DETAILED ACTION
This is the initial Office action for application SN 18/865,381 having an effective date of 13 November 2024 and a Foreign priority date of 16 May 2022 (Japan). A preliminary amendment was filed on 13 November 2024. Claims 1-20 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of copending Application No. 18/836,902. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application claims a lubricating oil composition comprising a base oil, a phosphorous acid ester comprising a sulfur atom-comprising group, a thiadiazole-based compound and a benzotriazole-based compound, and claims an electrically driven unit comprising the lubricating oil composition and a gearbox and an electric motor, which is indistinguishable over the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claim(s) 1-6, 9-13 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al (US 2017/0145337).
Masuda et al [“Masuda”] disclose a lubricating composition for transmissions which improves fuel saving properties and has excellent metal fatigue life and heat resistance. The composition contains 50 to 97 percent by mass of (A) a mineral base oil having a 100°C kinematic viscosity of 1.5 mm2/s or higher and 3.5 mm2/s or lower, (B) a monoester-based base oil having a 100°C kinematic viscosity of 2 mm2/s or higher and 10 mm2/s or lower, and (C) a specific sulfur-containing phosphite ester. Masuda discloses that the composition has a 100°C kinematic viscosity of 2.5 mm2/s or higher and 4.0 mm2/s or lower (Abstract). The claimed lubricating oil composition differs by requiring that the 100°C kinematic viscosity be 4.2 mm2/s or more. However, the examiner is of the position that such a slight difference in kinematic viscosity is not expected to alter the disclosed lubricating compositions for transmissions.
Masuda discloses that the sulfur-containing phosphite ester is represented by formula (I) in [0013] and [0066] wherein R is a sulfur-containing hydrocarbyl group having 4 to 20 carbon atoms, and R’ is hydrogen, a hydrocarbyl group having 4 to 20 carbon atoms or a sulfur-containing hydrocarbyl group having 4 to 20 carbon atoms. Examples of the sulfur-containing hydrocarbyl group include hydrocarbyl groups containing a thioether bond (-CH2 – S – CH2-) in their main chain or branched chain [0068]. The examiner is of the position that the sulfur-containing phosphite ester of Masuda may be the same as the compounds of formula (b-1) and (b-2) set forth in dependent claim 2.
Masuda discloses that the lubricating composition may additionally contain a polysulfide and/or a thiadiazole [0014]. Masuda discloses that no particular limitation is imposed on the structure of the thiadiazole, and examples include compounds represented by formula (4), (5) and (6) set forth in [0095]. Masuda allows for the addition of other additives to the composition including benzotriazole corrosion inhibitors [0102]. Although Masuda does not disclose amounts of thiadiazole and benzotriazole, the examiner is of the position that any effective amount of these components could be used in the composition.
Claim Rejections - 35 USC § 103
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Susukida et al (US 2020/0332218).
Susukida et al. [“Susukida”] discloses a lubricating oil composition comprising a lubricating base oil and (A) a poly(meth)acrylate in an amount of 2 to 10 mass %; (B) a phosphite ester of general formula (1), wherein R1 and R2 are each independently a group having 5 to 20 carbon atoms represented by general formula (2), in an amount of 0.01 to 0.06 mass % in terms of phosphorus; (C) a thiadiazole compound in an amount of 0.01 to 0.2 mass%; and (D) a calcium salicylate detergent in an amount of 0.005 to 0.03 mass % in terms of calcium; wherein the lubricating oil composition has a kinematic viscosity at 40°C of 4.0 to 20.0 mm2/s (Abstract).
Susukida discloses that in one preferred embodiment, the lubricating oil composition may further comprise a tolyltriazole metal deactivator and/or a benzotriazole metal deactivator in an amount of 0.001 to 0.1 mass % [0059]-[0061].
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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Susukida discloses that at least one mineral base oil, at least one synthetic base oil, or any mixed base oil thereof may be used as a lubricating base oil in the lubricating oil composition of the invention [0024]-[0028].
In regard to dependent claims 7-8, 14-15 and 19-20, Susukida discloses that the lubricating oil composition is suitable for lubrication of electric motors [0001]-[0003]. Susukida discloses that for lubrication of an electric drive module, it is desirable to lubricate an electric motor and a transmission (gear mechanism) using the same lubricating oil in view of downsizing and weight reduction [0012].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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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.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
April 14, 2026
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