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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 requires that the lubricant composition comprise an antifreeze composition selected from various glycol compounds. However, claim 17, from which claim 18 depends, has been amended to incorporate this limitation, and claim 18 therefore fails to further limit amended claim 17. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 17-18 and 20-36 are rejected under 35 U.S.C. 103 as being unpatentable over Thiebaut (FR 3111639 A1).
An English-language equivalent of Thiebaut, U.S. PG Pub. No. 2023/0250359, is used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language reference.
In paragraphs 11-15 Thiebaut discloses an aqueous lubricant composition comprising deionized water, meeting the limitations of the water of claims 17, 21, and 34, at least one polyalkylene glycol, as recited in claims 17-18 and 34-35, an antifreeze compound meeting the limitations of the antifreeze compounds of amended claims 17 and 34-35, as well as at least one phosphorus compound. In paragraphs 33, 36, and the reference’s claims 30-31 Thiebaut discloses a method of lubricating a propulsion system of an electric or hybrid vehicle with the composition, meeting the method limitation of claim 17. In paragraph 87 Thiebaut discloses that the phosphorus compound does not have to be a phosphate ester salt, meeting the limitations of claims 17 and 30, since the “and salts thereof” language indicates that phosphorus compound can also be an ester not in salt form, and because Thiebaut also recites phosphonate esters, which do not violate the proviso regarding phosphate ester salts even when present in salt form. In paragraph 89 Thiebaut further discloses suitable ethoxylated phosphate esters which are not in salt form.
In paragraph 79 Thiebaut discloses that the antifreeze compound is preferably present in an amount of 5.0 to 35% by weight, overlapping the ranges recited in claims 17, 20, and 34-35. In paragraph 49 Thiebaut discloses that the water is preferably present in an amount of 40 to 75% by weight, within the range recited in claim 22 and encompassing the ranges recited in claims 23 and 34. In paragraph 63 Thiebaut discloses that the polyalkylene glycol can be an ethylene oxide/propylene oxide copolymer, meeting the limitations of claims 24-25 and 36. In paragraph 66 Thiebaut discloses that the polyalkylene glycol has a viscosity of 100 to 5000 mm2/s, preferably 150 to 3000 mm2/s, at 100° C, within the ranges recited in claims 26-27 and 36. In paragraph 71, Thiebaut discloses that the polyalkylene glycol is preferably present in an amount of 5.0 to 50% by weight, as recited in claim 28, and encompassing the range recited in claim 29. Thiebaut further discloses more preferred ranges also falling within the range of claim 28 and encompassing or overlapping the range recited in claim 29.
In paragraphs 111-112 Thiebaut discloses that the composition can comprise various additives recited in claim 31, including a pH regulator as recited in claim 32. In paragraph 133 Thiebaut discloses that the pH regulator advantageously maintains the pH of the composition at a pH between 8 and 11, within the range recited in claim 32. In paragraphs 121-122 Thiebaut discloses that the composition can comprise extreme pressure agents other than sulfur-containing fatty acid type extreme pressure additives, such as dimercaptothiadiazole, meeting the limitations of claim 33.
The difference between Thiebaut and the currently presented claims is that some of the ranges of Thiebaut overlap or encompass the claimed ranges rather than fall within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Geymayer (U.S. Pat. No. 4,563,294).
From column 1 line 65 through column 2 line 11 Geymayer discloses an aqueous lubricant containing water, as recited in claim 34, an antifreeze agent, as recited in claim 35, and an adhesion promoter which can be a polyethylene glycol, meeting the limitations of the polyalkylene glycol of claim 34. In column 2 lines 7-11 and column 4 lines 16-31 Geymayer discloses that the lubricant further contains a polyethylene oxide/polypropylene oxide adduct, also meeting the limitations of the polyalkylene glycol of claim 34 and 36. In column 2 lines 34-38 Geymayer discloses that the antifreeze compounds can be the specific compounds recited in claim 35. The composition of Geymayer does not require the inclusion of phosphate ester salts, meeting the requirements of claim 34 regarding the content of alkali metal salts of phosphate esters.
In column 2 lines 26-29 Geymayer discloses that the concentration of water is preferably 35 to 50% by weight, overlapping the range recited in claim 24. In column 4 lines 13-15 and column 4 lines 62-65 Geymayer indicates that the total amount of polyalkylene glycol overlaps the range recited in claim 34 and encompasses the range recited in claim 35, also noting that the polyethylene oxide/polypropylene oxide adduct can meet the limitations of the polyalkylene glycol claims 34-35 on its own.
i) Some of the ranges of Geymayer overlap or encompass the claimed ranges rather than falling within them.
ii) Geymayer does not specifically disclose the kinematic viscosity of the polyalkylene glycol at 100° C. This relates to claim 36.
With respect to i), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
With respect to ii), Geymayer discloses in column 4 lines 16-22 that the dynamic viscosity of the polyethylene oxide/polypropylene oxide adducts is preferably 1,000 to 2,000 mPa∙s at 50° C. Since the viscosity at 50° C will be lower than the viscosity at 100° C, and the density of polyethylene oxide/polypropylene oxide will range from about 1 to 1.1, the kinematic viscosity of the polyethylene oxide/polypropylene oxide adducts of Geymayer will at least overlap the range recited in claim 21. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
In light of the above, claims 34-36 are rendered obvious by Geymayer.
Response to Arguments
Applicant’s amendments filed 12/29/25 have been considered but are not persuasive. Regarding the rejection over Geymeyer, applicant argues that the compositions of Geymeyer are drawn to a lubricating composition for a saw chain rather than for a electric or hybrid vehicle. Claims 34-36 are drawn to the lubricant composition rather than the method of use, and as discussed in the above rejection, Geymeyer renders the claimed composition prima facie obvious. Since the compositon of Geymeyer renders the claims obvious, it would be capable of performing the intended use recited in the preamble to claims 34-36, noting that applicant has not identified any compositional distinctions implied by the intended use. Applicant argues that Geymeyer includes phosphate esters as corrosion and/or wear inhibitors, but the cited section of Geymeyer discloses numerous alternatives to alkali metal salts of phosphate esters.
While the amendments overcome the anticipation rejection set forth over Thiebaut in the office action mailed 7/29/25, the amended claims are prima facie obvious over Thiebaut for the reasons discussed in the above rejection. In particular, Thiebaut teaches that the antifreeze agent is preferably present in an amount of 5 to 35% by weight, overlapping the ranges recited in the amended claims.
Applicant also argues that the claimed composition produces unexpected results, pointing to the examples provided in the current specification. Applicant only reports results for one inventive example (I2). In order to successfully rebut a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claims. Applicant’s single inventive example is not sufficient to demonstrate that superior results would be maintained across the entire vast scope of the claims, which allow for broad or unlimited concentrations of broad classes of antifreeze compounds, polyalkylene glycols, and water. The inventive example also comprises a pH regulator, which is only recited in dependent claims 31-32; it is additionally unclear whether superior results would be maintained in the absence of the pH regulator, or if the pH of the composition were outside a certain range.
Conclusion
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771