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 18/367367 application originally filed September 12, 2023.
Claims 1-7, filed June 23, 2026, are pending and have been fully considered. Claims 3, 6 and 7 are withdrawn from consideration due to being drawn to a nonelected invention.
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 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamid et al. (US 2010/0056406) hereinafter “Hamid” in view of Vettel et al. (US 2017/0121630) hereinafter “Vettel”.
Regarding Claims 1 and 4
Hamid discloses in paragraph 0002, to water-glycol (W/G)-based hydraulic fluids and to the prevention of vapor phase corrosion attributed to use of a W/G-based hydraulic fluid. More particularly, the present invention is directed to a W/G-based hydraulic fluid containing an ammonium salt as a vapor phase corrosion inhibitor. The hydraulic fluids can be used in a variety of practical applications, including food-related applications.
Hamid discloses in paragraph 0033, hydraulic fluid comprises about 25% to about 50%, by weight, of a glycol. In preferred embodiments, a present hydraulic fluid comprises about 30% to about 45%, by weight, and more preferably about 35% to about 40%, by weight, of a glycol. A glycol is included in the composition as an antifreeze and diluent, and to provide some viscosity control. The glycol can be, for example, ethylene glycol, propylene glycol, butylene glycol, pentylene glycol, hexylene glycol, diethylene glycol, dipropylene glycol, dihexylene glycol, triethylene glycol, tripropylene glycol, trihexylene glycol, and mixtures thereof. Other similar glycols also can be used.
Hamid discloses in paragraph 0045, The carrier of the W/G-based hydraulic fluid is water, which is present in an amount of about 25% to about 50%, by weight of the fluid. The water preferably is deionized (DI) water because calcium and magnesium ions present in potable water can react with fluid additives causing a floe or precipitate to form and adversely affect fluid performance. To prolong the fluid and component life, water included in the W/G-hydraulic fluid should have a maximum total hardness of 5 parts per million (ppm).
Hamid discloses in paragraphs 0037 and 0038, W/G-based hydraulic fluid also contains about 15% to about 40%, by weight, of a polyalkylene glycol. In preferred embodiments, the polyalkylene glycol is present in an amount of about 20% to about 30%, by weight, of the fluid. The polyalkylene glycol serves as a thickener to provide a desired viscosity. The identity of the polyalkylene glycol is not limited, and several commercial polyalkylene glycols are available for use in a present W/G-based hydraulic fluid. The polyalkylene glycol typically is a copolymer of ethylene oxide (EO) and propylene oxide (PO), in a ratio of EO to PO of about 10 to 1 to about 1 to 10. Homopolymers of EO and PO, i.e., polyethylene glycol and propylene glycol, also can be used as the polyalkylene glycol. The polyalkylene glycols have a molecular weight of at least about 5,000, typically in excess of about 10,000, up to about 200,000, for example. One polyalkylene glycol or a mixture of polyalkylene glycols can be used in a present W/G-based hydraulic fluid.
Hamid discloses in paragraph 0034, hydraulic fluid also contains about 0.5% to about 8%, and preferably about 1% to about 6%, by weight, of a partially-neutralized aliphatic C6-C16 carboxylic acid, linear or branched. The partially neutralized C6-C16 carboxylic acid (i.e. capric acid, see paragraph 0050) acts as a boundary lubricant to improve performance of the W/G-based hydraulic fluid, especially with respect wear resistance and sludge solubility.
Hamid discloses in paragraph 0036, the aliphatic C6-C16 carboxyl acid is neutralized with neutralizing agent, typically an alkali metal hydroxide, such as sodium hydroxide, potassium hydroxide, lithium hydroxide, or a mixture thereof. A preferred neutralizing agent is potassium hydroxide, in the amount of 0.6-1.2 wt% (see paragraph 0050).
It is to be noted, Hamid discloses a hydraulic fluid composition but fails to disclose an amine phosphate in the claimed range of the hydraulic fluid composition.
However, it is known in the art for an amine phosphate is present in a hydraulic fluid composition, as taught by Vettel.
Vettel discloses in paragraph 0088, a rust inhibitor is an additive that is mixed with a hydraulic fluid base oil to prevent rust in finished hydraulic fluid applications. Examples of commercial rust inhibitors are metal sulfonates, alkylamines, alkyl amine phosphates, alkenyl succinic acids, fatty acids, and acid phosphate esters. Rust inhibitors are sometimes comprised of one or more active ingredients. Examples of applications where rust inhibitors are needed include: internal combustion engines, turbines, electric and mechanical rotary machinery, hydraulic equipment, gears, and compressors. Rust inhibitors work by interacting with steel surfaces to form a surface film or neutralize acids. Rust inhibitors are effective in some embodiments of the hydraulic fluid when they are used in an amount less than 25 weight percent. In some other embodiments, rush inhibitors are effective in an amount less than 10 weight percent of the total composition. In some other embodiments, rust inhibitors are effective in an amount less than 1 weight percent.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the amine phosphate of Vettel to the hydraulic fluid composition of Hamid. The motivation to do so is it is known in the art amine phosphates are known rust inhibitors to a hydraulic fluid to prevent rust/corrosion in finished hydraulic fluid applications, as taught by Vettel.
