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 18/552511 application originally filed September 26, 2023.
Claims 1-6, 8-16, 22 and 24-26, filed February 23, 2026, are pending and have been fully considered. Claims 7, 17-21 and 23 have been canceled.
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) 1-6, 8, 10-16, 22 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamano (US 2009/0203561) in view of Yamada (US 2013/0029892) and Utaka et al. (US 2015/0175927) hereinafter “Utaka”.
Regarding Claims 1-6, 10-16 and 25-26
Kamano discloses in paragraph 0001, a lubricating oil composition for internal combustion engines and, more specifically, to a lubricating oil composition for internal combustion engines which exhibits improved oxidation stability and friction reducing effect using a combination of a specific sulfur compound, an organomolybdenum compound and a phenol-based antioxidant and/or an amine-based antioxidant.
Kamano discloses in paragraph 0024, the base oil used in the lubricating oil composition is not specifically limited and may be arbitrarily selected from those mineral oils and synthetic oils which are conventionally used as a base oil for lubricating oils for internal combustion engines. Kamano discloses in Tables 1 and 2 the base oil is in the amount of above 60% by mass.
Kamano discloses in paragraph 0054, the organomolybdenum compound as component (B) may be selected from a variety of compounds such as sulfurized oxymolybdenum dithiocarbamate (MoDTC), sulfurized oxymolybdenum dithiophosphate (MoDTP), sulfurized oxymolybdenum dithioxantogenate (MoDTX), molybdenum-amine complexes, trinuclear molybdenum-sulfur compounds and sulfur-containing molybdenum complexes of succinimide. Kamano discloses in paragraph 0059, as the molybdenum-amine complex, a hexavalent molybdenum compound, to be more specific, a product obtained by reaction of molybdenum trioxide and/or molybdenic acid with an amine compound. Kamano discloses in paragraph 0060, the amine compound to be reacted with the hexavalent molybdenum compound is not specifically limited. Examples of the amine compound include monoamines, diamines, polyamines and alkanolamines. More specific examples include alkylamines having a C1 to C30 straight-chained or branched alkyl group, such as methylamine, ethylamine, propylamine, butylamine, pentylamine, hexylamine, heptylamine, octylamine, nonylamine, decylamine, undecylamine, dodecylamine, tridecylamine, tetradecylamine, pentadecylamine, hexadecylamine, heptadecylamine, octadecylamine, dimethylamine, diethylamine, dipropylamine, dibutylamine, dipentylamine, dihexylamine, diheptylamine, dioctylamine, dinonylamine, didecylamine, diundecylamine, didodecylamine, ditridecylamine, ditetradecylamine, dipentadecylamine, dihexadecylamine, diheptadecylamine, dioctadecylamine, methylethylamine, methylpropylamine, methylbutylamine, ethylpropylamine, ethylbutylamine and propylbutylamine; alkenylamines having a C2 to C30 straight-chained or branched alkenyl group, such as ethenylamine, propenylamine, butenylamine, octenylamine and oleylamine; alkanolamines having a C1 to C30 straight-chained or branched alkanol group, such as methanolamine, ethanolamine, propanolamine, butanolamine, pentanolamine, hexanolamine, heptanolamine, octanolamine, nonanolamine, methanolethanolamine, methanolpropanolamine, methanolbutanolamine, ethanolpropanolamine, ethanolbutanolamine and propanolbutanolamine; alkylenediamines having a C1 to C30 alkylene group, such as methylenediamine, ethylenediamine, propylenediamine and butylenediamine; polyamines such as diethylenetriamine, triethylenetetramine, tetraethylenepentamine and pentaethylenehexamine; compounds having a C8 to C20 alkyl or alkenyl group bonded to the above-exemplified monoamines, diamines and polyamines, such as undecyldiethylamine, undecyldiethanolamine, dodecyldipropanolamine, oleyldiethanolamine, oleylpropylenediamine and stearyltetraethylenepentamine; and heterocyclic compounds such as imidazoline; alkylene oxide adducts of these compounds; and mixtures of these compounds.
