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 .
The amendment dated 12/23/2025 has been considered and entered. The amendment requires the presence of a propionate compound D) which Monjiyama et al. (WO 2017/217297A1) does not teach, thus overcoming the previous rejection. Therefore, the previous rejection is withdrawn. However, a new grounds of rejection is made as necessitated by the amendment.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Monjiyama et al. (WO 2017/217297A1) in view of Broutin et al. (CN 109072121A) and further in view of Kawamoto et al. (WO 2017/217299A1)
In regards to claim 1, Monjiyama teaches lubricating oil composition comprising an ester base oil derived from 20 to 30% by mol of pentaerythritol, fatty acid having 14 to 22 carbon atoms at 55 to 79% by mol, and adipic acid at 1 to 15% by mol, and wherein the ester has a hydroxyl value of from 10 to 100 mg KOH/g (abstract). The composition can comprise other additives such as phenolic antioxidant, aminic antioxidant [0033, 0034]. The composition can comprise antiwear compound such as phosphate ester amine salts [0037]. The composition is useful for marine oils, hydraulic oils, gear oils, bearing oils etc. [0001]. Monjiyama does not recite the phosphate structure of the claim, and the amount of the phosphate and other additives.
Broutin teaches phosphate ester amine salts having the claimed structure are useful as antiwear in lubricating oils, and which is similar to the claims when in the claimed structure n is 1 or 2, and the R groups are alkyls having overlapping carbon chain lengths [0017 – 0034]. Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the antiwear of Broutin in the composition of Monjiyama, as Monjiyama allows for the use of conventional amine phosphate compounds as antiwear.
Carey et al. (US 2010/0105585) teaches gear oil (abstract). The oil can comprise phosphate antiwear at from 0.05 to 1.5%, amine antioxidant at from 0.05 to 1% [0028, Table 3]. Generally, phenolic antioxidant can be present in amounts of from 0.01 to 5% and aminic antioxidant can similarly be present at from 0.01 to 5% [0135]. When, the additives are used at such low amounts in base oil, the remainder base oil would be present at amounts overlapping the claimed range.
It would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the additives of Carey and in the recited amounts in the composition of Monjiyama, as Carey teaches suitable additives and useful amounts for use in gear oils.
Monjiyama fails to teach the presence of pentaerythritol tetrakis [3-(3,5-di-tert-butyl-4-hydroxy phenyl) propionate of the claim. Kawamoto teaches similar hydraulic, gear oil etc., comprising antioxidants such as pentaerythritol tetrakis [3-(3,5-di-tert-butyl-4-hydroxy phenyl) propionate [0039]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the antioxidant of Kawamoto in the composition of Monjiyama, as Kawamoto teaches useful antioxidants for hydraulic, gear oils etc.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the claimed composition demonstrated superior stability over comparative compositions which was unexpected. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow for the presence of each of the amine antioxidant and the propionate to be present at from 0.3 to 2% and the amine phosphate to be present at from 0.1 to 1.5% in the composition, the inventive examples require each of the amine antioxidant and propionate to be present at from 0.5 to 1.5% and the amine phosphate to be present at from 0.5 to 1.2% which do not support the breadth of the claimed range. The specific amine phosphate of the inventive examples also does not support the various compounds allowed by the claimed structure.
The result is not persuasive.
The results demonstrate similar or superior stability value of comparative examples 1 and 2 over the inventive examples 1 – 5.
Therefore, applicant fails to provide inventive examples commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
Conclusion
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771