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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 2/11/2026 has been entered.
Response to Amendment
Applicants’ response filed 2/11/2026 amended claims 29-30. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Loper in view of Yamamoto from the office action mailed 11/14/2025; therefore, this rejection is withdrawn. A new ground of rejection necessitated by applicants’ amendments is set forth below.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 18-19, 21 and 25-34 are rejected under 35 U.S.C. 103 as being unpatentable over Loper et al., US Patent Application Publication No. 2019/0177651 (hereinafter referred to as Loper).
Regarding claim 18-19, 21, 25 and 28-34, Loper discloses a lubricant composition comprising a major concentration of a Group III base oil ("hydrocarbon oil" as recited in claims 29-30 and reads on claims 25 and 33-34) (Para. [0187] and see Table 5E) for use in turbines and hydraulic applications (as recited in claim 28) (Para. [0313]) to which is added 0.02 wt% of 2- oleyl-1-hydroxyethylimidazoline (reads on "amphiphilic amine" as recited in claims 29-30 and reads on claims 18-19, 21 and 31-32) (Para. [0044] and see Table 5E) and up to 5000 ppm of phosphorus-containig compounds, such as, those represented by Formula XIV (“amphiphilic acid"/(B5) as recited in claims 29-30 and reads on claims 18-19 and 31-32) (Para. [0008] and [0015]-[0023]).
The difference between Loper and independent claims 29-30 is that Loper does not disclose a specific embodiment comprising both additive compounds. It is the position of the examiner that based on the disclosure of Loper that one of ordinary skill in the art at the time of the invention would immediately envisage the limitations of claims 29-30 from the disclosure of Loper with a reasonable expectation of success.
Regarding claims 26-27, Loper does not explicitly disclose the electroconductivity of the base oil, nor the lubricant composition. However, Group III base oils generally have an electroconductivity below 30 pS/m and this would be brought up to 30 pS/m with the addition of the same additives used in the instant claims.
Response to Arguments
7. Applicants’ arguments filed 2/11/2026 regarding claims 18-19, 21 and 25-34 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
Applicants have argued that the instant application demonstrates unexpected results and as such overcomes the obviousness rejection set forth. This argument is not persuasive. In order to demonstrate unexpected results applicants must fulfill two criterions: 1) applicants must compare their formulations against the closest prior art, and 2) the claims must be commensurate in scope with the data provided.
Regarding the first criteria – applicants have not compared their formulations against the closest prior art, nor shown that the comparative examples from the instant specification adequately represent the closest prior art.
Regarding the second criteria – the claims are still not commensurate in scope with the data provided. For example, the example formulations from the instant specification require very specific amphiphilic amines along with very specific mixture of amphiphilic acids present in very narrow concentration which are broadly recited in the instant claims. For these reasons applicants have not fulfilled these criterions in the unexpected results analysis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771