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 06/05/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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, 2, 4 – 15, 17 – 28 are rejected under 35 U.S.C. 103 as being unpatentable over Loper et al. (US 2019/0177651)
In regards to claims 1, 6, 7, Loper teaches lubricating oil composition that optionally incudes one or more phosphorus-compounds, detergents, friction modifiers, extreme pressure agents and mixtures etc. (abstract). The one or more phosphorus compound can provide phosphorus in amounts of from 50 ppm to 1500 ppm in the composition [0013]. The composition can comprise sulfur at from 1% or less, such as from about 0.001% to about 0.5% (i.e., about 10 ppm to about 5000ppm of sulfur in the composition) [0311]. The one more detergent can deliver between 0.1 TBN and 12 TBN to the composition [0041]. The detergent can be calcium or magnesium detergent such as 300 TBN calcium sulfonate etc. [0044, 0046]. The detergent can be used at amounts of from 0 to 10% thus providing tbn that overlaps the claimed range, and may be used to provide metal at (preferred) amounts of from 450 to 2200 ppm into the oil [0219].
Dispersants such as hydrocarbyl succinimides can be present [0050]. The hydrocarbyl group can be an olefin polymer such as ethylene and propylene copolymer having Mn of less than 5000 g/mol such as from 1300 g/mol to 2700 g/mol [0056, 0066 and 0121]. The dispersant may deliver at least 700 ppm of nitrogen to the composition [0056]. The dispersant may be borated, maleated or phosphorylated [0080]. The dispersants are prepared from reaction of succinic acid or anhydride with a polyamine [0154]. The dispersants (i.e., olefin copolymer dispersants such as succinimide dispersants etc.) are present in the composition at from 1 to about 10 wt.% [0114, 0149].
The composition can comprise a sulfur extreme pressure agent which can provide sulfur in amounts of less than about 10,500 ppm, such as from 100 ppm to 4600 ppm of sulfur into the composition [0058, 0064]. The composition comprises ashless phosphorus compound which delivers from 80 to 900 ppm of phosphorus into the composition, having a formula XIV wherein R1 is S, R2 and R4 are each OR”, R3 in the structure is SR”’C(O)OH, R”’ is C3 alkyl, R” is C1 to C18 which meets the limitations in claim 6, and provides groups analogous to R4 and R5 in the claimed structures and further meets the alkyl chain length in the 2-methylpropoxy (i.e., C4-oxy) groups of claims 7 [0206 – 0208].
The compound has a 1:1 molar ratio of phosphorus to sulfur, and since phosphorus and sulfur have molecular weights of about 31 to about 32 respectively, the phosphorus compound would provide about 80 to about 900 ppm of sulfur into the composition. The structure is ashless dialkyldithiophosphoric acid as claimed. For instance, Loper recites 3-((diisobutoxyphosphorothioyl)thio)-2-methylpropanoic acid which is the same compound and has an identical CAS number [0333].
The composition comprises optional additives (i.e., additives present at very low amounts) including metal deactivators such as benzotriazole, typically tolyltriazole or corrosion inhibitors such as benzotriazole, tolyltriazole etc. [0285, 0291]. The corrosion inhibitors are present at amounts of from 0 to 5% in the composition. Thus, when tolyltriazole are used at low amounts as optional additives, they would be expected to provide the nitrogen content of the claim.
For instance, when tolyltriazole is used at 5%, it provides nitrogen (present at about 31.56% in the triazole) at 1.58% (15800 ppm) into the oil. If lower amounts are used, the amount of nitrogen provided is reduced significantly. In one embodiment, tolyltriazole is present at 0.2% which provides nitrogen to the composition at 0.06% (600ppm) in the composition [0308, Table 5G]. Thus, the triazole can be present at greater than 1ppm in the composition.
When the ashless phosphorus compound and the tolytriazole are used as the only phosphorus and sulfur providing compounds in the composition, they will provide sulfur and phosphorus in the claimed amounts. The composition is useful for lubricating engines (i.e., motor oils) such as hybrid engines [0310]. The composition comprises base oil of lubricating viscosity [0294]. Thus, the intended use of the composition as an electric motor lubricating oil composition is provided.
