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 November 26, 2026 in which claims 1-14 were amended and claims 21-26 were added.
The rejection of the claims under 35 USC 102 is withdrawn in view of the amendment to the claims.
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, 8-14 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa (US 20220064564-appears on the PTO 892).
Nakazawa teaches a lubricating oil composition comprising a base oil, a succinimide dispersant including a non-modified and a boric acid modified succinimide dispersant (see abstract; para 0023, 0131-0136). The composition also comprises a metallic detergent comprising at least one metal salicylate detergent, wherein the component (B) is present in an amount of 1000 to 2000 mass ppm in terms of metal content on the basis of the total mass of the composition (see para 0021). The lubricating oil composition is used to lubricate an internal combustion engine of a hybrid electric vehicle (see para 0039). The composition contains a Zn dialklydithiophosphate wherein the alkyl groups are primary C1-C24 alkyl groups (see para 0156-0157). The compound is present up to 1000 mass ppm in terms of phosphorus (see para 0156-0158). An oil soluble Mo compound may be present, such as MoDTC (see para 0159-0164). Other additives such as hindered amine antioxidants may be present (see para 0171). In Nakazama’s list of components used in the examples, he has listed base oils, metallic detergents, succinimide dispersants, ZnDTP, MoDTC, a hindered amine antioxidant (0.1-5.0 %) and a phenolic antioxidant (see para 0171-0172, 0187-0193). Nakazawa meets the limitations of the claims other than the differences set forth below.
Nakazawa does not exemplify a ZnDTP wherein all of the alkyl groups of the ZnDTP are primary alkyl groups. However, no unobviousness is seen in this difference because Nakazawa teaches that preferably the alkyl group may be primary alkyl groups (see para 0157).
Nakazawa does not specifically teach that the proportions of the ZnDTP or the ratios of amine to ZnDTP. However, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the ZnDTP and the ration of the amine to ZnDTP through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-7, 9-12 and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020164746 with Utaka (US 20220186137) as the English translations, both appear on the PTO-892. The citations are taken from Utaka.
Utaka teaches a lubricating oil composition comprising a base oil (A), at least one ash-free additive (B) selected from an ash-free sulfur-based antioxidant (B1) and a hindered amine compound (B2), and a boronated imide-type dispersant (C). The content of the ash-free additive (B) is 1.0% where the ash-free additive (B) contains the hindered amine compound (B2) (see abstract; para 0052, 0056).
Examples of the hindered amine compounds include
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In the formulae (b2-1a) and (b2-1b), R21B each independently represents a hydrogen atom or an alkyl group having 1 to 10 carbon atoms (see para 0091). In the formula (b2-1a), R22B represents a hydrogen atom, an alkyl group having 1 to 20 carbon atoms, a cycloalkyl group having 6 to 18 ring carbon atoms, an aryl group having 6 to 18 ring carbon atoms, a hydroxy group, an amino group or a group represented by —O—CO—R′ (where R′ represents a hydrogen atom or an alkyl group having 1 to 20 carbon atoms) (see para 0092). In the general formula (b2-1b), Z represents an alkylene group having 1 to 20 carbon atoms, a cycloalkylene group having 6 to 18 ring carbon atoms, an arylene group having 6 to 18 ring carbon atoms, an oxygen atom, a sulfur atom, or a group represented by —O—CO—(CH.sub.2)n—CO—O— (where n is an integer of 1 to 20) (see para 0093). The content of the hindered amine compound is less than 1.0% by mass based on the total amount of the lubricating oil composition (see para 0013). This amount is close enough to the claimed 1.00 mass % that one would expect that the compositions to function in the same manner.
The lubricating oil composition contains the boronated imide-type dispersant (C).
Also the lubricating oil composition of one embodiment of the present invention may contain a non-boronated imide-type dispersant (D) along with the boronated imide-type dispersant (C). The non-boronated imide-type dispersant is generally called an imide-type dispersant (see para 0098-0099). The composition may contain a calcium based detergent wherein the content of the metal atom derived from the metal-based detergent is 50 to 200 ppm by mass based on the total amount of the lubricating oil composition. The detergent is optional (see Examples and claim 6) .