Kamano discloses in paragraph 0054, a lubricating oil composition comprising the organomolybdenum compound as component (B) may be selected from a variety of compounds such as sulfurized oxymolybdenum dithiocarbamate (MoDTC), sulfurized oxymolybdenum dithiophosphate (MoDTP), sulfurized oxymolybdenum dithioxantogenate (MoDTX), molybdenum-amine complexes, trinuclear molybdenum-sulfur compounds and sulfur-containing molybdenum complexes of succinimide but fails to teach the specific formula(s) of claims 22 and 24 of the presently claimed invention.
However, Utaka discloses in paragraphs 0001 and 0017, a lubricating oil composition for an internal combustion engine, and more particularly to a lubricating oil composition for an internal combustion engine having a decreased viscosity, wherein the lubricating oil composition comprises molybdenum-based friction modifiers.
Utaka discloses in paragraph 0036, the organic molybdenum compound as the component (B) includes a binuclear organic molybdenum compound and/or a trinuclear organic molybdenum compound. In the present invention, the binuclear organic molybdenum compound is represented by general formula (I) below, and the trinuclear organic molybdenum compound is represented by general formula (II) below.
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Utaka discloses in paragraph 0037, in formula (I), R1 to R4 represent a C4 to C22 hydrocarbon group, and R1 to R4 may be identical to or different from each other. Examples of the hydrocarbon group include alkyl group, alkenyl group, alkylaryl group, cycloalkyl group and cycloalkenyl group. A branched or linear alkyl or alkenyl group is preferred, and a branched or linear alkyl group is more preferred. Examples of the C8 to C13 branched or linear alkyl group include n-octyl group, 2-ethylhexyl group, isononyl group, n-decyl group, isodecyl group, dodecyl group, tridecyl group and isotridecyl group.
It is to be noted, the hydrocarbons of the R1 to R4 substituents of MoDTC includes short and long chain due to the carbon range is 4 to 22 that is linear or branched. Therefore, the R1 to R4 substituents of the MoDTC overlaps the claimed groups and also overlaps the claimed molar ratio of long and short chain substituents. Additionally, the current specification defines the specific examples that are within the long and short chain groups (see paragraphs 0032-0035 of the current specification).
Utaka discloses in paragraph 0038, in formula (I), X1 to X4 represent a sulfur atom or oxygen atom, and X1 to X4 may be identical to or different from each other. In formula (I), the ratio between the sulfur atoms and oxygen atoms is preferably sulfur atom/oxygen atom=1/3 to 3/1, more preferably 1.5/2.5 to 3/l. When the ratio is in the above range, good performance can be achieved in terms of corrosion resistance and solubility in the base oil. All of X1 to X4 may be a sulfur atom or oxygen atom.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the molybdenum compounds of Kamano would encompass the molybdenum compounds of Utaka due to Kamano and Utaka disclose known molybdenum compounds are added to lubricating oil compositions in order to aid in the improvement of fuel consumption, wear prevention effects and high-temperature oxidation stability of a lubricating oil composition for an internal combustion engine having a decreased viscosity.
Kamano discloses in paragraph 0065, the content of component (B) in the lubricating oil composition is advantageously determined so that the lubricating oil composition has a molybdenum content of preferably 2,000 ppm by mass or less, from the viewpoint of a balance between the effect, solubility and economic efficiency. When a sulfur-containing molybdenum compound is used as the organomolybdenum compound, it is preferred that the lubricating oil composition contain the organomolybdenum compound in an amount so that the total sulfur content of the lubricating oil composition is 0.3% by mass (see Tables 1 and 2).
Kamano discloses in Tables 1 and 2 the kinematic viscosity of the base oil and the lubricating oil composition at 40° C is less than 35 mm2/s.
It is to be noted, Kamano discloses a kinematic viscosity of the base oil but fails to specifically teach the claimed kinematic viscosity of the lubricating oil composition.
However, Utaka discloses in paragraphs 0001 and 0017, a lubricating oil composition for an internal combustion engine, and more particularly to a lubricating oil composition for an internal combustion engine having a decreased viscosity, wherein the lubricating oil composition comprises molybdenum-based friction modifiers.
