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 18764007 filed 7/3/24.
Claims 1-13 are pending and have been fully considered.
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 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over YOSHIDA ET AL. (JP7061242B1; 4/27/2022) and as evidence by QINGDAO (CN104513444A; 4/15/2015) in their entirety. Hereby referred to as YOSHIDA and QINGDAO.
Regarding claims 1-13:
YOSHIDA teaches in abstract that the present invention addresses the problem of providing: a lubricating oil additive composition that is suitable as a load-withstanding additive and that has excellent abrasion resistance, extreme pressure properties, and thermal stability; and a lubricating oil composition containing said lubricating oil additive composition. Said problem is solved by a lubricating oil additive composition containing a poly(meth)acrylate-based copolymer (X) that includes a structural unit (a) derived from a specific alkyl(meth)acrylate (A), a structural unit (b) derived from a specific hydroxyl group-containing (meth)acrylate (B), and a structural unit (c) derived from a specific phosphorus-containing (meth)acrylate (C).
YOSHIDA teaches in para [0053] The mineral oil is, for example, a distillate obtained by atmospheric distillation and / or vacuum distillation of paraffin-based crude oil, intermediate basic crude oil, or naphthene-based crude oil; refining obtained by refining the distillate according to a conventional method. Oil; etc. Examples of the refining method for obtaining refined oil include solvent dewaxing treatment, hydrogenation isomerization treatment, hydrogenation finishing treatment, and white clay treatment.
YOSHIDA teaches in para [0058] Examples of the viscosity index improver include polymethacrylate. The content of the viscosity index improver is preferably 0.3 to 5% by mass based on the total amount of the lubricating oil composition.
YOSHIDA teaches in para [0057] Examples of detergent dispersants include metal sulfonates, metal salicylates, metal phenates, and succinimides. The content of the detergent dispersant is usually 0.01 to 10% by mass, preferably 0.1 to 5% by mass, based on the total amount of the lubricating oil composition, from the viewpoint of the additive effect.
YOSHIDA teaches in para [0052] As the lubricating oil base oil, a general base oil used in the lubricating oil composition can be used without particular limitation. Specifically, for example, one or more selected from the group consisting of mineral oil and synthetic oil can be mentioned. The kinematic viscosity of the lubricating oil base oil at 100 ° C. is preferably in the range of 1 mm .sup.2 / s to 50 mm .sup.2 / s, more preferably in the range of 2 mm .sup.2 / s to 30 mm .sup.2 / s, and 3 mm .sup.2 / s. It is more preferably in the range of ~ 20 mm .sup.2 / s. Further, the viscosity index of the lubricating oil base oil is preferably 80 or more, more preferably 90 or more, and even more preferably 100 or more.
YOSHIDA teaches in para [0067] Since the lubricating oil composition of the present embodiment contains the poly (meth) acrylate-based copolymer (X), it is excellent in wear resistance, extreme pressure resistance, and thermal stability. Therefore, the lubricating oil composition of the present embodiment is, for example, gear oil (manual transmission oil, differential oil, etc.), automatic transmission oil (automatic transmission oil, etc.), stepless transmission oil (belt CVT oil, toroidal CVT oil, etc.). , Power steering oil, shock absorber oil, drive system oil such as electric motor oil; oil for internal combustion engine (engine) such as for gasoline engine, diesel engine, and gas engine; hydraulic oil; turbine oil; compressor oil As a lubricating oil composition that can be suitably used for various applications such as fluid bearing oil; rolling bearing oil; refrigerating machine oil, etc., and is filled in the equipment used in each of these applications to lubricate between the parts related to the equipment. It can be suitably used.
YOSHIDA teaches in para [0050] The additive composition for lubricating oil of the present embodiment is excellent in wear resistance, extreme pressure resistance, and thermal stability. Therefore, it is useful as a load-bearing additive. Therefore, in the present embodiment, there is provided a method of using the additive composition for lubricating oil as a load-bearing additive.
YOSHIDA teaches in para [0086] In accordance with ASTM D 2783-03 (2014), a four-ball tester was used.
YOSHIDA teaches in para [0044] Examples of the solvent used in the solution polymerization method includes esters; however, YOSHIDA does not explicitly name dioctyl adipate, nevertheless it is within the scope of YOSHIDA lubricating oil additive composition as evident by QINGDAO. QINGDAO teaches a lubricating additive composition that contains 5-8% of dioctyl adipate (see abstract). Therefore a skilled oil formulator would be motivated to use the dioctyl adipate in the lubricating additive composition of YOSHIDA as they are known in the art to be used as plasticizer in lubricants.
Therefore, 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.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that additional instrumentation for analysis or additional analysis would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
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. Additionally, 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)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
Moreover, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art 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.
If it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Conclusion
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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