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 amendment filed September 19, 2025 in which claim 1 was amended, claims 7-10 were cancelled and claim 11 was added.
The terminal disclaimer filed September 19, 2025 has been approved.
The rejection of the claims under 35 USC 112(d) is withdrawn in view of claims 7-10 being canceled.
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 1-6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over JP2016069404 (appears on PTO-892).
JP teaches a lubricant composition for automobile gear oils and transmission oils excellent in shear stability, temperature viscosity property and low temperature viscosity property at a high level with a good balance as compared with conventional lubricants containing the same lubricant base oil. The lubricant composition contains a lubricant base oil, and an ethylene-α-olefin copolymer having an ethylene content of 30 to 85 mol%, a kinematic viscosity at 100°C of 10 to 5,000 mm/s, a molecular weight distribution (Mw/Mn) of 2.5 or less, a B value of 1.1 or more (see abstract; page 22 “Application”).
The lubricant base oil is composed of a mineral oil having a kinematic viscosity at 100°C of 2 to 10 mm2/s, a viscosity index of 105 or more, and a flow (pour) point of -10°C or less, and/or a synthetic oil having a kinematic viscosity at 100°C of 1 to 10 mm2/s, a viscosity index of 120 or more, and a flow (pour) point of -30°C or less (see abstract; last paragraph of page 3-the bottom of page 4).
The ethylene-alpha-olefin copolymer may use an alpha olefin such as a C3-C20 olefin wherein propylene is preferred (see ; page 6 in its entirety and page 7; 3rd full paragraph). In the lubricating oil composition, the blending ratio of the lubricating base oil composed of the mineral oil (A) and / or the synthetic oil (B) and the ethylene-α-olefin copolymer (C) Is not particularly limited as long as it satisfies the required characteristics in the intended application, but is usually a mass ratio between the lubricating base oil and the ethylene-α-olefin copolymer (C). The ratio being the mass of the lubricating base oil / mass of copolymer (C) is 99/1 to 50/50 (see page 20, 6th full paragraph). JP meets the limitations of the claims other than the differences that are set forth below.
JP does not specifically teach Applicant’s intended use. However, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
JP does not specifically teach that the lubricating oil composition has a kinematic viscosity at 100 C of 4 to 6.5 mm2/s. However, no unobviousness is seen in this difference because a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Applicant has not shown that unexpected results are obtained upon comparison of the present invention to that of JP.
JP does not specifically teach the Hasen chromaticity of 30 or lower. However, no unobviousness is seen in this difference because the skilled artisan preparing such an ethylene-alpha-olefin copolymer and desiring a copolymer with trace amounts or a very small amount of yellowness would prepare a copolymer containing very few impurities, such that the Hasen chromaticity would be 30 or lower.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argus JP teaches away from lubricating oil compositions having the recited kinematic viscosity range of 4 to 6.5 mm2/s because JP states “When the kinematic viscosity at 100°C is excessively smaller than 7 mm2/s, the oil film holding performance is insufficient and the possibility of metal contact between the gears increases.”
The examiner respectfully disagrees. It is well settled that Applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range (as were Applicant’s original claims) by showing "(1) that the prior art taught away from the claimed invention...or (2) that there are new and unexpected results relative to the prior art." Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). In the instant case, Applicant has not shown that the kinematic viscosity of the present invention is “excessively smaller than 7 mm2/s”. It is well established that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Applicant has not compared the present lubricating oil composition against the lubricating oil composition of JP, and since there is no comparison, there is also no showing of unexpected results.
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.
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 571-272-6368. 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.
/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18842784/20250929