The lubricating oil composition of one embodiment of the present invention may contain a zinc dithiophosphate (ZnDTP) (see para 0155). The content of zinc dithiophosphate may be so controlled that the content of the phosphorus atom derived from the zinc dithiophosphate can fall within preferably 0.05% by mass or more based on the total amount of the lubricating oil composition (see para 0157).The ZnDTP has the following formula
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The alkyl group and the alkenyl group for R21F to R24F may be linear or branched but is, from the viewpoint of attaining more excellent oxidation stability, preferably a primary or secondary alkyl group. Specifically, above all, the zinc dialkyldithiophosphate for use in the composition is preferably a zinc primary dialkyldithiophosphate (see para 0160).
As the non-sulfur antioxidant, a phenolic antioxidant and an amine antioxidant are preferably used (see para 0168-0170). Utaka meets the limitations of the claims other than the differences that are set forth below.
Utaka does not exemplify a ZnDTP wherein all of the alkyl groups of the ZnDTP are primary alkyl groups. However, no unobviousness is seen in this difference because Utaka teaches that preferably the alkyl groups may be primary alkyl groups (see para 0157).
Utaka does not specifically teach the proportions of the ZnDTP or the ratios of amine to ZnDTP. However, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the ZnDTP and the ratio of the amine to ZnDTP through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2020164746 with Utaka (US 20220186137 as the English translation) as applied to the claims above, and further in view of Oki (US 20190241828).
Utaka has been discussed above. Utaka does not teach using MoDTC. However, Oki teaches this difference.
Oki teaches a lubricating oil composition that has good detergency irrespective of the small sulfated ash content thereof, and has a good friction reducing capability even after the deterioration thereof. The lubricating oil composition contains a base oil (A), a non-metal-containing sulfur antioxidant (B), and a hindered amine antioxidant (C) having one piperidine-derived skeleton in a molecule (see abstract). The lubricating oil composition of the present embodiment preferably further contains a molybdenum friction modifier. The molybdenum friction modifier used may be an organic compound having a molybdenum atom, and from the standpoint of the friction reduction, a molybdenum dithiocarbamate (MoDTC) is preferred (see para 0078-0079).
It would have been obvious to one of ordinary skill in the art to include MoDTC in the oil composition because Oki teaches an oil composition similar to that of Utaka and Oki teaches that when MoDTC is added to such oil compositions that the compound facilitates the improvement of the friction reducing capability of the lubricating oil composition.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Nakazawa indicates that when a calcium-based detergent is contained, setting the calcium atom equivalent content of the calcium-based detergent to less than 1,000 ppm by mass will result in poor detergency performance and base number retention. Applicant argues that Nakazawa does not suggest, and in fact counterindicates, the calcium atom equivalent content of the calcium-based detergent to less than 1,000 ppm by mass and that is should not have been reasonably expected that reducing Nakazawa's metal-based detergent as claimed would have maintained Nakazawa's quality.
As Applicant has pointed out, Nakazawa teaches 1000-2000 mass ppm, in terms of metal content, of a metallic detergent. Applicant’s position that claiming less than 1,000 ppm by mass in terms of the metal content of the detergent would not have been obvious. The examiner respectfully disagrees. An amount of less than 1000 ppm reads on 999.99. This amount is mathematically close to 1,000 and Applicant has not shown any unexpected results. In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(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.
Applicant argues the Utaka denies the content of hindered amine being 1.0 mass % or more, at least indicating that using amounts as claimed should have been expected to be risky or damage the quality of the formulation. Applicant argues that it should not have been reasonably expected that reducing Utaka's hindered amine compound as claimed would have maintained Utaka's quality.
The examiner respectfully disagrees. An amount of 1.00 % reads on 0.999. This amount is mathematically close to the claimed 1.0% and Applicant has not shown any unexpected results. In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(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.
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 18851172/20260307