DETAILED ACTION
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 .
Response to Amendment
Applicant’s response filed 1/2/2026 amended claims 1, 21-22 and 25, cancelled claim 13, and added new claim 32. Applicant’s amendments overcome the 35 USC 112 rejection from the office action mailed 9/3/2025; therefore, this rejection is withdrawn. Applicant’s amendments in light of their arguments are persuasive in overcoming the 35 USC 102/103 rejections over Chiu and Ohno from the office action mailed 9/3/2025; therefore, these rejections are withdrawn. New grounds of rejection necessitated by applicant’s amendments are set forth below.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 10/9/2025 was filed after the mailing date of the non-final office action on 9/3/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. Claims 1-5, 11-12, 14 and 21-32 are rejected under 35 U.S.C. 103 as being unpatentable over Saini et al., US Patent Application Publication No. 2007/0213235 (hereinafter referred to as Saini).
Regarding claims 1, 3-5 and 11, Saini discloses an engine oil lubricant composition (see Abstract) comprising a synthetic oil (reads on synthetic oil as recited in claim 1) (see Abstract and see Tables of Saini) to which is added up to 30 wt% of a dibasic or tribasic/polyol ester, such as, di-tridecyl adipate (reads on diester of claim 1) (Para. [0044]) and those formed by reacting trimethylol propane and C5-12 monocarboxylic acids (reads on triester of claim 1 and reads on claim 3) (see Abstract and Para. [0031]).
Saini further discloses the presence of additives including a viscosity index improver and 0.0 wt% of a fatty acid amide compound (as recited in claim 1 and reads on claim 11) (see Abstract).
Regarding claims 2, 12, 14, 24 and 31, Saini discloses all the limitations discussed above including the compositional components of claims 1 and 22. Saini des not, however, explicitly disclose the density of the lubricating oil composition nor the limitations of claim 12. It is the position of the examiner that the limitations of claims 2, 12, 14, 24 and 31 are inherently disclosed by the Saini reference based on the discussion above.
Regarding claims 21-23, 25-30 and 32, see discussion above.
Response to Arguments
7. Applicant’s arguments filed 1/2/2026 regarding claims 1-5, 11-12, 14 and 21-32 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
The references discussed above adequately read on the claims as instantly recited.
Conclusion
8. 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 VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771