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 .
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.
Claims 1 – 11, 13 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Toru Ikai (CN 102498195A) in view of Iino et al. (WO 2018/003815A1)
In regards to claim 1, Ikai teaches lubricant for rolling and sliding contact such as for gears, bearings, hydraulics etc. [0001, 0115]. The composition comprises base oil according to limitation A) of the claim, phosphorus-containing carboxylic acid compound, etc. [0008 – 0012]. The phosphorus carboxylic compound can be a carboxylic acid or carboxylic ester, although the ester is preferred [0076]. The compound can have the structures below, wherein R7 in the structure can be alkyl having 1 to 30 carbon atoms:
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130
579
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183
422
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Since the carboxylic acid containing and carboxylic ester containing compounds in the structures above are taught as equivalents, with the R7 group being an acid as in formula 2, or an ester when R7 is alkyl, combinations of both would be obvious. According to KSR, combination of known elements useful for the same purpose to yield predictable results is obvious. The combinations provide the phosphorus-sulfur extreme pressure (EP) agents C) (i.e., carboxylic ester containing) and D) (i.e., carboxylic acid or carbonyl containing) of the claim.
Ikai allows for the presence of other known additives but does not particularly recite the presence of detergents [0088]. Iino teaches oils for gears, bearings, hydraulic etc. similar to Ikai and can comprise various known additives such as detergents such as alkaline earth (i.e., calcium) sulfonates or salicylates having TBN of from 20 to 600 according to limitation B of the claim [0024 – 0026, 0058]. Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the detergent of Iino in the composition of Ikai, as Ikai allows for the presence of known additives and since Iino teaches suitable additives for oils for bearings, gears, etc., similar to Ikai.
In regards to claim 2, Ikai and Iino teach the composition having the detergent of the claim as previously stated.
In regards to claims 3 – 6, Ikai and Iino teach the composition having the EP additives of formulas 1 and 2 of the claims wherein in the claimed structure, R1, R2, R4 and R5 are hydrocarbyl (i.e., alkyl) such as isobutyl having 4 carbon atoms, and L1 and L2 are alkylene such as propylene having 3 carbon atoms.
In regards to claim 7, Ikai and Iino teach the composition having the EP agents which preferably includes the carboxylic ester compound and thus would make it obvious to provide the carboxylic ester compound to be present at amounts higher, or slightly higher than the carboxylic acid containing compound which makes the claimed ratio obvious. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In regards to claim 8, Ikai and Iino teach the composition which does not require the presence of organometallic extreme pressure agents.
In regards to claims 9, 10, Ikai and Iino teach the composition. Ikai teaches the composition can comprise amine or phenol antioxidants [0089]. Hindered phenolic antioxidants are well known and would be obvious.
In regards to claim 11, Ikai and Iino teach the composition. Ikai teaches the optional presence of dispersants but does not particularly recite imides. Iino teaches the oils can comprise dispersants such as succinimides (i.e., imide), which makes their addition to the composition of Ikai obvious as Ikai allows for the presence of other convention additives [0028].
In regards to claims 13 – 21, Ikai and Iino teach the composition. Ikai teaches the use of the composition on sliding surfaces of hydraulic systems and thus when applied to the surface the claimed limitation would be intrinsically provided [0115].
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771