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 .
Summary
This is the initial Office action based on application 18717403 filed 6/6/24.
Claims 1-32 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 9/6/24 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Drawings
The Drawings filed on 6/6/24 are acknowledged and accepted by the examiner.
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. MPEP § 608.01
Claim Objection
The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
Therefore correction of claims 2-31, wherein the word “Claims” should be lower case “c”.
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 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 of this title, 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 1-32 are rejected under 35 U.S.C. 103 as being unpatentable over TAKEKAWA (US PG PUB 20150051124) in view of EMETT ET AL. (US PG PUB 20200407657) in their entirety. Hereby referred to as TAKEKAWA and TAKEKAWA.
Regarding claims 1-32:
TAKEKAWA teaches in the abstract Provided by the present invention is a lubricating oil composition having a low friction coefficient (traction coefficient) and a superior fluidity at low temperature, suitable as a transmission oil including an automatic transmission oil, by using a base oil which contains a mineral oil satisfying the conditions that (1) kinetic viscosity at 100 C. is in the range of 5 mm2/s or more to 8 mm2/s or less, (2) viscosity index is 130 or more, and (3) % CP by a ring analysis (n-d-M method) is 80 or more.
TAKEKAWA teaches in para [0013] Namely, the present invention provides: [0014] 1. a lubricating oil composition wherein a base oil which contains a mineral oil satisfying flowing conditions (1) to (3) is used: [0015] (1) kinetic viscosity at 100 C. is in the range of 5 mm2/s or more to 8 mm2/s or less, [0016] (2) viscosity index is 130 or more, and [0017] (3) % CP by a ring analysis (n-d-M method) is 80 or more, [0018] 2. the lubricating oil composition according to 1, wherein the viscosity index of the mineral oil is 160 or less, [0019] 3. the lubricating oil composition according to 1 or 2, wherein in the mineral oil, % CP is in the range of 80 or more to 95 or less, % CN is in the range of 5 or more to 20 or less, and %
CA is 1.0 or less, [0020] 4. the lubricating oil composition according to any of 1 to 3, wherein the kinetic viscosity at 100 C. of the mineral oil is in the range of 5.5 mm2/s or more to 7.5 mm2/s or less, [0021] 5. the lubricating oil composition according to any of 1 to 4, wherein the said lubricating oil composition uses the base oil which contains, in addition to (A) the mineral oil, (B) one or more base oils selected from (b1) a mineral oil having a kinetic viscosity at 100 C. in the range of 1.5 mm2/s or more to 4.5 mm2/s or less and a pour point of -25 C. or lower and (b2) a synthetic oil having a kinetic viscosity at 100 C. in the range of 1.5 mm2/s or more to 6.5 mm2/s or less and a pour point of -30 C. or lower, [0022] 6. the lubricating oil composition according to 5, wherein the base oil comprising the component (A) in the range of 40% or more by mass to 75% or less by mass and the component (B) in the range of 25% or more by mass to 60% or less by mass based on total amount of the base oil is used, [0023] 7. the lubricating oil composition according to any of 1 to 6, wherein in entirety of the base oil, % CP is in the range of 80 or more to 95 or less, % CN is in the range of 5 or more to 20 or less, and % CA is 1.0 or less, [0024] 8. the lubricating oil composition according to any of 1 to 7, wherein the said lubricating oil composition contains at least one lubricating oil additive selected from an antioxidant, an extreme pressure agent or an anti-wear agent, a dispersant, a metallic detergent, an oiliness improver, a rust inhibitor, a metal deactivator, a corrosion inhibitor, a pour point depressant, and a defoaming agent, and [0025] 9. the lubricating oil composition according to any of 1 to 8, wherein the said lubricating oil composition is a lubricating oil composition for an automatic transmission.
TAKEKAWA teaches in para [0044] Specifically, for example, a wax or a wax fraction including a slack wax is used as the wax raw material; and, this is isomerized by a usual way by using an isomerization catalyst such as, for example, a catalyst in which Pt or Pd is supported on a carrier mainly comprising silica, alumina, or zeolite, a catalyst in which one metal component or more selected from Ni, Co, Mo, W, and the like is supported on a carrier mainly comprising alumina and silica, whereby obtaining an isomerized product. Usually this isomerized product is further distilled under reduced pressure and followed by a dewaxing treatment if necessary.
