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 amendments filed 3/30/26 overcome the rejection set forth over Buzdygon in the office action mailed 12/29/25, but not the rejection set forth over Dyer, which is maintained below and updated in light of the claim amendments. New grounds of rejection necessitated by the amendments are also set forth below.
Claim Rejections - 35 USC § 103
Claims 1, 5-7, 9-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Dyer (U.S. PG Pub. No. 2023/0076125).
In paragraphs 28-39 Dyer discloses a hydraulic fluid comprising a major amount of a base oil. In paragraph 188 Dyer discloses that the base oil typically accounts for 90.0 to 99.6% by weight of the hydraulic fluid, within the range recited for component (a) of claim 1. In paragraphs 192-193 Dyer discloses that the base oil is preferably a mineral oil having a sulfur content in ranges which can fall within or encompassing the range recited for component (a) of claim 1, for example no more than 300 ppm of sulfur. In paragraph 111 Dyer discloses that in a preferred embodiment, the composition comprises a metal detergent. In paragraph 115 Dyer discloses that calcium detergents, as recited in component (b) of claim 1, are preferred. In paragraph 120 Dyer discloses that the detergent preferably supplied metal in amounts of 35 to 115 ppm or 40 to 80 ppm, within the ranges recited for component (b) of claim 1. In paragraph 124 Dyer discloses that the composition preferably comprises an ashless phosphorus-containing anti-wear agent, as recited in component (c) of claim 1. In paragraphs 177-186 Dyer discloses that the composition preferably comprises various ashless antioxidants. In paragraph 165 Dyer discloses that the composition has a phosphorus content in various ranges overlapping the range recited in claim 1. In paragraph 166 Dyer discloses that in a particularly preferred embodiment, the hydraulic fluid is essentially free of zinc, as recited in claim 1. In paragraphs 56 and 292, Dyer discloses a hydraulic system comprising at least one fluoropolymer seal and the hydraulic fluid, where the hydraulic fluid comes into contact with the seal, implying that the hydraulic fluid is supplied to the hydraulic system, meeting the method limitations of amended claim 1.
In paragraphs 168-176 Dyer discloses that the composition can comprise a rust inhibitor which can be a neutral salt of a naphthalenesulfonic acid, and that the metal salt can be a calcium salt, meeting the limitations of the detergent of component (b) of amended claim 1. Dyer discloses that a preferred concentration range for this salt is typically 40 to 1500 ppm, and that the calcium content is typically around 2.2%, leading to an amount of calcium supplied by the compound of about 8.8 to about 33 ppm, within the ranges recited in component (b) of claim 1. In paragraph 173 Dyer discloses that the naphthalenesulfonic acid is alkylated with alkyl groups more preferably containing 10 to 14 carbon atoms, within the range recited in claim 5, where the alkyl group can be branched or linear, as recited in claims 6-7. A neutral salt will have a TBN of less than 10, as recited in claim 10.
In paragraphs 116-118 Dyer discloses the further inclusion of an overbased calcium phenate, meeting the limitations of the additional calcium detergent of claim 9.
In paragraphs 124-128 Dyer discloses that the ashless anti-wear agent is preferably can be phosphates or dithiophosphates, meeting the limitations of the (thio)phosphate ester of claim 11.
In paragraph 184 Dyer discloses that the antioxidant is preferably present in an amount of 0.05 to 0.5% (500 to 5000 ppm) by weight of the composition, within the ranges recited in claim 12.
In paragraph 81 Dyer discloses that the composition comprises an ashless nitrogen-containing dispersant. In paragraphs 95-96 Dyer discloses that the dispersant is preferably a polyisobutenyl (PIB)-substituted succinimide, and in paragraphs 98 and 104-105 Dyer discloses that the succinimide may be prepared using an aromatic polyamine as the amino reactant. The dispersant of Dyer therefore meets the limitations of the ashless surfactant of claims 13-16. It is noted that paragraph 45-46 of the current specification indicates that succinimide dispersants fall within applicant’s definition of surfactants. In paragraph 108 Dyer discloses that the dispersant is preferably present in an amount of 0.15 to 0.6% (1500 to 6000 ppm) by weight of the composition, within the range recited in claim 17.
In paragraph 166 Dyer discloses that the composition can have at most 10 ppm of zinc, or can be essentially free of zinc, encompassing and falling within the ranges recited in claim 19.
The difference between Dyer and the currently presented claims is that some of the ranges of Dyer overlap or encompass the claimed ranges rather than falling within them. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1, 5-7, 9-17, and 19 are therefore rendered obvious by Dyer.
Claims 1, 5, 9-15, 17, 19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Buzdygon (U.S. PG Pub. No. 2019/0376000) in view of Seddon (U.S. PG Pub. No. 2009/0203563).
In paragraph 2 Buzdygon discloses a lubricating composition comprising a substantially zinc-free antiwear additive, and methods of lubricating a hydraulic system with the composition, meeting the method limitation of amended claim 1. In paragraph 12 Buzdygon discloses that the composition comprises a lubricating base oil, and in paragraph 81 discloses that the base oil can be present in a range of about 95 to about 99% by weight, within the range recited for component (a) of claim 1. In paragraph 80 Buzdygon discloses that the base oil can be a Group II or Group III base oil, which by definition have less than 300 ppm of sulfur, within the range recited in component (a) of claim 1. In paragraphs 74-77 Buzdygon discloses that the base oil can also be a GTL base oil, and teaches that these typically have less than 5 ppm of sulfur, also within the range recited for component (a) of claim 1.
