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
Applicant’s election without traverse of Group I, claims 1-6 in the reply filed on May 18, 2026 is acknowledged.
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 § 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO2020184430- appears on the PTO-1449 and current translation on the PTO-892).
WO teaches a rust preventive oil composition and method for producing the same wherein the composition contains a base oil, a metal sulfonate, an overbased metal sulfonate, a wax and a full or partial ester of a polyhydric alcohol (see abstract).
The metal sulfonate may be magnesium, calcium, zinc or barium (see page 6, paragraph 3). The content of the sulfonate is up to 10 mass % (seepage 7, paragraph 1).
The composition contains an overbased metal sulfonate wherein in the sulfonate may be magnesium, calcium, barium or zinc and may be present in amount up to 10 % mass % (see page 7, paragraphs 2-3, 7; page 8, paragraph 5). The wax is present in the composition in an amount from 1.8-10 % by mass (see page 8, paragraph 6-7; page 9, paragraph 5).
The full ester of a polyhydric alcohol may be formed from sorbitan (page 9, paragraphs 6-8) and a fatty acid (page 10, paragraphs 1-2). The content of the ester in the composition has an upper limit of 9.0 % by mass (see page 10, paragraph 6).
The composition of WO may contain additional additives such as amine antioxidants and benzotriazole corrosion inhibitors. The total content of the other components in the composition is preferably up to 20% by mass (see page 11 paragraphs 5-10). WO meets the limitation of the overbased magnesium sulfonate and the additive is 5 to 40 % by mass. As well as the content of the overbased magnesium sulfonate with respect to a total content of the overbased magnesium sulfonate and the additive is 25% to 90 % by mass. WO meets the limitations of the claims other than the differences that are set forth below.
WO does not exemplify a composition wherein all of the components are present. However, no unobviousness is seen in this difference because WO teaches that the ester of the polyhydric alcohol may be a sorbitan fatty ester; the overbased sulfonate may be magnesium sulfonate and the composition may contain additional additives such as barium sulfonate, amine antioxidants and benzotriazole corrosion inhibitors.
With respect to claim 4, WO teaches that the sorbitan fatty acid ester is present in an amount up to 9 %, Applicant is claiming 10% of the ester. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Applicant has not shown unexpected results with the use of 10 % by mass of the sorbitan fatty acid ester.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gallacher (US 4,895,674) teaches a concentrate composition which comprises (a) a blend of (i) a metal sulfonate and (ii) an alkali or alkaline earth metal or zinc salt of a carboxylic acid and (b) a carrier. The composition is useful as a rust- and corrosion-inhibitor in a petroleum or synthetic base medium.
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 18705855/20260612
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