TAKEKAWA teaches in para [0050] More preferable embodiment of (b1) the low viscous mineral oil is that the viscosity index is 90 or more, the flash point is 140 C. or higher, and the sulfur content is 20 or less ppm by mass.
TAKEKAWA teaches in para [0054] The low-viscosity synthetic oil as mentioned above may be exemplified specifically by a poly(.alpha.-olefin) which is an oligomer of an .alpha.-olefin having 8 to 14 carbon atoms such as, for example, 1-decene. This poly(.alpha.-olefin) is usually used as the hydrogenated poly(.alpha.-olefin).
TAKEKAWA teaches in para [0055] Besides, included in the poly(.alpha.-olefin) are the poly(.alpha.-olefin) obtained by oligomerization by using a metallocene catalyst and the hydrogenated product thereof.
TAKEKAWA teaches in para [0056] Among them, because of a high viscosity index and an easy availability, the poly(.alpha.-olefin) (hydrogenated) which is an oligomer of 1-decene is preferable; and especially the poly(.alpha.-olefin) (hydrogenated) which is obtained by using a metallocene catalyst is more preferable.
TAKEKAWA teaches in para [0057] In the present invention, if one or more kinds selected from (b1) the low-viscosity mineral oil and (b2) the low-viscosity synthetic oil are used as the base oil B, the blending ratio of the base oil A and the base oil B based on the total of the base oils is preferably in the range of 40% or more by mass to 75% or less by mass for the base oil A, and in the range of 25% or more by mass to 60% or less by mass for the base oil B; or more preferably in the range of 45% or more by mass to 72% or less by mass for the base oil A, and in the range of 28% or more by mass to 55% or less by mass for the base oil B. (see also para [0058] – [0059])
TAKEKAWA teaches in para [0062] Illustrative example of the component (C) includes (c1) an antioxidant, (c2) an extreme pressure agent or an anti-wear agent, (c3) a dispersant, and (c4) a metallic detergent; and it is preferable to add one or two or more of the lubricating oil additives selected from them into the composition.
TAKEKAWA teaches in para [0068] Illustrative example of (c2) the extreme pressure agent or the anti-wear agent includes a sulfur type extreme pressure agent, a phosphorous type anti-wear agent, a S-P type extreme pressure agent, a zinc dihydrocarbyl dithiophosphate, and a thiazole type extreme pressure agent. (see also para [0069] – [0073)].
TAKEKAWA teaches in para [0106] Package additive containing an S-type extreme agent and a P-type anti-wear agent (trade name of HiTEC 3491A; manufactured by Afton Chemical Corp.).
TAKEKAWA teaches does explicitly teach wherein the fluid formulation is a high-pressure viscosity coefficient fluid formulation; however, it is within the scope of TAKEKAWA in view of EMETT. EMETT teaches A process for lubricating and/or cooling an engine transmission, a gearbox, a clutch, an electric motor, and/or a battery pack, comprising: (I) providing a functional fluid comprising a saturated poly alpha-olefin ("PAO") first base stock at a concentration thereof in the range from 3 wt% to 98 wt %, based on the total weight of the functional fluid, the PAO base stock having: a kinematic viscosity at 100° C determined pursuant to ASTM D445 ("KV100") in the range from 3.0 to 4.5 cSt, preferably <4.0 cSt, more preferably <3.6 cSt, still more preferably < 3.5; a Noack volatility determined pursuant to ASTM D5800 ("NV") not higher than 15%, preferably < 12.5%; and (II) contacting the functional fluid with the engine transmission, the electric motor, and/or the battery pack, wherein step (II) comprises contacting the functional fluid with both the engine transmission and the electric motor in a hybrid vehicle (claims 17-18; fig. 1; tab. 14).
From the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
In addition, it would have been obvious to one of ordinary skill in the art to modify the process by varying the claimed ranges; however, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary. Especially, 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).
Furthermore, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Moreover, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
Still, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Additionally, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). In In re Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable
In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771