DETAILED ACTION
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 .
The amendment dated 08/04/2025 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
Claims 1 – 9, 11 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP 2011-195774A) in view of Iino et al. (WO 2018/139403A1)
In regards to claim 1, Yamamoto teaches internal combustion engine oils comprising molybdenum dihydrocarbyl dithiocarbamate of a formula (1) as a component (A) and benzotriazole of a formula (2) as a component (B) (abstract). The hydrocarbyl groups of the dithiocarbamate, R1 to R4, are each independently 4 to 22 carbon atoms [abstract, 0010]. The hydrocarbyl groups are preferably alkyl (aliphatic) groups. The groups X1, X2, X3 and X4 are analogous to the X1, X2, X3 and X4 in the claimed structure. Since each R group is independently 4 to 22 carbon atoms, if one R group is C4 and the other 3 are R groups are C22, the ratio of the lower weight R group to the higher weight R groups is 0.25 for instance. Thus, the claimed ratio would be overlapped.
The component A provides molybdenum at from 0.01 to 0.15% into the composition, while the benzotriazole of component B is present at amounts of from 0.01 to 1% by weight in the composition [0025]. Since each hydrocarbyl group is independently from 4 to 22 carbon atoms, the ratio of the lower to higher hydrocarbyl groups will be overlapped. Yamamoto teaches the molybdenum compound used in the examples has a molybdenum content of 10%.
Thus, since the molybdenum compound provides molybdenum at amounts of from 0.01 to 0.15 in the composition, such compounds would be present at calculated amounts of from 0.1 to 1.5% in the composition. Thus, the ratios of the molybdenum compound to the benzotriazole would overlap the claimed range (i.e., calculated to be from 0.1 to 150).
In the examples, the base oil used has kinematic viscosity of 4.1 mm2/s (cSt) at 100℃ (Kv100), but Yamamoto fails to recite the Kv100 of the composition.
Iino similarly teaches engine oils having low-viscosity of 0 to 10 (i.e., equivalent to 3.8 to 5.6 cSt) and high viscosity of 4 to 20 of an SAE viscosity grade which provides Kv100 overlapping the claimed range (abstract). Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have provided the oils of Yamamoto to have the conventional SAE grades for engine oils according to Iino, as Iino teaches SAE viscosity grades suitable for engine oils.
In regards to claim 2, Yamamoto and Iino combined teach the composition. Yamamoto teaches the benzotriazole having R5 and n which are analogous to Rc1 and p in the claimed structure, and a group R6 such as dimethylaminomethyl, diethylaminoethyl, dioctylaminomethyl radicals, etc., which provide Rc2 such as methylene, Rc3 and Rc4 such as C1 to C22 alkyl etc. [0018].
In regards to claim 3, Yamamoto and Iino combined teach the composition having the claimed limitation as previously discussed.
In regards to claim 4, Yamamoto and Iino combined teach the composition having ratios of the molybdenum dithiocarbamate to benzotriazole that overlaps the claimed range.
In regards to claim 5, Yamamoto and Iino combined teach the composition. Yamamoto teaches the claimed additives [0028].
In regards to claim 6, Yamamoto and Iino combined teach the composition which does not require the presence of dissolution aids.
In regards to claim 7, Yamamoto and Iino combined teach the composition which does not require the presence of ashless friction modifier.
In regards to claims 8, 9, Yamamoto and Iino combined teach the composition useful as engine oils for internal combustion engines. However, it is noted that the intended use language does not carry patentable weight.
In regards to claims 11, 12, Yamamoto and Iino combined teach the composition for use in internal combustion engines having the claimed ingredients and thus provides for the method of preparing the composition by blending the ingredients and the method of lubricating such engines by using the composition as oil in the engine which intrinsically provides the intended functions.
In regards to claims 13 – 15, Yamamoto and Iino combined teach the composition which can comprise 0.01% to 1% of the benzotriazole and 0.1 to 1.5% of the molybdenum dithiocarbamate thus providing a calculated ratio of from 0.1 to 150 which overlaps the claimed ranges as previously discussed.
In regards to claims 16, 17, Yamamoto and Iino combined teach the composition. Yamamoto teaches the benzotriazole and does not require the presence of other benzotriazole components in the composition thus providing 100% ratio as claimed.
In regards to claims 18 – 21, Yamamoto and Iino combined teach the composition which requires the dithiocarbamate and the benzotriazole at combined amounts of up to 2.5% in the base oil besides the presence of optional additives. The optional ingredient can be detergent which is used at from 0.5 to 10% in the composition, for instance, and thus allows for the base oil to be present in amounts overlapping the claimed ranges [0033].
Response to Arguments
Applicant’s arguments have been considered but was not found to be persuasive.
Applicant argues that the trialkylamines component C of Yamamoto is a friction modifier and thus teaches away from the claimed composition which requires the absence of amine friction modifier. The argument is not persuasive.
Yamamoto teaches the trialkylamines as a corrosion inhibitor, not as a friction modifier. Thus, even if arguably, the trialkylamines would inherently provide friction improvement, it was a corrosion inhibitor and thus a multifunctional additive.
Applicant previously argued that no combination of the R groups of Yamamoto can provide the claimed ratio of a/b as claimed. The argument was found to be erroneous.
As explained in the rejection above, each of the 4 R groups of Yamamoto can independently be C4 to C22 hydrocarbyl groups in the molybdenum compound. If one R group is C4 and the other 3 are C22, the claimed ratio would be 0.25.
Applicant previously argued that the claimed composition demonstrates criticality of the claimed ratio as shown by the improvement in low temperature storage stability of the inventive examples 1 & 2 having ratio of a/b of 0.35 as compared to comparative examples 4 and 6 having a ratio of 1. The argument was not persuasive.
The inventive examples are not commensurate in scope.
While the claims allow for the ratio of a/b to range from 0.2 to 0.4, the inventive examples are strictly drawn to a ratio of 0.35 which do not support the breadth of the claimed range nor demonstrate criticality at the lower and upper ratios of 0.2 and 0.4 as claimed.
While the claims do not particularly limit the amount of the molybdenum compound in the composition, except for claim 3 that limits it to 0.4 to 1.25%, the inventive examples strictly require the presence of at least two molybdenum compounds at a strict amount of 0.71% which does not support the breadth of the claimed ranges.
While the claims limit the amounts of benzotriazole to 0.015% or less in the composition, the inventive examples allow for amounts of from 0.01 to 0.03% which does not support the breadth of the claimed range that allows for orders of magnitude smaller, and also allows for amounts not exceeding 0.015%.
The results are not persuasive.
While example 3 has a benzotriazole content that is outside of the claimed range, it provides similar results as the inventive examples. Also, comparative examples 2, 5, 7 each has a low temperature storage stability similar to the inventive examples. Thus, the allegation of criticality for demonstrating improved results is not persuasive.
Therefore, applicant fails to provide inventive examples that demonstrates criticality sufficient to rebut the case of obviousness.
Applicant previously argued that Yamamoto teaches molybdenum dithiocarbamate to benzotriazole of from 2.5 to 10 which is outside of the claimed range. The argument was not persuasive.
Yamamoto does not limit the ratio of the molybdenum compound and benzotriazole to 2.5 to 10 as applicant alleges. Thus, the amounts of each ingredients provide calculated ratios overlapping the claimed range.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771