In paragraphs 250-267 Buzdygon discloses that the composition can comprise a metal-containing detergent, and specifically discloses that the detergents can be calcium-containing detergents. In paragraph 266 Buzdygon discloses that the detergents can be present in an amount of 0.01 to 3% by weight, and since the amount of calcium will be less than the amount of detergent, the amount of calcium supplied by the calcium detergent will overlap the ranges recited for component (b) of claim 1. In paragraph 256 Buzdygon discloses that the detergent can be a neutral detergent, as recited in amended claim 1, having a TBN of 0 to 80, overlapping the range recited in claim 10.
In paragraphs 163-205 Buzdygon discloses that the composition can comprise various phosphorus-containing antiwear additives, as recited in component (c) of claim 1, and in paragraphs 181-182 and 187 Buzdygon discloses that the phosphorus-containing antiwear additives are present in the composition in concentration ranges that lead to phosphorus contents overlapping the range recited in claim 1, noting that the lower endpoints of the antiwear agent concentration ranges disclosed by Buzdygon are lower than the upper bound of the claimed phosphorus content of 0.015% (150 ppm), and the composition of Buzdygon does not require any additional phosphorus-containing compounds. In paragraph 164 Buzdygon discloses that the antiwear agent can be a phosphate ester, as recited in claim 11.
In paragraphs 98-142 Buzdygon discloses that the composition can comprise an antioxidant, and discloses numerous specific suitable ashless antioxidants, as recited in component (d) of claim 1. In paragraphs 100, 119, and 139 Buzdygon discloses that the antioxidant can be present in amounts within or overlapping the ranges recited in claim 12.
In paragraph 223 Buzdygon discloses that the composition can comprise an ashless dispersant. In paragraph 234 Buzdygon discloses that the dispersant can be a polyisobutenyl (PIB)-substituted succinimide, therefore meeting the limitations of the ashless surfactant of claims 13-15. It is noted that paragraph 45-46 of the current specification indicates that succinimide dispersants fall within applicant’s definition of surfactants. In paragraph 247 Buzdygon discloses that the dispersant is present in amounts overlapping or encompassing the ranges recited in claim 17.
Since the antiwear additive of Buzdygon is substantially zinc-free, and the composition of Buzdygon does not otherwise require zinc, the compositions of Buzdygon will have a zinc content meeting the limitations of claim 19.
In paragraph 335 and Tables 4-5, Buzdygon discloses testing the composition in a hydraulic motor and pump, where the swivel cycle test and corner power test are carried out at operating pressures of either 450 or 500 bar, within the range recited in claim 21, and a speed of 4000 rpm, within the range recited in claim 22.
The differences between Buzdygon and the currently presented claims are:
i) Buzdygon discloses in paragraph 265 that the detergent can be a calcium sulfonate, but does not specifically disclose that the detergent is derived from an alkylated aromatic sulfonic acid, as recited in amended claim 1.
ii) Some of the ranges of Buzdygon overlap or encompass the claimed ranges rather than falling within them.
With respect to i), in paragraph 1 Seddon discloses a method of preparing a neutral or overbased detergent. In paragraph 8 Seddon discloses that the process of preparing the neutral detergent comprises reacting a metal base, a surfactant, and an organic medium in which the metal base is suspended. In paragraphs 31 and 34 Seddon discloses that the metal base can be a calcium compound. In paragraphs 52-53 Seddon discloses that the surfactant can be various alkylated aromatic sulfonic acids, as recited in component (b) of amended claim 1. Seddon discloses that the alkyl group can have 10 to 15 carbon atoms, within the range recited in claim 5.
It would have been obvious to one of ordinary skill in the art to use the neutral alkylated aromatic sulfonic acid-derived detergents of Seddon as the neutral sulfonate detergents in the composition of Buzdygon, as Seddon discloses in paragraph 115 that the detergents are suitable for use in hydraulic fluids.
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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Response to Arguments
Applicant's arguments filed 3/30/26 have been fully considered but they are not persuasive. Regarding the rejection over Dyer, applicant argues that the naphthalenesulfonic acid salt of Dyer is a rust inhibitor rather than a detergent. However, applicant does not dispute that the naphthalenesulfonic acid salt of Dyer meets all the structural limitations of the claimed detergent—the naphthalenesulfonic acid salt meets the limitations of the claimed alkylated aromatic sulfonic acid, the metal used to make the salt can be calcium, and the salt is neutral. Applicant has not provided any evidence or reasoning as to why the naphthalenesulfonic acid salt of Dyer would not be capable of functioning as a detergent. Applicant’s argument on this point is therefore not persuasive.
Applicant argues that the use of a neutral calcium naphthalenesulfonic acid salt provides unexpectedly superior results in terms of pump durability, citing the data provided in the specification. In order to overcome a prima facie case of obviousness through a showing of unexpected results, applicant must provide a comparison with the closest prior art. See MPEP 716.02(e). In this case, the comparative example EX1 provided by applicant does not contain any of the calcium detergent, and does not appear to comprise any other detergent. Both the Dyer and Buzdygon references cited in the above rejections are clearly closer prior art than EX1, since they comprise detergents in addition to the other claimed components. Applicant also must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case, the inventive examples supplied by applicant comprise specific amounts of specific neutral detergents, metal-free phosphorus anti-wear agents, and antioxidants, while the claims allow for broad or unlimited amounts of broad classes of additives. One of ordinary skill in the art would not be able to conclude from the provided data that superior results would be maintained across the full scope of the claims.
Regarding the rejection over Budzygon, the newly applied Seddon reference provides motivation for one of ordinary skill in the art to use a salt of an alkylated aromatic sulfonic acid as the neutral calcium sulfonate detergent of Buzdygon, addressing the limitation introduced by the amendment filed 3/30/26.
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.
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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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