CTFR 18/858,352 CTFR 82785 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. The amendments filed 5/8/26 do not overcome the rejection set forth in the office action mailed 2/12/26, which are maintained below. The discussion of the rejection has been updated as necessitated by the amendment. A new ground of rejection for claims 22 and 25 under 35 USC 112(d), necessitated by the amendment, is also set forth below. Claim Rejections - 35 USC § 112 07-36 AIA 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. 07-36-01 AIA Claim s 22 and 25 are 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 22 requires that the lubricant be free from API Group V base stocks. Claim 16, from which claim 22 depends, has been amended to use “consists of” language and limits the base stock to Groups I, II, or III base stocks. Claim 16 therefore excludes Group V base stocks. Claim 22 fails to further limit amended claim 16. Claim 25 requires the lubricant to comprise at least 50% of the base stock. Claim 16, from which claim 25 depends, has been amended to recite a composition consisting of the base stock, 50 to 600 ppm (0.005 to 0.06%) of water, 0 to 5% by weight of an additive package, and 10 to 20% by weight of an alkoxylated alcohol, implying a base stock content of 74.94 to 89.995%. Claim 25 recites a broader base stock concentration range and therefore fails to further limit amended claim 16 . 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 07-21-aia AIA Claim s 16, 22-23, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Sagawa (U.S. Pat. No. 8,901,052) in view of Kashani-Shirazi (U.S. Pat. No. 9,938,484) . In column 1 lines 14-19, Sagawa discloses a transmission oil composition having excellent insulating ability, cooling ability, and lubricity, which is preferably used in an automobile equipped with an electric motor, such as an electric vehicle, as in the method of claim 16. In column 2 lines 34-58 Sagawa discloses that the base oil of the composition can be a mineral oil, which is a Group I, II, or III base oil, as recited in amended claims 16 and 26. Sagawa does not require the inclusion of Group V base oils, meeting the limitations of claim 22. Mineral oils will have breakdown voltages within the range recited in claim 23, as evidenced by the data provided for examples C and D in Table 1 of the current specification. In the examples, Sagawa discloses compositions comprising the base oil in amounts within the range recited in claim 25. In column 8 lines 34-37 Sagawa discloses that the water content of the composition is preferably not more than 1000 ppm, encompassing the ranges recited in claims 16 and 26. In column 8 lines 44-47 Sagawa discloses that the composition can lubricate both a transmission system and an electric motor. The composition of Sagawa also comprises a 0.1 to 15% by weight of a compound selected from zinc dithiophosphate, triaryl phosphate, or triaryl thiophosphate, which are wear protection additives, as recited in amended claims 16 and 26, where the concentration overlaps the range recited for the additive package of claim 1. In column 6 line 57 through column 8 line 7, Sagawa discloses that the composition can comprise other publicly known lubricant additives, and discloses from column 7 line 66 through column 8 line 4 that various additives recited in amended claims 16 and 26 can be present in amounts within or overlapping the ranges recited n claims 16 and 26. In the examples of Tables 1-2 Sagawa also discloses numerous compositions comprising additives in a total amount within the claimed range. Sagawa does not require any additional components not recited in the amended claims and therefore does not violate the “consists of” language of amended claims 16 and 26. The differences between Sagawa and the currently presented claims are: i) From column 6 line 57 through column 8 line 7, Sagawa discloses that the composition can comprise other publicly known lubricant additives, but does not specifically disclose the inclusion of the claimed alkoxylated alcohol. ii) The water content range of Sagawa and the alkoxylated polyTHF range of Kashani-Shirazi encompass the claimed ranges rather than falling within them. With respect to i), in column 2 lines 26-39 Kashani-Shirazi discloses the use of polytetrahydrofurans (polyTHF) prepared by alkoxylating polyTHF with at least one C 8 -C 30 epoxy alkane. The epoxy alkanes of Kashani-Shirazi fall within the scope of “epoxide” in the context of the current application, as evidenced by the disclosure on page 6 lines 30-33 of the