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 .
The amendment dated 11/13/2025 has been considered and entered. The amendment requires that the amide compounds are present at a minimum of 0.3% which Yavari et al. (EP 3 505 608 A1) does not teach, thus overcoming the previous rejections. However, new grounds of rejections are made as necessitated by the amendment.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 14 are rejected under 35 U.S.C. 103 as obvious over Yavari et al. (EP 3 505 608 A1) in view of Deckman et al. (US 2003/0195128)
In regards to claim 1, Yavari teaches composition useful as friction modifier (title). The composition comprises fatty acid amide of diethanolamine (DEA), fatty acid ester of DEA oligomer, fatty acid amide of DEA oligomer [0011 – 0013]. The composition comprises 15 to 80% of fatty acid amides of DEA oligomer (i.e., dimer, or trimer etc.) according to limitation B1 of the claim [0028 – 0033]. Fatty acid amide of DEA (according to B2 of the claim) is present at from 20 to 85% or preferably from 40 to 55% in the friction modifier composition [0043, 0044]. Thus, the claimed ratio of B2/B1 is at met or is at least overlapped.
The friction modifier composition is useful in the composition as fuel additive. However, Yavari also teaches the use as lubricating oil additive in and SAE 0W20 engine oil at amounts of 0.25% [0121, Table 5]. The additives are Coco-DEA and Coco-DEA dimer which comprise C12 coco fatty acids [0099]. Engine oils are mineral oils and/or synthetic oils. Yavari fails to particularly teach the amount of the amide of claim.
Deckman similarly recites engine oils [0010]. The composition similarly comprises friction modifiers such as amide compounds and which can be present in amount of from 0.01 to 15% in the composition [0105, 0106]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used amide friction modifiers in the amounts recited by Deckman in the composition of Yavari, as Deckman recites useful amounts of such ingredients in lubricating oils.
In regards to claims 2 – 6, Yavari in view of Deckman teaches the composition having the claimed limitations as previously stated. Coco fatty acids include C12 to C18 straight chain fatty acids.
In regards to claims 7, 8, Yavari in view of Deckman teaches friction modifier composition for oils and fuels but does not particularly recite that the amide was prepared from branched fatty acid, i.e., having branched alkyl group in the fatty amide product. Komiya et al. (US 2001/0044389) friction modifier additives for lubricating oil composition can include amides of component C3 which are prepared from straight chain or branched chain fatty acids with amines such as monoethanolamine, diethanolamine etc. [0080, 0082]. Since branching can be secondary, tertiary or quaternary carbon atom at any suitable position in the alkyl group since none is specified, branching at the a, b and g position of the carbonyl carbon would be obvious.
Komiya does not particularly recite amounts or ratios of monoalkanolamides and dialkanolamides in the composition but since such ingredients are allowed in the friction modifiers useful in the composition, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have added the conventional friction modifiers of Yavari and in the recited amounts, into the oil of Komiya, as Komiya allows for the use of such additives in the composition.
In regards to claim 9, Yavari in view of Deckman teaches the engine oil composition. It would be obvious to add conventional engine oil additives of the claims to the oil of Yavari.
In regards to claim 10, Yavari in view of Deckman teaches the engine oil composition having SAE 0W20 (i.e., 3.8 to 6.9 cSt oils at 100℃, i.e., Kv100) and which will encompass the Kv40 of the claims.
In regards to claim 11, Yavari, Deckman and Komiya teaches the composition and additives which are useful for lubricating gears and transmission [Komiya, 0113, 0119].
In regards to claims 12 – 14, Yavari in view of Deckman teaches amide friction modifiers for lubricating oils but does not particularly recite the claimed devices. Kwak (US 2021/0009920) teaches lubricants for lubricating oil for lubricating transmissions of electric vehicles and which may also be used to lubricate electric motors [abstract, 0003, 0161]. Transmissions are parts containing gears. The composition comprises conventional friction modifiers such as alkanolamides and thus it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the friction modifiers of Yavari in the composition of Kwak, as Yavari teaches they are useful in lubricating oil compositions.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the Yavari fails to teach the composition having the claimed amounts of the amide compounds. The argument is moot in view of the new grounds of rejections.
Applicant alleges that the claimed composition exhibits unexpected results sufficient to rebut the case of obviousness. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow for at least one type of component B1 selected from myriads of amides and salts, and at least one type of component B2 selected from myriads of compounds and optionally component B3 and optionally component B4 each of which comprises myriads of compounds, the inventive examples all require the presence of at least one type of each of B1, B2, B3 and B4 which does not support the breadth of the claims.
While the claims allow the amides to be present at from 0.3 to 4% in the composition, the inventive examples strictly require amounts of from 0.5 to 3% which does not support the breadth of the claims nor demonstrate criticality of the claimed ranges at the end points.
The results are not persuasive.
The inventive compositions were compared to compositions either having no friction modifier or low amounts of friction modifiers to demonstrate superior friction properties. The examples do not demonstrate synergism or criticality, but intrinsic properties.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771