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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 12/8/2025 has been entered.
Response to Amendment
Applicants’ response filed 12/8/2025 amended claims 1 and 6, cancelled claim 4, and added new claims 11-15. Applicants’ amendments overcome the 35 USC 103 rejection over Kawahara from the office action mailed 9/8/2025; therefore, this rejection is withdrawn. New grounds of rejection necessitated by applicants’ amendments are set forth below.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/1/2025 and 11/25/2025 were filed after the mailing date of the final office action on 9/8/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claims 1-3 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bujouves et al., US Patent Application Publication No. 2020/0318023 (hereinafter referred to as Bujouves).
Regarding claims 1-3 and 10-13, Bujouves discloses a refrigerating oil composition (as recited in claim 1) (see Abstract) comprising a hydrocarbon refrigerant, such as, pentane (hydrocarbon-based refrigerant as recited in claim 1 and reads on claim 11) (Para. [0011]) which is added up to 100 wt% of the refrigerating oil composition of an aromatic ester compound formed by reacting trimellitic or pyromellitic acids with monohydric alcohols having a linear or branched chain of 4 to 15 hydrocarbyl groups (as recited in claim 1/formula 1 and reads on claims 2-3 and 12-13) (Col. 14/L. 16-20 and Col. 15/L. 20-54) wherein the composition does not require a phosphors-based extreme pressure agent (as recited in claim 1) (see Examples), nor another base oil (as recited in claim 10) (see Abstract as the polyol ester base oil is an optional component) (Para. [0012]).
Kawahara differs from claim 1 in that Kawahara does not include a specific embodiment comprising a hydrocarbon refrigerant and a trilmellitic-derived ester base oil as recited in claim 1.
It is the position of the examiner that one of ordinary skill in the art at the time of the invention would immediately envisage the limitations of claim 1 based on the disclosure of Kawahara as discussed above.
Regarding claims 6-9, see discussion above.
Claim Rejections - 35 USC § 103
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bujouves in view of Osumi et al., US Patent Application Publication No. 2002/0123436 (hereinafter referred to as Osumi).
Regarding claims 14-15, Bujouves discloses all the limitations discussed above but does not disclose the R1 groups being oleyl groups as recited in claims 14-15.
Osumi discloses machine oil compositions (see Title) comprising aromatic ester base oils including those formed by reacting trimellitic and pyromellitic acid with alcohols having 1 to 18 carbon atoms (as recited in claims 14-15) (Para. [0011]) which can be used with a hydrocarbon refrigerant (Para. [0078]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the R groups of Osumi in the ester of Bujouves as it is a simple substitution of one known element for another in order to obtain predictable results.
Response to Arguments
Applicants’ arguments filed 12/8/2025 regarding claims 1-3 and 6-15 have been fully considered and are moot as the rejection from the previous office action has been withdrawn as discussed above.
It is the position of the examiner that the prior art discussed above adequately reads on the claims as instantly recited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771