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 10/22/25 do not overcome the rejections set forth in the office action mailed 5/2/25. The discussions of the rejections have been updated as necessitated by the amendments.
Claim Rejections - 35 USC § 103
Claims 1, 4-5, 7, 9, 11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Qin (U.S. Pat. No. 8,937,035) in view of Patterson (U.S. PG Pub. No. 2018/0312775).
In column 1 lines 9-14, Qin discloses a lubricating composition and methods of lubricating a mechanical device with the composition. In column 4 lines 1-7, Qin discloses that the mechanical device can be an industrial gear or an automotive gear. In column 2 lines 16-18 Qin discloses that the composition comprises an oil of lubricating viscosity, as recited in component (a) of claim 1. In column 9 lines 12-24, Qin discloses that the composition can comprise various additives, including extreme pressure agents, friction modifiers, and anti-wear agents. In column 13 lines 62-66, Qin discloses that the extreme pressure agent can be a sulfurized olefin derived from propylene, isobutylene, or pentene, meeting the limitations of the structure of the sulfurized olefin of component (b) of claim 1. In column 13 lines 57-61 Qin discloses that the extreme pressure agent can be present in an amount of 0.05 to 10% by weight, encompassing the range recited for component (b) of claim 1. In column 15 lines 15-36, Qin discloses that the friction modifier can be a hydroxyalkyl-substituted amine, such as bis[2-hydroxyethyl]tallow-amine (ETHOMEEN™ T/12), bis[2-hydroxyethyl]soyamine (ETHOMEEN™ S/12) or bis[2-hydroxyethyl]octadecylamine (ETHOMEEN™ 18/12), meeting the limitations of the hydroxyalkylamine of amended claim 1. In column 15 lines 51-53 Qin discloses that the friction modifier can be present in an amount of 500 to 10,000 ppm (0.05 to 1%) by weight, encompassing the range recited for component (c) of claim 1. From column 11 line 66 through column 12 line 14 Qin discloses that the anti-wear agent can be a metal dialkyldithiophosphate, meeting the limitations of the metal alkylthiophosphate of component (d)(i) of claim 1, and specifically discloses zinc dialkyldithiophosphates (ZDDP), as recited in claim 5. In column 11 lines 31-62 Qin discloses that the composition can also comprise a thiadiazole-functionalized dispersant, as recited in component (d)(ii) of claim 1. In column 11 lines 63-65 Qin discloses that the dispersant can be present in an amount of 1 to 6% by weight, within the range recited for component (d)(ii) of claim 1. Lubricating an industrial or automotive gear with the composition of Qin meets the method limitations of claims 13-15.
The differences between Qin and the currently presented claims are:
i) Qin does not specifically disclose the sulfur content of the sulfurized olefin.
ii) Qin does not disclose the concentration of ZDDP antiwear agent.
iii) Qin does not disclose the additional inclusion of an amine alkyl(thio)phosphate compound. This relates to claim 4.
iv) Qin does not disclose the overall sulfur or phosphorus content of the composition. This relates to claims 1 and 11.
With respect to i), in paragraphs 9-10 Patterson discloses a lubricant composition and a method of lubricating a gear with the composition. The lubricant composition of Patterson comprises a sulfurized olefin. In paragraphs 40-46 Patterson discloses that the sulfurized olefins can have structures meeting the limitations of the structure of component (b) of claim 1, corresponding to the sulfurized olefin of component (b) of claim 1 when the R groups have 4 carbon atoms. In paragraph 43 Patterson discloses that the sulfurized isobutylenes can have a sulfur content of 40 to 45% by weight, within the ranges recited in claim 1, and in the tables following paragraphs 81 and 83, Patterson discloses sample compositions comprising sulfurized C4 olefins having sulfur contents of 44% or 45% by weight, also meeting the limitations of claim 1.
It would have been obvious to one of ordinary skill in the art to include the sulfurized olefins of Patterson, such as the sulfurized isobutylene of Patterson, as the sulfurized olefin in the composition of Qin, since Patterson teaches that they are suitable sulfurized olefin additives for use in gear lubricant compositions.
With respect to ii), In paragraph 71 Patterson discloses that the lubricant composition can comprise 0.09 to 0.82% by weight of ZDDP, within the range recited for component (d)(i) of claim 1. In paragraph 71 Patterson further teaches that the ZDDP is present to deliver 0.01 to 0.2% by weight of phosphorus to the composition. Since ZDDP contains one zinc atom per two phosphorus atoms, the molecular weight of zinc is about 65.38 and the molecular weight of phosphorus is about 30.97, the ratio of zinc to phosphorus in ZDDP is about 1.06:1, and the amount of zinc provided by the ZDDP will overlap the range recited in claim 7. 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);”
It would have been obvious to one of ordinary skill in the art to use the ZDDP in the composition of Qin in the amount taught by Patterson, since Patterson teaches that it is a suitable concentration range for ZDDP in a gear lubricant composition.
