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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 5-6 depend from claim 1 which requires a phosphate ester, thus claims 5 and 6 do not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kinker et al., US Patent No. 5,817,606 (hereinafter referred to as Kinker) in view of Loper et al., US Patent Application Publication No. 2014/0179572 (hereinafter referred to as Loper).
Regarding claims 1-2 and 5-9, Kinker discloses 1 to 15 wt% of polymer compositions derived from selected alkyl (meth)acrylate ester monomers used in certain weight ratios to provide improved viscosity control and low temperature performance characteristics in phosphate ester aircraft hydraulic fluids wherein the phosphate ester is present in a concentration rang of up to 98.9 wt% (as recited in claims 5-9 – reads on claim 8 as the phosphate esters of Kinker read on the phosphate esters recited in the instant specification that have a KV40 in the range or at least overlapping the range recited in claim 8) (see Abstract and see Claim of Kinker and Col. 6-7/L. 46-42). Polymer compositions for use as viscosity index improving additives in aircraft hydraulic fluids contain from 40 to 100 weight percent (C1-C10)alkyl (meth)acrylate and zero to 60 weight percent (C11-C20)alkyl (meth)acrylate monomer units combine good solubility in the phosphate ester hydraulic fluids with good viscosity control at low and high temperatures having a weight-average molecular-weight ranging from 60,000 to 350,000 (as recited in claim 1 – reads on constituent monomer and SP recited in claim 1 as the viscosity index improvers overlap what are recited in the instant specification within the SP recited in claim 1 and reads on claim 2) (see Abstract and see Claim 4 of Kinker).
Kinker discloses all the limitations discussed above including the presence of additional additive compounds in a concentration ranging from 0.1 to 15 wt% (reads on claim 3) (Col. 24/L. 1-4). Kinker does not, however, explicitly disclose the presence of a chain aliphatic alcohol as recited in claim 1.
Loper teaches lubricating oil compositions for hydraulic fluids (Para. [0093]) that contain frictions modifiers wherein the friction modifier may comprise compounds selected from fatty alcohols. The fatty alcohols include alcohols of the formula R7OH wherein R7 is a hydrocarbyl groups containing from about 12 to about 25 carbon atoms (Para. [0053] and [0156]). It would have been obvious to one of ordinary skill in the art to use the friction modifiers of Loper in the composition of Kinker in order to enhance the frictional properties of the composition.
Conclusion
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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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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