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 .
Election/Restrictions
The restriction requirement as set forth in the Office action mailed on July 25, 2025 has been reconsidered. The restriction requirement is hereby withdrawn. In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 2 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.
The claim is rejected because Applicant recites R1 is a linear or branched alkyl group having 23 or less carbon atoms in total, and when R1 is a branched alkyl group, the number of carbon atoms in the side chain is 15 or less; and R2 is a linear or branched alkyl group having 20 or less carbon atoms in total, and when R2 is a branched alkyl group, the number of carbon atoms in the side chain is 8 or less. Claim 1 has set forth a lower limit for these components, but the language of claim 2 raises doubt as to if those limits are adhered to. Also, in claim 2 the number of carbon atoms in the side chain is 8 or less; however, claim 1 has a side chain of 7 or more. It is not clear how many carbon atoms would be present in the side chain. Clarification is required.
Claim 4 is rejected because the R4 component of claim 1 recites 4 or more carbon atoms; however, claim 4 contains 6 or less carbon atoms. It is not clear if claim 4 contains less than 4 carbon atoms. Clarification is required.
Claims 5 and 7 are rejected because R4 is an alkylene group and not an alkyl group.
Claim 18 is rejected because claim 1 does not provide proper antecedent support for the disk drive device.
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.
Claims 1-3, 8-10, and 12-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Terauchi (US 20190119598-appears on the PTO-1449).
Terauchi teaches a conductive lubricating oil composition including at least one lubricating base oil selected from the group consisting of compounds represented by the following General Formula (1)
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and compounds represented by the following General Formula (2),
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wherein R1 represents a linear or branched alkyl group having from 8 to 16 carbon atoms, and each of m and n independently represents an integer from 5 to 11. R2 represents a linear or branched alkyl group having from 8 to 16 carbon atoms, and each of m and n independently represents an integer from 5 to 11 (see abstract; para 0008-0010). Formula (1) of Terauchi encompasses Formula (1) of the present invention.
The conductive lubricating oil composition further includes at least one antioxidant selected from the group consisting of a diphenylamine compound, a hindered phenol compound, and a phosphite. The antioxidant does not have to be alkylated phenyl-alpha-naphthylamine and the composition does not contain an amine salt of acid phosphate as an anti-wear agent (see para 0011; 0084).
The conductive lubricating oil composition Terauchi can be used as a lubricating oil for motors or bearings of various precision instruments, for example, CD-R, DVD-R, HDD (the disks in a hard drive are typically 3.5 inches in diameter) (see para 0096). Preferred application modes of the conductive lubricating oil composition of Terauchi include a spindle motor (see para 0135). Terauchi teaches a spindle motor comprising a stationary part including a stator, a rotating part including a rotor magnet, and a fluid dynamic pressure bearing part with the conductive lubricating oil composition (see para 0012). Terauchi meets the limitations of the claims other than the differences that are set forth below.
Terauchi does not exemplify an oil that has the claimed R1 and R2 limitations. However, Terauchi teaches that the ester oil may contain 10 or more carbon atoms for R1 and 9 or more carbon atoms for R2 and when branched R2 may have a side chain of 7 or more.
With respect to the disk drive device comprising 9 or more 3.5 inch-diameter disks, it is well settled that courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Terauchi as applied to the claims above, and further in view of Baba (US 20040224860-appears on the PTO-892).
Terauchi has been discussed above. Terauchi does not teach the antioxidants of claim 11. However, Baba teaches this limitation. Baba teaches lubricating oil compositions that use hindered phenols as antioxidants. The antioxidants include octadecyl-3 -(3,5-di-t-butyl-4-hydroxyphenyl)propionate and triethylene glycol-bis[3-(3-t-butyl-5-methyl-4-hydroxyphenyl)propionate] (see para 0058-0059; 0063).
It would have been obvious to one of ordinary skill in the art to have added one of the claimed antioxidants to a conductive lubricating oil composition because Terauchi teaches that hindered phenolic antioxidants may be used in his invention and Baba teaches that such amines include the claimed octadecyl-3 -(3,5-di-t-butyl-4-hydroxyphenyl)propionate and triethylene glycol-bis[3-(3-t-butyl-5-methyl-4-hydroxyphenyl)propionate].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Terauchi (US 20190119598) as applied to the claims above, and further in view of Okamoto (US 9,886,985-appears on PTO-892).
Terauchi does not specifically teach that the device has an internal space filled with a gas having a lower density than air. However, Okamoto teaches this difference.
Okamoto teaches a disk device which contains in the housing a low-density gas, such as helium (col. 1, lines 1927).
It would have been obvious to one of ordinary skill in the art to fill the internal space of the disk with a gas having a lower density than air, such as helium, because it would improve the performance of a disk drive by reducing the rotational resistance of the disk, such as those disks taught by Terauchi.
Claims 1-8 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hatcho (US 20140097717-appears on PTO-892).
Hatcho teaches a fluid dynamic pressure bearing apparatus and a spindle motor including a shaft, a bearing sleeve rotatably supporting the shaft, and a lubricating oil filled between the shaft and the bearing sleeve, and a base oil selected from the group consisting of monoester, dibasic acid diester, diol ester and mixtures thereof (see abstract and para 0003). The spindle motor according to the present invention can be used also as a spindle motor of a hard disk drive (HDD) and the like (see para 0044). The disks in a hard drive are typically 3.5 inches in diameter.
The monoester has the formula
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wherein R1 represents straight-chain or branched-chain alkyl group having 9 to 17 carbon atoms and R2 represents straight-chain alkyl having 8 to 10 carbon atoms or branched-chain alkyl group having 8 to 16 carbon atoms (see para 0025-0026),
The dibasic acid diester has the formula
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wherein R3 and R4 each represent straight-chain or branched-chain alkyl group having 3 to 22 carbon atoms and may be the same or different, and A represents a straight-chain alkylene group having 1 to 10 carbon atoms (see para 0027-0028).
The diol ester has the formula
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wherein R5 and R6 each represent straight-chain or branched-chain alkyl group having 3 to 17 carbon atoms and may be the same of different and B represents straight-chain alkylene group having 2 to 10 carbon atoms or branched-chain alkylene group having 2 to 10 carbon atoms (see para 0029-0030). The composition does not contain alkylated phenyl-alpha-naphthylamine or an amine salt of acid phosphate (these components are not disclosed in Hatcho). Hatcho meets the limitations of the claims other than the differences that are set forth below.
Hatcho does not exemplify an oil that has the claimed R1 and R2 limitations. However, Hatcho teaches that the ester oils may contain R substituents that overlap those ranges of the present. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to the disk drive device comprising 9 or more 3.5 inch-diameter disks, it is well settled that courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18703551/20260306