Utaka discloses in paragraph 0102 and Table 1, the kinematic viscosity of the lubricating oil composition of Examples 1 to 6 at 40℃ is 35.0 mm2/s or less.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the lubricating oil composition of Kamano would encompass the kinematic viscosity of Utaka at 40℃ is of 35.0 mm2/s due to the base oils of Utaka overlaps the base oils of Kamano and the presently claimed invention. Additionally, Utaka further discloses the lubricating oil compositions showed a low rate of increase (%) in kinematic viscosity under high temperature and were superior in high-temperature oxidation stability (see paragraph 0102 of Utaka).
Kamano discloses in paragraph 0090, the lubricating oil composition may contain a variety of additives such as a friction modifier other than those mentioned above (an oiliness agent or an extreme pressure additive), an antiwear agent, a viscosity index improver, a pour-point depressant, a rust preventive agent, a metal corrosion inhibitor, an antifoaming agent and a surfactant.
Kamano discloses in paragraph 0095, the lubrication oil composition comprises as the viscosity index improver, there may be mentioned, for example, polymethacrylate, dispersion type polymethacrylate, olefin copolymers (for example, ethylene-propylene copolymers), dispersion type olefin copolymers and styrene-based copolymers (for example, styrene-diene copolymers and styrene-isoprene copolymers). Kamano discloses in paragraph 0096, the compounding amount of the viscosity index improver is generally 0.5 to 15% by mass, based on the total amount of the lubricating oil composition, from the standpoint of effectiveness.
Kamano discloses throughout the disclosure the presence of ethylene-propylene copolymer as a viscosity index improver in the lubricating oil composition (see paragraph 0095) but fails to further teach the molecular weight of the polymer in the lubricating oil composition.
Yamada discloses in paragraph 0001, a lubricant oil composition for internal combustion engines and, more specifically, to a lubricant oil composition for internal combustion engines which can reduce noise during running, improve fatigue life, reduce lubricating oil consumption and provide excellent fuel saving performance and which is useful as a lubricating oil for four-cycle engines for motorcycles. Yamada discloses in paragraph 0014, the base oil is a lubricating base oil formed of a mineral oil, a synthetic oil or a mixture thereof and must have a viscosity index of 125 or more.
Yamada further discloses in paragraph 0030, the lubricant oil composition for internal combustion engines is obtainable by blending the above-described base oil with 0.1 to 10% by mass, preferably 0.3 to 7% by mass, more preferably 0.5 to 5% by mass, of (A) a C2 to C20 olefin polymer having a mass average molecular weight of 500 or more and 10,000 or less and/or (B) a polymeric compound having a mass average molecular weight of 10,000 or more and less than 100,000, wherein a content of (C) a polymeric compound having a mass average molecular weight of 100,000 or more is less than 1.0% by mass.
Yamada discloses in paragraph 0035, as (A) the olefin polymer, at least one selected from homopolymers and copolymers of a C2 to C20, preferably C2 to C16, more preferably C2 to C14 olefin is used. Typical examples of the C2 to C20 olefin polymer include ethylene-α-olefin copolymers, and homopolymers and copolymers of an α-olefin. As the ethylene-α-olefin copolymer, there may be mentioned copolymers of 15 to 80 mole % of ethylene with a C3 to C20 α-olefin such as propylene, 1-butene or 1-decene. These copolymers may be random copolymers or block copolymers.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the ethylene-propylene copolymers of Kamano would encompass the molecular weight of Yamada. The motivation to do so is to add olefinic polymers with the molecular weight of Yamada to a lubricating oil composition in order to aid in the improvement of the viscosity and provide fuel saving performance.
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).
Regarding Claim 8
Kamano discloses in paragraph 0103, the lubricating oil composition is a lubricating oil composition for internal combustion engines which has excellent oxidation stability and friction reducing effect, which is low in phosphorus content and in sulfated ash content and which complies with environmental regulations and, therefore, may be used for internal combustion engines such as gasoline engines, diesel engines and gas engines.
