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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/5/2026 has been entered.
Response to Amendment
Applicants’ response filed 8/5/2026 amended claims 1 and 14. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 103 rejection over Scherer in view of Showa from the office action mailed 5/5/2026; therefore, this rejection is maintained below.
Specification
The amendment filed 8/05/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: claim 1 is amended to include “to about 150 cSt and a kinematic viscosity at 40°C of about 1000 cSt to about 1200 cSt” – there is no support for this amendment in the specification as in the specification this is KV40 range for the lubricant composition as a whole and NOT the PAG thickener.
Applicants also amended the claims with the limitation “wherein the lubricant composition is a single-phase composition at temperatures from 40°C to 100°C, and”. There is no support for this amendment and this amendment is not inherent. There is no showing as applicants assert that the PAG remains dissolved in the PAO base oils across all temperature ranges.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claims 1 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The added material which is not supported by the original disclosure appears in claim 1 the only independent claim and is as follows: claims 1 and 14 are amended to include “to about 150 cSt and a kinematic viscosity at 40°C of about 1000 cSt to about 1200 cSt” – there is no support for this amendment in the specification as in the specification this is KV40 range for the lubricant composition as a whole and NOT the PAG thickener. Applicants also amended claims 1 and 14 as follows: “wherein the lubricant composition is a single-phase composition at temperatures from 40°C to 100°C, and”. There is no support for this amendment and this amendment is not inherent. There is no showing as applicants assert that the PAG remains dissolved in the PAO base oils across all temperature ranges. For this reason, applicants have added new matter into the disclosure with their amendment.
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claims 1, 4-8 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Scherer et al., US Patent Application Publication No. 2016/0083667 (hereinafter referred to as Scherer) in view of Showa, JP Publication No. JP2015010138A (hereinafter referred to as Showa).
Regarding claims 1, 4-8 and 11-16, Scherer discloses a lubricating composition for use in axle applications (as recited in claims 1, 14 and reads on claim 6) (Para. [0007]) comprising 52 wt% of a PAO base oil (as recited in claims 1, 14 and reads on claims 7 and 15) (see Table 1) to which is added 5 to 50 wt% of a thickener which includes polyisobutylene/PIB (as recited in claims 1, 14 and reads on claims 16-17) (see Table 1 and Para. [0058]-[0059]), 0.5 to 70 wt% of a second thickener (as recited in claims 1, 14) (see Table 1) (Para. [0057]-[0060]), 10 wt% of di-(2-propylheptyl)-adipate (DPHA) (diester as recited in claims 4 and 11) (see Table 1), 12 wt% of an additive package, such as, Anglamol 6004, and 1 to 5 wt% of additives including anti-foam agents (as recited in claims 5 and 12-13) (Example 3/H).
Scherer discloses all the limitations discussed above but does not specifically disclose the KV100 of the thickener, the KV100, KV40 or the viscosity index of the lubricant composition as recited in claims 1, 8 and 14.
Showa discloses a lubricant composition comprising a PAO base oil to which is added a PAG thickener having a KV100 ranging from 2.5 to 100 mm2/s (as recited in claims 1 and 14) (Para. [0033]) wherein the composition has a viscosity index ranging from 100 to 300, a KV100 ranging from 5 mm2/s or higher, and a KV40 ranging from 5 to 100 mm2/s (as recited in claims 1, 8 and 14) (Para. [0003] and [0040]-[0041]). It would have been obvious to one of ordinary skill in the art at the time of the invention as it is a combination of prior art elements according to known methods to yield predictable results.
Response to Arguments
10. Applicants’ arguments filed 8/5/2026 regarding claims 1, 4-8 and 11-16 have been fully considered and are not persuasive.
Applicants argue that Showa is not a valid secondary reference to combine with Scherer and read on the instant claims because Showa discloses a PAG thickener that is NOT oil-soluble as Showa discloses a two-phase separation system and applicants point to paragraph 0027 to further buttress their argument. This argument is not persuasive. Showa in paragraph 0027 explicitly discloses that the high viscosity component/PAG is used together with the low viscosity component lubricating oil base oil does not substantially mix with the low viscosity component at low temperatures BUT mixes at high temperatures. Showa goes on to teach in paragraph 0043, that the lubricating oil composition is mixed in such a way that the PAG increases the viscosity of the low-viscosity component/base oil in the high-temperature range (more preferably, the low-viscosity component and the high-viscosity component are uniformly mixed). The preferred lubricating oil composition of the present invention separates into two phases at temperatures below 60°C, and becomes a single phase (uniform) above the separation temperature (60°C to 120°C). Furthermore, the lubricating oil composition of the present invention can be arbitrarily controlled to a desired separation temperature. Throughout the specification Showa discloses a single-phase composition and therefore applicants’ arguments are not persuasive.
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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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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