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 .
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive. The examiner respectfully responds below:
Applicant argues that Zinc dialkyl dithiophosphate is a commonly used additive as an antiwear and fatigue additive in lubricant compositions. This is true, however the invention of Ransom clearly states its use as optional. Antiwear agents are entirely given as optional. This is stated in P 117, 119. Even if they are to be included there are a variety of non-phosphorous containing additives that may be used. These include thiocarbamates and sulfurized olefins, see p 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 0.1 wt% or less. Also see p 54. This includes the amount of 0%.
Clearly Ransom has embodiments without any phosphorous compounds present. Additionally the chart of possible additives and examples are for crankcase lubricants. Other form of lubricant may be the intended use of the lubricant composition. See p 57.
The limitations of the claims are met, and 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. Also see remarks above detailing how a lack of any phosphorous additives may be present.
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
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 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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