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 04/21/2026 has been considered and entered. The response was considered but was not found to be persuasive over Kawahara et al. (WO2004/087847A1) and Chen Zhuojun et al. (CN 106085568A). 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, 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kawahara et al. (WO2004/087847A1) in view of Chen Zhuojun et al. (CN 106085568A) hereinafter referred to as Chen Z
In regards to claim 1, Kawahara teaches lubricating oil composition comprising an ester base oil such as dioctyl sebacate (abstract, page 41). The composition comprises antiwear/extreme pressure (EP) agents such as sulfurized fats (i.e., sulfurized fatty esters), sulfurized oils (i.e., sulfurized fatty acid esters), sulfurized fatty acids, sulfurized olefins, dialkyl disulfide, amine phosphate salts etc., at from 0.01 to 10% (page 43, 44). The composition is useful as engine oil, gear oil, transmission oil etc. (specification). Kawahara does not particularly recite each of the specific ingredients at the claimed amounts.
Chen Z teaches lubricating oil composition octadecane sulfo-nanometer calcium borate or octadecyloxythionanocalcium borate (T365) at 0 to 0.96%, dialkyl pentasulfide (Rc2540) at from 0 to 0.48%, and phosphorus star at 0 to 0.4% (title, abstract). Chen Z teaches the additives are useful for engine oil, gear oil, hydraulic oil, grease etc. similar to Kawahara (specification). The phosphorus star is an organophosphate amine salt (specification). Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the additives of Chen Z, and in the recited amounts, in the composition of Kawahara, as Chen Z recites useful antiwear and EP additives for similar oils.
Alternatively, in further view of Barton et al. (EP 3 487 965 B1) which similarly teaches engine oils which can comprise rust inhibitors comprising hydrocarbyl amine salts of alkylphosphoric acid, and which can be present in amounts of from 0.02 to 0.2%, the claim is obvious [Barton, 0191, 0197]. It would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used the amine phosphates of Barton in the composition of Kawahara, as Kawahara allows for the use of conventional additives such as rust inhibitors in the composition.
Kawahara and Chen Z and/or Barton teach the composition wherein each of the antiwear/EP agents or their combinations are present at from 0.01 to 10% and thus provides the claimed limitations. Chen Z allows for the borate to be present at from 0 to 0.96%, the dialkyl pentasulfide to be present at from 0 to 0.48% which overlaps the claimed limitations.
Kawahara and Chen Z and/or Barton teach the composition having the sulfurized fatty acid which can be present at from 0.01 to 10% and the dialkyl pentasulfide which can be present at from 0 to 0.48%, and thus would be expected to provide ratios overlapping the claimed range. Similarly, the amine phosphate is independently present at from 0.02 to 0.2% and the borate is present at from 0 to 0.96% and thus provides ratios that overlaps the claimed range.
In regards to claims 7, 8, Kawahara and Chen Z teach the composition having the claimed ingredients in the claimed amounts and thus would be expected to provide similar properties as claimed. The product by process of preparing the oil is intrinsically provided by the oil itself.
Response to Arguments
Applicant’s arguments have been considered but was not found to be persuasive.
The arguments were focused on the secondary reference of Chen. Applicant argues that Chen teaches gear oils. Chen fails to teach the amine phosphate of the claims. The arguments are not persuasive.
Chen is not the primary reference. The primary reference was by Kawahara. Also, Chen was not added to teach the claimed amine phosphate. Chen was merely added to Kawahara to recite calcium borate and dialkyl pentasulfides that are useful as additives in similar base oils. Barton teaches the amine phosphate of the claims. The claimed composition is to an oil suitable for performing the intended use as cutting oil. Kawahara teach the ester base oil having the claimed additives in the claimed amounts in view of Chen and Barton. Thus, the oil of Kawahara is suitable for performing the intended use.
Applicant argues that the claimed composition demonstrates excellent and superior technical effects. Applicant argues that Chen lacks performance data. The argument has been considered but was not persuasive.
Again, the primary reference is in view of Kawahara not Chen. Chen was merely added to recite additives useful in the composition of Kawahara. Also, it is unclear how the data is superior if it is being compared to the secondary reference of Chen that lacks performance data.
The inventive examples are not commensurate in scope.
While the claims recite dialkyl pentasulfide (Rc2540) at amounts of from 0.03 to 0.15% in the composition, the inventive examples recite amounts of from 0.08 to 0.75% which does not support the breadth of the claimed range and is more than 2 times larger than the lower end of the claimed range.
While the claims recite the presence of the borate (T365) at 1.2 to 1.65%, the inventive examples recite the upper limit at 1.35%, which does not support the breadth of the claims.
The results are not persuasive.
The Db/mm results of the inventive examples overlap with those of the comparative examples and thus fails to provide consistently superior values.
Therefore, applicant fails to provide inventive examples that are commensurate in scope with the claims and demonstrates unexpectedly superior 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
Prosecution Insights