Regarding Claims 22 and 24
Kamano discloses in paragraph 0054, a lubricating oil composition comprising the organomolybdenum compound as component (B) may be selected from a variety of compounds such as sulfurized oxymolybdenum dithiocarbamate (MoDTC), sulfurized oxymolybdenum dithiophosphate (MoDTP), sulfurized oxymolybdenum dithioxantogenate (MoDTX), molybdenum-amine complexes, trinuclear molybdenum-sulfur compounds and sulfur-containing molybdenum complexes of succinimide but fails to teach the specific formula(s) of claims 22 and 24 of the presently claimed invention.
However, Utaka discloses in paragraphs 0001 and 0017, a lubricating oil composition for an internal combustion engine, and more particularly to a lubricating oil composition for an internal combustion engine having a decreased viscosity, wherein the lubricating oil composition comprises molybdenum-based friction modifiers.
Utaka discloses in paragraph 0036, the organic molybdenum compound as the component (B) includes a binuclear organic molybdenum compound and/or a trinuclear organic molybdenum compound. In the present invention, the binuclear organic molybdenum compound is represented by general formula (I) below, and the trinuclear organic molybdenum compound is represented by general formula (II) below.
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Utaka discloses in paragraph 0037, in formula (I), R1 to R4 represent a C4 to C22 hydrocarbon group, and R1 to R4 may be identical to or different from each other. When the number of carbon atoms is 3 or less, the binuclear organic molybdenum compound has poor oil solubility. When the number of carbon atoms is 23 or more, the binuclear organic molybdenum compound has such a high melting point that it is difficult to handle and has poor friction-reducing ability. From the above standpoint, the number of carbon atoms is preferably 4 to 18, more preferably 8 to 13. Examples of the hydrocarbon group include alkyl group, alkenyl group, alkylaryl group, cycloalkyl group and cycloalkenyl group. A branched or linear alkyl or alkenyl group is preferred, and a branched or linear alkyl group is more preferred. Examples of the C8 to C13 branched or linear alkyl group include n-octyl group, 2-ethylhexyl group, isononyl group, n-decyl group, isodecyl group, dodecyl group, tridecyl group and isotridecyl group. From the standpoint of solubility in the base oil, storage stability and friction-reducing ability, it is preferred that R1 and R2 be identical alkyl groups, R3 and R4 be identical alkyl groups, and the alkyl groups of R1 and R2 and the alkyl groups of R3 and R4 be different.
Utaka discloses in paragraph 0038, in formula (I), X1 to X4 represent a sulfur atom or oxygen atom, and X1 to X4 may be identical to or different from each other. In formula (I), the ratio between the sulfur atoms and oxygen atoms is preferably sulfur atom/oxygen atom=1/3 to 3/1, more preferably 1.5/2.5 to 3/l. When the ratio is in the above range, good performance can be achieved in terms of corrosion resistance and solubility in the base oil. All of X1 to X4 may be a sulfur atom or oxygen atom.
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Utaka discloses in paragraph 0039, in general formula (II), L's each independently represents a selected ligand having an organic group containing carbon atoms; n is from 1 to 4; k varies between 4 and 7; Q's are each independently selected from the group consisting of neutral electron donating compounds, such as water, amines, alcohols, ethers and so on; and z ranges from 0 to 5 and includes non-stoichiometric values. At least 21 carbon atoms, such as at least 25 carbon atoms, at least 30 carbon atoms or at least 35 carbon atoms, should be present in total in all the organic groups of the ligands to render the above compound oil-soluble.
Utaka further discloses in paragraph 0046, thus, in order to solubilize these cores, the total charge among all the ligands must be −4. Four monoanionic ligands are preferred. Without wishing to be bound by any theory, two or more trinuclear cores may be bonded to one or more ligands or interconnected by one or more ligands, and the ligands may be polyvalent (i.e., have multiple connections to one or more cores). Oxygen and/or selenium may be substituted for sulfur in the cores.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the molybdenum compounds of Kamano would encompass the molybdenum compounds of Utaka due to Kamano and Utaka disclose known molybdenum compounds are added to lubricating oil compositions in order to aid in the improvement of fuel consumption, wear prevention effects and high-temperature oxidation stability of a lubricating oil composition for an internal combustion engine having a decreased viscosity.