With respect to iii), Patterson discloses in paragraphs 9, 21-38, and the examples that the composition can also comprise 0.3 to 2.0% by weight of an amine salt of a phosphorus compound, such as an amine alkylphosphate (branched C8 amine salt of di-isooctyl phosphate of paragraph 38 and examples 4-8 of Patterson) or an alkylthiophosphate (paragraphs 22-38 and examples 4-8 and 11), meeting the limitations of claim 4.
With respect to iv), examples 4-8 of Patterson disclose compositions having sulfur and phosphorus contents within the ranges recited in claims 1 and 11. In paragraph 38 Patterson more broadly discloses that the total amount of phosphorus in the lubricant composition from all sources can be 0.03 to 0.30% by weight, within the range recited in claim 11.
It would have been obvious to one of ordinary skill in the art to formulate the composition of Qin and Patterson to have the sulfur and phosphorus contents of Patterson, since Patterson teaches that those are suitable sulfur and phosphorus contents for gear lubricants.
In light of the above, claims 1, 4-5, 7, 9, 11, and 13-15 are rendered obvious by Qin in view of Patterson, noting that since the composition of Qin and Patterson meet the compositional limitations of the claims, lubricating an automotive or industrial gear with the composition, as taught by Qin, will lead to the effects recited in claims 13-15.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Qin in view of Patterson as applied to claims 1, 4-5, 7, 9, 11, and 13-15 above, and further in view of Saccomando (U.S. PG Pub. No. 2016/0222311)
The discussion of Qin in view of Patterson in paragraph 3 above is incorporated here by reference. Qin and Patterson disclose a composition meeting the limitations of claim 1 and comprising ZDDP, but do not specifically disclose the inclusion of a secondary ZDDP.
In paragraph 6 Saccomando discloses lubricating a gear with a lubricating composition. In paragraph 83 Saccomando discloses that the composition can comprise ZDDP as an anti-wear agent, and in paragraph 84 Saccomando discloses that the ZDDP can comprise or consist of secondary ZDDP, meeting the limitations of claim 6.
It would have been obvious to one of ordinary skill in the art to use a ZDDP comprising or consisting of secondary ZDDP as the ZDDP in the composition of Qin and Patterson, since Saccomando teaches that it is an effective ZDDP anti-wear agent for a gear lubricating composition.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Qin in view of Patterson as applied to claims 1, 4-5, 7, 9, 11, and 13-15 above, and further in view of Higuchi (WO 2019/136052 A1).
The discussion of Qin in view of Patterson in paragraph 3 above is incorporated here by reference. Qin and Patterson disclose a composition meeting the limitations of claim 1, and in column 14 lines 9-31 Qin discloses that the composition can comprise a boron-containing compound such as a borate ester or borated dispersant, but does not disclose a composition having a boron content within the range recited in claim 12.
Higuchi, in paragraph 1, discloses an automotive gear oil, and in paragraph 4 Higuchi discloses that the composition comprises at least one boron containing compound in an amount sufficient to provide from about 75 to about 500 ppm of boron to the composition, within the range recited in claim 12. In paragraphs 7 and 37-44 Higuchi
Discloses that the boron-containing compound can be a borate ester or borated dispersant.
It would have been obvious to one of ordinary skill in the art to include the boron-containing compound of Qin in the composition of Qin and Patterson in the amount taught by Higuchi, since Higuchi teaches that it is a suitable amount of boron-containing compound for a gear lubricating composition.
Response to Arguments
Applicant's arguments filed 10/22/25 have been fully considered but they are not persuasive. Applicant argues that the claimed composition and methods produce unexpectedly superior results, and provides a declaration by FIlippini containing additional experimental data. The amendment filed 10/22/25 also narrows the claims to be more reflective of the inventive examples provided in the specification and the declaration. In order to successfully rebut a prima facie case of obviousness applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). While the amendments and additional data bring the results closer to commensurateness, applicant still has not demonstrated that superior results would be maintained across the full scope of the claimed range for the hydroxyalkylamine containing booster (c), since the claims allow for a concentration of 600 to 3000 ppm, and all the inventive examples contain 1840 ppm of the hydroxyalkylamine containing booster. Applicant asserts, on the second page of the declaration of Filippini, that “it is reasonable to expect that each of the claimed hydroxyalkylamine containing boosters would provide similar performance given their structural similarity from 600 to 3000 ppm”. While the examiner agrees that the claimed hydroxyalkylamine containing boosters are have very similar structures, applicant does not explain why one of ordinary skill in the art would expect superior results to be maintained across the full scope of the claimed concentration range. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979), but in this case since there is only one data point provided for the hydroxylamine containing booster, no trend can be determined, and applicant has not provided any other reasoning as to why the superior results would be maintained across the full scope of the range.
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