DETAILED ACTION
This is in response to the claim amendments and arguments filed 24 November 2025. Claims 1-23 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claim 4, dependent on Claim 1, there is no proper antecedent basis for “wherein one of R1, R2, R3 and R4 is a hydrocarbyl group having about 3 to about 20 carbons”. Claim 1 was amended to delete “hydrocarbyl group” and to add alkyl or alkenyl group.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hefei (CN 107353980).
Hefei discloses a high temperature chain oil composition and a preparing method thereof. The composition is prepared from, by weight, 70-90 parts of hydrogenation mineral oil, 20-40 parts of pentaerythritol fatty acid ester, 10-20 parts of phthalate (a diester polarity modifier), 5-15 parts of polyalkylene glycol, 3-6 parts of a high temperature antioxidant, 1-5 parts of a dispersing agent, 3-10 parts of an extreme pressure anti-wear agent, 0.1-0.6 parts of an anti-rust agent, 0.5-5 parts of an antifoaming agent and 0.02-0.08 parts of a pour point reducer. The anti-rust agent is selected from a group including dodecyl succinic acid or alkenyl succinic acid.
Embodiment 1 discloses a composition made from 77kg hydrogenated mineral oil, 25kg pentaerythritol fatty acid ester, 15 kg phthalic acid ester, 5 kg PANA antioxidant, 8 kg polypropylene glycol of molecular weight 1500 g/mol and 0.3 kg dodecenyl succinic acid antirust agent, which anticipates claims 1-7.
Response to Arguments
In response applicant argued that Hefei does not disclose a carboxylic acid ester wherein at least one R group is an alkyl or alkenyl group. This is not deemed to be persuasive since Hefei discloses a dodecyl succinic acid or alkenyl succinic acid. It is suggested that applicant submit an English translation or Hefei (CN 107353980).
Claim Rejections - 35 USC § 102
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cardis et al. (US 2003/0125218).
Cardis et al. discloses in Table 5, Example D, a composition comprising an ashless dithiocarbamate, a polyoxyalkylene alcohol in TCP solvent, an ashless succinimide, an ashless alkylated succinic acid and esters thereof, phosphorous anti-wear additives, and di-isotridecyl adipate which anticipates claims 1-8.
Response to Arguments
In response applicant argued that Cardis et al discloses a di-isotridecyl adipate which is not compatible with the claimed carboxylic acid structure. This is not deemed to be persuasive since claim 8 in this application sets forth several adipate diesters such as di(tridecyl) adipate and di(isotetradecyl) adipate.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Habeeb et al. (US 2013/0005633) in combination with Hayashi et al [US 2018/0320103] and Okazaki (US 7,732,386).
Habeeb et al [“Habeeb”] discloses lubricating compositions comprising in admixture at least 40 wt.% of a base stock selected from the group consisting of Group I, Group II, Group III, Group IV and Group V base stocks, or any combination thereof, one or more polyalkylene glycol mono ethers, and at least one additive.
Habeeb discloses that in one embodiment the lubricating composition comprises a co-base stock which is one or more chosen from the group consisting of esters and alkylated naphthalenes [0019]-[0020]. In regard to dependent claims 8 and 17, although the cited diesters are not taught by Habeeb, Hayashi et al [“Hayashi”] is added to teach that such diesters are known in the art as synthetic base oils [0029]. Thus, the examiner is of the position that it would have been obvious to have added such diesters to the composition disclosed in Habeeb since Habeeb provides motivation for the addition of an ester co-base stock.
Habeeb discloses in one embodiment that the polyalkylene glycol mono ethers of the lubricating composition are represented by the formula in [0011] wherein R1 is a C1-C12 and may be linear or branched, R2 is a C1-C6 and may be linear or branched, and n is such that the molecular weight is up to about 5000.
Habeeb discloses that the additive is one or more chosen from the group consisting of friction modifiers, antiwear additives, and others including corrosion inhibitors and antirust additives [0016].
Although Habeeb does not disclose succinic acid compounds as antirust additives, Okazaki is added to teach that such additives are known in the art.
