Prosecution Insights
Last updated: April 19, 2026
Application No. 18/569,305

HEAT-TREATMENT OIL COMPOSITION

Non-Final OA §103
Filed
Dec 12, 2023
Examiner
MCAVOY, ELLEN M
Art Unit
1771
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Idemitsu Kosan Co. Ltd.
OA Round
1 (Non-Final)
73%
Grant Probability
Favorable
1-2
OA Rounds
2y 6m
To Grant
82%
With Interview

Examiner Intelligence

Grants 73% — above average
73%
Career Allow Rate
880 granted / 1209 resolved
+7.8% vs TC avg
Moderate +9% lift
Without
With
+8.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
21 currently pending
Career history
1230
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
58.9%
+18.9% vs TC avg
§102
4.7%
-35.3% vs TC avg
§112
14.6%
-25.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1209 resolved cases

Office Action

§103
DETAILED ACTION This is the initial Office action for application SN 18/569,305 having an effective date of 12 December 2023 and a Foreign priority date of 15 June 2021 (Japan). A preliminary amendment was filed on 12 December 2023. Claims 1-10 are pending. 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 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 . Claim(s) 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsumi et al (US 2014/0045738). Tatsumi et al. [“Tatsumi”] disclose sulfur-based lubricating oil additive compositions which have antioxidant properties and wear-resistant properties and are excellent in long-term storage stability [0001]. Tatsumi discloses that the lubricating oil additive compositions are characterized by containing a compound (A) represented by general formula (1) and a compound (B) represented by general formula (2) and by having an acid value of 0.01-0.4 mgKOH/g [0008]. The compound represented by general formula (1), wherein R 1 and R 4 each independently represent a hydrocarbon group having 6 to 18 carbon atoms and R 2 and R 3 each independently represent an alkylene group having 1 to 4 carbon atoms, meet the limitations of claimed compound (B2) represented by formula (b2). I n 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) . Tatsumi discloses that a lubricating oil composition of the invention contains 0.1 to 5 wt.% of the lubricating oil additive composition [0023]. Tatsumi discloses that mineral oils, plant and animal oils, or synthetic oils can be used as base oils, and that mineral oils and synthetic oils are preferably used [0023]. Tatsumi discloses that the lubricating oil additive composition of the invention may contain other components so long as they do not inhibit the effects of the invention. In regard to dependent claim 7, Tatsumi discloses that the other additives include antioxidants [0025]. Tatsumi discloses that the lubricating oil additive composition of the invention can be used in lubricating oils of various technical fields including operating oils, metalworking fluids, thermal medium oils, machine tool oils and the like [0026]. Thus, the examiner is of the position that Tatsumi meets the limitations of the claimed heat treating oil composition of independent claim 1 when sulfur compound (B) is a sulfide compound (B2) represented by formula (b2). In regard to dependent claims 5-6, although Tatsumi does not disclose the sulfur content of the lubricating oil composition, since an amount of 0.1 wt.% of the additive composition may be added to a base oil, the amount of sulfur in the composition is not seen to be outside of the claimed range. In regard to dependent claim 8, renaming the heat treating oil composition of claim 1 as a quenching oil or tempering oil does not render the oil composition of claim 1 patentable. 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. In regard to dependent claim 9, Tatsumi discloses that the lubricating oils of the invention may be used in various technical fields including operating oils, metalworking fluids , thermal medium oils , machine tool oils, and the like [0026]. In regard to method claim 10, the step of mixing the additive composition of Tatsumi in a base lubricating oil is taught [0023]. Allowable Subject Matter Claims 2-4 , when sulfur compound (B) is either sulfide compound (B1) or thiazole compound (B3), 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. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Migdal et al. (US 2005/0170978) disclose lubricant compositions comprising an antioxidant blend. The second antioxidant is a thioether having the general formula set forth in [0020]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ELLEN M MCAVOY whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1451 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday 9:30am - 7:00 pm EST . 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, FILLIN "SPE Name?" \* MERGEFORMAT PREM SINGH can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (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. /ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771 EMcAvoy March 26, 2026
Read full office action

Prosecution Timeline

Dec 12, 2023
Application Filed
Mar 27, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12599884
CIRCULATING FLUIDIZED BED REACTOR USING ELECTRIC HEATING FURNACE
2y 5m to grant Granted Apr 14, 2026
Patent 12600917
LUBRICATING OIL ADDITIVE COMPOSITION AND LUBRICATING OIL COMPOSITION
2y 5m to grant Granted Apr 14, 2026
Patent 12590253
LOW CARBON FOOTPRINT INTEGRATED PROCESS FOR RECYCLE CONTENT OLEFIN PRODUCERS
2y 5m to grant Granted Mar 31, 2026
Patent 12577493
BIO-BASED LUBRICANT COMPOSITIONS
2y 5m to grant Granted Mar 17, 2026
Patent 12577491
BASE OIL AND LUBRICATING FLUID COMPOSITION CONTAINING SAID BASE OIL
2y 5m to grant Granted Mar 17, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
73%
Grant Probability
82%
With Interview (+8.9%)
2y 6m
Median Time to Grant
Low
PTA Risk
Based on 1209 resolved cases by this examiner. Grant probability derived from career allow rate.

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