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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/29/25 has been entered.
The amendment filed 8/29/25 necessitates new grounds of rejection over the references of record. The discussion of the rejection over Kadokawa, Hendriksen, and Noble has been updated as necessitated by the amendment.
Claim Rejections - 35 USC § 103
Claims 1-12 and 15 are rejected under 35 U.S.C. 103 are rejected under 35 U.S.C. 103 as being unpatentable over Kadokawa (U.S. Pat. No. 8,476,208) in view of Hendriksen (EP 3508560 A1) and Noble (U.S. PG Pub. No. 2007/0179067).
In column 1 lines 11-15 Kadokawa discloses a water-soluble metal-processing agent (metalworking oil). In column 12 lines 49-67 and Table 1, Kadokawa discloses compositions comprising a mineral oil, meeting the limitations of the base oil of claim 1, and polyoxyethylene oleyl ether carboxylic acid, corresponding to the ether carboxylic acid of claims 1-2 and 5-7 where A is an ethylene group (alkylene group having 2 carbon atoms), B is a methylene group (alkylene group having 1 carbon atom), and R is a hydrocarbon group having 18 carbon atoms. The compositions further comprise a nonionic surfactant, as recited in claim 8. The compositions comprise 1% by weight of the ether carboxylic acid, 4% by weight of the nonionic surfactant, and 4% by weight of the diamine, leading to a ratio of nonionic surfactant to ether carboxylic acid of 4, within the range recited in claim 9. The compositions of Kadokawa are metalworking oils, meeting the limitations of claim 12. In column 17 lines 32-38 Kadokawa discloses various metalworking operations utilizing the metalworking oil, meeting the limitations of claim 15.
The differences between Kadokawa and the currently presented claims are:
i) Kadokawa does not disclose the number of oxyethylene units in the polyoxyethylene oleyl ether carboxylic acid, and does not recite the HLB value of the polyoxyethylene oleyl ether carboxylic acid.
ii) Kadokawa discloses in column 8 lines 22-26, 36-42, and 49-50 that the composition comprises an amine which can be various primary, secondary, or tertiary alkanolamines, as well as alicyclic amines, and that the amines can be used in combination of two or more types, but does not disclose the specific combinations recited in amended claims 1 and 10.
With respect to i), In paragraphs 1 and 6-10 Hendriksen discloses micellar emulsions useful as concentrates for metalworking fluids, which can be diluted with water for use as metalworking fluids. In paragraph 62 Hendriksen discloses that the fluid comprises a surfactant, and in paragraph 63 Hendriksen discloses that a suitable surfactant is a C6/C8/C16-18 alkyl polyoxyethylene ether carboxylic acid, meeting the limitations of the ether carboxylic acid of claims 1-2, 5, and 7 where A is an ethylene group (alkylene group having 2 carbon atoms), B is a methylene group (alkylene group having 1 carbon atom), n is 2 to 9, and R is a alkyl group of 6, 8, or 16-18 carbon atoms. Hendriksen further discloses that nonionic surfactants such as the polyoxyethylene oleyl ether carboxylic acid have HLB values ranging from about 8 to about 16, within the ranges recited in claims 3-4.
It would have been obvious to one of ordinary skill in the art to use the polyoxyethylene oleyl ether carboxylic acid of Hendriksen as the polyoxyethylene oleyl ether carboxylic acid in the metalworking oil compositions of Kadokawa, since Hendriksen teaches that they are a specific class of polyoxyethylene oleyl ether carboxylic acids effective in metalworking oils.
With respect to ii), in paragraph 2 Noble discloses water-based metalworking fluids, and in paragraph 16 discloses that the metalworking fluids can comprise alkanolamines such as isopropanolamines or ethanolamines, as disclosed in column 7 lines 39-42 of Kadokawa. In the table in paragraph 23 Noble discloses a sample composition comprising monoisopropanolamine, diisopropanolamine, and triisopropanolamine, meeting the limitations of the amine compound of claims 1 and 10.
It would have been obvious to one of ordinary skill in the art to include the monoisopropanolamine, diisopropanolamine, and triisopropanolamine mixture of Noble as an amine in the composition of Kadokawa, since Noble teaches that it is a suitable mixture of amines for a metalworking fluid.
Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It would therefore further be obvious to combine the alicyclic amine disclosed by Kadokawa with the alkanolamine mixture of Noble, since Kadokawa teaches that alicyclic amines and alkanolamines are useful for the same purpose in metalworking fluids. In particular, Kadokawa teaches in column 8 lines 61-64 that the amines provide resistance to corrosion and microbial deterioration.
Kadokawa discloses in column 8 lines 53-60 that the amines are particularly preferably present in an amount of 1 to 20% by weight, and Noble discloses in paragraph 16 that the alkanolamines are generally present in an amount of 1 to 15% by weight, within the ranges disclosed for the overall amine component by Kadokawa. The amine concentration range of Kadokawa leads to a relative concentration ratio of 1 to 20 relative to the polyoxyethylene oleyl ether carboxylic acid in the sample compositions of Kadokawa, within the range recited in claim 11.
In light of the above, claims 1-12 and 15 are rendered obvious by Kadokawa, Hendriksen, and Noble.
Claims 16-17 are rejected under 35 U.S.C. 103 are rejected under 35 U.S.C. 103 as being unpatentable over Kadokawa (U.S. Pat. No. 8,476,208) in view of Hendriksen and Noble in light of the evidence provided by Alper.
The discussion of Kadokawa, Hendriksen, and Noble in paragraph 4 above is incorporated here by reference. Hendriksen discloses a metalworking fluid composition meeting the limitations of claim 1 and a metalworking method meeting the limitations of claim 15, but does not disclose that composition is further in contact with an emulsion inhibitor.
In paragraphs 3-4 and 30, Alper discloses that metalworking fluids can become contaminated with low HLB substances during use, including greases. The low HLB substances will act as emulsion inhibitors, as recited in claim 16, and greases meet the limitations of claim 17. Alper therefore provides evidence that the metalworking fluids of Kadokawa and Hendriksen come will come into contact with emulsion inhibitors such as greases when used in the metalworking method of Kadokawa, meeting the limitations of claims 16-17.
Response to Arguments
Applicant's arguments filed 8/29/15 have been fully considered but they are not persuasive. Applicant argues that the cited references do not teach the claimed combination of an alicylic amine with a tertiary alkanolamine and at least one of a primary alkanolamine and a secondary alkanolamine. However, as discussed in paragraph 4 above, Kadokawa teaches a metalworking fluid comprising an amine component which can be can be various primary, secondary, or tertiary alkanolamines, as well as alicyclic amines, and that the amines can be used in combination of two or more types. Noble teaches specifically that a mixture of monoisopropanolamine, diisopropanolamine, and triisopropanolamine is a useful additive in metalworking fluids, and as discussed in the rejection it would be further obvious to combine these with the alicyclic amines of Kadokawa as a mixture of known equivalents in accordance with Kerkhoven.
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771