Allowable Subject Matter
Claims 2 and 5 are 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 applied prior art fails to specifically teach the claimed high ethyl PAG polymer is 90K to 400K SUS at 100 °F that is present in a food grade hydraulic fluid.
Response to Arguments
Applicant's arguments filed June 23, 2026 have been fully considered but they are not persuasive.
Applicants argued: “The Hamid Reference is tins directed specifically to a problem wherein a water/glycol based hydraulic fluid, when subjected to operating temperatures wherein vaporization occurs in the presence of air/oxygen, causes exposed metal surfaces to corrode. The Hamid solution to that problem is to include an ammonium salt as a vapor phase corrosion (VPC) inhibitor. Applicant’s claims 1 and 4 do not recite an ammonium salt and vapor phase corrosion (VPC) is not an issue for the purposes of Applicant's invention wherein a vapor phase is undesirable. In other words, for Applicant's composition the intent is for the water for the composition to remain non-flammable and is limited to food grade components.”
Applicants arguments are not deemed persuasive. As stated in the above rejection, Hamid discloses a hydraulic fluid that is directed to a food application which overlaps the presently claimed invention. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963).
Applicants argued: “In addition, the Office Action reads that Hamid discloses in paragraph 0045, that the carrier of the W/G based hydraulic fluid is water, and preferably deionized (DI) water. Here again, Hamid does not specify that the DI water must be food grade. Industrial grade or lab grade DI would suffice for the hydraulic fluid taught by Hamid. In contrast, Applicant's hydraulic fluid must be "selected, characterized, and formulated" to be food grade.
Applicants arguments are not deemed persuasive. It is maintained, Hamid discloses the hydraulic fluid contains deionized water (DI), wherein the hydraulic fluid is a food grade composition. Therefore, it is maintained Hamid discloses the claimed hydraulic fluid with deionized water.
Applicants argued: “With specific regard to claim 4, the recited percentage of capric acid is significantly outside the percentage disclosed by Hamid. The Hamid reference teaches about 3.5% partially neutralized capric acid. Applicant's claim 4 recites 1.625% capric acid. Applicant respectfully submits that its claimed percentage is not taught by Hamid.”
Applicants arguments are not deemed persuasive. Hamid specifically discloses in paragraph 0012, the hydraulic fluid comprises (b) about 0.5% to about 8%, by weight, of a partially neutralized aliphatic C6-C16 carboxylic acid. The partially neutralized C6-C16 carboxylic acid (i.e. capric acid). Therefore, it is maintained, Hamid discloses the specific amount of capric acid of the presently claimed invention. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Applicants argued: “There is no teaching or suggestion in the Vettel reference that amine phosphate as recited in Applicant's claim 1 would be suitable for use in a water based and food grade hydraulic fluid. There are many different amine phosphates. One that is suitable for the purposes of an oil-based fluid, such as Vettel, would/may not be suitable for the water based and food grade hydraulic fluid of Applicant's claims 1 and 4. It is important to point out that "renewable" or "green" (Vettel) is not the same thing as "food grade" (Applicant's claims). The cited prior art describes an environmentally friendly hydraulic fluid but does not disclose a fluid that is food grade, nor does it describe properties that satisfy the strict compositional prohibitions imposed by food-grade certification. "Environmentally friendly" does not imply characteristics such as, for example: compliance with food-contact safety standards, exclusion of chemicals barred under by federal regulations; and compatibility with water-based food-grade formulations. Even if the prior art fluid is less toxic than conventional fluids, it is not necessarily safe for food contact, as required for food-grade certification.”
Applicants arguments are not deemed persuasive. First, it is maintained, Vettel specifically discloses in paragraph 0004, hydraulic oils are unique lubricants due to their widespread use in all forms of equipment operating in a wide range of environments. The pressure in a hydraulic system creates a situation where leaks are common. Since many pieces of hydraulic equipment are operated in environments with environmental sensitivity such as in and around water, mining, agriculture, and food, a more environmentally friendly hydraulic oil is highly desirable to industry. The desire for these properties is shown by the growth of the biobased hydraulic oil segment and increasing legislation around the world mandating the use of these products. Therefore, Vettel discloses it is known in the art to use hydraulic oils for in hydraulic equipment that operate in environmental sensitivity areas, including food, meeting the limitation of used for food grade hydraulic fluid. Additionally, Vettel further discloses in paragraph 0075, class of antioxidants suitable for food grade industrial lubricant formulation are also useful in the hydraulic fluid described in the current disclosure. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Therefore, it is maintained the hydraulic fluid of Vettel environmentally friendly hydraulic oil is highly desirable to industry, including food. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963).
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 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
