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 06/25/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/25/2026 has been entered.
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 any suitable amine antioxidant while the inventive examples require a specific amine antioxidant, i.e., N-[4-(1,1,3,3-tetramethyl butyl) phenyl-1-naphthylamine, which does not support the breadth of the claims which includes myriads of components.
While the claim recites amine phosphate at amounts of from 0.2 to 1.2% in the composition, the inventive examples require the phosphate to be present at amounts of from 0.5 to 1.5% which does not support the breadth of the claims nor demonstrate criticality at the lower amount of the claimed range.
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.
Applicant argues that the rejections are drawn to the use of the additives i.e., amine phosphate, as antiwear while the inventive examples demonstrate that the claimed additives improve stability which is not taught by the prior arts relied upon. The argument is not persuasive.
The prior art clearly recites propionate, i.e., phenolic antioxidant and aminic antioxidant which are known stabilizers and would be expected to improve stability of the composition.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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