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 amendments filed 5/27/26 overcome the rejection set forth in the office action mailed 2/13/26. New grounds of rejection necessitated by the amendments are set forth below.
Claim Rejections - 35 USC § 103
Claims 1-6, 8, 12-13, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Umamori (U.S. PG Pub. No. 2019/0177647) in view of Koshima (U.S. PG Pub. No. 2002/0010102).
In paragraph 10 Umamori discloses a lubricating oil composition comprising a base oil, as recited in claim 1, a phosphorus-based extreme pressure agent, and a sulfur-based extreme pressure agent. In paragraph 77 Umamori discloses that the composition can comprise an ashless detergent, and in paragraphs 77-78 and 80 Umamori discloses that the ashless dispersant can be a boronated alkenyl succinimide, meeting the limitations of the boron-modified alkenyl succinimide of claim 1. In paragraph 83 Umamori discloses that the boron to nitrogen ratio of the boronated alkenylsuccinimide can be 0.2 or higher and lower than 1.0, overlapping the range recited in claim 1. In paragraph 84 Umamori discloses that the ashless dispersant can be present in an amount of as low as 100 ppm (0.01%), in which case the boron content supplied by the boronated alkenyl succinimide will clearly overlap the range recited in claim 1. Paragraphs 93 and 96 Umamori that the composition can comprise a thiadiazole-based compound as a corrosion inhibitor or metal deactivator, in amounts overlapping the range recited for the thiadiazole-based compound of claim 1. In paragraph 100 Umamori discloses that the composition can have a kinematic viscosity of 3 to 40 mm2/s or 4 to 20 mm2/s at 100° C, overlapping the range recited in claim 1. Umamori does not require a molybdenum-based friction modifier, as recited in claim 1, and also does not require the inclusion of a neutral sulfur-free phosphorus-containing ester, noting that Umamori discloses in paragraph 54 that extreme pressure agents containing both phosphorus and sulfur are classified as phosphorus-based extreme pressure agents.
Based on the concentration range of ashless dispersant discussed above, where the low end of the range disclosed by Umamori is 100 ppm, the amount of nitrogen provided by the boronated alkenyl succinimide will be in a range overlapping the range recited in claims 2-3, and the amount of boron will overlap the range recited in claims 5 and 16-18. The boron to nitrogen ratio of 0.2 to less than 1 disclosed by Umamori overlaps the range recited in claim 4. In paragraph 79 Umamori discloses that the alkenyl succinimide can be a bis-succinimide, as recited in claim 6. In paragraphs 49-52 Umamori discloses that the sulfur-based extreme pressure agent can be obtained by sulfurization of compounds other than olefins, in which case the composition meets the limitations of claim 8 and 20. The kinematic viscosity range of 3 to 40 mm2/s at 100° C disclosed by Umamori and discussed above overlaps the range recited in claim 15.
In paragraphs 2 and 20-21 Umamori discloses that the composition is useful for a differential gear, which is a speed reducer, as recited in claims 12-13.
Umamori does not disclose the inclusion of the specific sulfur-phosphorus compound of claim 1 as the phosphorus-containing extreme pressure agent.
In paragraph 1 Koshima discloses sulfur-containing organophosphorus compounds and their use as additives for lubricating oils. In paragraphs 7 and 38 Koshima discloses compounds (formulas X and XI) meeting the limitations of compounds (d-11) and (d-12) of claim 1. In paragraph 37 Koshima discloses that the composition can comprise multiple (“at least one”) of the sulfur-containing organophosphorus compounds. 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). It therefore would have been obvious to one of ordinary skill in the art to combine the compounds of formula X and XI of Koshima as the additive of Koshima. The inclusion of this combination of compounds as the phosphorus-based extreme pressure agent in the composition of Umamori meets the limitations of claims 1-6, 8, 15-18, and 20.
It would have been obvious to one of ordinary skill in the art to include the sulfur-containing organophosphorus compounds of Koshima as the phosphorus-based extreme pressure agent in the composition of Umamori, since Koshima teaches in paragraph 81 that lubricating compositions comprising the sulfur-containing organophosphorus compounds satisfy the requirements of extreme pressure lubrication, as well as wear resistance and frictional characteristics, even under severe conditions.
Claims 7, 19, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Umamori (U.S. PG Pub. No. 2019/0177647) in view of Koshima as applied to claims 1-6, 8, 12-13, 15-18, and 20 above, and further in view of Hurley (U.S. PG Pub. No. 2010/0099593).
The discussion of Umamori in view of Koshima in paragraph 3 above is incorporated here by reference. Umamori and Koshima discloses a composition meeting the limitations of claims 1-2, and Umamori discloses that that the composition can comprise a thiadiazole-based corrosion inhibitor or metal deactivator. Umamori does not disclose thiadiazoles having the specific structural features recited in claims 7, 19, and 23.
In paragraph 1 Hurley discloses an additive concentrate comprising a corrosion inhibitor, and in paragraphs 15-19 Hurley discloses a method of lubricating a transmission by supplying to the transmission a lubricating composition further treated with an additive concentrate comprising a corrosion inhibitor. In paragraphs 69-70 Hurley discloses that the corrosion inhibitor can be various thiadiazole-based compounds, and in paragraph 73 discloses various suitable thiadiazoles comprising tert-alkyl groups, meeting the limitations of the branched chain alkyl groups of claims 7 and 19, and having 5 or more carbon atoms, meeting the limitations of claim 23. The inclusion of the thiadiazole-based corrosion inhibitors of Hurley as the thiadiazole-based corrosion inhibitor in the composition of Umamori and Koshima therefore meets the limitations of claims 7, 19, and 23.
It would have been obvious to one of ordinary skill in the art to include the thiadiazole-based corrosion inhibitors of Hurley as the thiadiazole-based corrosion inhibitor in the composition of Umamori and Koshima, since Hurley teaches that they are suitable thiadiazole-based corrosion inhibitors for lubricating compositions used to lubricate transmissions.
Response to Arguments
Applicant’s arguments with respect to claims 1-8, 12-13, 15-20, and 23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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