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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/25 has been entered.
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 24 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. Amended claim 24 recites an alkoxylated polytetrahydrofuran having 6 to 16 tetrahydrofuran repeat units (represented by the variable k). However, claim 16, from which claim 24 depends, has been amended to recite 6 to 16 tetrahydrofuran repeat units. Claim 24 also only allows for the polytetrahydrofuran to have been alkoxylated with epoxides comprising 12 carbon atoms (the R1 group) while amended claim 16 requires the polytetrahydrofuran to be alkoxylated with both dodecyl oxide and propylene oxide. Claim 24 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
Claims 16 and 22-26 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 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 C8-C30 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. Throughout the reference, Kashani-Shirazi discloses various alkoxylated polyTHF compounds having a general formula (II), which meet the limitations of general formula (I) of claim 24. 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 and 22-25 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 and 22-26 are rendered obvious by Sagawa in view of Kashani-Shirazi.
Response to Arguments
Applicant's arguments filed 1/26/26 have been fully considered but they are not persuasive. Applicant argues that the claimed composition and method produces unexpected results, pointing to the data supplied in the specification. In particular, applicant argues that Lubricant E in Table 1 of the specification has an unexpectedly high breakdown voltage, despite the presence of 300 ppm of water.
In order to successfully overcome a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case, the claims allow for compositions comprising any amount of broad classes of basestocks and broad concentration ranges of water and alkoxylated alcohol, while the sole inventive example (Lubricant E) 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 this 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 for any amount of any of the claimed base oils. Applicant therefore has not demonstrated unexpected results commensurate in scope with the claims.
The open-ended “comprising” language of the claims allows for the compositions to comprise additional unrecited components, such as an additional base oil. Lubricant B of Table 1 comprises a Group IV (polyalphaolefin) base oil and has a breakdown voltage of 30 kV at 58 ppm of water without the inclusion of alkoxylate. Since data is not reported for this base oil mixture at any other water content, it is unclear whether the breakdown voltage for the inventive Lubricant E would be any higher than that of Lubricant B at the same water concentration.
Additionally, it is noted that claim 23 recites a breakdown voltage of up to 500 V (0.5 kV), which is far lower than the breakdown voltage reported for any of the examples in Table 1, which have breakdown voltages on the order of tens of kV. Claim 23 therefore clearly does not limit the claims to those which produce unexpected results. Claim 23 also implies that claim 16 (which must be broader than claim 23) has no lower bound to the breakdown voltage.
Applicant 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
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