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 .
Response to Amendment
Applicants’ response filed 10/23/2025 amended claim 1, cancelled claim 2, and added new claims 11-12. Applicants’ amendments overcome the 35 USC 112 rejections from the office action mailed 7/23/2025; therefore, these rejections are withdrawn. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 102 rejection over Bryer from the office action mailed 7/23/2025; therefore, this rejection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 102/103 rejection over Kaneko from the office action mailed 7/23/2025; therefore, these rejections are maintained below. Also, applicants have not addressed the double patenting rejection from the office action mailed 7/23/2025; therefore, this rejection is maintained below.
Claim Rejections - 35 USC § 102/103
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.
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 and 3-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaneko, International Publication No. WO/2018/097173 (hereinafter referred to as Kaneko – for citation purposes USPG-PUB No. 2019/0241827 is being used).
Regarding claims 1-2, 5-6, 8 and 10, Kaneko discloses lubricating compositions for refrigeration machine oils having a compressor, a condenser, an expansion mechanism, and an evaporator (as recited in claim 1) (see Title and Para. [0120]) comprising mineral oil (as recited in claim 1 and reads on claim 2) and 2 wt% of a polymer, such as, a polymethacrylate (PMA) having a Mw of 26,000 and a Mn of 17,000 (as recited in claim 1 and reads on claims 5-6 and 8) (Para. [0141] and see Table 1/Example 1), and a refrigerant (as recited in claim 10) (Para. [0106]).
Kaneko discloses all the limitations discussed above but does not explicitly disclose the polymer additive having a carbon residue of 0.2% by mass or more, and the refrigerating machine oil has a carbon residue of 10% residual oil of 0.05 to 0.6 % by mass as recited in claim 1.
It is the position of the examiner that as Kaneko discloses a refrigerating machine oil composition that is very similar to that recited in the instant claims and defined in the instant specification that the composition of Kaneko would encompass or at least overlap the carbon residue ranges for the polymer additive compound and the refrigerating machine oil composition as a whole as recited in claim 1.
Regarding claims 3-4, 7, 9 and 11-12, the same analysis as discussed above applies.
Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. Claims 1 and 3-12 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,227,712. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The '712 patent discloses the same limitations as does the instant claims and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference. These are the same reaction components recited in the instant claims. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
Response to Arguments
9. Applicants’ arguments filed 10/23/2025 regarding claims 1 and 3-12 have been fully considered and are not persuasive in regards to the Kaneko reference.
Applicants argue that Kaneko does not disclose reducing a friction coefficient in a mixed lubrication region or a boundary lubrication region as recited in instant claim 11. This argument is not persuasive as Kaneko discloses all the limitations of instant claim 11 and would therefore inherently function to reduce a friction coefficient in a mixed lubrication region or a boundary lubrication region.
Applicants also argue that Kaneko does not disclose the refrigerating machine oil having a KV40 ranging from 1 to 4 mm2/s, nor the Va/Vb ranging from 1.01 to 1.2 as recited in the instant claim 1. This argument is also not persuasive. Throughout Kaneko a low viscosity is mentioned. Specifically, Table 2 includes Examples 10-11 wherein the KV40 is above 1 and less than 4 mm2 for the refrigerating machine oil composition. These examples also can use Polymer 1 (see Table 1) which would to a Va/Vb encompassing or at least overlapping the range recited in the instant claims.
Conclusion
10. 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 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