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 December 1, 2025 in which claims 1, 11 and 12 were amended and claims 22-24 were added.
The rejections of the claims under 35 USC 103 over Evans and Evans in view of Schumacher are withdrawn in view of the amendment to the claims and Applicant’s arguments.
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.
Claim 1 is 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.
There is no antecedent support within the claim for “the metal-based detergent”. It should be pointed out that “1.0 parts by pass” should read –1.0 parts by mass--.
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 1-8, 11-12, 14-20 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Susukida (US 20210395634- appears on previous PTO-1449).
Susukida teaches a lubricating oil composition comprising a lubricant base oil, a calcium salicylate detergent in an amount of 0.005 to 0.03 mass% in terms of calcium on the basis of the total mass of the composition and a nitrogen-containing antioxidant in an amount of 0.005 to 0.15 mass% in terms of nitrogen on the basis of the total mass of the composition (see abstract). Susukida teaches using the composition in hybrid systems (see para 0002;0007).
The base oil may be mineral, synthetic or a mixture (see para 0032). The synthetic oil may be esters (polyol or di) and is present in the composition in an amount up to 15 mass% (see para 0032;0035-0036; Example 6 (mineral and ester oils)). The kinematic viscosity of the oil is from 1.7 to 4 mm2/s at 100 C (see para 0037).
The nitrogen containing antioxidant may be aromatic amines and hindered amines (see para 0070;0073). Other additives such as antioxidants other than the amine antioxidants may be present, for example, phenolic antioxidants (see para 0106;0109). These antioxidants are present in an amount of 0.1 to 1.5 mass% (see para 0110). The metal ratio of the calcium detergents is 2.2-2.3 (see para 0140-0144). Susukida meets the limitations of the claims other than the differences that are set forth below.
Susukida does not specifically teach the mass% of the hindered amine as 0.60-10 mass % or 2.5 parts by mass to 50 parts by mass or a content of the antioxidant based on a total 100 parts by mass of the hindered amine compounds is in a range of 1.0 parts by mass to 100 parts by mass. However, it the examiner’s position that the amounts of the amines required to meet the 0.005-0.15 mass % N would overlap the claimed mass % and parts by mass and the skilled artisan would be able to optimize the amount of each antioxidant to arrive at a lubricating oil composition with outstanding antioxidant properties.
Susukida does not specifically teach less than 50 ppm by mass of the metal-based detergent. However, no unobviousness is seen in this difference because Susukida teaches 50 ppm and Applicant is claiming less than 50 ppm, which reads on 49.99 ppm). It is well settled 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).
Susukida does not specifically teach that the kinematic viscosity of the oil composition is 5.0 mm2/s or more at 100 C or 25 mm2/s at 40 C or 0.17 mass % or more of nitrogen atoms.
Susukida teaches a viscosity of 4.0 mm2/s at 100 C. These properties are close enough to the claimed ranges that one would expect the oil compositions to have the same or similar properties. It is well settled 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).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Susukida indicates that, in order to improve the electrical insulation properties of new oils and the composition after oxidative degradation, the content of the metallic detergent needs to be limited to from 0.005 to 0.03 mass% (50 to 300 ppm). Applicant argues that Susukida does not suggest setting the content of the metal detergent to less than 50 ppm, as recited in amended claim 1, because this would impair the above properties.
While Susukida does not specifically teach decreasing the amount of the metallic detergent to less than 50 ppm, he does teach that one may use 50 ppm. The examiner has reviewed the data in Table 1 in the present specification and cannot find any data that pertains to the amount of metallic detergent that is present in the examples. Applicant has not shown that there is any difference in an oil composition containing less than 50 ppm (49.99 ppm) of metal detergent than an oil composition containing 50 ppm of metal detergent. The court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018).
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.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18851105/20260225