current specification listing various epoxy alkanes disclosed in column 11 lines 13-24 of Kashani-Shirazi as suitable epoxides. In column 11 lines 15-16 Kashani-Shirazi also discloses 1,2-epoxydodecane, a synonym for the dodecyl oxide of amended claim 16. Kashani-Shirazi also discloses in column 11 lines 1-10 that the epoxy alkane can be used in combination with various additional epoxides. In column 11 lines 4-9 Kashani-Shirazi discloses that propylene oxide, as recited in amended claim 16, is a suitable additional epoxide to be reacted with the polyTHF in combination with the epoxyalkane. In column 12 lines 46-59 Kashani-Shirazi discloses that the alkoxylated polyTHF can be present in various concentration ranges overlapping or encompassing the ranges recited in amended claims 16 and 26. For example, Kashani-Shirazi discloses in the cited section that the alkoxylated polyTHF is most preferably present in an amount of 2 to 30%, encompassing the range recited in claims 16 and 26. From column 13 line 1 through column 14 line 52 Kashani-Shirazi discloses various applications for the lubricating compositions, including transmission oils, and discloses that the base stocks of the lubricating compositions can be various mineral oils and polyalphaolefins meeting the limitations of the claimed base stocks as well as matching the base oils disclosed by Sagawa. The inclusion of the alkoxylated polyTHF of Kashani-Shirazi as an additive in the composition of Sagawa meets the limitations of the method of claims 16, 22-23, and 25 as well as the composition of claim 26. It would have been obvious to one of ordinary skill in the art to include the alkoxylated polyTHF of Kashani-Shirazi as an additive in the composition of Sagawa, since Kashani-Shirazi teaches in column 2 lines 26-39 that it is compatible with mineral oils and polyalphaolefins and gives a low friction coefficient. With respect to ii), 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 16, 22-23, and 25-26 are rendered obvious by Sagawa in view of Kashani-Shirazi . Response to Arguments 07-37 AIA Applicant's arguments filed 5/8/26 have been fully considered but they are not persuasive. Applicant argues that in light of the claim amendments, the data provided in the specification is sufficient to demonstrate unexpected results commensurate in scope with the claims. In particular, applicant argues that compositions comprising the claimed alkoxylate have a higher breakdown voltage, even at higher water contents . While the claims have been narrowed to be more reflective of the sole inventive example (Lubricant E), several issues still remain. The claims allow for compositions comprising broad classes of basestocks and broad concentration ranges of water and alkoxylated alcohol, while the sole inventive example provided by applicant contains specific amounts of a specific Group III base oil, water, and alkoxylated alcohol. One of ordinary skill in the art would not be able to determine from the sole example that the high breakdown voltage would be maintained at any amount of water within the claimed range, any amount of alkoxylated alcohol within the claimed range, or any type of the claimed base oils. Applicant also alleges that “The ordinary skilled artisan would have had no reasonable expectation of success in the combination proposed by Examiner”. However, as discussed in the rejection, Sagawa teaches that the composition can comprise “any of publicly known additives for lubricant oils”, and Kashani-Shirazi teaches that the alkoxylated polyTHF additives impart advantageous properties to lubricant oils, and are compatible with mineral oils. Sagawa does not teach away from the additives of Kashani-Shirazi. Applicant’s argument on this point is therefore not persuasive. Conclusion 07-40 AIA 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. 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 571-272-6381. 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. /JAMES C GOLOBOY/Primary Examiner, Art Unit 1771 Application/Control Number: 18/858,352 Page 2 Art Unit: 1771 Application/Control Number: 18/858,352 Page 3 Art Unit: 1771 Application/Control Number: 18/858,352 Page 4 Art Unit: 1771 Application/Control Number: 18/858,352 Page 5 Art Unit: 1771 Application/Control Number: 18/858,352 Page 6 Art Unit: 1771 Application/Control Number: 18/858,352 Page 7 Art Unit: 1771 Application/Control Number: 18/858,352 Page 8 Art Unit: 1771 Application/Control Number: 18/858,352 Page 9 Art Unit: 1771
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