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
2. Applicants’ response filed 3/9/2026 amended claims 1 and 14, and cancelled claim 17. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Scherer in view of Scherer ‘200 from the office action mailed 12/17/2025; therefore, this rejection is withdrawn. A new ground of rejection necessitated by applicants’ amendments is set forth below.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. 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
6. Applicants’ arguments filed 3/9/2026 regarding claims 1, 4-8 and 11-16 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
It is the position of the examiner that the references discussed above adequately read on the claims as instantly recited.
Conclusion
7. 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
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