DETAILED ACTION
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114.
Applicant's submission filed on 02 February 2026 has been entered. Claims 1-7 and 9-15 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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.
Claim(s) 1-7 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Susukida et al (US 2020/0332218).
Susukida et al. [“Susukida”] discloses a lubricating oil composition comprising a lubricating base oil and (A) a poly(meth)acrylate in an amount of 2 to 10 mass %; (B) a phosphite ester of general formula (1), wherein R1 and R2 are each independently a group having 5 to 20 carbon atoms represented by general formula (2), in an amount of 0.01 to 0.06 mass % in terms of phosphorus; (C) a thiadiazole compound in an amount of 0.01 to 0.2 mass%; and (D) a calcium salicylate detergent in an amount of 0.005 to 0.03 mass % in terms of calcium; wherein the lubricating oil composition has a kinematic viscosity at 40°C of 4.0 to 20.0 mm2/s (Abstract).
Susukida discloses that in one preferred embodiment, the lubricating oil composition may further comprise a tolyltriazole metal deactivator and/or a benzotriazole metal deactivator in an amount of 0.001 to 0.1 mass % [0059]-[0061].
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).
Susukida discloses that the lubricating base oil may be at least one mineral base oil, at least one synthetic base oil, or any mixed base oil thereof [0024]. Susukida discloses that examples of API Group V base oils include monoesters, diesters, polyesters and polyol esters [0027]. Susukida discloses that the content of the API Group V base oil is preferably 0 to 20 mass %, and especially preferably substantially 0 mass %, on the basis of the total mass of the lubricating base oil [0028].
Thus, the examiner is of the position that Susukida meets the limitations of the claimed lubricating oil composition when component (E) is a benzotriazole metal deactivator. Applicant’s open-ended claim language “comprising” allows for the addition of other additives to the composition such as component (A) a poly(meth)acrylate, and component (D) a calcium salicylate detergent disclosed by Suskida.
In regard to dependent claims 4-5, although Susukida does not disclose mass ratios of the benzotriazole compound to the thiadiazole compound, and to the phosphorus acid ester, conventional amounts of these well-known lubricating oil additives may be used in the lubricating oil composition taught by Susukida. The examiner is of the position that absent a showing of criticality, no patentability is seen by the claimed mass ratios.
In regard to dependent claims 6-7, although Susukida allows for the addition of other additives such as succinimides, antioxidants, etc., Susukida does not require the addition of a sulfur atom-free phosphorous acid ester or a sulfur atom-free phosphoric acid ester to the composition.
In regard to claims 10-12, Susukida discloses that the lubricating oil composition is suitable for lubrication of electric motors [0001]-[0003] and [0012]-[0015].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at (571) 272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
March 9, 2026
Prosecution Insights