The motivation to do so, Utaka further discloses the lubricating oil compositions showed a low rate of increase (%) in kinematic viscosity under high temperature and were superior in high-temperature oxidation stability (see paragraph 0102 of Utaka).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamano (US 2009/0203561) in view of Yamada (US 2013/0029892) and Utaka et al. (US 2015/0175927) hereinafter “Utaka” and further in view of Tamura et al. (WO 2018/070363 A1) hereinafter English Translation “Tamura”.
Regarding Claim 9
Kamano modified by Yamada and Utaka discloses the claimed invention of claims 1-6, 8 and 10-21 but fails to further disclose the claimed roughness of claim 9 of the present invention.
However, Tamura discloses in the abstract, the lubricating oil composition does not necessitate restrictions on the use environment thereof with regard to temperature, pressure, and the like and can stably achieve an excellent friction reduction effect even when used between sliding members in which the surface roughness’s of the sliding surfaces thereof are reduced and the clearance is a few nm. Tamura discloses on page , the lubricating oil composition has no restrictions on the usage environment such as temperature and pressure, the surface roughness of the sliding surface is reduced, and it is stable even when used between sliding members having a clearance of several nm. Excellent friction reduction effect. Tamura further discloses on page , the lubricating oil composition may further contain an organomolybdenum friction modifier as long as the effects are not impaired, but the smaller the content, the better.
It is to be noted, the present invention discloses “less than 0.45 µm”. For examination purposes, the examiner is interpreting the claim to encompass zero.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the addition of the molybdenum compound used as a friction modifier of Kamano would aid in the improvement in the surface roughness, as taught by Tamura. The motivation to do so is to add friction modifiers to a lubricating oil composition in order for the lubricating oil composition to improve the surface roughness when applying the lubricating oil composition to various surfaces.
Response to Arguments
Applicant's arguments and Declaration under 37 C.F.R. 1.132, filed February 23, 2026 have been fully considered but they are not persuasive. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicants argued: “Since Kamano, Yamada, Utaka, and Tamura all fail to teach or suggest the recited molar ratio [(α)/(β)] as well as fail to recognize the recited molar ratio [(α)/(β)] as a result- effective variable, the recited molar ratio [(α)/(β)] is not obvious over Kamano, Yamada, Utaka, and Tamura. Thus, it is respectfully submitted that Claim I and claims depending therefrom are not obvious over the cited references.”
Applicants arguments are not deemed persuasive. As stated in the above rejection, Kamano modified by Utaka specifically disclose the claimed Formula (m1) of the molybdenum dithiocarbamate (MoDTC) of the currently claimed invention. Utaka specifically discloses the hydrocarbons of the R1 to R4 substituents of MoDTC includes short and long chain due to the carbon range is 4 to 22 that is linear or branched. Therefore, the R1 to R4 substituents of the MoDTC overlaps the claimed groups and also overlaps the claimed molar ratio of long and short chain substituents. Applicants arguments and the Declaration directed to examples and comparative examples defined in the specification are not deemed persuasive. The examiner acknowledges these results, however, the examples are insufficient to overcome the above rejection because the examples do not allow a determination of a trend for the results. The examples no way allow the examiner to determine a trend for the results for any and all amounts of presently claim 1. The present data only shows one example and one comparative example and the comparison fails to show a difference in molar ratio [(α)/(β)] due to the results being 0.1 difference. Additionally, the examples are not commensurate in scope with the claims because the example is directed to specifics not literally defined by the claims, for example, the examples use specific amounts, specific molybdenum and a specific oil blend which are all not commensurate in scope with claim 1 at least. Evidence of unexpected results must be clear and convincing. In re Lohr 137 USPQ 548. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356.
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.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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