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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/10/2026 has been entered.
Claim Interpretation
PLEASE NOTE the current set of claims submitted on 2/10/2026 DO NOT contain claims 16-20. These are claims found on the (now absent) page 5 of the claims. No mention of cancelling these claims are made in the remarks. For the purpose of this office action it is assumed that claims 16-20 are still to be reviewed, and that they are the same as presented in the claims of 8/14/2025. It is assumed page 5 was left out simply due to an error.
If the applicant wishes to cancel claims 16-20, please note this in the remarks of the next response. A new set of claims either including claims 16-20 or showing them as cancelled should be submitted with the response.
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive. The examiner respectfully responds below.
Applicant argues that Cunningham teaches away from the usage of sulfonate detergents in the example section. Applicant cites Comparative examples 1-4 which include sulfonate detergents as summarized in table 1.
The examiner agrees that the comparative examples include sulfonate detergents. However, Cunningham clearly states the use of sulfonate detergents in several places.
P 64 detail other additional detergents which may be non-calcium salicylate detergents. In no way does this teach away from usage of sulfonate detergents. P 65 clearly lists a variety of calcium sulfonate detergents that may be used in the composition.
As the limitations of the claims are taught the rejection stands as stated.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cunningham et al (US 2022/0119727 A1) and Li et al (US 2013/0157908 A1).
Cunningham teaches a lubricant composition (abstract) for use in EV and/or transmissions (title, p 2-4) which contains:
A. A major amount of an oil of lubricating viscosity, see p 46-55
B. Other additives known in the art, see p 56. This includes friction modifiers (p 79) and others, se ep 107.
C. At least one overbased sulfonate and an optional sulfurized calcium phenate (p 65). See also p 66-68. Together they contribute 75 to 2500 ppm calcium to the lubricant composition. See p 68. These detergents are overbased.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
D. a zinc dialkyldithiophosphate (p 104) which may comprise only reactions from primary alcohols. See p 104. This is used in the amount of 1.2% to 5% of the lubricant composition, see p 106.
E. A dispersant that is a bissuccinimide (p 9-11) that is post treated with ethylene carbonate (p 10). For additional dispersant that can be bissuccinimide that are post treated with ethylene carbonate see p 57-62. ( p 61 for post treatment)
Cunningham does not specifically state the use of an alkyl polyol having 2 to 20 carbon atoms. Cunningham does teach the use of other additives known in the art and the use of friction modifiers (see above).
Li teaches a lubricant composition (abstract) for use in transmissions and that is a functional fluid (p 1-3). The lubricant contains glycerol used in the amount of at least 0.05%, see p 12. Also see p 35.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the glycerol of Li in the invention of Cunningham. Cunningham teaches the use of additives known in the art and friction modifying agents. The glycerol of Li is an effective friction reducing agent.
The method of reducing fatigue in a bearing is also taught in the combined references. Adjusting the total amount of friction in the lubricant composition has a direct impact and effect on fatigue of the system lubricated. The primary reference teaches transmission and electric vehicle systems to be lubricated, which must include bearings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANCIS C CAMPANELL/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771