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 .
Information Disclosure Statement
The information disclosure statements filed 12/20/2024 and 4/6/2026 fail to comply with 37 CFR 1.98(a)(3) because they do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. They have been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected because the claim recites a broad range such as “does not contain (B2) a sulfur-containing extreme pressure agent,” and a narrow range of “or contains the component (B2) such that a content of sulfur derived from the component (B2) is 0.01% by mass or less based on a total amount of the lubricating oil composition,” within the same claim. The claim would be better understood as separate dependent claims.
Claim 7 is rejected because the claim recites a broad range such as “a composition for lubricating a transmission” and a narrow range of “as well as for cooling and lubricating of an electrical motor” within the same claim. The claim would be better understood as separate dependent claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Susukida et al., International Publication No. WO/2020/095970 (hereinafter referred to as Susukida – for citation purposes USPG Pub No. 2021/0395635 is being used) in view of Mori et al. US Patent Application Publication No. 2020/0071634 (hereinafter referred to as Mori).
Regarding claims 1-5 and 7, Susukida discloses a lubricating oil composition for use in transmissions and cooling and lubricating of electric motors (as recited in claim 7) (Para. [0002]-[0003]) comprising a wax isomerate base oil having a KV40 of 9.3 mm2/s (component (A) of claim 1 and reads on claim 2) (Para. [0130] and see Tables 1-3) to which is added 0.001 to 0.06 mass% in terms of phosphorus of a phosphorus-based extreme pressure agent (as recited in claim 1) (see Abstract), less than 5 wt% of sulfur-containing extreme pressure agents (as recited in component B2 of claim 1 and at least encompasses/overlaps the ratio of S/P as recited in claim 3) (Para. [0105]), 0.25 mass% or less of nitrogen derived from a succinimide ashless dispersant (as recited in component (C) of claim 1 and at least encompasses/overlaps the ratio of P/N as recited in claim 1 and reads on claim 5) (Para. [0067]-[0075]), and 0.005 to 0.03 mass% of calcium derived from a calcium sulfonate detergent (as recited in claim 4) (Para. [0057]); wherein the volume resistivity at 80°C of the lubricating oil composition is no less than 1.0×109 Ωcm (as recited in claim 1) (see Claim 5 of Susukida).
Susukida discloses all the limitations discussed above but does not explicitly disclose the alkylamine salt of a phosphate ester as recited in component (B1-1) of claim 1.
Mori discloses a lubricating oil composition for use in transmissions (Para. [0002]) comprising: (A) a lubricant base oil; (C) (C-1) a succinimide compound or a boronated succinimide compound having a mass-average molecular weight of 4,000 to 7,000, and (C-2) a succinimide compound or a boronated succinimide compound having a mass-average molecular weight of more than 7,000 to 10,000; and (D) a phosphorus-based extreme pressure agent, wherein the lubricating oil composition may optionally contain a sulfur-based extreme pressure agent, provided that the content of the sulfur-based extreme pressure agent is 0.1% by mass or less in the lubricating oil composition (see Claims).
Mori also indicates that the succinimide compound is an ashless dispersant (Para. [0026]) with an example comprising 70.39% by mass of mineral oil 1, which is a highly hydrorefined paraffinic base oil (KV100=3.1 mm²/s, VI=112); 20.95% by mass of synthetic base oil 1, which is a poly-alpha-olefin (KV100=10 mm²/s, VI=137); 1.49% by mass of boronated succinimide compound 2 (Mw=8,500, B: 0.23% by weight, N=0.88% by weight, mixture of compounds represented by formula (2), wherein R1 is a polyisobutenyl group, and n=4 to 12); 0.33% by mass of boronated succinimide compound 1 (Mw=5,600, B: 0.34% by weight, N=1.58% by weight, mixture of compounds represented by formula (2), wherein R1 is a polyisobutenyl group, and n=4 to 12); 0.04% by mass of phosphoric acid; and 0.15% by mass of amine salt of acidic phosphoric acid butyl ester (see Example 10). The content of nitrogen derived from the boronated succinimide compound 2 is 131 ppm, the content of nitrogen derived from the boronated succinimide compound 1 is 52 ppm, and the total thereof is 183 ppm. The content of phosphorus derived from phosphoric acid is 126 ppm. Although the details of the amine salt of the acidic phosphoric acid butyl ester are not explicitly disclosed, the phosphorus content would be the maximum value of 251 ppm assuming, for example, a methylamine salt of an acidic phosphoric acid monobutyl ester, which would have the lowest molecular weight (molecular weight 185). This being the case, the total value of the phosphorus content would be, at most, 377 ppm, and the P/N would be, at most, 2.06 (as recited in claim 1) (Para. [0064]-[0070]) (Given the fact that acidic phosphoric acid esters arc normally a mixture of a monoester and a diester, and the fact that the alkyl groups of such amine salts are normally greater than methyl, it can be said that the phosphorus content and P/N would be lower than the values given above). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the alkylamine salt of a phosphate ester of Mori in the composition of Susukida in order to enhance the extreme pressure properties of the composition.
Regarding claim 6, the combination of references disclose all the compositional limitations of the claims and would therefore inherently read on claim 6.
Conclusion
There were unused Y references from the ISR report. The examiner is of the position that the prior art cited adequately reads on the claims as instantly recited.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
