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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/27/2025 has been entered.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive. The examiner respectfully responds below.
Applicant argues that the prior art does not teach a lubricant free of phosphorous and zinc. This is not persuasive.
Ransom’s examples do have an additive package added as stated in the remarks. The additive package (P 219) states the use of antiwear agents, but does not specify what those agents are. No phosphorous is stated for use in the examples.
Further Ransom clearly has all phosphorous and zinc compounds stated as optional.
Antiwear agents in their entirety are optional. See p 117 first line. Even if antiwear agents are used there many antiwear agents listed for use that do not include phosphorous or zinc. This includes multiple sulfur compounds. See p 117-118.
Further the Ransom is concerned with limiting or eliminating the amount of phosphorous in the compound. See p 53. The amount of phosphorous can be 0.1wt% or less. Also see p 54.
P 56 details how the lubricant can be used to pass a large and varied number of industry requirements, this often include eliminating phosphorous.
The limitations of the claims are met, the rejection stands as stated.
Claim Rejections - 35 USC § 103
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) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ransom et al (US 2018/0201860 A1).
Ransom teaches a lubricant composition (abstract) for an engine that contains:
A. A major amount of an oil of lubricating viscosity (p 10), Inventive example I-1 (table 4 page 17) uses a Group III oil (p 228). See p 99-100 for more broad description of base oils.
B. A calcium containing detergent. Inventive example I-1 has both a sulfonate and phenate detergent, one TBN 300 one TBN 250. Collectively they add 1110 ppm calcium to the lubricant composition.
C. A magnesium containing detergent with a TBN of 400 in invention example I-1. This adds 550 ppm magnesium and is a sulfonate (see subscript).
The total TBN added by the detergents results in a lubricant TBN of 5.3 in inventive example I-1. I-2 has a TBN of 8.2. There are no other necessary components which add to TBN, nor and thing else in the inventive example. Also see p 67 for TBN of the lubricating oil.
For a broader description of the detergent system see p 76-90.
The amount of sulfated ash from the detergents in the inventive example would be in the range of 0.4% to 0.8% as the amount of metal added (from detergents, the only source of sulfated ash necessary) is the same as the instant application. Also taught is an embodiment with the sulfated ash being 0.05% to 2% of the composition. See p 53.
D. A boron containing additive that adds 40 ppm boron to the lubricant composition, see inventive example I-1. For a broader description of boron-containing additives, see p 121-123.
E. Other additives known for use in the art including antioxidants (p 111) antiwear agents (p 117) and dispersants and other additives.
F. Zinc dialkyldithiophosphate (ZDDP) used in the amount of up to 5% of the lubricant composition, see p 119-120. This is optional so the amount used may be 0 ppm in terms of phosphorous. The inventive examples use none of this.
G. A molybdenum containing additive (p 190-194) contributing 1 to 200 ppm molybdenum (p 194). Inventive example I-1 has 100 ppm molybdenum.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANCIS C CAMPANELL/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
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