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 .
This Office action is in response to the remarks filed October 20, 2025.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claims 1-4, 11-16, 18-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Cha (US 20090305922-appears on PTO-1449).
Cha teaches an automatic transmission lubricating oil composition comprising an oil of lubricating viscosity, an ashless dispersant, an anti-oxidant, a phosphorus-based anti-wear agent and a friction-modifier, wherein more than 310 ppm up to less than 1500 ppm of phosphorus is contained, thereby being useful for lubricating or operating an automatic transmission comprising a transmission clutch using a slip lock-up torque converter and a paper based clutch material and a planetary gear system, especially six-speed automatic transmission (see abstract; para 0044).
Examples of the oil of lubricating viscosity may include II group oil, III group oil, IV group oil, V group oil, which are defined in API Base Oil Interchangeability Guidelines, and a mixture thereof (see para 0021). The oil may have a kinematic viscosity at 100 C of 2-8 mm2/s (see para 022).
The ashless dispersant may be included in the amount of 0.5-5.0 weight parts, such as 1.0-4.0 weight parts or 2.0-3.0 weight parts relative to 100 weight parts of the oil. Examples of appropriate ashless dispersant include a long-chained (comprising more than 40 carbons) substituted hydrocarbyl succinimide (see para 0023-0024).
The phosphorus-based anti-wear agent is contained in the amount of 0.03-4.75 weight parts relative to 100 weight parts of the oil. Examples of the phosphorus-based anti-wear agent include the organic ester of a phosphorus acid, such as an amine salt of an organic phosphite or a phosphorus acid. Appropriate organic phosphite is well known to one skilled in the art. Organic phosphite appropriate in the present invention has the Formula 1:
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R1 and R2 are H or C1-C18 alkyl groups. Examples of organic phosphite include dibutyl hydrogen phosphite, di-2-ethylhexyl hydrogen phosphite and mono-butyl hydrogen phosphite (see Para 0030-0032). This structure would encompass di-lauryl hydrogen phosphite.
The lubricating oil composition may comprise at least one friction-modifier. Examples of the friction-modifier include without limitation a fatty acid amide, a fatty epoxide, a fatty amine, a borated glycerol ester, an alkoxylated fatty amine (bis ethoxylate of C10-C20 amines) , a borated alkoxylated amine, a fatty imidazoline and a condensation product of carboxylic acid or anhydride and polyamine (see para 0035). Also, other friction-modifiers produced by the reaction between alkyl-substituted succinic acid anhydride and polyamine are useful. Examples of such friction-modifier include a condensation product of 3-octadecenyl succinic acid anhydride and diethylene triamine or tetraethylene pentaamine. Cha teaches that US patent 5840663 teaches the preparation of these compounds and this patent sets forth that C20 hydrocarbyl may be used to prepare the anhydride (see para 0042). About 0.05-5.0 weight parts of the friction-modifier may be contained relative to 100 weight parts of oil (see para 0044).
The lubricating oil composition of Cha may further comprise various additional components. Examples of such additional components include the followings without limitation: a viscosity modifier, an anticorrosive, an antifoaming agent, a seal swell agent, a pour-point depressant, a detergent, a fluidizer and a dye (see para 0046).
As an ashless dispersant, 950 MW PIBSA/PAM was used in Examples 2 and 3 and 2000 MW PIBSA/PAM was used in Examples 4 and 5. As a phosphorus-based anti-wear agent, a dibutyl hydrogen phosphate was used in Example 2, a diphenyl hydrogen phosphate was used in Example 3. As a friction-modifier, a product prepared by reacting isostearic acid and tetraethylene pentamine (amide) was used in Example 2, (i) a product prepared by reacting 3-octadecenyl succinic acid anhydride and diethylene triamine and (ii) a diethoxylated tallow amine were used in Example 3 (see para 0059-0062). Cha meets the limitations of the claims other than the differences that are set forth below.
Cha does not specifically teach the neutralization ratio of the dispersant/acidic phosphorus is 60 to 100% or an initial pH of 4-10. However, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the dispersant and the phosphorus compound through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
With respect to the amount of sulfated ash, the skilled artisan would have a reasonable expectation that the oil composition of Cha would meet this limitation because Cha teaches an oil composition that contains substantially the same components in similar proportions as set forth in the present invention.
Claims 1-4, 7-8, 11-16, 18-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Komatsubara (US 20200032160-appears on PTO 1449).
Komatsubara teaches a lubricating oil composition suitable as a common lubricating oil of a wet clutch and a hypoid gear in an automobile drivetrain (see para 0001). The lubricating oil composition having anti-wear, anti-seizure, and fatigue life properties required for a gear oil, especially for lubrication of a hypoid gear, as well as shudder prevention properties for a wet clutch (see para 0004-0005).