Calculating the claimed ratio using the formula (P+N)/(Tbn/metal ppm) with P from 50 to 1500 ppm, N from 0 to 15,800 ppm, TBN from about 0.1 to 12, and metal from about 450 to about 2200 ppm, the ratio would provide a value of from about 2000 or higher and which would overlap the claimed. The claimed limitations are met or overlapped.
In regards to claim 2, Loper teaches the composition comprising tolyltriazole which meets the claimed limitation. Tolyltriazole is a benzotriazole that allows the methyl group to be at the carbon 5 position, which is a methyl-1H-benzotriazole.
In regards to claim 4, Loper teaches the composition wherein the detergent can provide metal such as calcium in amounts overlapping the claimed range.
In regards to claim 5, Loper teaches the composition having the claimed ashless dithiophosphate. The claim is a product-by-process. So long as the product itself is taught by Loper, the product-by-process limitation is provided.
In regards to claim 8, Loper teaches the composition having the boron or phosphorus post-treated succinimide as previously stated.
In regards to claim 9, Loper teaches the composition which may comprise boron present at from 0.05 to 0.7% by weight of the borated dispersant [0171]. The dispersant is present in the composition at from about 0.1 to about 15%, and thus provides calculated amounts of boron at 0.5ppm to 1050ppm into the composition [0187]. Loper requires that the one or more phosphorus compounds provides at least 50ppm and up to about 5000 ppm or up to about 900 ppm of phosphorus into the oil [0008, 0013]. Therefore, the phosphorylated compound would be expected to provide phosphorus into the oil in the amounts of the claims after accounting for the contribution from the ashless dialkyl dithiophosphoric acid compound.
In regards to claim 10, Loper teaches the composition having the claimed limitation as previously stated.
In regards to claims 11, 12, Loper teaches the composition having the claimed ingredients in the claimed amounts and would be expected to have similar properties to the claims.
In regards to claim 13, Loper teaches the composition which can have sulfur in the claimed range as previously stated.
In regards to claim 14, Loper teaches the composition useful for lubricating driveline components including electric motors having the claimed limitations and which would be expected to have similar properties as claimed [also see 0308, Tables 5A to 5J]. When the composition is applied to the driveline component, the claimed steps of the method would be intrinsically provided.
In regards to claims 15, 17 – 25, Loper provides the method and teaches the composition as previously discussed.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant makes similar arguments as previously made. The arguments are not persuasive.
Applicant argues that Loper fails to teach the claimed ratio but can have ratio values as high as 384,444 which is much outside the claimed range of 70,000 or less. The argument is not persuasive.
As discussed above, the ratio can be as low as about 2000. Thus, while it may be as high as 384,444 the claimed range is overlapped. Having an arbitrary ratio of concentrations does not necessarily make the subject matter patentable. Generally, differences in concentration (i.e., ratio of concentrations of different components of the claims) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration (or concentration ratios) is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant argues that the claimed composition demonstrates unexpected results. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow 40 to 150ppm of phosphorus from zddp the inventive examples require 57 ppm of phosphorus which does not support the breadth of the claims nor demonstrate criticality at the claimed endpoints.
While the claims allow at least 70 ppm of phosphorus in the composition, the inventive examples require from 97 to 137 ppm of phosphorus in the composition which does not support the breadth of the claimed range.
While the claims allow a calculated ratio of ((EP P) + (CI N))/ (TBN factor) of 20,000 to 70,000, the inventive examples require a value of from about 27000 to about 64000 which does not support the breath of the claimed range nor demonstrate criticality at the claimed end points, such as at 20,000 and at 70,000. Thus, applicant fails to demonstrate that this ratio is critical.
The results are not persuasive.
The results are inconsistent and there appears to be no definite standard for superior values for each of the FZG and Copper leaching. While copper leaching is very low for Comp 8, 9 and10, every inventive example (except Inv 2) provided higher values which were inferior to the comparative. Thus, clearly while the FZG values of Comp 8, 9 and 10 are marginally lower than the FZG of the inventive examples, their Copper leaching values are significantly superior to all the inventive examples (except Inv 2).
Applicant thus 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
THIS ACTION IS MADE FINAL. 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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
