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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/23/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2-3 recite a content of nitrogen atoms derived from the boron-modified alkenyl succinimide with an upper bound of 320 ppm. However, claim 1, from which claims 2-3 depend, recite a maximum boron content of 95 ppm and a boron to nitrogen mass ratio of 0.35, implying a maximum content of nitrogen atoms derived from the boron-modified alkenyl succinimide of about 271 ppm. Claims 2-3 therefore fail to further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-8, 12-13, 15-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Narita (U.S. PG Pub. No. 2020/0172825) in view of Goto (U.S. PG Pub. No. 2020/0231894) and Hata (U.S. PG Pub. No. 2007/0155632).
In paragraph 1 Narita discloses a lubricating oil composition and a mechanical device including the lubricating oil composition. In paragraph 8 Narita discloses that the composition comprises a base oil, as recited in claim 1. In paragraphs 40-41, 56 and 60 Narita discloses that the composition can comprise thiadiazole-based compounds, as recited in claim 1. In paragraphs 44, 56, and 60 Narita indicates that the concentration of the additives which can be thiadiazole-based compounds falls within or overlaps the range recited in claim 1. In paragraphs 50-52 Narita discloses that the composition can comprise an ashless dispersant which can be a succinimide and can be boron-modified, as recited in claim 1. In paragraph 8 Narita discloses that the composition comprises a mixture of phosphorus-based compounds, and in paragraph 36 Narita discloses that one of the phosphorus-based compounds can be a sulfur-containing acidic phosphoric acid ester such as S-octyl thioethyl acid phosphite or S-dodecyl thioethyl acid phosphite, meeting the limitations of the sulfur-phosphorous compound (d-11) of amended claim 1 for the case where a1 is 2 and RA11 is an alkyl group having 8 or 12 carbon atoms . In paragraph 65 Narita discloses that the viscosity of the composition is even more preferably 2.5 to 10 mm2/s at 100° C, overlapping the ranges recited in claims 1 and 15. Narita does not disclose the inclusion of molybdenum-based additives, meeting the limitation of claim 1 regarding the absence of a molybdenum-based friction modifier. In paragraph 67 Narita discloses that the composition even more preferably has a viscosity index of 103 or more, encompassing the range recited in amended claim 1.
In paragraph 41 Narita discloses that the thiadiazole-based compound can comprise a branched-chain alkyl group, as recited in claims 7 and 19, and that the alkyl group preferably has 6 to 20 carbon atoms, within the range recited in newly added claim 23. The compositions of Narita do not require the inclusion of a sulfurized olefin, and even if the sulfur-based compound (D) of Narita is a sulfur-based olefin, Narita discloses in paragraph 44 that the concentration of the sulfur-based compound (D) falls within or overlaps the range recited in claims 8 and 20.
The differences between Narita and the currently presented claims are:
i) Narita does not disclose specific boron-modified alkenyl succinimides having the claimed boron content and boron to nitrogen ratio.
ii) Narita does not disclose the further inclusion of the sulfur-phosphorous compound (d-12) of claim 1.
iii) Narita does not explicitly disclose lubricating a speed reducer with the composition. This relates to claims 12-13.
iv) Some of the ranges of Narita overlap the claimed ranges rather than falling within them.
With respect to i), in paragraphs 2 and 8-21 Goto discloses lubricating oil composition comprising an ashless dispersant. In paragraphs 24-25 and 102 Goto discloses that the composition can be a transmission oil for use in a hybrid vehicle, in accordance with the use disclosed in paragraph 72 of Narita. In paragraph 75 Goto discloses that the boron to nitrogen ratio of the ashless dispersant ranges from 0.1 to 1.0, overlapping the range recited in claims 1, 4, and 16. In paragraph 76 Goto discloses that the ashless dispersant is present in the composition in an amount of 0.1 to 10% by weight (1,000 to 100,000 ppm), and in paragraph 74 discloses that the boron content of the ashless dispersant ranges from 0.4 to 2% by weight, leading to a boron content range of 4 to 2,000 ppm by weight of the overall composition, overlapping the range recited in amended claim 1 as well as claims 5 and 17. The combination of boron content and boron to nitrogen ratio of Goto implies a range of nitrogen contents overlapping the ranges recited in claims 2-3. In paragraphs 70-71 Goto discloses that the ashless dispersant can be a bis-succinimide, as recited in claims 6 and 18.
