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 Office action is based on the 18/290844 application originally filed January 22, 2024.
Amended claims 1-11, filed January 22, 2024, are pending and have been fully considered. Claims 9-11 are withdrawn from consideration due to being drawn to a nonelected invention.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-8 in the reply filed on June 16, 2026 is acknowledged.
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 16, 2026.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (JP 2008-274236 A) hereinafter cited under English Translation in view of Arai et al. (JP 2007/099905 A) hereinafter cited under English Translation.
Regarding Claims 1-8
Matsui discloses on page 11, the lubricating base oil can be suitably used as a base oil for various lubricating oils. Specifically, the lubricating base oil is applied to internal combustion engines such as gasoline engines for passenger cars, gasoline engines for motorcycles, diesel engines, gas engines, gas heat pump engines, marine engines, and power generation engines. Lubricating oil (lubricating oil for internal combustion engine), automatic transmission, manual transmission, continuously variable transmission, final reduction gear, etc. Hydraulic fluids used in hydraulic equipment such as compressor oil, turbine oil, industrial gear oil, refrigeration oil, rust prevention oil, heat medium oil, gas holder seal oil, bearing oil, paper machine oil, machine tool oil. Examples include slip guide surface oil, electrical insulating oil, cutting oil, press oil, rolling oil, heat treatment oil, etc., and by using the lubricating base oil for these applications, improve oil viscosity-temperature characteristics, thermal / oxidation stability, energy saving, fuel efficiency, etc., and increase the life of each lubricant and reduce environmental impact substances at a high level.
Matsui discloses on page 4, when producing the lubricating base oil, a normal oil containing normal paraffin or a wax containing normal paraffin can be used. The raw material oil may be either mineral oil or synthetic oil, or may be a mixture of two or more of these.
Matsui discloses on page 26, as the ashless antioxidant, any ashless antioxidants such as phenolic antioxidants and amine antioxidants that are generally used in lubricating oils can be used. By adding the antioxidant, the antioxidant property of the lubricating oil composition can be further enhanced, and the oxidation stability, high temperature cleanability and base number maintaining property of the composition of the present invention can be further enhanced.
Matsui discloses on pages 26 and 27, examples of phenolic antioxidants include 4,4′-methylenebis (2,6-di-tert-butylphenol), 4,4′-bis (2,6-di-tert-butylphenol), 4,4 ′. -Bis (2-methyl-6-tert-butylphenol), 2,2'-methylenebis (4-ethyl-6-tert-butylphenol), 2,2'-methylenebis (4-methyl-6-tert-butylphenol), 4,4′-butylidenebis (3-methyl-6-tert-butylphenol), 4,4′-isopropylidenebis (2,6-di-tert-butylphenol), 2,2′-methylenebis (4-methyl-6) -Nonylphenol), 2,2'-isobutylidenebis (4,6-dimethylphenol), 2,2'-methylenebis (4-methyl) 6-cyclohexylphenol), 2,6-di-tert-butyl-4-methylphenol, 2,6-di-tert-butyl-4-ethylphenol, 2,4-dimethyl-6-tert-butylphenol, 2, 6-di-tert-α-dimethylamino-p-cresol, 2,6-di-tert-butyl-4 (N, N′-dimethylaminomethylphenol), 4,4′-thiobis (2-methyl-6) -Tert-butylphenol), 4,4'-thiobis (3-methyl-6-tert-butylphenol), 2,2'-thiobis (4-methyl-6-tert-butylphenol), bis (3-methyl-4- Hydroxy-5-tert-butylbenzyl) sulfide, bis (3,5-di-tert-butyl-4-hydroxybenzyl) sulfide, 2,2′-thio-diethylenebis [3- (3,5-di-tert-butyl-4-hydroxyphenyl) propionate], tridecyl-3- (3,5-di-tert-butyl-4-hydroxy Phenyl) propionate, pentaerythrityl-tetrakis [3- (3,5-di-tert-butyl-4-hydroxyphenyl) propionate], octyl-3- (3,5-di-tert-butyl-4-hydroxyphenyl) ) Propionate, octadecyl-3- (3,5-di-tert-butyl-4-hydroxyphenyl) propionate, 3-methyl-5-tert-butyl-4-hydroxyphenyl substituted fatty acid esters and the like are preferable examples.
