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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 4/27/2026 has been entered.
Response to Amendment
Applicant’s response filed 4/27/2026 amended claims 1, 3, 22, 25 and 32, cancelled claims 4-5 and 26-29, and added new claims 33-37. Applicant’s amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Saini from the office action mailed 1/26/2026; therefore, this rejection is withdrawn. A new ground of rejection necessitated by applicant’s amendments is set forth below.
Claim Interpretation
Claims 1 and 21-22 are being interpreted by the examiner as requiring all of the additives enumerated in the claims except the defoamer which is an optional additive.
Claim Objections
Claims 1 and 23 are objected to because of the following informalities: “24 or more carbon atoms and formula (a2-1)” should read “24 or more carbon atoms represented by formula (a2-1)” in claim 1 and something similar in claim 23. Appropriate correction is required.
Claim Rejections - 35 USC § 103
6. 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.
7. 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.
8. Claims 1-3, 11-12, 14, 21-25 and 30-37 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al., International Publication No. WO/2020/085475 (hereinafter referred to as Tamura – for citation purposes USPG-PUB No. 2021/0355404 is being used) in view of Nakada et al., US Patent Application Publication No. 2018/0245014 (hereinafter referred to as Nakada).
Regarding claims 1-3, 11 and 33, Tamura discloses a transmission oil lubricant composition (see Abstract) comprising up to 100 wt% of one or more of an ester synthetic oil, such as, trimethylolpropane reacted with fatty acids having 8, 10 or 12 carbon atoms (reads on (A2) of claim 1 as represented by formula (a2-1) of claim 1 and reads on claims 2-3 – reads on claim 2 as the triester falls within the purview of the formula recited in claim 1) (Para. [0082] and see Table 1), a naphthenic synthetic oil (reads on component (B2) of claim 1) (Para. [0010]), wherein the mixture of base oils comprises between 0.001 to 15 wt% of each additive wherein the additives include a pour point depressant, a viscosity index improver, a detergent, dispersants, a corrosion inhibitor, a rust inhibitor, an anti-foam agent (as recited in claim 1) (Para. [0067]), and no fatty acid amide (as recited in claim 11) (see Table 1) or Group III base oil (as recited in claim 33) (see Table 1).
Tamura discloses all the limitations discussed above but does not explicitly disclose the metal deactivator recited in instant claim 1.
Nakada discloses a lubricating oil composition for use in transmissions (Para. [0002]) comprising a base oil including a triester (Para. [0174]) to which is added additives including metal deactivators (as recited in claim 1) (Para. [0221]), metallic detergents (Para. [0224]), and ashless dispersants (Para. [0222]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the additives of Nakada in the composition of Tamura in order to enhance the viscosmetric properties of the composition.
Regarding claims 12, 14 and 34, Tamura discloses all the limitations discussed above including the compositional components of claim 1. Tamura does not, however, explicitly disclose the limitations of claims 12, 14 and 34. It is the position of the examiner that the limitations of claims 12, 14 and 34 are inherently disclosed by the Tamura reference based on the discussion above.
Regarding claims 21-25, 30-32 and 35-37, see discussion above.
Response to Arguments
9. Applicant’s arguments filed 4/27/2026 regarding claims 1-3, 11-12, 14, 21-25 and 30-37 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
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
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