CTNF 18/423,256 CTNF 76999 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-8, 11, 15, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0062371 A1to Marur in view of US 2010/0305012 A1 to Miyamoto et al. (hereinafter Miyamoto) . Regarding claims 1 and 2 , Marur discloses a magneto rheological fluid comprising: magnetic particles; a carrier fluid (para [0009]); an organic zinc compound, wherein the organic zinc compound is zinc dialkyldithiophosphate (para [0062]); and further comprises melamine (para [0044]) and solid lubricants selected from a group that includes a fluoropolymer and graphite (para [0062]) but fails to expressly disclose melamine (iso)cyanurate. However, Miyamoto does teach a lubricant comprising a silicone carrier fluid (para [0095]) and solid (particulate) lubricants comprising at least one of graphite, a fluororesin, and melamine cyanurate (para [0107]). It would be obvious to one of ordinary skill in the art to employ the melamine cyanurate of Miyamoto as an obvious alternative to the graphite and fluoropolymer of Marur, as they are considered alternative solid lubricants in the art (Miyamoto, para [0107] and Marur, para [0062]). It would also be obvious to employ melamine cyanurate as a thickener to optimize the viscosity of the fluid (Miyamoto, para [0004] and [0107]) and ultimately improve the heat resistance and oxidation resistance/rust prevention (Miyamoto, para [0004] and Marur, para [0033] and [0047]) provided by the magnetorheological fluid in an engine (Miyamoto, para [0238] and Marur, para [0003] and [0062]). Regarding claim 3 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1, but is silent regarding the limitation “wherein a content of the organic zinc compound is 1.0% by mass or more and 7.0% by mass or less with respect to a mass of the magneto rheological fluid excluding a mass of the magnetic particles”. However, see MPEP 2144.05(II)(A), which states that ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical’. The organic zinc compound is an engine lubricant (Marur, para [0062]-[0063]). One of ordinary skill in the art is expected to arrive at the optimal amount of organic zinc compound via routine experimentation. Regarding claim 4 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1, but is silent regarding the limitation “wherein a content of the melamine (iso)cyanurate is 0.5% by mass or more with respect to a mass of the magneto rheological fluid excluding a mass of the magnetic particles”. However, see MPEP 2144.05(II)(A), cited above. One of ordinary skill in the art is expected to arrive at the optimal amount of melamine (iso)cyanurate via routine experimentation. Regarding claim 5 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur discloses the fluid further comprising: a polyester compound (para [0044]). Neither Marur nor Miyamoto explicitly teach the claimed process as written. However, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product. The method of making the polyester used in the magneto rheological fluid is not expected to significantly alter the final fluid product, absent evidence to the contrary. Regarding claim 6 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur further discloses wherein the carrier fluid is a silicone-based fluid (para [0046]). Regarding claim 7 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur further discloses wherein the carrier fluid is a mixture of a poly-alpha-olefin-based fluid and an ester-based fluid (para [0048]). Regarding claim 8 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 7. Marur further discloses wherein the ester-based fluid is a polyol ester-based fluid (glycerol ester, para [0061]). Regarding claim 11 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur further discloses the fluid further comprising a sulfur-based compound, sulfonium (para [0059]). Regarding claim 15 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur further discloses wherein the organic zinc compound is zinc dialkyldithiophosphate (para [0062]), a sulfur-based compound is further contained, sulfonium (para [0059]), and the carrier fluid is a silicone-based fluid (para [0046]) or a mixture of a poly-alpha-olefin-based fluid and an ester-based fluid (para [0048]). The references are silent regarding the limitations “a content of the organic zinc compound is 1.0% by mass or more and 7.0% by mass or less with respect to a mass of the magneto rheological fluid excluding a mass of the magnetic particles”, and “a content of the melamine (iso)cyanurate is 0.5% by mass or more with respect to the mass of the magneto rheological fluid excluding the mass of the magnetic particles”. However, see MPEP 2144.05(II)(A), cited above. One of ordinary skill in the art is expected to arrive at the optimal amounts of organic zinc compound and melamine (iso)cyanurate via routine experimentation. Regarding claim 16 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 15. Marur discloses the fluid further comprising: a polyester compound (para [0044]). Neither Marur nor Miyamoto explicitly teach the claimed process as written. However, see MPEP 2113, cited above. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product. The method of making the polyester used in the magneto rheological fluid is not expected to significantly alter the final fluid product, absent evidence to the contrary. Regarding claim 19 , Marur in view of Miyamoto discloses the magneto rheological fluid according to claim 1. Marur further discloses a magneto rheological fluid device (engine, para [0003] and [0062]) comprising: the magneto rheological fluid according to claim 1 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 9, 10, 12-14, 17, and 18 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Marur in view of Miyamoto, teaches a magnetorheological fluid comprising carboxylates but does not teach or suggest copper carboxylates. Neither do the references teach or suggest the presence of a hindered phenol-based compound, a thioether based compound, or an acrylic silicone in the magneto rheological fluid . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30. 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, Jonathan Johnson can be reached at 571-272-1177. 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. /L.E./ Examiner, Art Unit 1734 /Matthew E. Hoban/ Primary Examiner, Art Unit 1734 Application/Control Number: 18/423,256 Page 2 Art Unit: 1734 Application/Control Number: 18/423,256 Page 3 Art Unit: 1734 Application/Control Number: 18/423,256 Page 4 Art Unit: 1734 Application/Control Number: 18/423,256 Page 5 Art Unit: 1734 Application/Control Number: 18/423,256 Page 6 Art Unit: 1734 Application/Control Number: 18/423,256 Page 7 Art Unit: 1734 Application/Control Number: 18/423,256 Page 8 Art Unit: 1734 Application/Control Number: 18/423,256 Page 9 Art Unit: 1734
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