 4 lines 8-25 Bonner discloses that suitable discoloration inhibitors include N-(2-hydroxyphenyl) benzotriazole, N-(2-hydroxy-3-alkylphenyl) benzotriazole, and N-(2-hydroxy-5-alkylphenyl) benzotriazole, all meeting the limitations of claim 4 where one of R and R′ is a hydrogen and the other is an alkyl group. Bonner indicates that the alkyl groups can be tert-butyl groups or amyl (pentyl) groups, meeting the limitations of claims 5-7 regarding the hydrogen and alkyl substituents. Bonner also discloses in column 4 lines 8-25 that the discoloration inhibitors can contain alkoxy substituents or haloalkyl substituents instead of the alkyl substituents, meeting the limitations of the alkoxy and substituted alkyl groups of claims 4-5. In column 4 lines 69-71 and column 5 lines 73-75 Bonner discloses that the base oil can be a solvent-refined oil, which is a Group I oil as recited in claim 15. While Bonner does not specifically disclose Saybolt color value data, since Bonner discloses a composition and method meeting the claimed composition and method including specific phenyl benzotriazoles meeting the limitations of the claimed structure and which are disclosed by Bonner as effective discoloration inhibitors, the method and composition of Bonner will have a change in Saybolt color value meeting the limitations of claims 2-3 and 17-19.
In light of the above, claims 1-7 and 15-19 are anticipated by Bonner.
Claim Rejections - 35 USC § 103
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bonner.
The discussion of Bonner in paragraph 4 above are incorporated here by reference. Bonner discloses a method meeting the limitations of claim 4, but does not specifically disclose a phenyl benzotriazole compound recited in claim 8. In column 4 lines 16-17 Bonner discloses that the discoloration inhibitor can be “N-2-hydroxy-5-alkylphenyl) benzotriazole, e.g., N-(2-hydroxy-3-amylphenyl) benzotriazole”. It is noted that N-(2-hydroxy-3-amylphenyl) benzotriazole does not actually fall within the scope of N-2-hydroxy-5-alkylphenyl) benzotriazole, and one of ordinary skill in the art would understand that this was either a typographical error and Bonner actually meant to disclose N-(2-hydroxy-5-amylphenyl) benzotriazole, or at least that an amyl group is a suitable alkyl group when the discoloration inhibitor is N-(2-hydroxy-5-alkylphenyl) benzotriazole. It therefore would have been obvious to one of ordinary skill in the art to include N-(2-hydroxy-5-amylphenyl) benzotriazole, which is equivalent to the 2-(2-hydroxy-5-pentylphenyl) benzotriazole of claim 8, as the discoloration inhibitor in the composition and method of Bonner.
More broadly, Bonner discloses in column 1 lines 48-51 that the alkyl groups can be straight-chain groups having 1 to 18 carbon atoms, encompassing the range of 1 to 12 carbon atoms for the alkyl groups in the compounds of claim 8. 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). The remaining compounds of claim 8 are therefore also rendered obvious by Bonner.
Allowable Subject Matter
Claims 9-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The amendments filed 11/28/25 overcome the rejections of claims 9-14 over Holtzer and Cyba set forth in the office action mailed 11/26/24 for the reasons stated in applicant’s remarks. Cyba discloses an antioxidant mixture. The current claims recite a method consisting of adding an additive consisting of a color stabilizer consisting of a phenyl benzotriazole compound to a base oil. The claim therefore excludes additional steps, for example adding additional additives to the base oil, and also excludes other components from the additive or the color stabilizer. Cyba therefore falls outside the scope of the amended claims due to the additional extra antioxidant, and one of ordinary skill in the art would not be motivated to modify Cyba to arrive at the method of the currently amended claims since Cyba teaches that the antioxidant mixture is synergistic, and removing one of the components would be expected to result in inferior properties.
Claims 9-14 recite phenyl benzotriazoles having two alkyl substituents on the phenyl ring. Bonner, discussed in the above rejections, only discloses phenyl benzotriazoles having one alkyl substituent (the R′′′′ substituent in compound III in column 1). One of ordinary skill in the art would not have any motivation to modify the compounds of Bonner to arrive at the compounds recited in claims 9-14.
The prior art does not teach or render obvious methods that fall within all the “consisting of” limitations of the amended claims for claims 9-14.
Claim 20 recites a subset of compounds recited in claims 9-14 and is therefore allowable for the same reason.
Response to Arguments
Applicant’s arguments with respect to claims 1-8 and 15-19 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. The newly cited Bonner reference teaches a method and composition meeting the limitations of the amended claims. It is noted that while Bonner teaches a composition which can comprise additional additive besides the discoloration inhibitor, these are not required components, as evidenced by column 1 lines 8-59 and claim 1 of Bonner.
Conclusion
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