It is to be noted, Matsui discloses carboxylic acid is present in the lubricating oil composition but fails to teach the claimed carboxylic acid.
However, it is known in the art to add carboxylic acids in a lubricating oil composition, as taught by Arai.
Arai discloses on page 1, a heat-treated oil composition that is easily decomposed by microorganisms in a natural environment and has excellent oxidation stability and washability.
Arai discloses on page 9, a rust inhibitor may be added for the purpose of suppressing rust generation after the quenching step. Arai further discloses on page 9, as the aliphatic carboxylic acid, an aliphatic dicarboxylic acid having 6 to 20 carbon atoms or a monocarboxylic acid is usually used. For example, acetic acid, propanoic acid, butanoic acid, pentanoic acid, hexanoic acid, octanoic acid, 2-ethylhexanoic acid, nonanoic acid, decanoic acid, lauric acid, myristic acid, palmitic acid, stearic acid, oleic acid, glycolic acid, lactic acid hydroxycarboxylic acids such as glyceric acid, malic acid, citric acid, 12-hydroxystearic acid, ricinoleic acid; oxalic acid, malonic acid, succinic acid, glutaric acid, adipic acid, pimelic acid, suberic acid, azelaic acid, sebacic acid, dodecanedioic acid, alkenyl succinic acid, dimer acid, trimer acid, naphthenic acid, 9 (or 10)-(4-hydroxyphenyl) octadecanoic acid, benzoic acid, phthalic acid, trimellitic acid, pyromellitic acid, etc.
Arai discloses on page 9, the addition amount of these rust preventive agents is 0.1-50 mass% with respect to a heat-processed oil composition. If it is less than 0.1% by mass, the effect of improving glitter is insufficient, and if it exceeds 50% by mass, the effect of rust prevention may be inhibited.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to the carboxylic acids of Arai to the lubricating oil composition of Matsui. The motivation to do so is to add known carboxylic acids to a lubricating oil composition in order to aid in rust suppression and oxidation stability.
It is to be noted, the amount of sulfur compound and carboxylic acids present in the lubricating oil composition of Matsui and Arai overlaps the claimed mass ratio of sulfur compound and carboxylic acid.
Matsui discloses on page 8, the content of sulfur in the lubricating base oil depends on the content of sulfur in the raw material. In the lubricating base oil, the content of sulfur is preferably 10 ppm by mass or less, and is preferably 5 ppm by mass or less, from the viewpoint of further improving thermal and oxidation stability and reducing sulfur content. Further, from the viewpoint of cost reduction, it is preferable to use slack wax or the like as a raw material. In that case, the sulfur content in the obtained lubricating base oil is preferably 50 ppm by mass or less.
Matsui discloses on page 28, the sulfur content in the lubricating oil composition is not particularly limited, but is preferably 0.3% by mass or less.
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Uchida et al. (US 5,250,122) discloses in the abstract, a heat treating oil composition which comprises (A) at least one base oil selected from a mineral oil and a synthetic oil each having a sulfur content of not more than 300 ppm and (B) at least one member selected from alkaline earth metal salts of salicylic acid. There is also disclosed a heat treating oil composition which comprises (I) a base oil having a sulfur content of 3 to 1000 ppm consisting of said (A) component and (C) at lease one member selected from a sulfur and a sulfur compound, along with (II) various additives for quenching. This heat treating oil composition is suitable for quenching under the condition of a high oil temperature and capable of obtaining a treated metal excellent in brightness and having a minimized distortion.
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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