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 .
Response to Amendment
This Office action is in response to the amendment filed November 14, 2025 in which claim 1 was amended, claims 16, 18 and 19 were canceled and claims 21-22 were added.
The rejection of the claims under 35 USC 103 over Takekawa (US 20200181523) and the rejection over Watanabe (US 20040005988) are withdrawn in view of the amendment to claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Applicant recites f1 as an integer of 0 to 4. However, since f1 is attached to two different R groups, the claim language is confusing. Applicant should clarify which f1 is being defined by reciting the correct R group that is limited by the integers.
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 1-15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JPH07305082 (appears on the PTO-892).
JP teaches a lubricating oil composition excellent in shudder preventing performance in initial stage before running-in of abrasive material in a clutch part of an automatic transmission without lowering torque transmission volume and suitable for automatic transmission of an automobile, especially equipped with a slip-controlling mechanism. This lubricating oil composition for automatic transmission contains 0.01-5wt.% of a phosphorous acid ester and 0.01-5wt.% of one or more organic compounds having a structure introducing one or more bonds or functional groups among -CONH-, -NH2, and -NH-, based on total weight of the composition, in a base oil (see abstract; 0008). The phosphorous acid esters are set forth in paragraphs 12, 13, 25 and 26 in the original Japanese document. The phosphorous acid ester that renders obvious that of the present invention has the following formula:
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wherein R5 is a sulfur containing hydrocarbon group and y is 1 (see original document para 0013; 0026; 0027 and translation paragraphs 0013; 0026; 0027).
JP teaches amides (page 6 last 2 paragraphs); and amines (0.01-5% by wt). The amine may be an amine antioxidant (page 7, fourth paragraph; page 8, third through fourth paragraphs and paragraph eleven). The ashless dispersant may be a polybutenyl succinimide in a proportion of 0.05 to 7% by weight (see page 8, tenth paragraph). The metal deactivator includes benzotriazole in a proportion of 0.01 to 3 % by weight (see page 8, fourteenth paragraph)(see translation for all of these pages). JP meets the limitations of the claims other than the differences that are set forth below.
JP does not specifically teach a single composition wherein all of the claimed components are present in the claimed ratios. However, no unobviousness is seen in this difference because JP teaches a lubricating oil composition wherein it is known to add all of the claimed components to a lubricating oil composition in the claimed proportions. Therefore, JP renders obvious the present claims.
JP does not exemplify a phosphorous acid ester as set forth in claim 1. However, no unobviousness is seen in this difference because JP teaches that R5 may be a sulfur containing hydrocarbon group containing 1-30 carbon atoms and teaches that an example of the sulfur atom-containing hydrocarbon group includes dodecylthioethyl group. This teaching suggests the phosphorous acid ester of claim 1 (b-11).
Claim(s) 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over JPH07305082 as applied to the claims above, and further in view of GB 1511593 (appears on present PTO-892).
JP has been discussed above. JP does not specifically teach the benzotriazole-based compounds of claims 21 and 22. However, GB 1511593 meets this limitation.
GB teaches additives for functional fluids comprising benzotriazole-based compounds of the formula
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wherein R is H or methyl, Z is N and R1 and R2 are the same or different and is alkyl having 1-20 carbon atoms (see pare 1, lines 8-31). The most preferred compounds are those wherein R is H or methyl and R1 and R2 are the same or different and each is an alkyl of 4-12 carbon atoms (see page 2, lines 30-34). The benzotriazole compounds function as metal passivators (deactivators) and are present in the fluid in an amount from 0.01% to 5% by wt (see page 3, lines 25-42).
It would have been obvious to one of ordinary skill in the art to have used the claimed benzotriazole-based compounds because JP is not limited to the type of benzotriazole metal deactivator that it uses in its invention.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that JP does not teach the claimed phosphorous acid esters.
The examiner respectfully disagrees. JP teaches phosphorous acid esters that encompass the claimed phosphorous acid ester set forth in the present claim 1 as (b-11). JP teaches that R5 is a sulfur containing hydrocarbon group containing 1-30 carbon atoms and teaches that an example of the sulfur atom-containing hydrocarbon group includes dodecylthioethyl group. This teaching suggests the phosphorous acid ester of claim 1 (b-11).
The prior art made of record and not relied upon is cited for teaching the general state of the art and is considered pertinent to applicant's disclosure. GB 1061904 teaches a functional fluid/lubricating oil composition comprising benzotriazole-based compounds.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18841473/20260203