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 12/30/25 overcome the rejections set forth in the office action mailed 9/3/25. New grounds of rejection necessitated by the amendments are set forth below.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 9, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook (U.S. PG Pub. No. 2011/0111997).
In paragraph 6 Cook discloses a lubricant comprising at least 0.5% by weight of an aminic antioxidant, overlapping the range recited for component (C) of claim 1, and less than 2% by weight of a hindered phenolic antioxidant, within the range recited for component (D) of claim 1. In paragraph 23 Cook discloses that the aminic antioxidant can be present in at least 2.0% by weight, within the range recited for component (C) of claim 1. In paragraph 25 Cook discloses suitable phenolic antioxidants which are phosphorus-free, as recited in component (D) of claim 1. In paragraphs 12-13 Cook discloses that the composition also comprises a base oil, and in paragraph 14 discloses that the base oil can be a natural oil such as castor oil, which contains linoleic and linolenic acids in a total amount of less than 20% by weight, within the range recited for component (A) of claim 1. In paragraphs 46-47 Cook discloses that the composition can also comprise zinc dithiophosphates, as recited in component (B) of claim 1. The composition of Cook does not require the inclusion of molybdenum, noting that molybdenum-containing additives are taught in paragraphs 26 and 55 only as optional additives. Cook therefore discloses compositions that are free of molybdenum. Claim 1 is therefore anticipated by Cook.
In paragraph 47 Cook discloses that the zinc dithiophosphate (metal salt of a phosphorus acid) is typically present in an amount of 0.1 to 4% by weight, within the range recited in claim 3. In paragraph 54 Cook discloses that the composition can comprise additional additives such as a metal deactivator, rust inhibitor, or antifoam agent, meeting the limitations of claim 9. Since the composition must be made by blending the components, the method of claim 12 is met by Cook as well. Paragraph 19 of Cook additionally discloses preparing the composition by blending an additive concentrate with the base oil. The composition of Cook does not require any components other than those recited in claim 13 and therefore meets the limitations of claim 13 including the “consisting of “ limitation.
In light of the above, claims 1, 3, 9, and 12-13 are anticipated by Cook.
Claim Rejections - 35 USC § 103
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cook.
The discussion of Cook in paragraph 4 above is incorporated here by reference. Cook discloses a lubricating oil composition meeting the limitations of claim 1. Cook does not specifically disclose a composition comprising both a diphenylamine-based antioxidant and a naphthylamine-based antioxidant.
In paragraphs 20-21 Cook discloses various suitable aminic antioxidants, and discloses that dialkyldiphenylamines and naphthylamines are commonly used, and discloses specific suitable dialkyldiphenylamines and naphthylamines meeting the limitations of claims 5-6. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It therefore would have been obvious to one of ordinary skill in the include both the dialkylphenylamine and naphthylamine antioxidants of Cook in the composition of Cook, meeting the limitations of claims 4-6.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cook as applied to claims 1, 3, 9, and 12-13 above, and further in view of Lambert (U.S. Pat. No. 5,888,947).
The discussions of Cook in paragraphs 4-5 above are incorporated here by reference. Cook discloses a engine oil composition meeting the limitations of claim 1, but does not specifically disclose a vegetable oil component having the oleic acid content of claim 1 in combination with the lineoleic/linolenic acid content of claim 2.
Lambert, in column 1 lines 11-16, discloses vegetable-oil based engine lubricants. In column 3 lines 19-38 Lambert discloses that the base oil can be various high oleic vegetable oils having oleic acid contents within or overlapping the range recited in claim 2, including high oleic sunflower oil having an oleic acid content of greater than 80%, implying a linoleic/linolenic acid content of less than 20%. The use of the high oleic sunflower oil of Lambert as the base oil in the composition of Cook therefore meets the limitations of claim 2.
It would have been obvious to one of ordinary skill in the art to use the high oleic sunflower oil of Lambert as the base oil in the composition of Cook, since Lambert teaches that it is a suitable vegetable oil for use as a base oil in an engine lubricating oil composition.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Cook as applied to claims 1, 3, 9, and 12-13 above, and further in view of Aguilar (U.S. Pat. No. 9,228,150).
The discussions of Cook in paragraphs 4-5 above are incorporated here by reference. Cook discloses in paragraph 6 and the examples that the composition is useful in an engine. Cook discloses a composition meeting the limitations of claim 1, but does not disclose the further inclusion of a zinc dithiocarbamate.
In column 2 lines 32-49, Aguilar discloses that the inclusion of certain zinc dithiocarbamates (ZnDTC) in motor oil compositions leads to improved fluoroelastomer seal compatibility. The inclusion of the ZnDTC of Aguilar in the composition of Cook meets the limitations of claim 7. It would have been obvious to one of ordinary skill in the art to include the ZnDTC of Aguilar in the composition of Cook, since Aguilar teaches in column 1 lines 6-10 that ZnDTC have good antioxidant, sludge preventing, antiwear, and extreme pressure properties, and teaches in column 2 lines 32-49 that the ZnDTC of the reference overcomes the weaknesses of prior art ZnDTC regarding seal compatibility.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Cook as applied to claims 1, 3, 9, and 12-13 above, and further in view of Yoshimoto (JP 11-35952 A).
The discussions of Cook in paragraphs 4-5 above are incorporated here by reference. Cook discloses a composition meeting the limitations of claim 1, but do not disclose the further inclusion of a phosphorus-containing phenol-based antioxidant.
An English-language machine translation of Yoshimoto, which was attached to the office action mailed 9/3/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language reference unless otherwise stated. In paragraph 4 Yoshimoto discloses a lubricating oil composition comprising a combination of a phosphorus-free phenolic antioxidant and an amine-based antioxidant, as in the composition of Cook, and further comprising a phosphorus-containing phenolic antioxidant, as recited in claim 8.
It would have been obvious to one of ordinary skill in the art to include the phosphorus-containing phenolic antioxidant of Yoshimoto in the composition of Cook, since Yoshimoto teaches in paragraphs 3 and 19 that the combination of the phosphorus-containing phenolic antioxidant with a phosphorus-free phenolic antioxidant and an amine-based antioxidant improves the oxidation stability, NOx resistance, and lifetime of a lubricating oil.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cook in view of Barr (U.S. PG Pub. No. 2021/0087965).
The discussions of Cook in paragraphs 4-5 above are incorporated here by reference. Cook discloses a composition meeting the limitations of claim 1, and in paragraph 6 and the examples discloses lubricating an turbocharged engine with the composition. Cook does not specifically disclose lubricating an engine used in industrial equipment.
In paragraph 2, Barr discloses a turbocharger apparatus for a vehicle, and discloses that it can be used for industrial or agricultural vehicles, both of which meet the limitations of the industrial equipment of claim 11. It therefore would have been obvious to one of ordinary skill in the art to apply the composition of Cook to industrial equipment, since Barr teaches that industrial equipment can contain turbocharged engines.
Response to Arguments
Applicant’s arguments with respect to claims 1-9 and 11-13 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. The newly applied Cook reference teaches compositions meeting the limitations of amended claim 1 and new claim 13 and which do not require any molybdenum compounds.
Conclusion
11. 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.
12. 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