Okazaki discloses a finished lubricant comprising a rust inhibitor and a lubricating base oil in an amount of between about 60 to about 98.5 wt.%. The rust inhibitor comprises: a) a solubility improver in an amount between about 0.10 to about 20 wt.%, b) a mixture of amine phosphates in an amount between about 0.001 to about 2 wt.%, and c) an alkenyl succinic compound selected from the group consisting of an acid half ester, an anhydride, an acid, and mixtures thereof in an amount between about 0.0005 to about 1.0 wt.%. COL.2, L15-32.
Thus, having the prior art references before the inventor(s) at the time the invention was made it would have been obvious to have added the rust inhibitor taught in Okazaki to the lubricating compositons taught by Habeeb if the known imparted property was so desired.
Response to Arguments
In response applicant argued that Habeeb does not disclose the polyalkylene glycol of the presently claimed invention since the structure disclosed in Habeeb is an alcohol (has an end -OH group). This is not deemed to be persuasive since the polyalkylene glycol in the claims recites “wherein each R7, R8 and R9 is independently hydrogen or hydrocarbyl radical group” (emphasis added) which would result in an end -OH group.
Claim Rejections - 35 USC § 103
Claim(s) 9-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bouvier et al. (2023/0167380) in combination with Hayashi et al (US 2018/0320103) and Okazaki (US 7,732,386).
Bouvier et al [“Bouvier”] discloses lubricating oil compositions used in either electric or hybrid vehicles. The compositions comprise at least one base oil and at least one additive chosen from antiwear additives, extreme pressure additives, antioxidants, anti-corrosion additives, metal deactivator additives, anti-foam agents, dispersants, and mixtures thereof [0012].
Bouvier teaches that the lubricating composition can comprise one or a plurality of base oils, e.g. a mixture of two, three or four base oils [0034]. Mixtures of synthetic and mineral oils may be used [0037]. Synthetic oils include carboxylic acid esters (diesters) and polyalkylene glycol obtained by polymerization or copolymerization of alkylene oxides comprising 2 to 8 carbon atoms [0039].
In regard to dependent claim 17, although the cited diesters are not taught by Bouvier, Hayashi et al [“Hayashi”] is added to teach that such diesters are known in the art as synthetic base oils [0029]. Thus, the examiner is of the position that it would have been obvious to have added such diesters to the composition disclosed in Hayashi since Hayashi provides motivation for the addition of an ester base oils.
Although Bouvier does not disclose succinic acid compounds as anti-corrosion (antirust) additives, Okazaki is added to teach that such additives are known in the art.
Okazaki discloses a finished lubricant comprising a rust inhibitor and a lubricating base oil in an amount of between about 60 to about 98.5 wt.%. The rust inhibitor comprises: a) a solubility improver in an amount between about 0.10 to about 20 wt.%, b) a mixture of amine phosphates in an amount between about 0.001 to about 2 wt.%, and c) an alkenyl succinic compound selected from the group consisting of an acid half ester, an anhydride, an acid, and mixtures thereof in an amount between about 0.0005 to about 1.0 wt.%. COL.2, L15-32.
Thus, having the prior art references before the inventor(s) at the time the invention was made it would have been obvious to have added the rust inhibitor taught in Okazaki to the lubricating compositons taught by Bouvier if the known imparted property was so desired.
Response to Arguments
In response applicant argued that the mere presence of diesters in Bouvier and Hayashi is insufficient to establish a motivation to combine. This is not deemed to be persuasive. As set forth above, Bouvier teaches that the lubricating composition can comprise one or a plurality of base oils, e.g. a mixture of two, three or four base oils [0034]. Mixtures of synthetic and mineral oils may be used [0037]. Synthetic oils include carboxylic acid esters (diesters). Hayashi is added to teach that such diesters are known in the art as synthetic base oils [0029]. Thus, the examiner is of the position that it would have been obvious to have added such diesters to the composition disclosed in Hayashi since Bouvier provides motivation for the addition of an ester base oils.
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 ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
January 28, 2026