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 March 20, 2025, are pending and have been fully considered. Claims 3, 6 and 7 are withdrawn from consideration due to being drawn to a nonelected invention.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 4 and 5 in the reply filed on March 20, 2025 is acknowledged.
Claims 3, 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 20, 2025.
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, 2, 4 and 5 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.
Claim(s) 2 and 5 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” and further in view of da Costa (US 2010/0204075).
Regarding Claims 2 and 5
Hamid modified by Hamid discloses the hydraulic fluid of independent claims 1 and 4 of the present invention but fails to further disclose the SUS of a high ethyl PAG polymer.
However, it is known in the art polyalkylene glycols of hydraulic fluids have a SUS overlapping 90K to 400K, as taught by da Costa. da Costa discloses in paragraph 0017, the environmentally compatible lubrication or hydraulic fluids are generally polyalkylene glycol-based, where the polyalkylene glycol is water-soluble. Polyalkylene glycols include a class of compounds comprising polymers of alkylene oxides and mixtures or derivatives of alkylene oxides. Polyalkylene glycols may be low molecular weight or high in molecular weight, and vary widely in viscosity characteristics. da Costa discloses in paragraph 0012, a fluid is provided for use as a lubricant or hydraulic fluid in machinery, the fluid being environmentally friendly to vegetation and the surrounding area. The fluid, if leaked or spilled from the machinery onto vegetation, can be washed off with tap water without any deleterious effects on the vegetation and without contamination of the surrounding environment.
da Costa discloses in paragraph 0018, in particular, the water-soluble polyalkylene glycols used in the environmentally compatible fluids of the present invention have varied ethylene oxide to propylene oxide ratios, in order to render the fluids of the composition most environmentally compatible. The polyalkylene glycols used in the fluid compositions may have an SUS (Saybolt Universal Seconds) viscosity of from about 50 to about 800. Further, the polyalkylene glycols used may have a molecular weight of from about 200 to about 1700.
It is to be noted, da Costa does not explicitly disclose the polyalkylene glycols as a viscosity modifier, however it is the examiners position the polyalkylene glycols would have the same viscosity modification as disclosed by the claimed invention due to compounds and its properties are inseparable.
“Products of identical compound can not have mutually exclusive properties.” A compound and its properties are inseparable. There-fore, if the prior art teaches the identical compound, the properties applicant discloses and/or claims are necessarily present. See In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”). The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art the polyalkylene glycol of Hamid and da Costa would encompass the SUS viscosity range of the claimed invention, as taught by da Costa due to polyalkylene glycols meet known viscosity standards when applied in lubricating oil compositions.
Response to Arguments
Applicant's arguments filed March 20, 2025 have been fully considered but they are not persuasive.
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 hydraulic fluid. Applicant has amended claims 1 and 4 to recite an amine phosphate suitable for use in a water based food grade hydraulic fluid. There are many 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 food grade hydraulic fluid of Applicant's claims 1 and 4.”
Applicants arguments are not deemed persuasive. First, 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. Second, regarding the composition claims, the phrase “suitable for use in a water based food grade hydraulic fluid” is intended use and is not considered to be a claim limitation. 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: “Moreover, a person having ordinary skill in the art at the time of Applicant's invention would not be motivated to consider modifying the Hamid reference, which deals specifically with solving vapor phase corrosion (VPC) in a food grade water/glycol system, with the teachings of Vettel which describes a renewable oil based system. There is no teaching in either Hamid or Vettel that amine phosphate would be suitable for solving VPC and Hamid specifically teaches away from (mineral) oil based systems.”.
Applicants arguments are not deemed persuasive. First, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both Hamid and Vettel discloses a hydraulic fluid known to be applied in various applications for environmental sensitivities, including food. Second, regarding the composition claims, the phrase “suitable for use in a water based food grade hydraulic fluid” is intended use and is not considered to be a claim limitation. 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: “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: “Further, the da Costa reference is directed toward an environmentally friendly hydraulic fluid, not a food grade hydraulic lubricant as in Applicant's claims. Food grade lubricants are formulated separately and require specific chemistries at max limits.”
Applicants arguments are not deemed persuasive. In this case, both da Costa discloses a hydraulic fluid known to be applied in various applications for environmental sensitivities, including vegetation (vegetable/garden) products. Second, regarding the composition claims, the phrase “suitable for use in a water based food grade hydraulic fluid” is intended use and is not considered to be a claim limitation. 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: “Applicant's base is not polyalkylene glycol (PAG) as disclosed in da Costa. As recited in amended claims 1 and 4, Applicant's food grade formulation employs PAG as the thickener to get the viscosity to a hydraulic fluid viscosity. A person having ordinary skill in the art at the time of Applicant's invention, would not consider a non-food grade reference of a substantially different base chemistry such as da Costa.”
Applicants arguments are not deemed persuasive. First, as stated in the above rejection, da Costa does not explicitly disclose the polyalkylene glycols as a viscosity modifier, however it is the examiners position the polyalkylene glycols would have the same viscosity modification as disclosed by the claimed invention due to compounds and its properties are inseparable. “Products of identical compound can not have mutually exclusive properties.” A compound and its properties are inseparable. There-fore, if the prior art teaches the identical compound, the properties applicant discloses and/or claims are necessarily present. See In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”). The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000). Second, regarding the composition claims, the phrase “suitable for use in a water based food grade hydraulic fluid” is intended use and is not considered to be a claim limitation. 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
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Latosha Hines/Primary Examiner, Art Unit 1771