It would have been obvious to one of ordinary skill in the art to use the boronated succinimide of Goto as the boron-modified succinimide of Narita, in the amount taught by Goto, since Goto teaches that it is a suitable boronated succinimide for use in a lubricating composition for a transmission used in a hybrid vehicle, and in order to obtain the advantages taught at the bottom of paragraphs 73 and 76 of Goto.
With respect to ii), in paragraphs 9-12 Hata discloses a lubricating composition comprising a phosphoric ester containing a hydrocarbon group having a thioether bond. In paragraph 47 Hata discloses that these can be mono- or di-(octylthioethyl)hydrogen phosphite or mono- or di-(dodecylthioethyl)hydrogen phosphite, where the mono-substituted compounds have the structure (d-11) of amended claim 1 and are disclosed by Narita as discussed above, and the di-substituted compounds have a structure meeting the limitations of (d-12) of claim 1.
Case law holds that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). Hata discloses in paragraph 50 that the phosphoric esters impart good wear resistance, and Narita discloses in paragraph 37 that the acidic phosphorus-based compounds impart abrasion resistance, which is a form of wear resistance. The mono-substituted compounds having the formula (d-11) of Narita and the di-substituted compounds (d-12) taught by Hata are therefore useful for the same purpose, and it would have been obvious to one of ordinary skill in the art to combine them in the composition of Narita, leading to a mixture of sulfur-phosphorous compounds as recited in amended claim 1.
With respect to iii), Narita discloses in paragraphs 70 and 72 using the compositions for a transmission, a motor/batter cooling device, or motors mounted on hybrid or electric cars. In paragraph 3 Narita discloses that hybrid and electric cars can be equipped with a gear speed reducer, requiring the lubricating compositions used therein to have both cooling ability and lubricity. In paragraph 11 Narita indicates that the compositions of the reference have excellent lubricity and cooling performance. It therefore would have been obvious to one of ordinary skill in the art to use the compositions of Narita to lubricate a hybrid or electric motor equipped with a gear speed reducer, meeting the method limitation of claim 12 and producing a speed reducer meeting the limitations of claim 13, since Narita teaches that the compositions of the reference have the properties desired for such an application.
With respect to iv), see MPEP 2144.05(I): “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 light of the above, claims 1-8, 12-13, 15-20, and 23 are rendered obvious by Narita in view of Goto and Hata.
Response to Arguments
Applicant's arguments filed 1/23/26 have been fully considered but they are not persuasive. Applicant argues that it would not be obvious to one of ordinary skill in the art to combine Narita with Goto, since Goto does not comprise a viscosity index improver, while Narita allows for the inclusion of a viscosity index improver. Goto is cited in the rejection for its teaching of a suitable boron and nitrogen concentration and ratio in the boron-containing succinimide dispersant. There is no indication that these preferred concentrations and ratios are at all dependent on the presence or absence of a viscosity index improver, and applicant has not provided any evidence to indicate that one of ordinary skill in the art would not have incorporated the teachings of Goto regarding the dispersant into the composition of Narita.
Applicant argues that the claimed boron concentration leads to unexpectedly superior results, citing the data supplied in Table 1 of the specification. In order to successfully overcome a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case, the inventive examples supplied by applicant comprise specific amounts of a specific base oil blend, a specific thiadiazole, specific boron-containing succinimides having a B/N ratio of 0.5 to 1.1, and a specific mixture of sulfur-phosphorous compounds, while the claims allow for broad concentration ranges of broad classes of base oils and additives. Applicant has not demonstrated that superior results would be maintained across the full scope of the claims. Applicant also must demonstrate that the results are of practical significance. See MPEP 716.02(b). Paragraph 109 of the specification states that Examples 1-13 of Table 1, including examples comprising more than 95 ppm of boron, “were superior in all characteristics of scuffing resistance, copper elution suppressing effect, oxidation stability, and insulation properties in a balanced manner”. Applicant has not explained why differences between specific properties of these “superior” compositions are of practical significance. Applicant therefore has not demonstrated evidence of unexpected results sufficient to rebut the prima facie case of obviousness set forth in the rejection.
Applicant argues that Narita does not teach a composition with a viscosity index of 117 or more, but as discussed in the rejection Narita discloses that the composition has a viscosity index in a range encompassing the claimed range. See MPEP 2144.05(I): "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Applicant argues that the cited references do not disclose the combination of sulfur-phosphorous compounds (d-11) and (d-12) recites in the amended claims, but as discussed in the rejection, the newly cited Hata reference provides motivation to combine the mono-substituted sulfur-containing acid phosphites of Narita with di-substituted sulfur-containing acid phosphites.
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771