The lubricating base oil consists of: at least one Group II mineral base oil of API base stock categories, at least one Group III mineral base oil of API base stock categories, at least one Group IV synthetic base oil of API base stock categories, or at least one Group V synthetic base oil of API base stock categories, or any combination thereof. A group II base oil is a mineral base oil having a sulfur content of no more than 0.03 mass % (see para 0025). The kinematic viscosity of the lubricating base oil at 100° C. is preferably no more than 6.0 mm2/s (see para 0026).
The oil composition contains a phosphorus-containing anti-wear agent in an amount of 200 to 1110 mass ppm in terms of phosphorus on the basis of the total mass of the composition. Any phosphorus-containing anti-wear agent used for a lubricating oil may be employed as the phosphorus-containing compound without specific limitation. Examples of such a phosphorus-containing anti-wear agent include phosphoric acid, a compound represented by the general formula (6), a compound represented by the following general formula (7), and metal salts and ammonium salts thereof (see para 0078). R10 is a hydrocarbon group having a carbon number of 1 to 30; R11 and R12 each independently represents a hydrogen atom or a hydrocarbon group having a carbon number of 1 to 30 (para 0078). In the general formula (7), R13 represents a hydrocarbon group having a carbon number of 1 to 30; R14 and R15 each independently represents a hydrogen atom or a hydrocarbon group having a carbon number of 1 to 30 (see para 0078). In the lubricating oil composition the amount of phosphorus is preferably 200 to 1110 mass ppm on the basis of the total mass of the composition in terms of phosphorus (see para 0084).
The composition also contains an ashless friction modifier such as an amide and a C10-C24 aliphatic succinimide prepared from polyamines such as diethylenetriamine (see para 0118-0119; 0121; 0122-0123) .
Ashless dispersants such as alkenyl succinimide different from the friction modifier may be present (see para 0137-0138). The lubricating oil composition may further comprise at least one additive selected from an antioxidant, a corrosion inhibitor other than the component (E), an anti-rust agent, a metal deactivator other than the component (E), a defoaming agent, a demulsifier, and a coloring agent (see para 0154).
For the phosphorus-containing anti-wear agents, Komatsubara exemplifies
C-1: tricresyl phosphite, P: 8.4 mass %
C-2: dibutyl phosphite, P:15.5 mass %
C-3: phosphoric acid, P: 30.0 mass %
C-4: diphenyl hydrogen phosphite, P: 13.2 mass % (see para 0189-0193).
For the ashless friction modifier Komatsubara exemplifies
N,N-dilauryl-2-hydroxyacetamide and the succinimide compound of the general formula (24) wherein R49 to R50=C18 alkenyl groups, and h=1 (see para 0201-0203).
The ashless dispersant is a boron-containing succinimide having a polybutenyl group of number average molecular weight of 1300 (see para 0206). Komatsubara meets the limitations of the claims other than the differences that are set forth below.
Komatsubara does not specifically teach the neutralization ratio of the dispersant/acidic phosphorus is 60 to 100% or an initial pH of 4-10. However, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the dispersant and the phosphorus compound through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
With respect to the amount of sulfated ash, the skilled artisan would have a reasonable expectation that the oil composition of Komatsubara would meet this limitation because Komatsubara teaches an oil composition that contains substantially the same components in similar proportions as are set forth in the present invention.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Cha does not teach the claimed hydrogen compounds because the examiner discusses Formula I of Cha.
The examiner does discuss Formula I of Cha, but the examiner also discusses Cha using dibutyl hydrogen phosphate, which would meet the limitations of Applicant’s formula
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when R1 and R2 are butyl (C4) (Example 2) . Cha also teaches diphenyl hydrogen phosphate which would equate to R1 and R2 being C6 (Example 3).
Applicant argues that there would be no need to optimize proportions of the dispersant and phosphorus compound because the compounds are optimized to enhance dynamic and/or static friction. Applicant argues that Komatsubara is silent on these properties and focuses on unrelated technical aspects.
Komatsubara teaches a dispersant that is substantially the same as that of the present invention (see para 0206) and he teaches the same phosphorus compounds. Therefore, even if Komatsubara’s objective is not the same as that of Applicant, it would be reasonable to expect that the proportions of the compounds of Komatsubara would meet the claimed neutralization ratio and that any optimization that is required would render the composition suitable for use for the present invention, absent evidence to the contrary.
Claims 5-6, 9-10, 17 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art does not teach or suggest the at least one acidic phosphorus compound (B1) includes a mixture of mono/dialkyl phosphite ester containing thioether alkyl groups.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18832898/20251212