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 examiner notes that the species election laid out in the parent application is applied here. See MPEP 804.01. As such claims 32-36 and 39-41 are examined in this office action. The species choice for this application was affirmed by Raymund Eich on 8/24/2026.
Claim Objections
Claim 36 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 35. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 32-34, 39 and 41 is/are rejected under 35 U.S.C. 102 a1/a2 as being anticipated by Dressler et al (US 4604491).
Dressler teaches a lubricant composition (abstract) for automotive and gears.
It teaches a composition that is 100% C16 monoalkylated naphthalenes. See table II column 3 last line Filtrol 13. This is a counter example, but still proves the composition exists. See MPEP 2123.
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.
Claim(s) 32-36 and 39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dressler et al (US 4604491).
Dressler teaches a lubricant composition (abstract) for automotive and gears.
It contains monoalkylated naphthalenes with 14 carbon atoms in the alkyl group. See column 1 lines 15-40. Also see table II column 3.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
Regarding claims 35-36, the physical properties listed are not in metric units.
As set forth in MPEP 2112, where applicant claims a composition interms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). Further, "when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985).
The USPTO has a sound basis for believing the composition of the instant application and the prior art are the same. It is the same amount of mono and dialkylated naphthalenes with the same alkyl group. As such the viscosity, Brookfield viscosity and Noack volatility would be the same.
Regarding claim 40, use of the composition with 10% or less of the naphthalene content is suggested but not explicitly taught. See column 1 lines 48-55. The examiner takes official notice that using blends of base oil in varying amounts including 10% or less and adding additives is well known and widely used in the art of lubricants. Additionally using small amounts (including 10% or less) of base oil to formulate an additive package to be inserted into a lubricant composition is well known and widely used in art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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.
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/FRANCIS C CAMPANELL/ Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
