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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 .
This Office action is in response to the amendment filed July 10, 2026 in which claims 2, 4-5, 7 and 18 were amended and claim 19 was added.
The rejection of the claims under 35 USC 112 is withdrawn in view of the amendment to the claims.
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 18-19 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.
With respect to the oil having a disk adhesion less than 50%, it would be reasonable to expect that Terauchi would meet this limitation because Terauchi teaches substantially the same oil.
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 and 19 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.
With respect to the oil having a disk adhesion less than 50%, it would be reasonable to expect that Hatcho would meet this limitation because Hatcho teaches substantially the same oil.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that while Terauchi does disclose that R1 in Formula (1) is a linear or branched alkyl group with 8 to 16 carbon atoms, Terauchi does not teach or recognize the importance of having a certain side chain length for those embodiments where R1 in Terauchi Formula (1) is a branched alkyl group. Applicant argues that Terauchi does appear to recognize a minimum side chain length for the branched carbon chain on the other side of the ester molecule, since Terauchi states that "n" cannot be lower than 5. Applicant argues that Formula (2) of Terauchi also teaches that "n" cannot be lower than 5, but like Formula (1) of Terauchi it does not teach that the carbon chain on the other side of the ester have a minimum side chain length in those embodiments where R2 is a branched alkyl group.
It should be noted that R1 and R2 of the present claims are not limited to branched alkyl groups. These R groups may be linear and Terauchi teaches that R1 represents a linear alkyl group having from 8 to 16 carbon atoms. This range overlaps that of the present claims wherein R1 is a linear alkyl group having 10 or more carbon atoms. 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).
Applicant argues that Terauchi is not concerned with adhesion properties, nor does it teach, suggest or contemplate that a minimum side chain length on both sides of the ester achieves the properties taught and claimed by the inventive bearing oil. Instead, Terauchi is concerned with developing lubricating oil compositions with stable conductivity. Therefore, Applicant argues that a person of ordinary skill in the art developing a fluid dynamic pressure bearing oil with low adhesion would not have been objectively motivated, without the present application in hand as a template, to modify the lubricating oils of Terauchi to have a minimum side chain length on both sides of an ester.
As stated above, the R groups of the present claims are not limited to branched alkyl groups. Terauchi meets the limitations regarding the linear alkyl group. With respect to the adhesion properties, it should be pointed out that Applicant is claiming an oil or oil composition wherein Terauchi meets these limitations. Therefore, the skilled artisan would have a reasonable expectation that the adhesion properties of the oils taught by Terauchi would also meet the adhesion properties.
Similar to Terauchi, Applicant presents arguments regarding Hatcho stating that the R groups or not branched to the same degree as in the present claims and that Hatcho is not concerned with the adhesion properties of the lubricating oils.
Hatcho teaches that the R1 and R2 groups of the ester of his invention are straight or branched chain alkyl groups of 9-17 carbon atoms and straight-chain alkyl having 8-10 carbon atoms or branched-chain alkyl groups having 8-16 carbon atoms, respectively. As stated above the esters of the present claims are not limited to branched chain alkyl groups.
With respect to the adhesion properties, it should be pointed out that Applicant is claiming an oil or oil composition wherein Hatcho meets these limitations. Therefore, the skilled artisan would have a reasonable expectation that the adhesion properties of the oils taught by Hatcho would also meet the adhesion properties.
Applicant argues unexpected results are achieved and demonstrated in Table 1. However, it should be pointed out that all of the examples presented in the Table are branched chain esters and the present claims are not limited to those particular esters. The diesters of Table 2 are encompassed by those taught in Hatco. Therefore, the showings of Table 1 are not commensurate in scope with the claims and the showings in Table 2 are encompassed by the teachings of Hatco.
THIS ACTION IS MADE FINAL. 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 CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18703551/20260825
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